1 Study on International Harmonization for Objects ofProtection or the like of Trademarks
International harmonization of trademark systems has become more important due to the increased
globalization of business. However, a few of differences still remain in the substantive aspect of the systems
between major countries. In this study, investigations were carried out on systems and practices in 28 overseas
countries as well as user needs in Japan with respect to the following three subjects that have been adopted
overseas, but not in Japan, and necessity of introducing such the systems to Japan was examined.
The first subject is protection of new types of trademarks such as sound and scent.The legal problems andpractical aspect such as examination procedures in making those protectable were considered.
The second subject is the consent system. Having reviewed the reasons for shelving the introduction of thesystem upon the 1996 amendment of the Trademark Law, desirable system if it is introduced in Japan was
discussed.
The third subject is the disclaimer system. Japan also used to adopt a disclaimer system under the
Trademark Law of 1921, which was abolished later. Thus, considering such circumstances, necessity of asuitable disclaimer system in Japan was examined.

Ⅰ Legal Examination Concerning
New Objects of Protection
1 Situations in Foreign Countries
We have carried out investigations concerning
protection of new types of trademarks(hereinafter referred to as new trademarks) such as
trademarks consisting of sound, scent (smell,olfactory) or color itself in twenty-eight foreigncountries. Among Western countries and Oceaniancountries, many countries protect marks consistingof color itself or sound. On the other hand,concerning scent marks, some countries await adecision of the European Court of Justice or do not
admit registration of such marks. Among Asian
countries, most countries do not protect the new
trademarks.
Situations in the United States, the European
Union (EU), France, Germany and the United
Kingdom will be hereinafter described in detail.
(1) United States(i) A color mark, whether it is a combination ofcolors or a single color, is registrable as a trademark.
For registration, the party concerned needs to claimthat the color mark has acquired an essential
distinctiveness or a secondary meaning. In addition,
the color mark is required to have non-functionality.
(ii) A sound mark is registrable, although it isrequired to acquire a secondary meaning.

(iii) A scent mark is registrable. For a scent mark,attribute, functionality and descriptiveness areissues, and it is considered that the scent markshould involve imaginativeness for the goods onwhich it is used.
(2) EU(i) The Office for Harmonization in the InternalMarket (OHIM) admits that a sign consisting ofcolor itself (a single color or a combination ofcolors) may be protected as a Community
trademark. However, OHIM tends to generally
consider a single color to be devoid of distinctive
character and deny its protection(*1).
Currently, the Dutch Supreme Court (HogeRaad) refers to the European Court of Justice forpreliminary ruling on distinctive character or the
like of a single color (*2). Its consequence attracts
attention.
(ii) A sound trademark is admitted in Examination
Guidelines of OHIM (Guidelines Part B 8.2).
Musical notation is shown as an example of a methodof graphically representing a sound trademark.
(iii) There are previous registrations of olfactory
trademarks(*3). However, currently, OHIM always
refuse registration of olfactory trademarks becauseof lack of graphical representation.
Currently, the German Federal Patent Court(Bundespatentgericht) referes to the European
Court of Justice for a preliminary ruling ongraphical representation for olfactory signs(*4), the(*1) In re Orange Personal Communications Services Ltd., OHIM Third BoA, Feb.12, 1998, Case R7/1997-3, 30 IIC 197[Orange]; In re WM. Wrigley Jr. Co., OHIM Third BoA, Dec.18, 1998, Case R122/1998-3, 31 IIC 329 [Light Green]; In re Ty
Nant Spring Water Ltd., OHIM Third BoA, July 20, 1999, Case R5/1999-3, 31 IIC 1010 [Colour Cobalt Blue].
(*2) Libertel Group v. Benelux Trademark Office C-104/01 - Estelle Derclaye, ECJ to Decide ‘War of Colours’ Between Belgian,Dutch Supreme Courts, WIPR 15, 5, p.11 (May, 2001).
(*3) In re Vennootshcap onder Firma Senta Aromatic Marketing, OHIM Second BoA, Feb.11, 1999, Case R156/1998-2.
(＊1)(*4) Ralf Sieckmann v. Deutsches Patent- und Markenamt, C-273/00, Schlussantraege des Generalanwalts Colomer, 6.11.2001(Judgment of the Court on 12 December 2002).

