CHAPTER 14. LITIGATIONThis chapter summarizes administrative case litigation over trademarks, and especiallypatent litigation in a narrow sense, and is based on lectures given by others at academic
institutions. (Here, the term "patent litigation" also includes trademark-related
litigation.)
Dispositions under the Trademark Law, including trial decisions and amendment
rejection decisions, are carried out by administrative offices. Therefore, oppositions tosuch administrative dispositions on the grounds of alleged illegality or unjustness can,as a general rule, be raised as requests for examination or objection under the
Administrative Appeal Law. If someone is unsatisfied with a disposition given against
such oppositions, they can bring further oppositions by means of administrative
litigation under the Administrative Case Litigation Law.
However, both the Administrative Appeal Law and the Administrative Case Litigation
Law are standard laws which are applied to oppositions against administrative
dispositions. Therefore, those laws give way to special laws in application, if suchspecial laws provide for different results (proviso of Section 1, Section 2, Article 4, andArticle 6 of the Administrative Appeal Law, and proviso of Section 1, Article 8 of the
Administrative Case Litigation Law).
The Trademark Law, as a special law, provides for opposition proceedings against
administrative dispositions. According to this law, any person who opposes any
disposition or order under this law (with exceptions such as administrative trial
decisions in Section 4, Article 195 of the Patent Law mentioned hereinafter) and wants
to file a lawsuit to revoke such a disposition must first seek a decision by theadministrative office (Article 63 Section 3, and Patent Law Article 184 Section 2). The
purpose of this provision is to give the administrative office a chance to reconsider theirdisposition and to protect the public interests, as well as to reduce the burden on the law
courts (as described in the proviso of Article 8 of the Administrative Case Litigation
Law). Such a purpose corresponds with another provision in the proviso of Article 8 of
the Administrative Case Litigation Law (see descriptions of each article on page 396).
In addition, no opposition can be filed under the Administrative Appeal Law withrespect to major dispositions under the Trademark Law, including such otherdispositions as are expressly prohibited by the Trademark Law. The major dispositions
mentioned above include rejections of applications, final actions, decisions ofrevocation, oppositions to granting of patents, and applications for trial decision, trial
and retrial (Trademark Law Article 63, and Patent Law Article 195 Section 4).
Oppositions can be filed against rejections or amendment final actions by means of arequest for trial. As described later, lawsuits against applications for trial decision, trial
or retrial can be brought directly to the Tokyo High Court by omitting opposition
proceedings under the Administrative Appeal Law. Opposition to trademark registration
decisions (Article 43 Section 3 Item 5) and application for exclusion and challenge
decisions (Article 56 and Patent Law Article 143 Section 3) are substantially covered byother remedial trial proceedings. With respect to dispositions against which theTrademark Law provides that no opposition can be filed, opposition proceedings under1

the Administrative Appeal Law cannot be used (see descriptions of each article on page
483).
Dispositions described in Section 2, Article 184 of the Patent Law and provided for in
Section 2 of Article 63 of the Trademark Law, as well as dispositions against which
opposition is permitted to be filed under the Administrative Appeal Law, include
procedural rejections by the Director-General of the Patent Office (Article 77 Section 2
and Patent Law, Article 13 Section 4), rejections of applications to appear in person(Article 77 Section 2, and Patent Law Article 18), and rejections of requests forcertificates (Article 72).
Section 1. Trademark-related Litigation
The term trademark-related litigation (usually, this term is included in reference to"patent litigation") has two meanings: (1) trademark-related litigation as administrative
litigation, such as litigation against trial procedures, belonging to the category of final
action proceedings; and (2) industrial property-related litigation including civil lawsuits(the widest definition of the term includes trial (or retrial) procedures, patent or
trademark litigation including civil and criminal lawsuits as well as administrative
litigation, and trademark disputes including complaint procedures, customs duty
procedures, and out-of-court negotiations).
Section 2. Trademark-related Litigation as Administrative Litigation
I. Litigation under Trademark Law
1. Categories
Litigation under the Trademark Law is administrative litigation. If administrative
offices had any power to grant final decisions through their own trials, this would
damage the rights of citizens to demand litigation proceedings. In order to ensure fairtrials, therefore, the Trademark Law introduces a system which permits the filing of
litigation.
The trademark-related litigation, as administrative litigation, mentioned in this essay
refers to: (1) litigation for revoking trial decisions, (2) litigation against decisions
rejecting amendments, and (3) litigation against decisions rejecting applications for trial
or retrial. (The above-mentioned litigations also cover (4) litigation over amounts ofcompensation under the Patent Law, but this essay does not discuss that litigation
because its nature is slightly different from the others.)
With respect to administrative dispositions, one can, as a general rule, claim remedy
through filing oppositions under the Administrative Appeal Law and further by appeal
under the Administrative Case Litigation Law. With respect to trademark-related cases,
however, Article 63 and Section 2 of Article 63 consider the nature of cases and provide
for exceptions to those two laws. Namely, one is permitted to file litigation to seek
revocation of only trial decisions and other specific decisions (Article 56 Section 1,
Article 61, Trademark Law Article 63 Section 1, and Patent Law Article 53 Section 1,

