10 The Protection of Unregistered Technologies and Brands (*)<1> Japanese companies are expected to actively export infrastructures such as stable electricity grids and highspeed railway networks. To ensure their competitiveness in such exports, it has become increasingly important for themto keep their own technologies confidential and prevent local companies from copying them, and to protect and enhance
the unique technologies which are based on Japanese identities and cannot be copied by local companies. Against thisbackground, studies were made on major countries with respect to systems for keeping unregistered technologies a trade
secret.
<2> The provisions of the Paris Convention refuse the registration and prohibit the use, as trademarks, of official
signs and hallmarks, etc. indicating control and warranty which are adopted by the countries of the Union and havebeen notified to the World Intellectual Property Organization (WIPO). However, there are issues regarding thisnotification, such that information on domestic needs, operations in foreign countries, and provisions of protection offoreign countries remain disorganized. Accordingly, research, organization and analysis were made on the actual
conditions of the domestic needs and the system of protection in foreign countries for official signs and hallmarks, etc.

I

Introduction

1

Background and Purpose of This Study

Technologies and brands unique to Japan canbe protected in various ways, such as by acquiring
patent rights and trademark rights, by keeping
them confidential as trade secrets, or by using
geographical indications. Accordingly, it isessential to achieve an appropriate balance inusing the system of protecting the technologies
or brands by registering them as intellectual
properties (hereinafter referred to as the “systemof protection by registration”1) and the system ofprotecting the technologies or brands without
registering them (hereinafter referred to as the“system of protection without registration”2).
For example, in relation to the protection of
unregistered technology, due to the high mobilityof personnel, the leakage of trade secrets has
become a huge problem for Japanese companies
in terms of protection. As a result, Japanesecompanies are under pressure to take adequate
measures to protect their trade secrets in foreigncountries. However, as the information on thesystem of protection of trade secrets in foreigncountries and the actual conditions of use thereofis limited, the organization of such information isrequired to take effective measures.
With respect to the protection of brands, theprovisions of the Paris Convention3 refuse thetrademark registration of official signs andhallmarks, etc. indicating control and warranty,
which are adopted by the countries of the Union(hereinafter collectively referred to as “official
hallmarks, etc.”) and have been notified to WIPO4(hereinafter referred to as “notification to
WIPO”), and prohibit their use as trademarks. At
the same time, hallmarks for official technology
authentication and quality assurance may beprotected by ways of making notification to WIPO
or obtaining a trademark registration in eachcountry. However, questions including thefollowing are yet to be answered: What type of
official hallmarks, etc. shall be subject to thenotification to WIPO in Japan? What criteria areused for the notification or transmission of
objections to WIPO in the countries of the Union
other than Japan? What protection is available inthe countries of the Union other than Japan incases where a notification to WIPO has been
made? Although Japan is treating such marks byapplying the Trademark Act and Unfair
Competition Prevention Act, 5 how are suchmarks treated in the countries of the Union otherthan Japan?
Given this situation, research, organization
and analysis regarding trade secrets, shall be
carried out on the provisions for the protection of
trade secrets and the utilization thereof in majorcountries, i.e. the United States, Germany andChina. Moreover, for the matters concerning thenotification to WIPO, the relationship between
the system of protection by registration andsystem of protection without registration in Japanand in foreign countries, the actual conditions ofand trends in the use of such systems as well as
the appropriate balance in using the two systems
in Japan shall be researched, organized and(*) This is an English translation of the summary of the FY2011 JPO-commissioned research ｓtudy report on the issues
related to the industrial property rights system.

●

IIP Bulletin 2012 Vol.21

1 ●analyzed.
The purpose of this research study is to
produce basic data to find the favorable protectionof unregistered technologies and brands in Japan,
and to support the establishment of rules which
are appropriate in practice, based on the results of
the abovementioned research etc., in order toenable Japanese companies to protect andenhance their unique technologies and brands byproperly utilizing the system of protection byregistration and system of protection without
registration in countries around the world.

