Review of TRIPS Implementing Legislation - Search

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Article 63.2 of the TRIPS Agreement requires Members to notify the laws and regulations made effective by that Member pertaining to the subject matter of the Agreement to the Council for TRIPS in order to assist the Council in its review of the operation of the Agreement.

This page allows you to search Members' questions and answers on notified laws and regulations. You can consult search results on screen, download and print them in Excel format. You can also download individual documents.

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Page 497 of 677   |   Number of documents : 13533

Document symbol Notifying Member Member raising question Question Answer Date of document distribution  
IP/Q2/JPN/1 Japan European Union 13. Does Japanese law provide for the protection of textile designs, including fashion? If yes, on what legal basis and under which conditions (Article 25.2 of the TRIPS Agreement)?
Under the Japanese Design Law, any industrial design which meets the requirements prescribed by the Law is eligible for registration, subject to examination. In this context, textile designs, or any fashion made of them, are eligible subject matters protected by the Law. There are no legal conditions under which textile designs are protected. The conditions concerning textile designs, in particular those concerning cost, examination and publication, are, as described below, identical to, or slightly more advantageous than, those concerning other goods (see Articles 2(1) and 3). Cost: The official fee structure for obtaining rights for textile designs is identical to the one for designs in other fields. Examination: The Japanese Patent Office has been making efforts to expedite the examination process in every design field and has set a goal to the effect that by the year 2000 the first action is to be communicated within 12 months. As to textile designs, in particular, this action plan is better facilitated by staffing experts to assist in accelerated examination. In addition, when the design in an application is likely to be imitated, that application can be put to accelerated examination at the request of the applicant and, in such a case, that application will be processed in approximately four months from the request to final decision. Publication: Under the Design Law, any designs shown in applications are published in the official gazette only after they are registered. In addition, the publication can be deferred for a prescribed time period at the request of an applicant. These matters also apply to textile designs (see Article 14).
13/08/1997
IP/Q2/JPN/1 Japan New Zealand 1. In Section 3(2) of the Design Law it specifies that designs which "could have been easily created ... by someone skilled in the art to which the design pertains, on the basis of a shape, pattern or colour [sic] or any combination thereof widely known in Japan" shall not be registered. Please explain how this conforms to Article 25.1 of the TRIPS Agreement which states that "Members may provide that designs are not new or original if they do not significantly differ from known designs or combinations of known design features".
"Designs that could easily have been created on the basis of a shape, pattern or colour or any combination thereof widely known in Japan" provided for in Article 3(2) of the Japanese Design Law correspond to designs that "do not significantly differ from known designs or combinations of known design features" referred to in Article 25.1 of the TRIPS Agreement. Furthermore, " a shape, pattern or colour or any combination thereof widely known in Japan" provided for in Article 3(2) of the Law corresponds to "known designs or combinations of known design features" referred to in Article 25.1 of the TRIPS Agreement. Since the condition "widely known in Japan" for the exception to registrability of designs is more restrictive than the condition "known" referred to in the Agreement, a wider range of designs could be deemed eligible for registration under the Law than under the Agreement.
13/08/1997
IP/Q2/JPN/1 Japan New Zealand 2. In Section 5(i) of the Design Law it specifies that designs liable to contravene morality are excluded from design protection. Please explain what types of designs could fall within this provision.
The "designs liable to contravene morality" (Article 5(i) of the Japanese Design Law) are those that damage human morals, and cause feelings of shame or hatred. For example, designs that damage human morals are those that portray drugs or acts of violence; those that cause feelings of shame or hatred are those that portray obscenities, human wastes or vomit.
13/08/1997
IP/Q2/JPN/1 Japan United States of America 1. Please explain whether Section 2(1) of the Japanese Trademark Law permits registration of personal names as a “sign” and how this practice complies with TRIPS Article 15.1.
Article 2(1) of the Japanese Trademark Law provides that "trademark" means characters, figures or signs, any combinations thereof, or any combinations thereof with colours. "Characters", in comparison with "figures" or "signs", mean words including personal names, letters and numerals. Consequently, personal names referred to in Article 15.1 of the TRIPS Agreement are eligible for trademark registration in Japan.
13/08/1997
IP/Q2/JPN/1 Japan United States of America 2. Please explain whether, under Japanese law, colours can be registered without accompanying figurative elements, as required by TRIPS Article 15.1.
See reply to question 4 from the EC above.
13/08/1997
IP/Q2/JPN/1 Japan United States of America 3. Please explain whether Section 5 of the Japanese Trademark Law provides for the acceptance of applications to register a trademark based on an intent to use the mark pursuant to TRIPS Article 15.3. Please explain the requirements and conditions that are placed on parties wishing to register and maintain registration of a mark based on an intent to use the mark.