2

Article 133 Section 2, Article 159 Section 1, Article 174 Section 1, and Article 178
Section 6).
The Trademark Law prohibits filing of oppositions under the Administrative Appeal
Law against trial decisions or other decisions granted in type (1) and (3) litigations
mentioned above (Article 63, and Patent Law Article 195 Section 4). Instead, the Law
provides for a means to file oppositions directly with the Tokyo High Court. In final
action-related litigations, the Patent Office is named as one party in the proceeding, andtherefore, the Law admits the exclusive jurisdiction of the Tokyo High Court tofacilitate communications with the Patent Office (Article 63 Section 1).
2. Suspension of Proceedings
Whenever necessary in litigation, the court may suspend the proceedings until adecision is granted in the final action (Article 17 and Patent Law, Article 54 Section 2).
The decision to suspend proceedings is at the discretion of the courts. There is no rulethat requires courts to suspend the proceedings simply because an administrative trial
decision is still pending. Today, administrative trials are not completed speedily, andcourts do not usually suspend the proceedings unless a trademark invalidation decision
is highly probable in the administrative trial.
II. Litigation for Revocation of Trial Decision
1. Competent Plaintiffs
The right to file litigation against trial decisions is given only to the parties andparticipants of such trials and other persons whose applications for participation in suchtrial were rejected (Article 63 Section 2 and Patent Law, Article 178 Section 2). Thisaction is intended to protect the parties concerned. If all persons alleging infringementof rights due to trial decisions were permitted to file litigation before the law court, thenumber of litigations might grow, thus preventing speedy proceedings. On the other
hand, if only the parties of the trial were allowed to file litigation, it means that otherpersons with interests might not be adequately protected. Exclusive licensees, nonexclusive licensees, and pledgees can become a plaintiff if they were participants in thetrial or retrial.
2. Competent Defendants
In litigation against trial decisions, the defendant must be the Director-General of the
Patent Office. However, in litigation against decisions in trials seeking invalidation or
revocation of registered trademarks, the defendant must be the appellant or respondentof the trial (Article 63 Section 2 and Patent Law, Article 179). This idea is based on theadversarial legal system.
If the defendant has been mistakenly named, namely if the appellant or respondent of
the trial is named instead of the Director-General of the Patent Office, or if the DirectorGeneral of the Patent Office in named instead of the appellant or respondent of the trial,3