IIP Bulletin 2002

● 2 ●

result of which will attract attention.
(3) France(i) Protection of color signs is admitted forarrangements, combinations or shades of color(Article L711-1 (c) of the 1992 Law).
(ii) Audible signs include simple sounds, a musicalphrases, series of rhythms (Article L711-1 (b) of
the 1992 Law), and distinctive nature is requiredfor protection.
(iii) An olfactory sign cannot be graphically
represented as required by the French Trademark
Law and has no capability to identify an object.
Therefore, it is considered that registration of an
olfactory mark would be impossible.
(4) Germany(i) Registrability of a sign consisting of color itself
has been affirmed(*5).
(ii) As to sound trademarks, approximately 200
applications have been filed since the enforcementof the 1995 Trademark Law, 90% of which seems tohave been registered.
(iii) It is not clear whether an olfactory sign canbe registered as a trademark particularly due to a
problem of the capability of graphical representation.
(5) United Kingdom(i) It is acknowledged that a sign consisting ofcolor itself can be a trademark(*6).
(ii) It is acknowledged that a sign consisting ofsound can be a trademark(*7).
(iii) As to smell trademarks, the U.K. Patent Officeshows a negative attitude to its registration becauseof the problem of graphical representation(*8).

and 18% of the companies consider new
trademarks necessary. From these results, it isdifficult to say that the need for protection of new
trademarks is large.
(3) Legislative Examination
We have considered what kind of revision
should be made to the Trademark Law, if color,
scent or the like were to be protected as atrademark under the Trademark Law.
(i) As to signs that are visually recognized suchas color, it seems to be sufficient to add them in
Article 2, section 1 of the Trademark Law. As tosigns that are not visually recognized, it is also
possible to add them individually in Article 2,section 1 of the Trademark Law. However, if there
is no sign of a particular form which should not beprotected, it would be appropriate to givecomprehensive definitions of trademarks as in theCommunity Trademark Regulations(*9) or the
Trademark Directive(*10).
In that case, as the requirements for a
trademark, first, it is necessary that there isdistinctiveness of an applicant’s own goods (services)compared to others’ goods (services). In addition,
under a registration system, it is necessary that a
trademark to be registered itself can be specified.
(ii) Article 2, section 3 of the Trademark Law
specifically provides for “uses” of a trademark
individually. If scent, sound or the like is to beprotected, the definition of “use” must be revised.
The direction of revision of the current law iseither to add individual and specific acts or to
introduce a comprehensive concept of use.

2 Examination of the Trademark Law inJapan

Ⅱ Issues in a Practical Aspect for
New Objects of Protection(1) Present Situation
Article 2, section 1 of the Japanese Trademark
Law limits trademarks to those visually
recognizable. Therefore, this means that soundtrademarks, scent trademarks, taste trademarks
and touch trademarks, which are recognized bysenses other than sight, are not protected under
the trademark system.
Moreover, signs that are visually recognized
but consists of color itself are not protected either.
(2) Needs for Protecting New Trademarks inJapan
As a result of questionnaires survey fordomestic companies, it was found that 2% of thecompanies use new trademarks in foreign countries

1

Method of Describing New Trademarks in
Applications(1) Situations in Foreign Countries
We have examined situations how new
trademarks are specified in applications for
trademark registrations in foreign countries.
Examples of color, sound and scent trademarks inapplications for trademark registrations are shownas follows:(i) Color trademark
As to specification of color itself, there aremany applications representing colors in words.
For example, there are c a registration indicatingthat an article or a package of an article has a(*5) BPatG 15.7.1998, GRUR 1999, 61, 30 IIC 812 [Aral/Blau].
(*6) Trade Marks Registry Work Manual, Chapter 6, 2.3.5 Colour marks.
(*7) Trade Marks Registry Work Manual, Chapter 6, 2.3.6 Sound marks.
(*5)(*8) Trade Marks Registry Work Manual, Chapter 6, 2.3.8 Smell marks.
(*9) Council Regulation (EC) No.40/94 of 20 December 1993 on the Community trade mark, O.J. L11, 14.1.1994 p.1.
(*10)Ｆirst Council Directive of 21 December 1988 to approximate the laws of the Member States to trade marks (89/104/EEC),
O.J. L40, 11.2.1989, p.1● 3 ●IIP Bulletin 2002