To ensure the protection of unregistered
technologies of Japanese companies in foreigncountries, studies were made on (i) U.S. Laws
(federal law and state laws [New York State Law
and New Jersey State Law]), (ii) German Laws,
and (iii) Chinese Laws. In particular, the reasonsfor the establishment of criminal provisions forthe protection of trade secrets, the actual
conditions of application of such criminal
provisions, as well as the current evaluation andissues regarding such criminal provisions in eachcountry were studied.6

2

3

Method of Implementation
Research Study

of

this

In this research study, the report on thesection, “II. Protection of Trade Secrets,” wasprepared by the local agents so requested. The
United States, Germany and China are thecountries studied.
At the same time, interview surveys in Japan,
overseas research by questionnaires, andoverseas interview surveys were conducted withrespect to the section, “III. The Notification to
WIPO under Article 6ter of the Paris
Convention,” and analyses were made based on
the results thereof.
In addition, the Intellectual Property Officesof each country were targeted by the overseas
research, questionnaire, and interview surveys.

Ⅱ Study on the Protection of Trade
Secrets
1

Introduction

To ensure the protection of the Japanesecompanies’ unregistered technologies in foreigncountries, research was made on the legislation
for the protection of trade secrets under the Lawsof the U.S. (federal law and state laws [New YorkState Law and New Jersey State Law]), Germany
and China.
In particular, this research was made withthe purpose of investigating and analyzing thereasons for the enactment of criminal provisions
for the protection of trade secrets, the actual
conditions of application of such criminal
provisions, as well as the current evaluation andissues regarding such criminal provisions in eachcountry.
2

Direction of the Study●

Situation in Foreign Countries(1) U.S. – Outline –In the United States, theft of a trade secret isa crime under federal law, and in some states,
under state law as well. The primary federal law
dealing with trade secret theft is the Economic
Espionage Act of 1996 (EEA).7 EEA grants thefederal prosecutor broad power to prosecute any
person or company involved in trade secretmisappropriation.
At the state level, approximately 24 states
have enacted laws specifically making trade
secret misappropriation a crime. Some states
have achieved this by expanding the existing
criminal statutes’ definition of “property” toinclude trade secrets. Other states have enacted
statutes specifically criminalizing trade secretmisappropriation. In the U.S. law section of thisreport, the EEA and state-enacted criminal
legislations dealing with the misappropriation of
trade secrets are analyzed, focusing on New Yorkand New Jersey state laws.
(i)

New York – Provisions of Protection ofTrade Secrets New York is one of the few states that havenot enacted a trade secret statute modeled after
the Uniform Trade Secrets Act (UTSA), which
has been a major practice in the U.S. with regard
to civil relief concerning trade secrets. New York
instead relies on common law principles derived
from the first Restatement of Torts published 60
years ago to determine civil liability formisappropriation of a trade secret.
Criminal liability is dealt with under the New
York Penal Law (NYPL), which protects trade
secrets through the larceny statute (NYPL Article155) and the statute prohibiting the unlawful useof secret scientific material (§ 165.07). Anotherstatute of possible relevance, NYPL Article 156,
contains
provisions
forbidding
unlawful

2 ●IIP Bulletin 2012 Vol.21

duplication and possession of “computer relatedmaterial.”(ii) New Jersey –Provisions of the Protectionof Trade Secrets–
New Jersey has specifically provided theprotection of trade secrets in its criminal
legislation. Since there was some debate about
whether trade secrets were covered under thelarceny statute, New Jersey felt the need to add
specific protection. In 1956, it therefore expanded
the definition of “property” in N.J.S Cum. Supp. §2A:119-5.2 to include trade secrets.8
New Jersey was one of the first states todefine trade secrets as property, and, although thestatute has subsequently been rewritten andappears in its present form under N.J. Rev. Stat. §2C:20-1, the original New Jersey law has stillserved as a model that other states have used informulating similar laws.9(2) Germany(i)

