JAPAN Law and Practice Contributed by: Takahiro Inoue, Tomohiro Kuribayashi, Yoshiyuki Takanashi and Daisuke Inaba, TMI Associates
features have become well known or famous among consumers. Because these regimes protect different interests, the same product shape or packaging may simultane- ously be protected under multiple legal frameworks. However, Japanese courts have generally taken a restrictive approach to claims under Article 2, Para- graph 1, Item 1 and Item 2 of the UCPA after the expiry of design rights. Many decisions reflect the view that distinctiveness or fame acquired through exclusivity granted by a registered design right should not con- tinue to receive protection under the UCPA after the design right has expired. 8.5 Copyright and Trade Marks Extremely simple logos, artistic elements and brand- ing are generally not protected by copyright. How- ever, where sufficient creativity exists, such logos or designs may be protected under the Copyright Act. Trade marks may be registered regardless of wheth- er they are protected by copyright. Article 29 of the Trademark Act provides that a trade mark holder may not use a registered trade mark to the extent that such use conflicts with another person’s copyright that arose prior to the filing date of the trade mark application. However, where the same person holds both copyright and trade mark rights in a particular logo or design, the Copyright Act does not impose any limitations on the exercise of trade mark rights, nor does the Trademark Act impose limitations on the exercise of copyright. Accordingly, such a right holder may enforce either or both rights strategically at its discretion. 8.6 Enforcement and Remedies Across Multiple IP Rights In Japan, claims based on multiple intellectual prop- erty rights may generally be brought in the same pro- ceedings where the claims are sufficiently related from both a factual and legal perspective. In practice, it is common for plaintiffs to assert multiple causes of action arising from the same conduct, such as claims based on patents, trade marks, copyright, designs and the UCPA, in a single lawsuit.
Where infringement of multiple IP rights is established, Japanese courts assess remedies separately under each legal framework, and injunctive relief may be granted under multiple rights in parallel. However, Japanese law does not permit double recovery for the same harm. Accordingly, even where the same con- duct constitutes both trade secret misappropriation under the UCPA and patent infringement, for example, damages may be claimed under both theories, but overlapping damages will not be cumulatively award- ed to the extent they compensate the same economic loss. 8.7 International and Cross-Border Considerations Territoriality and Jurisdiction Under Japanese law, intellectual property rights are generally governed by the territoriality principle: rights arise under the domestic law of each country, and their effect generally extends only within that country’s territory. In cross-border IP disputes, Japanese courts first determine whether they have international jurisdiction. Actions concerning the validity of registered intellec- tual property rights, such as patents, fall within the exclusive jurisdiction of the Japanese courts where the relevant registration is made in Japan (Article 3-5, Paragraph 3 of the Code of Civil Procedure). In other cases, international jurisdiction is generally deter- mined under the ordinary framework for property- related disputes. Governing Law for IP Infringement Claims For IP infringement claims, Japanese law generally distinguishes between claims based on the effect of the IP right itself and tort-based damages claims. An injunction claim is generally governed by the law of the country where the patent is registered. Damages claims are generally treated as tort claims. Therefore, under Article 17 of Japan’s Act on Gen- eral Rules for Application of Laws, the governing law for damages claims is generally the law of the place where the result of the tortious act occurred.
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