specific color (e.g., US:RN2143835), d a registration
indicating that a specific part of an article
has a specific color (e.g., US:RN2248445), e aregistration for a combination of a character, afigure or the like with a color as in Japan (e.g.,
US:RN2097284).
(ii) Sound trademark
There are, for example, c a sound trademark
represented by a scale code (e.g., US:RN2315261),
d a sound trademark represented by a score (e.g.,
DE:AP2276238), e a sound trademark represented
by replacing a classification of sound with alanguage (e.g., US:RN1746090), and f a soundtrademark represented by a phrase expressing asound (e.g., US:AP78013907). Further, other media
such as a cassette tape are submitted in somecases.
(iii) Scent trademark
Examples of scent trademark registrations(applications) are few. This investigation revealeda registration for scent trademark indicating alanguage expressing a specific scent(e.g.,
US:RN1639128).
(2) Method of Description in an Application
As specific methods of describing color, soundand scent trademarks in applications, means as
described below are also conceivable. Future
examination is required.
(i) Color trademark
It would be appropriate to electronically file animage data in such a state that a mark is colored andto specify an identical trademark according to thatdata in the Patent Office. In addition, it should also
be considered to request an applicant to describe
symbols specifying a color (color name in words,
Munsell value, Pantone value or the like) as
reference information.
(ii) Sound trademark
It would be appropriate to record a sound in a“sound file” of a computer software, electronically
file it and specify an identical trademark according
to the sound file data in the Patent Office.
(iii) Scent trademark
Scent trademarks are most difficult to specify
among the new trademarks. As in the examples offoreign countries, it would have to be replied on
description in words. However, at the present stage,
there is no means for objectively specifying scenttrademarks to the same degree as the other new
trademarks.
(3) Relationship with a Scope of Right
Considering the above-mentioned situations
in foreign countries and the state of introduction ofelectronic filing system in Japan, from technicalpoint of view, the new trademarks other than scenttrademark can be almost unambiguously specified.
Then, it would be possible to unambiguously
specify a scope of identity of trademarks, that is,an exclusive right to use the registered trademark(first paragraph of Article 25 of the Trademark

