JAPAN Law and Practice Contributed by: Takahiro Inoue, Tomohiro Kuribayashi, Yoshiyuki Takanashi and Daisuke Inaba, TMI Associates
Proportionality Proportionality may be considered in calculating dam- ages, and courts may reduce damages accordingly. FRAND defence (SEPs) In standard essential patent (SEP) cases, seeking an injunction against a willing licensee may constitute an abuse of rights. While Japanese courts have tradition- ally been cautious in granting SEP injunctions, recent developments in 2025–2026 suggest a potential shift, with greater emphasis on the parties’ willingness to negotiate FRAND terms. 1.6 Patent Enforcement and Remedies Jurisdiction In Japan, patent infringement cases at first instance are handled exclusively by the Tokyo and Osaka Dis- trict Courts. Appeals are heard by the Intellectual Property High Court, with potential further appeal to the Supreme Court. First instance proceedings take approximately 14 months on average, with appeals requiring about eight further months, although com- plex cases may take significantly longer. Parallel Proceedings An alleged infringer may challenge patent validity both as a defence in court and by initiating invalidation pro- ceedings before the JPO. Court findings on invalidity are inter partes only, whereas a final JPO decision has erga omnes effect. To ensure consistency, the Intellec- tual Property High Court may assign the same panel to related appeals. Preliminary Injunctions A patentee may seek a preliminary injunction upon showing prima facie evidence of infringement and the risk of substantial or imminent harm. Proceedings are expedited and relatively low-cost, but the patentee must provide security. If the injunction is later revoked, the patentee is generally liable for damages absent special circumstances. Remedies Available remedies include injunctions (permanent and provisional), damages and corrective measures. Permanent injunctions are generally granted upon a finding of infringement, except in limited cases, such as SEP disputes. Damages may be calculated based
on lost profits, infringer’s profits or a reasonable roy- alty, with courts considering equitable factors. Claims for unjust enrichment and measures to restore busi- ness reputation may also be available. Attorneys’ Fees and Costs Prevailing patentees may recover a portion of attor- neys’ fees as damages, typically around 10% of awarded damages. Court costs, including filing fees, are generally borne by the losing party. 2. Trade Marks 2.1 Legal Framework and Protectable Signs Trade mark protection in Japan is built on the Trade- mark Act and the Unfair Competition Prevention Act (the UCPA). Under the current Japanese Trademark Act, the signs eligible for protection extend to: • characters; • figures; • symbols; • three-dimensional shapes; • colours (although no single colour mark has yet been registered in practice); • motion marks; • holograms; • sound marks; and • position marks. By contrast, non-traditional marks such as scents, tastes and tactile marks are not recognised for pro- tection. Under the UCPA, protection is available for indications of goods or business that are well known or famous, even without registration. Such indications broadly include names, trade names, trade marks, logos and the containers or packaging of goods, as well as other source-identifying features used in connection with goods or business activities.
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