Center for Advanced Study & Research on Innovation Policy


CASRIP Newsletter - Spring 1996, Volume 3, Issue 1


Trademark Law Revision

In Japan, IP professionals focus their attention on trademark law and design registration, particularly since there has been no significant patent case decision or revision in patent law. As reported in the last newsletter issue, the proposed trademark law revision drafted by the Japanese Patent Office (JPO) was published in December. Since then, some comments on the proposal have been published. One comment pointed out the problems that could result from the introduction of three-dimensional trademark (trade dress) as subject matter for registration (Tokkyo News, Jan. 26 (No. 9258), page 1). Below is a summary of the proposed revision and the comments that it generated.

Under current Japanese trademark law, only two-dimensional trademarks are eligible for registration. A three-dimensional trademark (trade dress), such as the shape of a container or package for goods, which obtained secondary meaning through their use, is protected by unfair competition prevention law, Article 2, Item 3. This provision prevents the assigning, leasing, exporting and importing of a trade dress owned by another. A trade dress cannot, however, be registered as a trademark. Unlike Japan, the United States Lanham Act has long included trade dress as a registerable subject matter, and the new European trademark law also permits the registration of trade dress. Responding to the need for the protection of such trademarks and following the international trend of trademark protection, the JPO proposed: (1) to permit registration of trade dress, including the shape of goods and their containers; (2) a trade dress will not be protected if consumers consider such trade dress as the generic or common shape of designated goods or their containers although such trade dress may obtain secondary meaning through their use; (3) the protection conferred by trademark registration and design registration may overlap but the conflict between both rights may be resolved by the first-to-file principle if the registrations are respectively granted to different parties; (4) in case where the shape of trade dress itself is generic but distinctive because of the attachment of a two- dimensional trademark, such trade dress is still registerable although protection would not extend to the trade dress without the attached two-dimensional trademark.

The fundamental problem with trade dress registration is that the current Japanese trademark system requires applicants to apply for registration before the marks are used. Moreover, a trademark consisting only of the shape of designated goods or goods used in association with the designated service is presumed generic and not inherently distinctive, although under current trademark law such presumption can be removed by the establishment of secondary meaning through the use of such trademarks.

In contrast, countries adopting trade dress registration such as the Untied States presupposes the use of trade dress before granting registration. Commentators emphasized the need for new provisions to provide exception to the current pre-use granting principle because the examination of secondary meaning through use is essential for the grant of trade dress registration. For example, the statement (2) in the proposal suggests that some of the shapes of designated goods are inherently distinctive contrary to the presumption of no distinctiveness with respect to the shape of goods provided in current trademark law, Article 3. Such a shape, however, should not be considered as being inherently distinctive when the shape is chosen for some functional purpose, even if some alternative shapes also exist.

Further, the proposal suggests that a trade dress which is not generic is inherently distinctive even without its use. Although the meaning of a generic shape is not entirely clear, it suggests that a registerable shape must be unique or novel, which closely parallels the requirement of design registration. (Since a trade dress is protected for an unlimited time unless the trademark owner stops using the trade dress, such protection without time limit may conflict with the design registration policy which limits the term of protection to fifteen years from registration.) Commentators pointed out the fundamental difficulty of presuming some trade dresses as being inherently distinctive without having to acquire secondary meaning through use.

These issues are also common to U.S. trademark law with respect to trade dress. Courts and scholars cannot agree whether the shape of goods can be inherently distinctive. (McCarthy on Trademarks, Sec. 7.25.) Also, functionality of the shape of goods is always an important issue in deciding whether a trade dress should be protected under the Lanham Act.

Although courts and scholars agree that a shape dictated by utilitarian concerns is not protectable, they cannot draw a clear line between the unprotectable shape which is purely functional and the protectable shape which is related but not entirely functional. The argument that trade dress protection for product configuration conflicts with the patent clause (the U.S. design patent parallels Japanese design registration) is also familiar to the U.S. practitioners. Commentators focused on the difference between the pre-grant use system under the Lanham Act and the post-grant use system under Japanese law, but the two systems are not so much different after the adoption of the intent-to-use application in the U.S. Once trade dress protection is adopted, the JPO and Japanese courts can refer to U.S. case law under the Lanham Act to work out the details of requirements for trade dress protection.

Industrial Property Training Center Sponsored by the JPO

The JPO announced a plan for an Asia-Pacific Industrial Property Training Center. This center aims to give training in patent and other industrial property law and practice to patent professionals who will be responsible for procuring and enforcing industrial property in developing countries in Asia and the Pacific region. The JPO plans to accept 1000 trainees between 1996 to 2000, in time for the execution of the WTO/TRIPs Agreement on Jan. 1, 2000. The JPO will accept not only government officials such as patent examiners and administrative judges but also patent attorneys, litigators and corporate attorneys as trainees.

- Toshiko Takenaka

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