JAPAN Law and Practice Contributed by: Takahiro Inoue, Tomohiro Kuribayashi, Yoshiyuki Takanashi and Daisuke Inaba, TMI Associates
• identical or similar features between the registered design and the accused design; • identical or similar feature between the relevant articles, buildings or images; and • the implementation of the design in the course of trade, such as manufacture, use, assignment, importation or offering for assignment. Importation for purely personal use does not generally constitute infringement. However, acts by overseas business operators causing infringing products to be brought into Japan may constitute infringement. The Design Act also recognises indirect infringement. For example, manufacturing or selling products used exclusively for manufacturing articles embodying a registered design may constitute infringement. Avail- able remedies include injunctions, damages and bor- der enforcement measures through Customs. Criminal liability may also arise. Under Article 2, Paragraph 1, Item 3 of the UCPA, infringement consists of transferring, leasing, dis- playing, exporting, importing or providing through telecommunication lines goods that imitate another person’s product configuration. “Imitation” requires both reliance on another person’s configuration and substantial identity between the configurations. Com- mercial activities conducted in virtual spaces may also fall within the scope of this provision. Please see 2.6 Trade Mark Enforcement and Rem- edies regarding the available remedies relating to Article 2, Paragraph 1, Item 3 of the UCPA, as well as further details regarding Article 2, Paragraph 1, Items 1 and 2. 4.5 Functionality and Technical Features Article 5, Item 3 of the Design Act excludes from protection designs consisting solely of shapes indis- pensable for securing the function of an article, the use of a building or the operation of an image. The JPO Examination Guidelines classify such functional shapes into two categories: • shapes inevitably determined to achieve the rel- evant function; and
• shapes determined by standardised specifications adopted for compatibility or similar purposes. Because the exclusion applies only where the design consists solely of such functional shapes, additional decorative elements such as patterns or colours are disregarded when assessing functionality. Japanese law also recognises partial designs. Howev- er, where the relevant part consists solely of function- ally indispensable shapes, the design may be refused or invalidated. Similar considerations regarding functionality and technical necessity also apply under the UCPA when assessing whether a product configuration may func- tion as a protectable indication of goods or business. In Japan, trade secret protection is principally gov- erned by the UCPA, under which a “trade secret” is defined as technical or business information useful for business activities, such as manufacturing methods or sales methods, that is managed as secret and is not publicly known (Article 2, Paragraph 6). To qualify for protection as a trade secret, the infor- mation must satisfy the following three requirements: • secrecy management – the information must be managed as secret; • usefulness – the information must be useful for business activities; and • non-public nature – the information must not be publicly known. Typical examples of protectable trade secrets include technical information (such as manufacturing meth- ods and design drawings) and business information (such as customer information and business plans). 5. Trade Secrets 5.1 Legal Framework and Protectable Information Protection of Trade Secrets
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