Japanese IP Law Revisions of 2023
On June 7, 2023, the Diet passed a bill for revising several IP laws in Japan, and the revisions were promulgated on June 14, 2023. Below are the major points of revision, most of which have been reported in our previous articles. These revisions will take effect within a year from the date of promulgation (the actual date is yet to be determined).
<Revision of the 2023 Unfair Competition Prevention Act (the “UCPA”)>
As reported in our article of May 19, 2023, the acts of imitating another person’s product design in the virtual world will also be considered as an act of unfair competition under the revised UCPA.
<Revision of the 2023 Trademark Act>
The (i) Consent System for coexistence of trademarks, and the (ii) relaxation of requirements for registration of trademarks containing a combination of a surname and a first name, have both been introduced in the revised Trademark Act. The details of the revision are basically as reported in our article of January 30, 2023.
The actual wording added to the relevant provision of the Trademark Act (Article 4, paragraph 1, item (8)) in relation to the latter revision was that another person’s full name shall be “widely known among consumers/traders in the field of goods or services wherein the trademark will be used” to become an obstacle for registering a trademark including the same name.
<Revision of the 2023 Design Act>
In Japan, there is a one-year grace period for filing a design application for a design that has lost novelty, which means that an exception to lack of novelty will be applied for a design that was first publicly disclosed within one year prior to filing the application. The current requirements for the exception are relatively strict though, and in a case where multiple prior disclosures were made by the acts of the designers or their successors (including the applicant; hereinafter, the “Designers”), the applicant must file evidence of “each and every occasion” of the public disclosures within 30 days (non-extendable) from the filing date of the application. That includes prior public disclosures of not only designs that are identical, but also similar to the filed design.
This requirement was burdensome for the applicant, for if the Examiner finds any prior publication that the applicant failed to file as evidence in the course of examination, such publication could be cited in an Office Action and cause the application to be rejected in the end. In fact, according to the JPO’s statistics of 2021, among the design applications for which the Designers’ own prior public disclosures were cited in an Office Action, more than one-third (36.2%) had received such Office Action due to the failure of filing exhaustive evidence upon requesting exception to lack of novelty.
Under the revised Design Act, the applicant will only be required to file evidence of the “first public disclosure” among all disclosures of “identical and similar designs of the filed design” that were made by the Designers within the one-year grace period. All identical and similar designs disclosed by the Designers following such first public disclosure will be excluded from prior art in the examination of the filed design. This is a welcome revision as it will greatly lighten the burden for applicants in keeping record of their prior public disclosures as well as filing evidence for the exception to lack of novelty.