The provisions of UWG
The German Code against unlawfulcompetition, UWG, covers the breach of secrecy
by someone who is employed by the owner(Geheimnisverrat, § 17 I UWG), particularly
dangerous cases of espionage (Betriebsspionage, §17 II No. 1 UWG), and the unauthorized use or
disclosure of trade secrets acquired or seized by
improper means (Geheimnishehlerei, § 17 II No. 2
UWG). Attempting any of the infringements
mentioned under § 17 I and II of UWG is also
penalized (§ 17 III UWG).10(ii) The provisions of the Criminal CodeIn addition to the protections for trade
secrets in UWG, there are provisions in the
Criminal Code StGB that address specific andlimited aspects of the protection of trade
secrets.11 The details of some of the provisions
are as follows:*The provisions of Article 202 of StGB protect
the secrecy of letters and illustrations. Both theterms, “letter” and “illustration” are interpreted
broadly: the term “letter” covers letters, diaries,
notes, calculations, projections, and plans; andthe term “illustration” extends to photographs,
slides, and films. In order to have their secrecy
admitted, both letters and illustrations have to
be “closed” or secured in a closed container,such as an envelope, drawer or cupboard.
* Article 203 of StGB mainly protects theinterests of society and reliance upon the●

IIP Bulletin 2012 Vol.21

professional secrecy of certain professions. It
also protects the “right of informational
self-determination,” which emanates from
Article 2, paragraph (1) and Article 1, paragraph(1) of the German Constitution. Article 203 is
extended and completed by Article 204, which
covers the exploitation of other persons’secrets.
* Article 205 of StGB provides to the effect thatany criminal offense under Articles 202 through204 of StGB will only be prosecuted upon
application.
(3) China(i)

Criminal Law of the People’s Republic ofChina (President Order No. 83) (asamended by the National People’s
Congress, which came into force on
October 1, 1997; hereinafter referred to as
the “Criminal Law”)
Article 219 of the Criminal Law goes on toexpressly prohibit the infringement of trade
secrets by any of the following means:* obtaining trade secrets of the right holder by
theft, inducement, duress or other illegal means* disclosing, using, or allowing others to use trade
secrets of the right holder obtained by illegalmeans* disclosing, using, or allowing others to use trade
secrets in breach of an agreement with orconfidentiality requirements imposed by theright holder
Liability under the Criminal Law extends tothird party recipients of trade secrets. Such third
parties are deemed to be infringers if they obtain,use or disclose trade secrets which they knew orshould have known had been infringed by any ofthe means described above.
If the trade secret infringement results inmaterial loss to the right holder, the infringing
party could be subject to criminal sanctions,
including fines and up to seven years’
imprisonment, depending on the seriousness ofthe offense.

(ii) “Interpretation of the Supreme People’s
Court and the Supreme Procuratorate

3 ●Concerning Some Issues on the Specific
Application of Law for Handling Criminal
Cases of Infringement upon Intellectual
Property Rights” (Fa Shi [2004] No.19)(which came into force on December 22,
2004; hereinafter referred to as the “2004Interpretation”)
Article 7 of the 2004 Interpretation sets out
guidelines for determining the seriousness of an
offense under Article 419 of the Criminal Law.
The guidelines provide that if, as a result of the
trade secrets infringement, the right holder
suffers monetary losses of between RMB500,000(approximately USD78,000) and RMB2,500,000(approximately USD390,000), the infringing party
shall be considered to have caused material loss
to the right holder and thus shall be subject to up
to three years imprisonment with the potential
for additional fines subject to the discretion of thecourt.
Moreover, if the relevant losses equal or
exceedRMB2,500,000(approximately
USD390,000), the infringing party shall beconsidered to have caused significant loss to theright holder and thus shall be subject to three toseven years imprisonment and monetary fines.