Article 3(1) of the Japanese Trademark Law provides that any person may obtain a registration for a trademark to be used with respect to goods or services in connection with his/her business. Accordingly, a trademark may be registered not only in the case of actual use but also in the case of intent to use and no particular requirements or conditions are imposed on the registration of a trademark applied based on intent to use. A registered trademark which has not been used for an uninterrupted period of three years may be subject to an appeal for cancellation. If such an appeal is requested, the registration may be cancelled unless there are due grounds for non-use (Article 50).
13/08/1997
IP/Q2/JPN/1 Japan United States of America 4. Please explain whether the nature of goods or services to which a trademark is to be applied can serve as an obstacle to the registration of the mark under Japanese law. If so, please identify and explain the subject matter excluded under this authority; the relative provisions of the Japanese law that serve as a basis for these exclusions; and how this practice complies with TRIPS Article 15.4.
Under the Japanese Trademark Law, the nature of goods or services for which a trademark is applied by no means serves as an obstacle to the registration of the trademark.
13/08/1997
IP/Q2/JPN/1 Japan United States of America 5. Please explain whether marks that are not eligible for registration because they are “similar to” registered marks are evaluated using a “likelihood of confusion” standard or using an analysis based solely on whether the marks are similar without regard to the goods or services involved. Please provide information regarding any relevant decisions of administrative or judicial bodies that address this issue.
Under the Japanese Trademark Law, similarity between trademarks in question and prior registered trademarks is evaluated using the "likelihood of confusion" standard. Under this standard, due account is to be taken as regards designated goods or services with respect to which both trademarks are used as well as any identity or similarity between the trademarks and prior registered trademarks themselves. "Hyozan case" is a leading case on this issue decided by the Supreme Court (Minshu 22, No. 2, 399).
13/08/1997
IP/Q2/JPN/1 Japan United States of America 6. Please explain whether and upon what authority under Japanese law a trademark examiner can refuse an application to register a trademark because the proposed mark is identical or similar to an unregistered well-known mark.
An application to register a trademark shall be refused based on Article 4(1)(x) of the Japanese Trademark Law where the trademark is identical, or similar, to an unregistered well-known trademark and the goods or services with respect to which the trademark applied is used are identical, or similar, to those with respect to which the well-known trademark is used. Even if goods or services for a trademark applied are not identical, or similar, to those for a well-known trademark, the application shall be refused based on Article 4(1)(xv) of the Law on condition that it is likely to cause confusion.
13/08/1997
IP/Q2/JPN/1 Japan United States of America 7. Please explain whether Japanese trademark law establishes a presumption of likelihood of confusion in the determination of confusing similarity in cases where identical marks are used on identical goods, as required by TRIPS Article 16.1. If so, please identify and explain the legal basis for this presumption.
Under the Japanese Trademark Law, the owner of the trademark has the exclusive right to prevent third parties from using "an identical sign for identical goods or services" provided for in Article 16.1 of the TRIPS Agreement irrespective of a likelihood of confusion. This conclusion stems from Article 25 of the Law which provides that the owner of a trademark right shall have the exclusive right to use the trademark with respect to the designated goods or designated services, and from Article 36 of the Law which provides that the owner of a trademark right may require a person who is infringing or is likely to infringe upon the trademark right to discontinue, or refrain from, such infringement.
13/08/1997
IP/Q2/JPN/1 Japan United States of America 8. Please explain how Section 24(6) of the Japanese Trademark Law, which requires trademarks owned by non-profit entities to be transferred only with the transfer of the enterprise, is compatible with TRIPS Article 21.
Article 24(6) of the Japanese Trademark Law relates to trademarks which are already famous in Japan as marks identifying non-profit enterprises working in the public interest (such as water utilities and public road transport corporations). The registration of an identical or similar trademark by a person who has no association with such a public entity will very probably confuse consumers, and detract from the due rights of third parties. The registration of such a trademark by such a person is, therefore, prohibited under the Law (see Article 4(1)(vi)). With this in mind, the Law prohibits the transfer of such a trademark, unless the enterprise itself is transferred. This limited exception applies only to famous trademarks concerning non-profit enterprises and is permitted under Article 17 of the TRIPS Agreement.
13/08/1997
IP/Q2/JPN/1 Japan United States of America 9. Please explain whether Section 47 of the Japanese Trademark Law precludes a person from obtaining cancellation of a fraudulently obtained registration in relation to the criteria specified in Section 47 more than five years after registration. If it does, please explain how this provision complies with the requirements of Article 2.1 of the TRIPS Agreement, to the extent that it incorporates Article 6bis(3) of the Paris Convention, which precludes WTO Members from placing time limits on requests for cancellation of marks that were registered or used in bad faith.