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● 4 ●Law), according to a scope specified by anelectronic filing at the time of the application. Thisis consistent with the current practice under the
Trademark Law, and no particular doubts would
arise in this regard.
2 How to Determine Presence or Absence ofDistinctivenessDistinctiveness of color, sound and scenttrademarks is considered as described below.
(1) Color Trademark
According to the Japanese Trademark Law, atrademark consisting of color itself is not admitted.
This is because, essentially, any person is allowed
to freely select and use a color and the number ofidentifiable single colors is limited (depletion
theory of colors). In addition, usually, a color itself
is not used as an identifying means and does nothave a function as an indication of an origin.
Considering these points, it would be betterto judge whether or not color is to be protected, by
examining arguments and proofs prepared by theparties concerned at the time when a problem
actually arises, rather than uniformly judging it at
the examination stage of applications.
(2) Sound and Scent Trademarks
Unlike traditional marks that are visually
represented (marks such as character and figure),
sound and scent trademarks themselves cannot be
visually represented.
(i) As a method of visually representing andspecifying a sound, there are notations, sonogramsand the like. In examination of an application, it ispossible to objectively judge similarity of sounds bycomparison of performances or scores.
(ii) On the other hand, as a method of visually
representing and specifying a scent, there are
diagrams or the like produced by gas
chromatography or high performance liquid
chromatography. However, any of these has aproblem in terms of accuracy.
(iii) Considering the above-mentioned points, asound may be an object of the Trademark Law fromthe viewpoint of distinctiveness, but a scent would
not be fit for examination and therefore should not
be an object of the Trademark Law.
(3) Distinctiveness(i) Judgement on distinctiveness of ordinary
sound and scent
An ordinary sound such as a sound consistingof one or two musical notes only is not registeredbecause it does not have distinctiveness in the firstplace (Article 1, section 1 (5) of the Trademark
Law).
Since a sound may lack a capability ofdesignating the origin in relationship to goods orservices, it is necessary to judge distinctivenessfrom this viewpoint as well. In addition, a soundthat is inherent in goods or services as acharacteristic and a feature (attribute) thereof,
should not be allowed for trademark registration inassociation with the goods or services.
(ii) Should a sound mark be registered only when
it has acquired distinctiveness through use?
Since there is no particular reason only forsound trademark to justify that itis registrable only
when it has acquired distinctiveness through use, itwould be treated in the same manner as the
traditional marks.
(iii) A composite trademark of an object without
distinctiveness and sound or the like with
distinctivenessA composite trademark of an object without
distinctiveness and sound with distinctiveness istheoretically conceivable. If such a composite
trademark is applied for registration, it is sufficient
to treat the part of the sound having distinctivenessas a main part to judge distinctiveness of thecomposite trademark.
3 Logic and Treatment of Judgment on
Similarity(1) Present Common View
Judgment on similarity between two
trademarks is made by comparing them withregard to their appearances, names, and concepts
as factors of judgment.
It would be sufficient to make judgment onsimilarity for color, sound and scent trademarks
using criteria and a method of observation adopted
by the present court decisions and generally
adopted views, by taking into accountcharacteristics of the respective trademarks.
(2) Judgment on Similarity of Color, Soundand Scent trademarks(i) Color trademarks
For color trademarks, examination of name isomitted among the above-mentioned three factors
for judgment.
In color trademarks, “similarity in appearance”
means that both trademarks may be confused witheach other when their colors are observed throughsight, and “similarity in concept” means bothtrademarks may be confused with each other intheir meanings (implications or impressions) whena certain meaning (including implication or
impression) is to be grasped from the colors.
Then, usually, if both trademarks may be
confused with each other in either appearance orconcept, then both trademarks are found to be
similar.
(ii) Sound trademarksc For sound trademarks, examination of
appearance is omitted among the above-mentioned
three factors for judgment because it is not a visualtrademark.
In addition, it is not appropriate to use theso-called “name” as a factor for judgment onsimilarity, so that “sound” per se instead of “name”
should be regarded as a factor for judgment onsimilarity.
d In sound trademarks, “similarity of sounds”
means that both trademarks may be confused witheach other in their sounds per se, and “similarity ofconcepts ” means that both trademarks may be
confused with each other in their meanings(implications or impressions) when a certain
meaning (including implication or impression) is tobe grasped from the sounds.
Then, usually, if both trademarks may be
confused with each other in either “sound per se”
or “concept”, then both trademarks are found to be
similar.
e Problems of sound trademarks(a) Visual representation and judgment onsimilarity
It should be considered that even if anapplicant describes (in writing) that a “sound”
consists of “roaring of a lion” in an application for asound trademark, “roaring of a lion” is not always
conceived (implied or impressed) by the “sound”.
Since “visual representation” is only a requirement
for registration, similarity shall be judged for a“sound” per se (sound trademark).
(b) Similarity of a sound trademark and a wordtrademarkIf “name” of a word trademark and “sound” ofa sound trademark may be confused with eachother as sound (similarity of sounds), then bothtrademarks are considered to be similar.
In addition, if a “concept” (including
implication and impression) to be grasped from“sound” of a sound trademark and “concept” to be
grasped from a word trademark may be confusedwith each other (similarity of concepts), then bothtrademarks are also considered to be similar.
(iii) Scent trademarksc For scent trademarks, “appearance” among
the above-mentioned three factors for judgment isomittedfor judgment because it is not a visualtrademark.
In addition, it is not appropriate to use aso-called “name” as a factor for judgment onsimilarity because a “scent” per se is a trademark.
d In scent trademarks, “similarity of scents”
means that both trademarks may be confused witheach other in their scents per se, and “similarity ofconcepts ” means that both trademarks may be
confused with each other in their concepts(implications or impressions) when a certain
meaning (including implication or impression) is tobe grasped from the scents.
Then, usually, if both trademarks may be
confused with each other in either “scent per se” or“concept”, then both trademarks are found to be
similar.