1(iii) Anti-unfair Competition Law promulgatedby the National People’s Congress(President Order No. 10) (which came into
force on December 1, 1993)
The Anti-unfair Competition Law isoverseen
andenforced
by
the
State
Administration of Industry & Commerce (SAIC)
and its competent local branches. Article 25 ofthat Law gives SAIC and its competent local
branches the power to impose various sanctions
upon infringers of trade secrets at its
administrative discretion in light of theseriousness of the offense. SAIC’s power is asfollows: (i) demand that the infringer cease theinfringement, and (ii) impose administrative fines
ranging
from
RMB10,000(approximately
USD1,500) to RMB200,000 (approximately
USD3,000). Note that the Anti-unfair Competition
Law does not provide for imprisonment or otherforms of criminal punishment.

* Actual treatments of official signs and hallmarks,etc. indicating control and warranty adopted by
the countries of the Union, in Japan

Ⅲ Study on the Notification to
WIPO under Article 6ter of theParis Convention●

Introduction

Regarding the notification to WIPO, studies
were made on the types of official signs, such as
the official signs and hallmarks indicating control
and warranty adopted by the countries of theUnion, which shall be subject to the notification to
WIPO in Japan, the national criteria for
conducting notification or transmission of
objections to WIPO adopted by the countries of
the Union of the Paris Convention other thanJapan, the protection available in the countries
complying with the Paris Convention excluding
Japan in cases where a notification to WIPO has
been made, and the treatments of such marks inthe countries complying with the Paris
Convention other than Japan, although Japan istreating such marks by applying the Trademark
Act and Unfair Competition Prevention Act.12
2

Direction of the Study(1) Actual conditions and needs in Japan
In Japan, research and analyses were madeon the actual conditions and needs from thefollowing standpoints.

* Needs in Japan regarding the protection of
official signs and hallmarks, etc. indicating
control and warranty adopted by the countries of
the Union, based on the notification to WIPO
(2) Research on the actual operations andsystems of the notification to WIPO in
foreign countries
Research and analyses were made on theforeigncountries’
past
performanceofnotifications or transmission of objections to
WIPO under Article 6ter of the Paris Convention,national criteria, and provisions of protection for
the armorial bearings (hereinafter referred to as“armorial bearings, etc.”), flags and other Stateemblems (hereinafter collectively referred to as“State emblems, etc.”) of the countries of theUnion, official signs and hallmarks indicating
control and warranty adopted by the countries of
the Union (hereinafter collectively referred to as“official signs, etc.”) and armorial bearings, flags,
other emblems, abbreviations, and names ofinternational intergovernmental organizations(hereinaftercollectively
referredtoas

4 ●IIP Bulletin 2012 Vol.21

“international organization’s marks, etc.”) (theseshall all hereinafter be collectively referred to as“emblems, armorial bearings, official signs,
international organization’s marks, etc.”) whichhave been notified from other countries, pursuant
to the provisions of Article 6ter of the Paris
Convention (the provisions of protection refer tothe provisions concerning the prohibition of use,and grounds for unregisterability or grounds forcancellation under the Trademark Act). The main
items surveyed are as follows:(i)

Past performance of notificationtransmission of objections to WIPO(ix) Treatments of a registered trademark incases where an official sign, etc. identical tosuch registered trademark has been notified
to WIPO for protection.

and3(ii) National criteria used for conducting
notification to WIPO for the State’s own
emblems, armorial bearings, or official signs,
etc. or transmitting objections regarding
emblems, armorial bearings, or official signs
notified from other countries or marks, etc.
notified from international organizations(iii) Method of public notification of the emblems,armorial bearings, official signs, orinternational organization’s marks, etc.,
which shall be protected in the relevant
country based on a notice received from
WIPO(iv) Responses made in cases where objections
have been transmitted from other countries
in regard to the relevant State’s own
emblems, armorial bearings or official signs,
etc. for which it made a notification to WIPO(v) Actual conditions of utilization pertaining to
notification and objection to WIPO(vi) Measures taken in cases where anapplication for “use as a trademark” or“trademark application” has been filed withthe relevant country for emblems, armorial
bearings, official signs, or internationalorganization’s marks, etc. which had beenprotected based on the notification from
WIPO.
(vii) Availability of trademark registration in cases
where a trademark application has been filed
for marks identical to emblems, armorial
bearings, official signs, or internationalorganization’s marks, etc. for which a
notification to WIPO has previously been
made●