The five-year time-limit stipulated in Article 47 of the Japanese Trademark Law does not apply to the request for cancellation of the registration of a well-known trademark registered in bad faith. Article 47 provides that in the case where a trademark is registered in contradiction to Article 4(1)(x) (Protection of well-known trademarks), the five-year time-limit shall not be applicable to such a registration obtained with the intention of unfair competition. The intention of unfair competition is construed as the same as bad faith.
13/08/1997
IP/Q2/JPN/1 Japan United States of America 10. Please explain whether the authority specified in Section 53bis of the Japanese Trademark Law to demand a trial for cancellation of a mark obtained in bad faith is subject to the five-year limitation specified in Section 53ter. If so, please explain how Sections 53bis and 53ter comply with Article 2.1 of the TRIPS Agreement to the extent that it incorporates Article 6bis(3) of the Paris Convention, which precludes WTO Members from placing time limits on requests for cancellation of marks that were registered or used in bad faith.
Article 53bis of the Japanese Trademark Law corresponds to Article 6septies(1) and (2) of the Paris Convention, and Article 53ter of the Law corresponds to Article 6septies(3) of the Convention. Where a trademark, subject to cancellation under Article 53bis of the Law, is well known, an application for registration of such a trademark should have been refused based on Article 4(1)(x) of the Law. Accordingly, if the well-known trademark has been registered in bad faith, the five-year time limit provided for in Article 53bis is not applied and its registration may be invalidated at any time through appeal under Article 46 of the Law on the grounds that it is in violation of Article 4(1)(x) and obtained in bad faith, which is consistent with Article 6bis(3) of the Convention.
13/08/1997
IP/Q2/JPN/1 Japan United States of America 11. Please explain how the standards of Section 50(2) of the Japanese Trademark Law regarding the acceptance of “legitimate reasons” for non-use complies with the provisions of TRIPS Article 19.1 which requires that WTO Members recognize certain circumstances that arise independently of the will of the trademark owner as being valid reasons for non-use to prevent cancellation of a registration for non-use.
"Circumstances arising independently of the will of the owner of the trademark which constitute an obstacle to the use of the trademark, such as import restrictions on or other government requirements for goods or services" provided for in Article 19.1 of the TRIPS Agreement are recognized as legitimate reasons for the non-use of a trademark prescribed in Article 50(2) of the Japanese Trademark Law. Article 50(2) of the Law thus complies with Article 19.1 of the TRIPS Agreement. "Legitimate reasons for non-use" are also referred to in Article 19(3) of the Law, and the Trademark Examination Guidelines illustrating this Article provide for "complete prohibition of use by law, delay in the approval procedures and other exercise of legal action" as examples of circumstances beyond the control of the owner of a trademark. The Guidelines also apply to proceedings relating to finding a legitimate reason in the appeal procedure under Article 50(2) of the Law.
13/08/1997
IP/Q2/JPN/1 Japan United States of America 12. Please describe the methods by which industrial designs are protected in Japan, in particular: (a)the form or forms of intellectual property used to protect the design (e.g., patent, copyright, sui generis); (b)the conditions that must be satisfied to obtain the grant of such protection (e.g., whether designs must be new or original and the parameters of these concepts), and a brief description of the registration or granting procedure; (c)the nature of the rights granted and the term of protection provided; (d)the nature of remedies available to the owner of each type of protection, including a description of the conditions that may be imposed (e.g., whether commercial use is required); and (e)whether any exceptions to protection or rights exist for each type of intellectual property involved.
(a)In Japan, industrial designs are protected by the sui generis system, i.e. the Japanese Design Law. (b)The criteria for a grant of protection under the Japanese Design Law is whether a design is new or original. Designs that do not significantly differ from designs or combinations of designs in the public domain are not considered new or original. "Designs in the public domain" represent designs known to the public, and those shown in publications distributed, inside and outside Japan. The registration procedure consists of filing an application, formal and substantive examination, and registration. A detailed flowchart is appended. (c)Under the Japanese Design Law, a design right is defined as an exclusive right to work a registered design, and a design similar to it, for business. In this context, the term "working" includes "manufacturing" which corresponds to "making" referred to in the TRIPS Agreement, "assigning" which contains "selling" referred to in the Agreement and "importing" (see Articles 23 and 2(3)). The term of protection amounts to 15 years from the date of registration (Article 21). (d)Under the Japanese Design Law, the owner of a registered design shall be entitled to claim an injunction and compensation for damages (see Articles 37, 39 and 40). The commercial use of the design is not required to obtain such remedies. Infringement of design rights may incur a sanction of a criminal penalty (Article 69). Article 21(1) of the Japanese Customs Tariff Law prohibits the importation of goods which infringe design rights. A design rightholder may provide the Japanese Customs Authorities to control infringing goods at the border with information on prohibition of importing such goods based on the Guidelines Concerning the Control of Goods which Infringe Intellectual Property Rights (Ministry of Finance, Customs and Tariff Bureau, Document No. 1192, 28 December 1994). (e)Designs which are contrary to public order and morality are not registrable (see Article 5(i)). A prior user of the design in good faith may be allowed to use the design (see Article 29).
