15 Judicial Protection of Intellectual Property Rights
Rendered in Foreign Forum: A Japanese Perspective (*)
Invited Researcher: Natthapol Chullakesa (**)
The application of the rules of conflict of laws on the stage of recognition and enforcement of foreign
judgments to international civil litigation has dramatically increased than ever before. Some recommendations
have been made to the need for legislation in any particular area such as a uniform law of judgments dealing
with foreign intellectual property rights as one of the most frequently issues for those right owners is whether
their rights obtained by the court in one forum can be recognized or enforced in another forum where thejudgment debtor has assets. In Japan, foreign judgments can be recognized and enforced under domestic
statutory provisions which do not create special rules for judgments related to foreign intellectual property rights.
The recognition and enforcement of foreign judgments in Japan has also been limited to a judgment rendered by
the court in the state where a mutual guarantee exists with Japan. This research will examine the policies
underlying the principles of recognition and enforcement at common law which is widely applied in many
countries then examine the mechanisms for foreign judgments to be recognized and enforced in Japan. The
research has demonstrated that the restriction on recognition and enforcement of non-reciprocity judgments inJapan need to be considerably reviewed in order to achieve the objective of recognition and enforcement and to
make an effective international protection of intellectual property rights.

Ⅰ Introduction

Japanese law, to provide a basis for further debatein this subject area with the hope in the end ofharmonization
andeffectivenessoftherecognition and enforcement of foreign judgments,
and to be a foundation for forming new policies ofJapanese recognition and enforcement of foreign
judgments related to intellectual property rights
which could be considered as one of the mosteffective system without the violation of Japanesepublic interests and legal order.

As a consequence of rapid increasing ofinternational commercial transaction, without theeffective recognition and enforcement of foreign
judgments, the cause of action may have to relitigated and the tendency of inconsistentjudgment may occurred at the forum whererecognition and enforcement cannot be sought.
Fromthebeginning,
theproblemofnon-recognition and non-enforcement arises outof the principle of territorial sovereignty. In mostcountries where their policies favor the doctrineof recognition and enforcement, nonetheless, thenumber of restriction is required as the safeguard
for securing their public interests.
While there has been an attempt to propose
revision of the statutory provisions related to thesystem of recognition and enforcement of foreign
judgments in Japan in order for the courts to deal
specifically with the matter of intellectual
property rights, the requirement of reciprocity
which deemed as the barrier to recognition andenforcement of foreign judgments at common law
still exist in those legislative proposals.
The research has its objective to serve asrecommendation for the revision of the relevant

Ⅱ Distinction & Definition:
Recognition and Enforcement
Recognition means “one court treats thedecision of another court as binding on it” 1
Enforcement means the process in which “onecourt will uses its coercive powers to compel adefendant to satisfy a judgment rendered abroad”2
While “there can be no enforcement without
recognition”3, however, there can be recognition
without enforcement. For example, in cases
where a foreign judgment concerning divorce andnullity decrees4 or a foreign judgment given in
the defendant’s favor 5 or a foreign judgment
given in the plaintiff’s favor but the defendant had
satisfied that judgment.6(*) This is a summary of the report published under the Industrial Property Research Promotion Project FY2011
entrusted by the Japan Patent Office.
(**) Presiding Judge, The Central Intellectual Property and International Trade Court, Bangkok, Thailand

IIP Bulletin 2012 Vol.21●1 ●1Ⅲ Principles
Underlying
theRecognition and Enforcement ofForeign Judgments
1

It is widely acceptable at Common law that acourt in one nation will not recognize and enforce
a judgment rendered in another nation if it would
violate their national public policy. However, it isdifficult for the court to determine and for theforeign judgment creditor to predict whether such
recognition and enforcement of a foreign
judgment would violate a public policy of therequested country. The question is how the scopeof public policy should be limited in accordancewith the objective of recognition and enforcementof foreign judgments. The recognition andenforcement of foreign judgments should beoverridden by the principle of public policy only in
exceptional circumstances and foreign judgments
should not be denied recognition or enforcement
merely by the reason that the law applied to thecase by the rendering court is different from thelaw of the countries where the requested court issituated. In regard to some industrial intellectual
property rights, a foreign judgment concerning
the issue of the patentability may be refused
enforcement as contrary to basic values of thecountry where enforcement is sought.11