IIP Bulletin 2012 Vol.21(viii) Existence of the requirement for a mark to“suggest to the public or mislead the public”
in deciding to prohibit the use or refuse theregistration as a trademark of internationalorganization’s marks, etc. which areprotected based on the notification to WIPO

Research on the actual conditions
surrounding the official signs, etc. inJapan and the analysis thereof

In this research study, interviews wereconducted with official bodies and academics, andthereby the actual conditions and needs in Japan
were researched.
(1) Implementation of interview surveys
During the period from December 2011 to
February 2012, interview surveys wereconducted on 10 official bodies (certification
bodies) and 5 academics.
(2) Actual treatments of official signs, etc.
in Japan
Past cases where business operators using
official signs, etc. made any inappropriate use
thereof (i.e. cases where an official sign, etc. wasaffixed to products other than those approved for
affixation under laws, or cases where both theofficial signs, etc. and serial number wererequired to be affixed to the product in
combination under the provisions of laws, but the
combination of the serial number was incorrect)
were addressed by recommendation of corrective
actions if any authority to give administrative
guidance was available. Moreover, although somecases involved the unauthorized use of such signs(i.e. cases where a hallmark, etc. was affixed to a
product without obtaining a certification of athird-party body despite the law requiring suchcertification), they were settled throughdiscussions, and so far, no case has reached thestage of litigation for infringement of trademark
rights, even if the relevant official sign, etc. wasregistered as a trademark.
As the reason for registering an official sign,
etc. as a trademark in a foreign country, some
respondents answered that they obtained thetrademark registration in order to appropriately

5 ●respond to any problems which may arise in therelevant foreign country which is the country of
manufacture of the products (e.g. especially Asian
countries, including China) or the country of salesof the products,.
(3) Needs in Japan regarding the protectionof official signs, etc. based on the
notification to WIPO
The following shows some of the positive
opinions on protecting official signs, etc. based on
the notification to WIPO:* Using the notification to WIPO to protect official
signs, etc. is attractive in that it requires lower
costs in comparison to the heavy burden to beborne in relation to a trademark application,
which is intended to be filed with a number ofcountries or for a number of classes of goods (i.e.
application fees, renewal fees and procedural
burdens).
* Notification to WIPO will be one of the options
for protecting marks, if a protection equal totrademark protection (i.e. demand for injunction
or claim for damages, etc.) is secured throughsuch notification.
* Because the marks to be protected by theTrademark Act shall be protected as a property
right, i.e. trademark right, if the main purpose ofprotecting the official sign, etc. is other than theprotection of the property right thereof (e.g.
protection of public security), the protection to
be provided by the Trademark Act shall beinappropriate and the protection to be obtained
through the notification to WIPO would be moresuitable. An example for this would be the JIS
mark, which guarantees the quality of products.
In contrast to the above, some of thenegative opinions on protecting official signs, etc.
through the notification to WIPO are as follows:* There seems to be no necessity for protection inforeign countries of official signs, etc. whichshall be affixed to products which are sold only
in domestic markets and are not expected to be
sold in foreign markets.
* The system of protecting official signs, etc.
based on the notification to WIPO is not suitable
for marks of institutions whose operations are
dependent upon the license fees they receive in
relation to the trademarks they own, as it is●possible that license fees may not be paid if theprotection for such signs were to be realizedbased on the notification to WIPO instead of theprotection under the Trademark Act.