the defendant can be later substituted in so long as the mistake was not intentional or
due to material negligence and such litigation concerns either an appeal trial or interparty trial (Administrative Case Litigation Law Article 15 Section 1 and Article 40
Section 2).
3. Time Limit for Litigation
Litigation against trial decisions or other decisions may not be filed if a period of 30days has lapsed after service of a certified copy of the trial decision or other decision(Article 63 Section 2 and Patent Law, Article 178 Section 3). The above period is fixed(Article 63 Section 2 and Patent Law, Article 178 Section 4), and the court is notallowed to freely extend the period.
4. Notice of Litigation
Once a trial decision has become final and conclusive, the Patent Office must registerthat decision into the trademark register and delete or change entries in the register
depending on the details of the trial decision. However, filing of litigation prevents thedecision from becoming final and conclusive.
If a complaint has been filed against a trial decision that invalidates or revokes aregistered trademark, the court must notify the Director-General of the Patent Officewithout delay. Otherwise, the procedure of registering the trial decision will not be
stopped (Article 63 Section 2, and Patent Law Article 180).
5. Trial(1) Trials in Litigation to Revoke Administrative Trial Decisions
In the trial, the plaintiff should submit specific evidence proving illegality of the trial
decision, including erroneous findings of facts, incorrect holdings, and errors andomissions.
Following an answer from the defendant, the parties exchange briefs with each other.
Then, a single judge will conduct preliminary proceedings to adjust the claims andproduction of evidence more carefully than in ordinary civil procedure. The trial thengets fully under way through examination of evidence, and the trial is concluded,
pending a decision.
(2) Scope of Trials in Litigation to Revoke Administrative Trial Decisions
The trial in a lawsuit to revoke an administrative trial decision covers the initial trial
decision. In inter-party cases or administrative final action cases, the grounds that could
be claimed before the court are limited to ones on which the plaintiff had contested thetrial decision. The plaintiff cannot provide other grounds as evidence (appeal trial for"Meriyasu Kitting Machine Case", Supreme Court Hanrei, March 10, 1976, Minshu Vol.
30, No. 2, p. 79; initial trial for the same case, Tokyo High Court Hanrei, December 13,
1966, Gyoshu Vol. 17, No. 12, p. 1341; minority opinion by Judge Matsuda in appeal

4

trial for "Hong Kong Flower Case", Supreme Court Hanrei, April 4, 1968, Minshu Vol.
22, No. 4, p. 816; initial trial for the same case, Tokyo High Court Hanrei, April 23,
1964, Han-ta, No. 161, p. 139. Dissenting opinion; majority opinion in appeal trial for
the "Hong Kong Flower Case"). In the "Lincoln Trademark Case", however, theprovisions of Items 9 and 11, Section 1, Article 2 of the former Trademark Law were
contested. As a result, although the Patent Office did not accept a request for retrial, theTokyo High Court revoked the trial decision after examination of additional material.
That decision of revocation was supported by the Supreme Court. Therefore, any
person is no longer allowed to claim infringement of Item 9, but it is interpreted that it
is possible to supplement the previous claims in a lawsuit and submit new evidence, as
done in the "Lincoln Trademark Case" (Supreme Court Hanrei, December 20, 1960,
Minshu Vol. 14, No. 14, p. 3103). This issue has been addressed in a lot of literature
and also upheld by the Grand Bench of the Supreme Court; however, it has not yet
reached a complete settlement. For more information, see the references introduced
below).
6. Judgment (Revocation of Trial Decisions and Other Decisions)(1) Nature of Litigation to Revoke Trial Decisions
If the court considers that an opposition against any trial decision is groundless, thecourt must dismiss such opposition; if the court finds grounds in the opposition andfinds the trial decision illegal, the court must revoke the trial decision (Article 63
Section 2 and Patent Law, Article 181). The court is not authorized to grant its own
judgment because of the public policy to distribute power between the court and theadministrative office. The court can revoke trial decisions but cannot make any
administrative dispositions to replace the revoked trial decisions. The court respects theexpert judgment by trial examiners of the Patent Office. The Tokyo High Court is not ahigher court of the Patent Office. That is one reason why the subjects for cases
reviewed by the court are called "original trial decisions", and not "original court trials".
(2) Effects of Court Judgments Revoking Trial Decisions
If a court judgement revoking a trial decision has become final and conclusive, trial
examiners at the Patent Office must conduct a retrial of the proceedings and grant a newtrial decision (Article 63 Section 2 and Patent Law, Article 181 Section 2).
(3) Serving of Original Copy of Judgment
When proceedings before the court concerning litigation against a trial decision
invalidating a registered trademark or against a decision in an administrative trial
revoking a registered trademark have been completed, the court must serve the DirectorGeneral of the Patent Office with a copy of the original judgment without delay (Article
63 Section 2 and Patent Law, Article 182). The purpose of this measure is to meet therequirements for the Patent Office to know the contents of judgment of the court. The
court need not give such notice to the Patent Office in litigation against final actions
because in such litigation, the Director-General of the Patent Office is named as thedefendant.