● 5 ●IIP Bulletin 2002

Ⅲ Consent System
1

Situations in Foreign Countries(1) Outline of the Consent System
The consent system can be classified into (i)consent relating to conflict with an earlier
trademark application or earlier registeredtrademark, (ii) consent relating to conflict with an
unregistered well-known trademark and (iii)consent relating to conflict with a name of anotherperson, according to an object of the consent.
Among them, concerning (i) consent relating
to conflict with an earlier trademark application or
earlier registered trademark, jurisdictions areclassified into c a jurisdiction where consent is not
admitted at all, d a jurisdiction where examinationof relative grounds for rejection is conducted and it
is admitted to overcome grounds for rejection byconsent, and e jurisdiction where it can beconcluded that, so to speak, a “hidden” consent
system is adopted because only examination ofabsolute grounds for rejection is conducted.
Moreover, consent systems in the jurisdiction
d can be classified into a “ reservation typeconsent system” in which registration is granted
only when there is no likelihood of confusion of
trademarks and a “complete type consent system”
in which relative grounds for rejection can beovercome as long as consent exists.
(2) States of Implementation in Foreign
Countries
States of implementation of the consent
system in foreign countries can be classified asfollows:(i) Countries where consent is not admitted at all
Japan, Argentina, China, Indonesia, Thailand(ii) Countries and region where relative groundsof rejection are examinedc Reservation type consent
Austria, Canada, Spain, Sweden, (Norway),
United States, Mexico, Australia, New Zealand,Hong Kong, India, Malaysia, Singapore
d Complete type consent
United Kingdom(iii) “Hidden” consent
OHIM, Germany, France, Switzerland,
Benelux, Denmark2

Situation in Japan(1) Needs of Users
As a result of domestic questionnaires survey
in this study, it was found that 18% of companies

have utilized consent in foreign countries, and 39%of the companies consider that the consent system
is necessary, which is greater in number than thoseconsidering that the consent system is
unnecessary.
3

Pros and Cons of Introduction of theConsent System and an Desirable
System in Japan(1) Reasons for Shelving Introduction of the
System at the Time of the Trademark Law
Amendment of 1996
Introduction of the consent system was
examined in the Trademark Issue Examination
Subcommittee of the Industrial Property Council,
however, shelved due to the following reasons:(i) Assuming that examination concerning general
confusion of origins (Article 4, section 1 (11) of theTrademark Law) is not conducted, if the Patent
Office strictly examines presence or absence ofspecific confusion of origins (Article 4, section 1(15) of the Trademark Law), burdens of
examination would increase and significant
procedural delay would be caused. On the other
hand, if only simple examination is performed,
registration of a trademark that is likely to cause
specific confusion would be granted.
(ii) If the consent system is introduced, anapplicant commences negotiations for consent
with the right holder of a cited trademark at the
point when the applicant receives a notice ofgrounds for rejection. Then, if the negotiation
becomes lengthy, examination procedure would bedelayed.
(iii) Since the scope of similarity is narrower inJapan than in foreign countries, there is less room
for the consent system to function.
(iv) If a similar trademark is once registered in
the name of the right holder of an earlier
registered trademark, and later assigned to an
applicant for such a similar trademark, it ispossible for the applicant to obtain a trademark
right of the similar trademark. If coexistence oftrademarks is admitted by separating andtransferring similar trademarks, “Keriai”(*11) islikely to occur for a new trademark application by
one right holder. There is a view that the consent
system is necessary in order to prevent this fromoccurring. However, since transfer of a similar
trademark that is likely to cause “Keriai” is notexpected to occur, it is unnecessary to consider
remedies for such a risk.