Ⅳ Conclusion and Consideration
In this research survey, with the purpose ofachieving the protection of unique technologies
and specific brands of Japan in other countries,
research was made on the protection of trade
secrets for technologies and on the notification to
WIPO for brands.
Regarding the protection of trade secrets,
research was made on the cases where criminal
penalties regarding trade secrets were applied
and the trends thereof in major countries such as
the United States, Germany and China.
In the United States, theft of a trade secret issubject to criminal penalties under the federal law(Articles 1831 and 1832 of the Economic
Espionage Act), and in some states, under thestate law as well (24 states). However, in reality,
the state law has been applied to few cases andmainly the federal law is applied. Recently, with
the increasing necessity of protecting trade
secrets, in 2011, a bill entitled the “Economic
Espionage Penalty Enhancement Act” wasintroduced to allow higher sentences under the
EEA, and is currently pending consideration by
the full Senate. If enacted, the maximum penalty
per count under Article 1831 of EEA shall be
increased from 15 to 20 years.
In Germany, theft of a trade secret is subject
to criminal penalties under UWG. The acts whichshall be subject to criminal penalties are breach ofobligation of confidentiality, improper acquisition,and unauthorized use of trade secrets, as well as
attempts at these infringements. No special
information could be obtained with regard to any
changes in the cases where the provisions of laws
and criminal penalties were applied compared tothe previous research conducted in 2002.
In China, theft of a secret trade is subject tocriminal penalties pursuant to the Criminal Law.
Pursuant to the provisions of Article 219 of the
Criminal Law, in cases where the right holder
incurs a material loss, the infringing party shallbe sentenced to not more than three years of
fixed term imprisonment or criminal detention, or
may be sentenced to a fine, subject to thediscretion of the court. If a significant loss has
been caused, the infringing party shall besentenced to not less than three years and not
more than seven years of fixed term

6 ●IIP Bulletin 2012 Vol.21

imprisonment andmonetaryfines.
The
seriousness of an offense is to be determinedbased on the guideline, “Interpretation of theSupreme People’s Court and the Supreme
People’s Procuratorate Concerning Some Issues
on the Specific Application of Law for Handling
Criminal Cases of Infringement upon Intellectual
Property Rights (Fa Shi [2004] No. 19).” The
guideline provides that the infringing party shallbe considered to have caused a material loss if, asa result of trade secrets infringement, the rightholder suffers monetary losses of between
RMB500,000 (approximately USD78,000) andRMB2,500,000 (approximately USD390,000). If
the monetary losses suffered by the right holder
amount to RMB2,500,000 or more, the infringing
party shall be deemed to have caused a significant
loss.
As stated above, the application of criminal
penalties for the protection of trade secrets varies
among countries; no universal conclusion could
be obtained. However, it should be noted that theUnited States and Germany take a cautious
approach in applying criminal penalties. In the
United States, although the language andpotential scope of the EEA is quite broad,criminal penalties are applied in a cautious
manner taking into account the intent ofCongress at the time of the enactment. In
Germany, an overarching principle has been
established with the purpose of allowing theemployees to freely use knowledge and skills
legitimately acquired after their term of
employment, thereby restricting the applicationof criminal penalties. In particular, close attention
should be paid to the future movements in the
United States, as the “Economic Espionage
Penalty Enhancement Act” has been submitted to
the Senate and prosecutions are allowed to be
initiated without obtaining pre-approval from theUnited States Attorney’s Office.
Regarding the protection of brands throughthe notification to WIPO, research was mademainly on the issues as to which of the nationaland official signs, etc. shall be subject to thenotification under Article 6ter of the Paris
Convention, the national criteria adopted by thecountries of the Union to the Paris Convention
other than Japan for conducting notification andtransmission of objections to WIPO, and theprotection available in the countries of the Union
to the Paris Convention other than Japan in cases
where notification has been made.
In almost every country surveyed that had
conducted a notification to WIPO or a●