5

The copy of the original judgment mentioned above is a certified copy of the original
judgment that is executed by an officer of the court and has the same legal effect as theoriginal judgment.
III. Categories of Litigation
Administrative litigation under the Trademark Law is divided into two categories;
litigation against the Director-General of the Patent Office over final actions, as opposed
to administrative trial decisions, and inter-party litigation against trademark owners, as
opposed to administrative trial decisions.
(1) Litigation against Final Actions(1) Litigation for revocation of administrative trial decisions in proceedings over
opposition against rejection final actions.
(2) Litigation for revocation of administrative trial decision in proceedings over
rejection of amendments.
(3) Litigation for revocation of administrative decisions rejecting amendments intrial or retrial proceedings.
(4) Litigation for revocation of administrative decisions rejecting requests fortrial or retrial.
(2) Inter-party litigation(1) Decisions for revocation of administrative trial decisions in proceedings forinvalidation of registered trademarks.
(2) Decisions for revocation of administrative trial decisions in proceedings forrevocation of registered trademarks.

6Section 3. Trademark-related Litigation as Civil Procedure
I. Litigation
1. Categories
In addition to trademark infringement litigation, trademark-related litigation (which isusually included in the term patent litigation) as civil procedure includes lawsuits overownership of trademark rights and assignment or pledging of trademark rights. This
chapter addresses only trademark infringement litigation and briefly summarizes what itis.
2. Categories of Infringement Litigation
Trademark infringement litigation generally consists of (1) litigation involving
injunctive relief over the production or sale of certain goods under trademark (Article36); (2) litigation to claim damages (Article 38), litigation to recover confidence
through public announcement of apology (Article 39, and Patent Law Article 106), andlitigation to claim the return of unjust profits; and (3) litigation (to be brought by adefendant) to confirm the nonexistence of a right to seek injunction and litigation toconfirm the existence of a right of use because of prior use.
3. Injunction Relief Litigation(1) Jurisdiction of Litigation Seeking Injunctive Relief
Litigation seeking injunctive relief is a typical trademark-related lawsuit. Since
injunction against substantive rights has been already discussed (See Section 4, Chapter7), this section addresses the issue of jurisdiction.
As a general rule, litigation is brought in a court that has jurisdiction over the address or
principal place of business of the defendant (Code of Civil Procedure, Article 1 Item 1).
Depending on the value of the subject matter, the plaintiff brings the suit to either a
district court or a summary court.
One major question is whether a special venue or forum controlling wrongful acts by
the defendant is applicable to litigation seeking injunctive relief over proprietary rights
such as trademark rights. If yes, the defendant will suffer inconvenience in defense
because trademark infringement can occur in many local areas. Conventional decisions
and theories include positive and negative opinions. The positive opinions include: Daihan Meiji, May 25, 1904, Minroku 10, p. 726; Tokyo High Court, November 28, 1957,
Kominshu Vol. 10, No. 9, p. 521; Tokyo High Court, Hanrei, November 15, 1978,
Sokuho No. 43, 968; Shizuoka District Court, Hamamatsu Branch Division, June 25,
1975, Mutaishu Vol. 7, No. 1, p. 188; Kikui/Muramatsu, "Zentei Minji Soshoho", p. 88;
Saito, "Chushaku Minji Soshoho" (1), p. 115; and Koseki, "Shohyo Hyakusen", p. 106.
The negative opinions include: Tokyo District Court Decision, December 20, 1956, GeMinshu Vol. 7, No. 12, p. 3722 (First Instance of the decision by Tokyo High Court,
November 28, 1957); Kaneko, "Jokai Minji Soshoho", Vol. 1, p. 40; Takabayashi,