(*11) Even if one right holder of a similar trademark that is transferred to a different right holder applies for registration of a
trademark similar to its own trademark for development of a trademark which reflects changing of the times, theapplication will be rejected due to similarity of that trademark to the trademark of the other right holder. Such a case iscalled “keriai”.

IIP Bulletin 2002

● 6 ●(2) Examination of the Reasons for Shelving
Introduction of the Consent System at
the Time of Trademark Law Amendmentof 1996(i) Delay in examination of an application due toincrease in burdens for examination of specificconfusion of origins
In the countries where the “reservation typeconsent system” is adopted, examination on“likelihood of confusion” is still conducted even if aconsent exists. Although introduction of theconsent system seems to have shelved on thepremise that this requirement of confusion
corresponds to Article 4, section 1 (15) of theJapanese Trademark Law, this premise seems tohave not been examined sufficiently.
The increase in burdens for examination under
Article 4, section 1 (15) of the Trademark Law if
the consent system is introduced should be
discussed based on examination on how arelationship between the consent system and therequirements for registration of Article 4, section 1(11) to 15 of the law should be understood and how
the requirement for registration of Article 4,section 1 (15) of the law should be understood.
(ii) Problem of delay in examination caused by
waiting for submission of consent
There should be the same problem in othercountries where examination of relative grounds ofrejection is conducted and the consent system
exists. Therefore, this problem can be overcome, if
practices of patent offices in foreign countries areinvestigated and an appropriate way of
implementing the system is examined including aperiod for submitting consent or the like from theviewpoint of preventing delay in examination
procedure.
(iii) Lack of needs for introduction of the consent
systemConcerning the reason that there is less room
for the consent system to function in Japan, if thescope of similarity is narrower than that in foreigncountries, the number of users of the consent
system would not be large and it would be
unnecessary to be concerned about delay in
examination procedure. In addition, it would beappropriate to introduce the consent system forusers who need it from the viewpoint ofuser-friendliness.
(iv) Existence of other adoptable means
It is not appropriate to force users to takecomplicated procedures such as separate transfersof similar trademarks without any positive reason.
Moreover, it is proposed in a report of theCouncil that the consent system should be
introduced in order to prevent “Keriai”
phenomenon due to separate transfers of a similar
trademark. This proposal should be reevaluated sothat construction of trademarks can be changed inaccordance with changing of the times.

According to the above description, any of thegrounds shown as the reasons for shelving
introduction of the consent system at the time ofTrademark Law amendment of 1996 is not decisive.
There would be sufficient room for reconsideration
toward introduction of the consent system, from theviewpoints of securing international harmonization
and user-friendliness.
(3) Desirable Consent System in Japan
If the consent system is to be introduced inJapan, the “complete type consent system” of theUnited Kingdom or the “reservation type consent
system” represented by that of the United States
would be a model.
A trademark system has both an aspect ofprivate interest in that confidence of traders and aprocess of accumulating the same are protected andan aspect of public interest in that confusion of
consumers are prevented. A system that can be
adopted depends on which of these aspects isemphasized.
The complete type consent system may be
regarded as a system in which the aspect of privateinterest is emphasized in that registration isadmitted without any examination of relative
grounds for rejection at all if consent of the party
concerned is submitted. On the other hand, thereservation type consent system is a system that
does not admit registration if there is likelihood ofconfusion although consent is respected. If
importance is to be attached to the aspect of public
interest, the reservation type consent system
would be adopted.
Moreover, it is also necessary to examineconsent relating to conflict with a well-known
trademark.
A system in Japan will be designed throughexamination of these points.

Ⅳ Disclaimer System
1

What is the Disclaimer System?