IIP Bulletin 2012 Vol.21

transmission of objections in the past, there wereno specific provisions concerning the criteria for
conducting the notification to WIPO. Among thecountries surveyed, only Korea had anestablished guideline for the operation of criteria
to conduct notification to WIPO. Based on the“Establishment of the Operational Guidelines
Concerning the Protection of Public Marks of theCountries of the Union to the Paris Convention
Pursuant to Article 6ter of the Paris Convention,”
which came into force in April 1, 2009, Korea isrecently making a number of notifications to
WIPO for official signs, etc. However, the UnitedStates has been transmitting objections to thesenotifications by stating that “the relevant marks
do not fall under the category of official signs,
etc.” In short, there is a discrepancy between thearguments of the two countries, and therefore, it
can be presumed that the interpretation of theprovisions of Article 6ter of the Paris Convention
vary among countries. On the other hand,
although the countries surveyed, excluding Korea,
had no specific provisions regarding thenotification, the results obtained from the surveys
and hearings made in regard to the question of
attributions of the “official signs, etc.,” showed atrend that such countries conducted thenotification to WIPO only for official signs, etc.
whose indications were provided in laws.
As a conclusive result in cases where an
objection was transmitted from other countries
with regard to a notification to WIPO, there werevarious cases, including a case where theobjection from the objecting country was
withdrawn after counterarguments were made tosuch objections and, a case where there were noreactions to the counterargument made to theobjection and therefore the notifying country
gave up the idea of protecting the relevant official
sign, etc. in the objecting country. At the sametime, it became apparent that, while the firstobjection should be made within 12 months fromthe receipt of the notification under theConvention, the period for further negotiation is
not limited and that opinions are exchanged
directly without the involvement of WIPO.
Moreover, although all of the countries
surveyed had a provision concerning the refusalof trademark registration, as a measure to betaken in cases where an application for the use asa trademark or a trademark application has been
filed for an official sign, etc. for which a
notification to WIPO had previously been madeand which had already been protected under theprovision of Article 6ter of the Paris Convention

7 ●in the relevant country, some of the countries had
no specific provisions regarding the prohibition ofuse of such official signs, etc. as trademarks.
Furthermore, many of the countries
answered that they approved the trademark
registration if a trademark application was filed in
the abovementioned situation but the applicant
was the government of the country which madethe notification or was otherwise found to be thelegitimate right holder or user of the relevant
mark. Nevertheless, in some countries, suchtrademark registration is refused even if theapplication was filed by the legitimate right holder,
thereby closing the door for marks similar to therelevant official sign, etc. to be registered as atrademark in such country once a notification to
WIPO has been made. Accordingly, particularattention should be paid in conducting thenotification in such countries.
Research was also made on the subsequent
grounds for the invalidation of registeredtrademarks in cases where a notification to WIPO
has been made for an official sign, etc. identical toa registered trademark. While many of thecountries answered that a mere notification to
WIPO does not invalidate a trademark
registration, some countries answered that
invalidation of the trademark registration was
possible, or provided no precise answer in thisresearch. Accordingly, in conducting a notification
to WIPO, deliberate consideration should be madeas to whether there is any risk that the effect ofprotection which had previously been enjoyedunder the trademark registration shall be lost bysuch notification.
As described above, the criteria for
notification and forms of protection differ in thesystems of the countries surveyed in regard to
the notification to WIPO and, each country
ensures compatibility between the protection
under Article 6ter of the Paris Convention andthe acquisition of a trademark right in a different
manner. It is therefore necessary to conduct
sufficient research on the subject country anddeliberate consideration in making a notification.
In addition to the abovementioned researchand studies, interview surveys were made withregard to the actual treatments of the official
signs, etc. which may be subject to thenotification to WIPO and the needs thereof.
Among the various opinions provided in regard to
official signs, etc. which could be subject to thenotification to WIPO, an association which is the
proprietor of an official sign, etc. and had alreadyobtained a trademark right in a foreign country●

voiced its opinion that it would prefer to refrainfrom making the notification in any countries
where the effect of protection under the
trademark right may be impaired. On the other
hand, some of the opinions pointed out that
official signs, etc. which do not satisfy therequirements for eligibility for trademark
registration are likely to become subject to thenotification. In the present situation, where thestate of protection in each country is different as
mentioned above, deliberate consideration should
be made, in advancing the consideration on theprotection of unique brands of Japan, by
sufficiently taking into consideration therelevance with the protection available by theacquisition of a trademark right when making a
notification to WIPO.
As illustrated above, this research study
advanced its discussion with the purpose ofenhancing the protection of unique technologies
and specific brands of Japan in terms of trade
secret protection and notification to WIPO.
Moreover, this research study has been carriedout with the expectation to contribute to thestudy on the future protection of unregistered
technologies and brands in Japan as well as theestablishment of rules appropriate in practice.
(Researcher: Masahiro SHIMIZU)
1

