The Japanese Trademark Law does not permit the registration of sounds or smells.

(a) An application for registration of a trademark which is "well known among consumers as indicating the goods or services connected with another person's business, and of a trademark similar thereto, used with respect to such goods or services, or similar goods or services" shall be refused in accordance with sub-paragraph (x) of Article 4(1) of the Japanese Trademark Law. In case such a trademark is registered, the registration may be invalidated through appeal process, provided that such an appeal is requested within five years from the registration of that trademark. If such a trademark is registered in bad faith, however, such registration may be invalidated at any time. (b) Furthermore, an application for registration of a trademark which is "well known among consumers as indicating the goods or services connected with another person's business, and of a trademark similar thereto, used with respect to non-similar goods or services" shall be refused in accordance with sub-paragraph (xv) of Article 4(1) of the Law, if it is likely to cause confusion with goods or services connected with another person's business. In case such a trademark is registered, the registration may be invalidated through appeal process, provided that such an appeal is requested within five years from the registration of that trademark. If such a trademark is registered in bad faith, however, such registration may be invalidated at any time. (c) The Trademark Examination Guidelines provide that the following elements should be taken into account by authorities concerned in determining "whether or not a trademark is well known among consumers" as provided for in sub-paragraph (x) of Article 4(1) of the Law: (i)whether or not the trademark in question is actually used; the nature of goods or services for which the trademark is used; (ii)the starting date of the use; (iii)the period of the use; (iv)the area where the trademark, or the trademark goods or services have been used; (v)the volume of production or transaction of the goods or services; the number of certificates issued; (vi)the methods, frequency and contents of advertisement. (d) In addition to the protection by the Trademark Law, the Japanese Unfair Competition Prevention Law provides that the use of an indication of goods or business (including a trademark), which is identical with, or similar to, another person's indication as to be well known among consumers, is one of the types of unfair competition, provided that the use causes confusion with another person's goods or business. Any person whose business interests are infringed by the unfair competition is entitled to request an injunction under the Law (see Article 3 of the Japanese Trademark Law).

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.

See reply to question 4 from the EC above.

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).

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.

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).

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.

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.

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.

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.

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.

"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.

(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).

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).

"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.

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.

Article 5bis(1) of the Paris Convention provides a grace period for the payment of fees for the maintenance of industrial property rights. It is understood that these provisions do not apply to the payment of fees for initial registration or registration for renewal (see "Guide to the Application of the Paris Convention" by Professor G. H. C. Bodenhausen). Under the Japanese Trademark Law, trademark rights are granted for a period of ten years if the prescribed fees for the registration have been paid in a lump sum at the time of initial registration or registration for renewal and fees for maintaining trademark rights are not provided for. Therefore, a grace period under Article 5bis(1) of the Paris Convention is not provided for by the Law.

Under the Japanese Trademark Law, when associations in other WTO Members file an application for registration of a collective mark, such an application shall not be refused on the ground that such associations are not established in Japan or not constituted according to the Japanese laws and regulations.

Japanese Law requires that associations be incorporated legal persons as a condition to seek the protection of their collective trademarks.