7

"Tokyo Hyakusen", p. 187; and Motoki, "Kari Sashiosae Shobun" (Jitsumu Horitsu
Taikei Vol. 8), p. 585. One positive opinion suggests the importance of holding abuse ofrights (Makino, "Chukai Minji Soshoho", (1), p. 280).
With respect to concurrent jurisdiction, the Revised Code of Civil Procedure provides
for the following arrangements: Regarding litigation over patent rights, utility modelrights, rights of use of circuit layouts, and rights of authors of software programs, if thecompetent district court is located to the east of the district of Nagoya High Court, theTokyo District Court also has jurisdiction over such litigation, and if the competent
district court is located to the west of the district of Osaka High Court, the Osaka
District Court also has jurisdiction over such litigation (Article 6). This provision,
which is effective from January 1, 1997, has nothing to do with litigation overtrademark rights.
If an application for injunction relief and a claim of damages are made in combination,
the place of possible payment of damages (or address of the claimant of damages)
controls the jurisdiction (Code of Civil Procedure Article 7). If the number of infringers
is more than one and they are sued as joint defendants, the venue (or address) of any
one of them controls the jurisdiction.
If any district court (for example, Tokyo or Osaka) has its own special division in
charge of litigation over industrial property rights, such cases as should be brought into
its branch division (for example, Hachioji or Sakai) will be received by the principal
division. This is a matter of clerical allocation, and not a matter of jurisdiction.
(2) Special Categories of Injunction Relief Litigation(a) Preventive Injunction Relief Litigation
Trademark owners can seek injunction relief against persons who may infringe theirtrademark rights (Article 36 Item 1). Unlike litigation to claim damages, the willfulness
or negligence of the infringer is not questioned in this litigation. If the trademark has
become a common noun, the trademark right does not extend to the use of the mark by athird party (Article 26 Item 1 (2)). If a registered mark is listed in dictionaries as if itwere a common noun, the mark may be legally deemed a common noun (generic). No
legal measure is available to protect the mark from infringement in such a situation.
(b) Litigation to Claim Destruction
Together with an application for injunction, the trademark owner can claim destruction
or removal of infringing objects or equipment or other actions necessary to prevent
infringement (Article 36 Item 2). This claim represents a request for acts, and not foromissions, which will be realized through indirect enforcement procedures. As ameasure to prevent infringement, claimants should be allowed to seek orders thatenforce delivery of infringing goods. In most cases, orders for destruction are more
appropriate than orders for deletion because of the balance between the value of theinfringing objects and the costs for deletion, and considering the purpose of avoiding
difficulties of actual enforcement of orders (see Section 4, Chapter 7 for claiming of8

injunction).
4. Litigation to Claim Damages(a) This litigation also includes litigation to recover confidence through publicannouncement of an apology as a substitute or replacement. If litigation to claim
damages cannot be instituted because of time restraints, it is possible to resort tolitigation to claim return of unjust profits, though such litigation is not for claiming
damages.
In trademark infringement litigation, it is extremely difficult to prove negligence,amount of damages, or causation.
(b) The presumption of negligence.
In claiming damages, it is necessary to prove the willfulness or negligence of the
trademark infringer. In many cases, however, such proof is extremely difficult, andtherefore, any person who has infringed a trademark right or exclusive license ofanother person is legally presumed to have committed negligence in such infringement(Article 39, and Patent Law Article 103).
(c) Special provisions regarding presumption of the amount of damages.
(1) In claiming damages from a person who has infringed a trademark right or exclusive
license willfully or by negligence, if the person has transferred the infringing goods, theamount of damages can be computed by multiplying the number of such goods(hereinafter called "Transferred Number") by the profits per unit which would havebeen realized by the trademark owner or licensee if no such infringement was made,subject to an extent not exceeding an amount equal to the capability of use of the
trademark owner or licensee (Article 38 Item 1). This provision should be considered a"deemed" provision, and not a "presumed" provision like Item 2.
However, if the trademark owner or licensee is eventually unable to sell all or part of theTransferred Number for any reason, the trademark owner or licensee must reduce thedamages by an amount equal to such number unsold (Proviso of Article 38 Item 1).
Further, the "presumed" provision(Item 1 under the former Trademark Law) is provided
as Item 2 as follows:(2) In claiming damages from a person who has infringed the trademark right or
exclusive license willfully or by negligence, if the person has already received profits
from such infringement, the amount of such profits shall be deemed the amount ofdamages incurred to the trademark owner or licensee (Article 38 Item 2). With respect
to the profits received by the infringer, opinions have been divided about what suchprofits mean: net profits, marginal profits, or gross profits. However, it is possible tooppose claiming of any type of profits later because the provision is merely for the
purposes of presumption.
(3) The trademark owner or licensee may claim from a person who has infringed its