2

3

4

5

A system seeking the protection of technologies andbrands by making a registration an industrial property
right, whereby technologies may be protected under
the Patent Act by registering them as patents, andwhereby brands may be protected under the
Trademark Act by registering them as trademarks
A system seeking the protection of technologies andbrands without registering them as intellectual
property rights, whereby technologies may beprotected under the Unfair Competition Prevention
Act by keeping them confidential as trade secrets, andwhereby brands may be protected under the
Trademark Act and Unfair Competition Prevention Act
by making the notification to WIPO as explained
below.
Article 6ter of the Paris Convention for the Protectionof Industrial Property provides for the protection ofarmorial bearings, flags, and other State emblems ofthe countries of the Union, official signs and hallmarks
indicating control or warranty adopted by them, as
well as armorial bearings, flags, other emblems,abbreviations,
and
names
of
internationalorganizations.
WIPO is the abbreviation of the World Intellectual
Property Organization.
The provision of Article 4, paragraph (1), item (v) of
the Trademark Act refuses the trademark registrationof an official hallmark or sign indicating control orwarranty of a country of the Union, and the provisionsof Article 16, paragraph (3) of the Unfair Competition

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Prevention Act prohibit the commercial use of seals orsigns of a foreign state or local government used forsupervision or certification purposes. Specific detailsof the armorial bearings which are unregisterable astrademarks are contained in the public notice issued
by the Minister of the Economy, Trade and Industry,
and those of the flags of which the commercial use isprohibited are stated in the “Ordinance Specifying theFlag, Crest or Other Emblem of a Foreign State, Seal
or Sign of a Foreign State or Local Government Used
for Supervision or Certification Purposes, as well as
International Organizations and Marks Representing
International Organizations as Provided for in theProvisions of Article 16, paragraphs (1) and (3) and
Article 17 of the Unfair Competition Prevention Act.”The Japanese translation of the results of the researchshall be stated in Chapter II. In addition, the originaltext of the report in English shall be stated in Chapter
I of the materials of the report.
18 U.S.C., Sections 1831 to 1839
ibid.
The original New Jersey provision contained aseparate provision for stealing or embezzling articles
representing trade secrets. The current legislation,
however, does not contain a separate provision for
trade secrets, but it incorporates trade secrets within
the concept of property.
An English translation of UWG is available at
http://www.gesetze-im-internet.de/englisch_uwg/inde
x.htm
An English translation of StBG is available at
http://www.gesetze-im-internet.de/englisch_stgb/ger
man_criminal_code.pdf.
The provision of Article 4, paragraph (1), item (v) of
the Trademark Act refuses the trademark registrationof an official hallmark or sign indicating control orwarranty of a country of the Union, and the provisionsof Article 16, paragraph (3) of the Unfair Competition
Prevention Act prohibit the commercial use of seals orsigns of a foreign state or local government used forsupervision or certification purposes. Specific detailsof the armorial bearings which are unregisterable astrademarks are contained in the public notice issued
by the Minister of the Economy, Trade and Industry,
and those of the flags of which the commercial use isprohibited are stated in the “Ordinance Specifying theFlag, Crest or Other Emblem of a Foreign State, Seal
or Sign of a Foreign State or Local Government Used
for Supervision or Certification Purposes, as well as
International Organizations and Marks Representing
International Organizations as Provided for in theProvisions of Article 16, paragraphs (1) and (3) and
Article 17 of the Unfair Competition Prevention Act.”●IIP Bulletin 2012 Vol.21

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