The Act Partially Amending the Unfair Competition Prevention Act, etc. has been promulgated.
The pillars of the amendment are as follows:
(1) Strengthening the protection of brands, designs, etc. in light of the diversification of business activities accompanying digitalization
(2) Development of intellectual property procedures in response to COVID-19 and digitalization
(3) Institutional development concerning international business expansion
The main points are as follows. (Excerpted from the website of the Ministry of Economy, Trade and Industry)
(1) Strengthening the protection of brands, designs, etc. in light of the diversification of business activities accompanying digitalization
① Expansion of registrable trademarks
Under the Trademark Act, trademarks similar to those already registered by others cannot be registered. However, registration will now be possible if there is consent from the prior trademark owner and there is no likelihood of confusion as to source.
※ At the same time, under the Unfair Competition Prevention Act, acts of using such registered trademarks without unfair purpose will not be treated as unfair competition.
Under the Trademark Act, in certain cases, trademarks including personal names may be registered without the consent of others, so that individuals conducting business under their own names can use them as trademarks.
② Relaxation of requirements for design registration procedures
Under the Design Act, the requirements for obtaining relief when the creator, etc. has disclosed multiple designs before filing will be relaxed.
③ Prevention of imitation acts in digital space
Under the Unfair Competition Prevention Act, the provision of goods in the digital space that imitate the configuration of another’s goods will be included within the scope of unfair competition, thereby allowing exercise of rights such as injunctions.
④ Strengthening the protection of trade secrets and limited provision data
Under the Unfair Competition Prevention Act, in services where big data is shared with other companies, data will be protected as limited provision data even if it is managed as confidential, making it possible to seek injunctions against acts of infringement.
Under the Unfair Competition Prevention Act, protection of trade secrets, etc. will be strengthened by allowing claims for damages to be increased by the amount equivalent to a license fee exceeding the production capacity of the infringed party.
Under the Patent Act, the Utility Model Act, and the Design Act, in compulsory license procedures where a license is granted without the consent of the right holder under certain circumstances, it will be possible to restrict access to submitted documents containing trade secrets.
(2) Development of intellectual property procedures in response to COVID-19 and digitalization
① Revision of the service-of-documents system
Under the Patent Act and the Act on Special Provisions for Procedures related to Industrial Property Rights, if documents such as examination results cannot be mailed to persons residing abroad, they will be deemed served by publication, and a system for service via the Internet will also be established.
② Revision for digitalization of paper-based procedures
Under the Patent Act, the Trademark Act, and the Act on Special Provisions for Procedures related to Industrial Property Rights, patent-related paper procedures will be digitized, and it will become possible to make lump-sum payments of fees in international trademark applications.
③ Revision of the fee reduction/exemption system
Under the Patent Act, regarding fee reductions for SMEs in connection with patents, certain limitations on the number of cases will be introduced, taking into account the purpose of the system to encourage inventions and promote industrial development by those with limited resources.
(3) Institutional development concerning international business expansion
① Strengthening and expanding penalties for foreign public official bribery
Under the Unfair Competition Prevention Act, in order to more effectively implement the OECD Convention on Combating Bribery of Foreign Public Officials in International Business Transactions at a higher standard, statutory penalties for individuals and corporations will be increased. In addition, acts of bribery committed abroad solely by foreign employees of Japanese companies will also be subject to punishment (and corporations will also be subject to expanded liability under the dual liability provision).
② Clarification of procedures for cases of international trade secret infringement
Under the Unfair Competition Prevention Act, if infringement of a Japanese company’s trade secrets occurs abroad, lawsuits can be filed in Japanese courts and the Japanese Unfair Competition Prevention Act will be applicable.
For details, please refer to the JPO website:
・“Act Partially Amending the Unfair Competition Prevention Act, etc. (Act No. 51 of June 14, 2023)” (https://www.jpo.go.jp/system/laws/rule/hokaisei/sangyozaisan/fuseikyousou_2306.html)
・“Outline of the Act Partially Amending the Unfair Competition Prevention Act, etc. [Comprehensive IP Act]” ※PDF data (https://www.jpo.go.jp/system/laws/rule/hokaisei/sangyozaisan/document/fuseikyousou_2306/01.pdf)