13/08/1997
IP/Q2/JPN/1 Japan United States of America 13. Please explain how textile designs are protected under your law.
There are no legal conditions under which textile designs are protected. The conditions concerning textile designs, in particular those concerning cost, examination and publication, are, as described below, identical to, or slightly more advantageous than, those concerning other goods (see Articles 2(1) and 3). Cost: The official fee structure for obtaining rights for textile designs is identical to the one for designs in other fields. Examination: The Japanese Patent Office has been making efforts to expedite the examination process in every design field and has set a goal to the effect that by the year 2000 the first action is to be communicated within 12 months. As to textile designs, in particular, this action plan is better facilitated by staffing experts to assist in accelerated examination. In addition, when the design in an application is likely to be imitated, that application can be put to accelerated examination at the request of the applicant and, in such a case, that application will be processed in approximately four months from the request to final decision. Publication: Under the Design Law, any designs shown in applications are published in the official gazette only after they are registered. In addition, the publication can be deferred for a prescribed time period at the request of an applicant. These matters also apply to textile designs (see Article 14).
13/08/1997
IP/Q2/LIE/1 Liechtenstein General question Does your country recognize a right of priority on the basis of an earlier trademark application filed in any other WTO Member by a national of a WTO Member?
According to Article 7 of the current Trademark Act, foreign applicants may apply for registration of a mark under the condition that they are nationals of a state that grants reciprocity of treatment for nationals of Liechtenstein. Article 15 of the Ordinance on the Protection of Trademarks lists the obligations which a registration has to fulfil. Indent 8 of Article 15 provides the possibility to claim priority of the first application in a foreign country. In the revision of the Trademark Act, the possibilities of claiming priority in a Member State of the Paris Convention will be contained in Article 7.1. Article 7.2 will provide the right of priority on a reciprocity basis in the case where priority is claimed in a non-Member State of the Paris Convention.
12/08/1997
IP/Q2/LIE/1 Liechtenstein European Union 1. Within which term does Liechtenstein intend to put in force the revised Law on Trademarks and Geographical Indications?
The revised Law on Trademarks and Geographical Indications has been submitted to Parliament in early summer and has been treated in the Parliament's session of 18 and 19 September 1996 in first reading. It can be assumed, that the necessary second and third reading of the revised law can take place in the session of Parliament in December 1996. With this assumed timetable the putting to force of the revised Law on Trademarks and Geographical Indications can be expected for the beginning of 1997.
12/08/1997
IP/Q2/LIE/1 Liechtenstein European Union 2. What adjustments were/are going to be made during the debates in Parliament with respect to the draft submitted? To what extent do these adjustments comply with the TRIPS Agreement?
In general, the revision of the Trademark Act has been welcomed by all parties which are represented in Parliament. Taking into account the comments of the first reading of the revised law on Trademarks and Geographical Indications, the government proposes the following changes of the law for the second and third reading. As announced by the government during the first reading in Parliament, the question of introducing proceedings to oppose the registration of a trademark, was reviewed again. In considering carefully the benefits and expenses and the critical vote of the Parliamentarians, it was decided to resign the opposing procedures. In addition, some more minor adjustments and clarifications have been introduced into the revised law. For example, the definition of the protection of an acoustic mark under the new Trademark Act, the replacement of the term "berühmte Marke" which means "famous trademark", by the term "bekannte Marke", which corresponds to the term "well-known mark", as mentioned in both the EC Council Directive on Trademarks and the TRIPS Agreement. Some adjustments in wording (not in content) have been made in regard to the penalty provisions. The second and the third reading of the Parliament will take place from 11 to 13 December 1996.
12/08/1997
IP/Q2/LIE/1 Liechtenstein European Union 3. What is the time schedule within which the total revision of the Liechtenstein Law on Industrial Designs and Models is intended to be started and to be concluded?
In order to be in harmony with the provisions of the TRIPS Agreement concerning the legislation of industrial designs, a partial revision of the existing Liechtenstein Law has been submitted to the government and will be brought forward to Parliament within a short time. The entry into force of the partial revision may be expected within the first six months of 1997. The total revision of the Liechtenstein Law on Industrial Designs will take place in order to transpose the provisions contained in the proposal for a Council Directive on the Legal Protection of Designs (COM (93) 344). As mentioned in Article 19 of the proposed Directive, the laws and regulations which are necessary to comply with this Directive have to be brought into force by 1 January 1998.
12/08/1997

Page 497 of 677   |   Number of documents : 13533

 
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