International comity

In spite of the fact that the specificrequirements for the recognition and enforcementof foreign judgments may vary depends upon thenational laws of each independent countries, thetheory of international comity has played an
important role at common law as one of thefundamental approach to the recognition andenforcement of foreign judgments.
Comity, in the legal sense, is neither a matter ofabsolute obligation, on the one hand, nor ofmere courtesy and good will, upon the other. But
it is the recognition which one nation allowswithin its territory to the legislative, executive or
judicial acts of another nation, having due
regard both to international duty andconvenience, and to the rights of its own citizens
or of other persons who are under protection ofits laws.7
2

The doctrine of obligation or vested
rights2

The doctrine of obligation is the theory
explaining the reason underlying the recognitionand enforcement of foreign judgments that “aforeign judgment creates a vested right or legal
obligation that is entitled to enforcement
wherever the judgment debtor or his property canbe found.”83

Public Policy

Reciprocity

This theory is applied as the use ofretaliation to the country where recognition andenforcement will not be operated to judgments
rendered by the court of the requested forum
under similar circumstances. The role ofreciprocity as a condition for enforcement offoreign judgments in the U.S. Supreme Court in1895 has been criticized and most U.S. courts did
not follow.12

Judicial Finality

Ⅴ Method of Recognition
Enforcement

The fundamental purpose of the recognitionand enforcement of foreign judgments is to avoid
re-litigation of the merits of disputes that havebeen fairly resolved abroad.9 Judicial finality also
included an interest in conserving judicial
resources by precluding re-litigation of disputes
as well as an interest in treating private litigants
fairly.10andAt Common law
1

International jurisdiction or PersonalJurisdiction

If foreign courts assume jurisdiction over thecase in accordance with its domestic rules which
are deemed incompetent under the English
conflict of laws, the judgment will not berecognized or enforced at common law. In general,
the foreign court had jurisdiction in cases where
there is a submission of the judgment debtor to
the jurisdiction of the foreign court or a sufficient

Ⅳ Principles
Overriding
theRecognition and Enforcement ofForeign Judgments●2 ●IIP Bulletin 2012 Vol.21

territorialconnection
betweenjudgment-debtor and the country of origin.13

thestatutory but mostly it copy the provisions at
common law and not intended to establish a
specific regimes to a problems of intellectual
property related cases.

At common law, only final and conclusive
judgment of a foreign court can be recognized orenforced. The foreign judgment is not final andconclusive if, according to the foreign law, thejudgment can be challenged by the losing party inthe same court with the possibility of its being set
aside.14

Ⅵ Thailand:
Recognition
andEnforcement by Common law or
Statutes

2

3

Final and conclusive

Thailand has neither domestic statutory
provision nor bilateral or multilateral treaty oragreement with other countries regarding to therecognition and enforcement of foreign judgments.
Only the English traditional rules of recognitionand enforcement of foreign judgments at common
law has been applied to disputes concerned.

A judgment for a fixed sum of money

One of the conditions for the recognition andenforcement of foreign judgments at common law
is that foreign judgments which shall berecognized or enforced must be judgment for a
fixed sum of money not an order for specificperformance or for an injunction. In addition,
foreign judgment for a tax or a fine or otherpenalty will not be enforced.15

Ⅶ Recognition and Enforcement of
Foreign Judgments in JapanThe recognition and enforcement of foreign
judgments in Japan is purely governed bydomestic law since there is none of any bilateralor multilateral treaty or international agreement
between Japan and foreign countries related torecognition and enforcement of foreign judgments.
The statutory principles of recognition andenforcement of foreign judgments in Japan has
only been laid down in the Code of Civil
Procedure and the Civil Execution Act. However,Japanese courts have played an important role inproviding meaning or scope of application of
undefined statutory provision in Japanese law.
The requirements for recognition of foreign
judgments under Article 118 of the Code of Civil
Procedure are as follows:
1. A foreign judgment must be final andbinding judgment;
2. The foreign court would have jurisdiction
pursuant to the law or treaties (Japaneselaw);
3. The unsuccessful defendant received
service of a summons or order as required
for the commencement of the proceedings(except by publication in a bulletin board at
the court or similar methods) or appearedin the action without receiving suchservice (Principle of natural justice);
4. The contents of the judgment of foreign
court proceedings are not contrary topublic order or good morals in Japan(Principle of public policy);
5. Reciprocity is assured. (Principle ofreciprocity)

