CHAPTER 3. THE CONCEPT OF THE TRADEMARK LAW
I. The Meaning of Trademark Law
Trademarks can function in their full capacity even absent laws that regulate them if thefollowing conditions apply: the goods are traded only in an extremely limited area; theservice industry is regional and is undeveloped; and the moral standard of the society ishigh. However, once the goods are traded widely, once the service industry flourishes,and once the market for the goods and services widens, it would be simply impossible
to protect trademarks through commercial morality or the regulations governed by tradeassociations. Today, each major country in the world has a unified legal system toprotect trademarks that is applicable within its borders. In a free economy in particular,
protecting trademarks maintains consumer confidence in companies and protects
consumer profits.
In Japan, trademark regulations were enacted to protect trademarks from early on.
Today, there is the Trademark Law, which serves a core function in Japanese trademark
regulation. The Trademark Law was first introduced as Law No. 127 of 1959, and went
into force on April 1, 1960. Since then, it has been amended multiple times through thefollowing measures: Law Nos. 140 and 161 in 1962; Law No. 148 in 1963; Law No. 81in 1965; Law No. 91 in 1970; Law No. 46 in 1975; Law No. 27 in 1978; Law No. 89(bylaw) in 1978; Law No. 45 in 1981; Law No. 23 in 1984; Law No. 24 (bylaw) in1984; Law No. 41 in 1985; Law No. 27 in 1987; Law No. 30 (bylaw) in 1990; Law No.
65 in 1991; Law No. 26 in 1993; Law No. 47 in 1993; Law No. 89 in 1993; Law No.
116 in 1994; Law Nos. 68 and 110 in 1996; Law Nos. 51 and 83 in 1998; and Law No.
41 in 1999. There are other trademark laws that regulate trademarks in addition to theTrademark Law. They are the Trademark Enforcement Law, the Trademark
Enforcement Order, the Trademark Enforcement Rules, the Trademark Registration
Order, and the Regulations on the Trademark Registration Order.
A trademark right is granted when a trademark is registered in the Patent Office. The
grantee of the trademark right is permitted to use the trademark continuously (known asa "use right"). He has the right to prohibit the use of the same trademark that he hasregistered, or a similar trademark to the one he has registered, for the same or similar
goods (the "prohibitive right"). Moreover, the grantee can request damages or sue a
person for intentionally infringing his trademark right.
As illustrated, the trademarks registered in the Patent Office are granted a large degreeof protection. There are exceptional cases, however, in which unregistered trademarks
are protected. If the trademark is of a kind that is well known or famous, it is subject toadditional protection under the Unfair Competition Prevention Law, passed as Law No.
14 of 1934 and amended in its entirety under Law No. 47 of 1993. The details of theTrademark Law and the concept of the related articles of the Unfair Competition
Prevention Law will be discussed in subsequent sections.
II. The Legal Origin of the Trademark Law
Trademarks are protected under the Trademark Law (term used in a narrow sense here);1however, there are other legal decrees concerning trademarks, which are as follows: theTrademark Law Enforcement Law, the Trademark Law Enforcement Order, theRegulations under the Trademark Law, the Trademark Registration Order, and theRegulations under the Trademark Registration Order.
The Trademark Law established fundamental and important legal provisions, such asmatters concerning the establishment of the trademark right and the effectiveness of thatright. It is comprised of 85 articles, 53 additional articles, such as art. 5-2, and two
blank articles (arts. 48 and 48-2). There are a total of 136 articles. Its bylaws set forth
the enforcement date and transitional measures. The Trademark Law Enforcement Lawstipulates the procedure with regard to the enforcement of the Trademark Law. For
instance, it regulates the remaining enforceability of a trademark right under the present
trademark law when the mark was registered under the former trademark law. The
Trademark Law Enforcement Order is an order by the Japanese government that sets
forth the details necessary to put into practice the regulations established in theTrademark Law based on the regulations relied upon the enforcement of the Trademark
Law. The main portions of the Order establish the "classes for goods and services,"consisting of Classes 1 to 34 for goods and 35 to 42 for services, and regulates thequalifications of trademark examiners. The Regulations under the Trademark Law is anorder by the Ministry of Trade and Industry that regulates in detail the formalities
involving matters necessary in enforcing the Trademark Law. This order shows theproper form of a trademark application and provides examples of designated goods.
(According to the provisions on expiration, the older Trademark Law Enforcement
Order is still valid, and there are few instances where the prior, older law has to beconsulted on old trademark applications and other matters.) The Supreme Court Rules
provide for judgments and implementation at the time of the enactment of the present
trademark law (bylaw, art. 56).
The Trademark Law, in a general, substantive sense, is created by the interaction
between the Trademark Law, in a narrow, formalistic sense, the other decrees andregulations discussed above, and the laws regulating legal issues concerning trademarks(discussed in the next section).
III. Laws related to trademarks
There are many other laws that are connected to trademarks. For example, there is theUnfair Competition Prevention Law that applies to well-known trademarks that are notregistered. When trademarks and trade names intersect and become one, namely, when
the phenomenon of "trademarkization" of a trade name takes place (for example, thetrademark "Toshiba" for Toshiba Incorporated), or when the trademark itself becomes atrade name (for example, the trademark "Suntory" turning into a trade name, resulting inSuntory Incorporated), the general regulations in the Commercial Law are applied to theTrademark Law. Many provisions on procedural formalities apply the Patent Law andthe Designs Law (Art. 17, 17-2, among others). As the Popeye trademark case has
displayed, there are rare instances in which the Design Law or Copyright Law is related
to the Trademark Law. (Under art. 29, on the rare occasion, the Patent Law or theUtility Model Law become an issue as well). Further, trademark rights in relation to theright of importing and exporting goods, as one kind if industrial property right, becomes2

an issue, in relation to the Customs Tariff Law (Art. 21), the Export/Import Transaction
Law (Art. 2) or the Export Trade Control Ordinance (Art. 1, Separate List 1, No. 211),in addition to the Unified Trademark Law on the Export of Products of the Small andMedium Entities and other laws, and as illustrated in the Parker Trademark Case and theBBS Trademark Case. A campaign for goods or a trademark advertisement on apamphlet is connected to the Act against Unjustifiable Premiums and Misleading
Presentation, which is closely related to trademarks. Additionally, antitrust law is also
closely linked to trademarks in the areas of licensing of famous trademarks or parallelimporting.
The above-mentioned law that regulates trademarks in substantive meaning is called the"substantive trademark law." The "Trademark Law" that regulates enforcement of thelaw is called "formal trademark law." In this book, the latter kind is called theTrademark Law, and the former is called "the trademark law in substantive meaning,"
or "trademark law, generally." This book focuses mainly on providing an outline oftrademarks, and the discussion on the Unfair Competition Prevention Law or theregulations of trade names in the Commercial Law is kept only to a level necessary toconvey a summary of the Trademark Law. For more extensive explanations on theUnfair Competition Prevention Law or the regulations on trade names, please refer toThe Unfair Competition Prevention Law by Masanobe Ono (Yuhikaku 1994).

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