Trademark Protection for Fashion Design in Japan: Comparative Law Perspective

Abstract

The Japanese Trademark Act (JTA) was revised in 1996 to introduce a registration system for 3D marks. However, JTA and the Unfair Competition Prevention Act (UCPA) provide very limited protection for fashion designs, such as clothing and accessories as the indication of origin of goods. The fundamental doctrines for protecting 3D trademarks, distinctiveness and functionality, are under-developed in Japan compared with those developed in the United States and Europe through case law, and outdated for failing to consider the globalization of the fashion market because the Intellectual Property High Court (IP High Court) has developed case law that sets a high hurdle for fashion designers to meet in order to register their clothing and accessories as 3D marks without using the marks widely in Japan before filing for registration. The JPO Trademark Examination Guidelines follow the IP High Court case law and consistently refuse registration based on the lack of inherent distinctiveness of the shape and packaging of goods and services. This practice disadvantages small designers and non-Japanese designers, frequently preventing them from registering the unique shapes of their fashion designs as trademarks.

This article reviews the case law that interprets JTA’s provisions as requiring distinctiveness and non-functionality and the JPO’s examination guidelines from a comparative law perspective, and argues that the current examination practice is inconsistent with the Ministry of Economy, Trade and Industry’s strategy focusing on designs and the legislative intent to introduce a 3D trademark system in the JTA. It urges the IP High Court to change its case law to find inherent distinctiveness of 3D marks, including fashion designs, if the 3D marks are unique and significantly depart from the common shape of the goods that the 3D marks are used in association with.

Keywords: Japan, Trademarks, Fashion, Cuteness (Kawaii), Ministry of Economy Trade & Industry (METI), Unfair Competition Prevention Act (UCPA), Distinctiveness