The disclaimer system is a system underwhich an applicant of a trademark declares
disclaimer of a right to the effect that, if the
trademark includes a generic or non-distinctive
element, the applicant does not claim an exclusive
right for use of such an element, and if the
trademark is registered, the applicant cannot claim
a right for the element for which the right isdisclaimed.
2

Situations of Implementation in Foreign
Countries(i)Countries where the disclaimer system isadoptedCountries and a region where the disclaimer

c

● 7 ●

IIP Bulletin 2002

system is adopted in law
OHIM, United Kingdom, Denmark, Norway,
Spain, Sweden, United States, Canada, Australia,
Hong Kong, India, Malaysia, Singapore, Thailand,
etc.
Note that the disclaimer system is seldom
used in practice in OHIM and the United Kingdom.
d Countries where the disclaimer system isadopted in practiceArgentina, China, India, etc.
(ii) Countries where the disclaimer system is not
adoptedc Germany, France, Austria, Switzerland, Italy,
Russia, New Zealand, Indonesia, Korea, etc.
d Countries where there are alternative
measures substituting for the disclaimer
systemIn New Zealand, a trademark can be amended
so as to delete a non-distinctive part. China adopts
the disclaimer system while adopting a similar
practice to that in New Zealand.
3

Right
disclaiming
systemFuseikyu Seido) in Japan(Kenri(1) History of the Right Disclaiming System
and Reasons for Abolishing the SameIn Japan, the right disclaiming system (Kenri
Fuseikyu Seido) was provided in the Trademark
Law of 1921 andhad lasted until abolished by the1959 Law now in force. Reasons for abolishing theright disclaiming system by the 1959 Law include
the following:c Interpretation of the word “a part that is likely
to be found as a main part of a trademark” wasdifficult, and there was actually a problem in findinga “main part” in examination of an application.
d There was an abuse in that a trademark
without specific distinctiveness is actuallyregistered utilizing the right disclaiming system.
e Moreover, a doubt was raised that the scope ofclaim for damages under the civil proceeding andthe scope of criminal liability were different for apart for which a right was disclaimed.
4

Arguments on Reintroduction of theDisclaimer System in Japan(1) Needs of Users
It was found from domestic questionnaires
survey carried out in this study, it was found that
16% of companies actually utilize the disclaimer
system mainly in Asian countries.
In addition, many companies utilizing thedisclaimer system are large companies with thecapital of 10 billion-yen or more.
In response to a question of whether or not thedisclaimer system should be introduced to ourcountry, 32% of the companies answered it isnecessary, which exceeds 24% that answered it is