Defenses to recognition and enforcement
1

Fraud

Foreign judgments which were obtained byfraud will not be recognized and enforced atcommon law.
2

Natural or substantial justice

It is fundamental principles of natural justicethat the defendant must have been given an
opportunity of defend in the foreign proceedings
otherwise a foreign judgment may be denied
recognition and enforcement.
3

Res judicata

At common law a foreign judgment will be
not recognized or enforced if it is irreconcilable
with a previous English judgment because theEnglish judgment is res judicata.16
By statute
There are statutes provided for a specificmethod for the courts of some countries or thecourts of a Contracting State to examine a foreign
judgment or a judgment given in a Contracting
State to be recognized or enforced. Although
there is difference in the provisions of each

IIP Bulletin 2012 Vol.21●3 ●judgment was rendered must not be contrary to
public order or good morals in Japan. However,there are few cases in which public policy defense
has been successfully operated in Japan. The
ground for non-enforcement of foreign judgments
under public policy exception has been found in
the situation where conflicting judgment or res
judicata between a prior Japanese judgment andforeign judgment exist and in the case where apunitive damages ordered by foreign judgment.
The latter Japanese Supreme Court stated that“the punitive damage system under the California
Civil Code has a clear purpose of punishment andgeneral prevention. Thus it is incompatible withthe fundamental principles of the Japanese systemof compensatory damages because the Japanesesystem just purports to restore the actual loss
caused to a victim. In Japan, punishment of theoffender and general prevention are left tocriminal or administrative sanctions.”17

The requirements for enforcement of foreign
judgments under Article 24 of the Civil Execution
Act are as follows;
1. The conditions set forth in Article 118 of
the Code of Civil Procedure must be met.
2. An action for a judgment granting
execution of a judgment of a foreign court
without reviewing the substance of thejudgment of a foreign court is needed.
3. In the judgment granting execution, itshall be declared that the execution isgranted under the judgment of a foreign
court.
International Jurisdiction over IP disputes
In Japan, there is no specific provision forJapanese courts to justify the jurisdiction of aforeign court over intellectual property disputes.
The provision of general jurisdiction of Japanesecourts in the Code of Civil Procedure as a domestic
law has been applied in the context of foreign court
jurisdiction. However, if the foreign judgments
which is sought to be recognized or enforced inJapan concerning the issue of validity or
registration of intellectual property rights, theforeign courts rendered the judgment must be thecourt of the country where intellectual property
rights are registered otherwise its judgments cannot
be recognized or enforced in Japan as a lack ofjurisdiction in viewpoint of Japanese law.

Reciprocity
One of the most criticized principle of therecognition and enforcement of foreign judgments
has been found in Japanese statutory law of civil
procedure as a requirement for foreign judgments
to be recognized and enforced in Japan. The word
“reciprocity or mutual guarantee” has never been
defined in Japanese statutory. The approach to themeaning and scope of application has only been
appeared in some Japanese court precedent. It
seems that Japanese courts had considered theconditional rules of recognition and enforcementof foreign judgments under foreign law whether
comparable Japanese court judgments could berecognized or enforced in those countries undersimilar circumstances provided by their law
otherwise by their judicial practices or not. Only
Chinese court judgment case was found lack ofreciprocity because Japanese court judgment wasrefused enforcement in China. Japanese courts
have rarely rejected to recognize foreign
judgments on the ground of lack of reciprocity
under Japanese Code of Civil Procedure.
Nonetheless the requirement of reciprocity inJapanese rules of recognition and enforcement offoreign judgments has been subject to various
criticisms. 18 This requirement is inconsistent
with the objective of recognition and enforcement
especially in the context of intellectual property
rights protection at cross-border. Although there
are reasons support the reciprocity that thisrequirement will encourages the mutual
recognition and enforcement of Japanese court

Natural Justice
As the common law principle of recognitionand enforcement that the defendant must be given
the proper time and means to defend their suit in theforeign court otherwise a foreign judgment isunenforceable in other forum. Therefore, Article
118(ii) of the Code of Civil Procedure required forthe recognition of the foreign judgments that “theunsuccessful defendant received service of asummons or order as required for thecommencement of proceedings (except by
publication in a bulletin board at the court or bysimilar methods), or appeared in the action without
receiving such service”.
Public Policy
To satisfy this requirement, the contents offoreign judgment and proceeding by which foreign●4 ●IIP Bulletin 2012 Vol.21

life are not confined to any single jurisdiction.”21

judgment in foreign forum and it is unfair torecognize or enforce foreign judgments in spite ofJapanese
court
judgment
wasrefused
enforcement in those foreign countries undersimilar circumstances, the recognition andenforcement of foreign judgments should beoverridden by the principle of reciprocity only in
exceptional circumstances such as in situation
where a foreign judgment debtor is Japanese.