9trademark right or exclusive license willfully or by negligence damages in an amountequal to the royalties receivable for the use of its registered trademark (Article 38 Item3). This represents what is called a royalty provision. The provision before revision
specified the amount as "an amount equal to the royalties usually receivable for the useof its registered trademark". However, deleting the word "usually" from the sentence,the provision after revision specified the amount as "an amount equal to the royalties
receivable for the use of its registered trademark". The intent of this revision is basedon the idea that "an amount equal to the royalties usually receivable for the use of its
registered trademark" is not enough compared to a reasonable license fees.
The legal fiction between royalties and damages represents a "presumed" provision. If
infringement is proved, it is presumed that damage has occurred (Toyosaki, p. 235). An
amount equal to the royalties under the provision is a kind of legal damages, andtherefore, even if the right holder fails to claim or prove the amount of its royalties, thecourt must independently compute an amount equal to the royalties (Osaka District
Court, Decision on September 14, 1979, Mutaishu Vol. 13, No. 1, p. 82).
For details about claims for damages, see Section 4 (III), Chapter 7.
5. Litigation to Confirm Nonexistence of Right to Seek Injunction
This type of litigation includes litigation filed by the alleged infringer to confirm thenonexistence of a right to seek injunction or to confirm the existence of a right to use
based on prior use.
In spite of not infringing any trademark right, the right holder can receive a warning oftrademark infringement. It can be notified or reported to customers that the right holder
has infringed the trademark right. As a result, the right holder may suffer damage. In
such cases, the right holder is able to file litigation to confirm that the claimant has noright to seek injunction or that the right holder has the right to use the mark because ofprior use.
In addition, with respect to undue warnings to customers (Unfair Competition
Prevention Law, Article 2 Item 1), the right holder can file litigation to recoverconfidence through public announcement of an apology under the Unfair Competition
Prevention Law (Article 7 of the same law). Further, the right holder can file litigation
to claim damages (Article 4 of the same law) in combination. (For litigation to recoverconfidence, see Section 4 (III), Chapter 7.)
II. Preservation Proceedings
1. Purpose
Preservation proceedings are provisionally conducted as preservative disposition until
granting of a judgment on the merits, and they include provisional attachment
proceedings and provisional disposition proceedings.
2. Provisional Attachment

10

Provisional attachment is made to preserve property of the infringer until a judgment on
the merits is granted in litigation to claim monetary damages. This proceeding is
conducted when the infringer is likely to hide its assets from the claimant (Law for Civil
Preservation, Article 20).
3. Provisional Disposition
Provisional disposition is conducted in the following cases.
(1) The right holder is likely to suffer unrecoverable damage if trademark infringement
continues until granting of a judgment on the merits, such as injunction against
production or sale of trademark products. In order to avoid substantial damages orimminent danger, it is necessary to promptly realize the trademark right on a provisional
basis by transferring the products to the executor and to settle a provisional status of theright holder (Law for Civil Preservation Article 23 Item 2).
(2) The currently registered right holder is likely to transfer its right to a third party by
the time a judgment on the merits is granted in proceedings for seeking transfer of theregistered trademark. Therefore, it is necessary to preserve the current status in a
"Provisional Disposition regarding the subject matter in dispute" (Law for Civil
Preservation Article 23 Item 1).
4. Features of Preservation Disposition
Preservation disposition is generally characterized by urgency, which requires apreservation disposition to be executed within two weeks after service of the order (Law
for Civil Preservation Article 43). In a case involving industrial property, however,proceedings are conducted carefully depending on the complexity and effects of thecase (Code of Civil Procedure Article 87). In issuance of an order of disposition tosettle the provisional status, in particular, oral proceedings or hearings of debtors are
required in principle (Law for Civil Preservation Article 23 Item 4). As a result, it
usually takes a considerable period of time until a result is produced. This is called"putting provisional proceedings into the principal matter."
In preservation dispositions, practically, an order of preservation is generally issued
without holding oral proceedings. No notice is given to the opposite party until theorder is issued. As a result, a preservative order is very effective. This is called "secrethandling" of the preservative disposition. However, this practice can cause damage tothe opposite party. In particular, in a preservative disposition for setting provisional
status, results of the order can produce the same results as in a decision on merits,depending on the contents of the motion. For this reason, in such preservative
disposition, hearings have been held to prevent excessive effects on the case and to
avoid mistakes in judgment. However, the Law for Civil Preservation requires oralproceedings or hearings of the opposite party before the issuance of an order inprovisional disposition for deciding provisional status (Law for Civil Preservation
Article 23 Item 4).
Generally, in provisional dispositions for deciding provisional status, it is appropriate tohold hearings for the opposite party. However, if infringement has been done
maliciously and the contents of the case are legally clear like a case of trademark