IIP Bulletin 2002

unnecessary. Thus, the necessity of introducing
the disclaimer system seems to be high.
(2) Summary of Arguments For and Against
Introduction of the Disclaimer System inJapan
Currently existing arguments for and against
introduction of the disclaimer system aresummarized based on the reasons for abolishing theright disclaiming system in 1959.
(i) Clarification of rightc Argument for introduction: The disclaimer
system is helpful in clarifying relationship oftrademark rights and is also useful in terms of
convenience of examination of applications.
d Argument against introduction: Since apractice has been established for finding a scope ofan exclusive right in the scenes of examination ofsenior or junior applications and an infringement ofright and an idea generally accepted by society has
been formed on this issue, there are not sosignificant evils or confusions even if the disclaimer
system is not adopted.
In addition, more appropriate judgment
corresponding to respective scenes in which a
specific problem occurs can be expected, if aninterested party and both parties concerned makespecific decisions in each scene, rather than fixing
judgment at the time of registration.
(ii) Influence on examination of applicationsc Argument for introduction: As described inabove (i), the disclaimer system is also useful interms of convenience of examination of
applications.
d Argument against introduction: In Japan,
facilitation of examination of applications is realized
by abolishment of the associated trademark systemand shift to the post grant opposition system andspeedy procedure is realized in practice. Adoptionof the disclaimer system is against such a trend
toward facilitation of examination procedure.
(iii) Viewpoint of international harmonizationc Argument for introduction: In an international
application for trademark registration designating
Japan under the Madrid Protocol, if an applicant of
the international application disclaims a right,
exercise of a right should also be restricted for a
problem of infringement of the right in Japan, along
the intention of the applicant not to claim the rightvoluntarily.
d Argument against introduction: According torevision of the common rule of the Madrid Protocol,
an applicant of an international application will beable to optionally enter disclaimer in a descriptionof a trademark on an application even if a basic
registration or the like does not involve disclaimer.
Thus, advantage of adopting the disclaimer system
in Japan is reduced.
Moreover, internationally, countries are rather
reluctant to adopt the disclaimer system. For
example, in the United Kingdom, request for● 8 ●compulsory disclaimer was revised to optional
disclaimer to be voluntarily chosen by an applicant.
In the United States, abolishment of the disclaimer
system is under consideration.
(iv) System that should be introducedc Argument for introduction: If the optional
disclaimer system of the United Kingdom isadopted, the problem of delay in examination of
applications is eliminated so as to be able to comply
with the trend toward international harmonizationof trademarks in recent years.
d Argument against introduction: There areproblems in both the compulsory and optional
disclaimer systems. In the former system, for an
application that is registrable in nature, an applicant
is obliged to make a counter argument or the likeby submitting a written opinion concerning only
propriety of finding of the disclaimer. In addition, in
the latter system, if a disclaimer is not declared, a
trademark is likely to be misunderstood as if it isadmitted as an exclusive right.
(v) Others
Argument for introduction: Existence of thedisclaimer system can serve as a means forestablishing conditions that the parties concerned
should approve for each other in opposition orinvalidation appeal procedures. The disclaimer
system, together with the consent system, can be ameans for providing a mechanism for solving adispute between the parties concerned. That is, thedisclaimer system contributes to private autonomy.
In the future, it would be necessary to thoroughly
discuss these issues and examine whether or not
the disclaimer system should be adopted in Japan
from new viewpoints.
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under the law for registering a trademark right, that
is, an effect of excluding registration of anothertrademark conflicting with the registeredtrademark(*12). Therefore, as long as a trademark is
registered, even a trademark for which a right isdisclaimed should be compared and examined as awhole in judging similarity as in normal cases.
In addition, a court decision also rules thatsimilarity should be decided for trademarks as awhole including a disclaimed part in examining
similarity of trademarks(*13).
(2) Should Failure to Disclaim be aRequirement for Unregistrability?
The disclaimer system should be madeoptional, and even if a part of a trademark nothaving distinctiveness or including doubtful points
is not disclaimed, this failure to disclaim should not
be a requirement for unregistrability.
(3) Is Disclaimer Admitted for Each Goods
and Service?
A problem of whether or not disclaimer is tobe admitted for each goods and service should also
be left to an own volition of an applicant or a
trademark right holder. Since a system fordesignating goods and services of multiple classes
in one application is employed in Japan, it would be
too harsh for an applicant or the like to disclaim aright for all goods and services including designatedgoods and services for which the matter ofpresence or absence of distinctiveness does not
become a problem.
(Senior researcher: Shinichi Irie)

Tentative Plan of a New Disclaimer
System in Japan

We have examined a system design to be usedin the case that the disclaimer system is introduced
in Japan and discussed points to be revised in thelaw, based on basic subjects associated with thesystem.
(1) Effect of a Trademark Right by Disclaimer,
in Particular, a Problem of Similarity witha Registered Trademark
Concerning an effect of a disclaimed trademark
right, there are differences in interpretation thereofin foreign countries adopting the system and there
is not always an internationally established uniform
method of handling the issue.
In examining similarity of trademarks, weconsider that similarity of trademarks as a wholeshould be decided including a part for which a rightis disclaimed.
Disclaimer is not for abandoning an effect(*12) Makoto Amino “Trademark” p.435 (Fifth edition, Yuhikaku, 1999).
(*13) The decision of Tokyo High Court, March 28, 1968, Showa 41 (Gyo-Ke) 101.
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IIP Bulletin 2002