12

Ⅷ Conclusion

3The question of whether a foreign judgment
should have any effect beyond the limits of thesovereignty of the state where the rendering
court is situated was grounded on the principle ofinternational comity. Other reason for therecognition and enforcement of foreign judgments
is based on the doctrine of obligation or vested
right in which a foreign judgment is entitled toenforcement wherever the judgment debtor or hisproperty can be found. 19 In addition, judicial
finality reflects the fundamental purpose of therecognition and enforcement of foreign judgments
in avoiding re-litigation of the merits of disputesthat have been fairly resolved abroad.20
Japan, even though the rules of recognitionand enforcement of foreign judgments have been
provided by some domestic statutory provisions
without special rules for judgments related toforeign intellectual property rights and has norelevant bilateral or multilateral treaty, should
deemed as one of the countries where the latest
development in this subject matter has beenfound in a legislative proposal regarding
intellectual property rights in foreign judgments.
Nevertheless, the foreign judgments are entitled
to recognition and enforcement in Japan only upon
the law or court precedent of the country where
the judgment was obtained has provided areciprocity or mutual guarantee with Japanesecourts judgment. The requirement of reciprocity
has been subject to many criticisms as one of thefundamental purpose of recognition andenforcement is to avoid an endless of litigation.
Concerning of sovereignty and national interests
is in some occasion necessary, however, therevision of private international law on therecognition and enforcement of foreign judgments
should refer to the initial principle of internationalcomity and the vested right which “rest on thenotion that standards governing the recognitionand enforcement of foreign judgments shouldreflect the interest in fostering stability and unity
in an international order in which many aspects ofIIP Bulletin 2012 Vol.21

456
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192021●5 ●WD Park & SJH Cromie, International Commercial
Litigation (Butterworths 1990) 460.
Born & Westin, International Civil Litigation in UnitedStates Courts, (2nd edn, Kluwer Law and Taxation
Publishers 1992) citing Restatement (Second) Conflictof Laws, Chap. 5, Topic 2, Introductory Note &§§99-102 1969); Restatement (Third) Foreign
Relations Law of The United States §481, comments a& b (1987).
CMV Clarkson & Jonathan Hill, Jeffey on the Conflict ofLaws (Butterworths, 1997) 143.
J.G. Collier, Conflict of Laws (3rd edn, Cambridge) 109.
Clarkson & Hill (n 3) 143
Collier (n 5) 109.
Hilton v. Guyot, 159 U.S. 113 (1895) 163-164.
Born & Westin (n 2) 745.
Born & Westin (n 2) 754.
Born & Westin (n 2) 746.
Pedro A. DE MIGUEL ASENSIO, ‘Recognition andEnforcement of Judgments in Intellectual Property
Litigation: The CLIP Principles’in Basedow, Kono andMetzger (eds), Intellectual Property in the Global Arena(Mohr Siebeck 2010) 282 citing D. Moura Vicente, “Lapropriete intellectuelle en droit international prive”,
R.des C., 335(2008) 422.
Born & Westin (n 2) 763.
Clarkson & Hill (n 1) 147.
ibid 158 citing Nouvion v Freeman (1889) 15 App Cas 1.
Clarkson & Hill (n 1) 159.
Collier (n 5) 123.
Supreme Court, Judgment, July 11, 1997, Minshu
Vol.51, No.6, p.2573
See Prof. Toshiyuki Kono, Prof. Nozomi Tada, Dr.
Miho Shin, ‘Recognition and Enforcement of Foreign
Judgments Relating to IP Rights and Unfair
Competition: The Transparency Proposal’ in Jürgen
Basedow, Toshiyuki Kono & Axel Metzger (eds),
Intellectual Property in the Global Arena: Jurisdiction,Applicable Law, and the Recognition of Judgments in
Europe, Japan and the US (Mohr Siebeck 2010)
Born & Westin (n 2) 745.
Born & Westin (n 2) 754.
Born & Westin (n 2) 745.