11forgery, enforcement of a preservative order without holding hearings can be totallyineffective. Therefore, if rights to be preserved clearly exist and it is obviously
necessary to preserve such rights, or if the purpose of the preservative disposition
cannot be attained through the holding of hearings, as in an emergency, the court may
issue a preservative order in proceedings for deciding provisional status.
5. Security
Preservative proceedings are incidental to, but conducted independently of, litigation on
the merits. (Case numbers are given separately, and after issuance of a preservative
order, the opposite party may file a motion to seek an order for instituting a lawsuit. If
not observed, the order will be cancelled. This fact indicates that preservative
disposition is incidental to litigation on merits.)
In the preservative proceedings, the claimant is required to put down a security or
deposit before issuance of the order as a security for damages which may be due to the
opposite party depending on the results of the proceedings. The preservative
proceedings are a provisional procedure effective until the final decision on the merits.
No oral proceedings are held, and the facts are established by prima facie evidence, andnot by proof; therefore, an order issued in preservative proceedings can be overruled by
the decision on the merits (including the preserved rights) in the future.
III. Procedure for Evidence Preservation
1. Purpose
The procedure for evidence preservation is a procedure used in civil lawsuits. This
procedure allows preliminary examination of evidence and earlier preservation of theresults from such examination. If one waits for the scheduled opening of examinationin civil procedure, it can be too late to conduct an appropriate examination of evidencesmoothly. In such a case, the procedure for evidence preservation under the law isavailable (Code of Civil Procedure Articles 234 to 242). The preservation of evidence
will quickly become necessary when, for example, a witness may die due to illness, awitness plans to make foreign travel on business for a long time, or a change is likely to
be made to a place to be inspected. Therefore, this procedure can be resorted to both
before and after institution of the lawsuit. In trademark litigation, this procedure isutilized to ascertain the number of products manufactured or sold or prices at a specifictime. However, the necessity of the procedure must be fully established, and the right toutilize the procedure must not be abused. According to statistics, half of the motions forthe procedure have been admitted, and half of such admitted motions had examinationof evidence completed. Such high rate of admission and completion is due to thenonbinding effect of orders for preservation of evidence.
2. Procedure
Usually, the procedure for evidence preservation begins with an application. After thelawsuit has started, the court may preserve evidence at its own discretion (Code of Civil
Procedure Article 237). A motion for evidence preservation must be filed with the court

12where such evidence will be used. After starting the lawsuit, and during the period fromthe date designated for oral proceedings to the completion of the oral proceedings, themotion must be filed with the court where the lawsuit has been brought (Code of Civil
Procedure Article 235 Item 1). As a general rule, preservation of evidence will be
conducted by the court where such evidence will be used. In an emergency or before
starting the lawsuit, a district court or summary court whose jurisdiction covers theaddress of the witness to be examined or location of the objects to be inspected willconduct the preservation of evidence procedure. In principle, examination of evidence
will be notified in advance (Code of Civil Procedure Article 119) and conducted withparticipation of the parties. The procedure for evidence preservation is incidental to, but
conducted independently of, the litigation on merits. (Case numbers are given separately,
and the results of the procedure are addressed in the litigation on merits. The procedure
for evidence preservation in German law is conducted as an independent procedure for
evidence examination as provided for in the German Jurisdiction Simplification Law,
1990 ("Kaisetsu Minji Soshoho", Teiichiro Nakano, p. 59). (For information on theprocedure for evidence preservation in administrative trials, see Section 3, Chapter 10.)13