Trademark law in Japan: Kazuko Fujita and lessons for trademark registration in Japan.

The Balancing Act: Kazuko Fujita

Kazuko Fujita is founder and director of the LIL (Legal Interface Liaison) International Patent & Trademark Firm, responsible for an office of 30 staff, a fully qualified benrishi (Japanese patent attorney), a wife and a mother of two children. Much is written in Japan about the young generation of dynamic, ambitious women who choose to have a career over a traditional family role. Ms Fujita appears to have chosen both. When asked about how she has managed to balance her work and family life, she responded that, "It is vital to separate the two. You can't focus properly on your children while you are thinking about work, and the same is true the other way--it's safest to divide your time carefully and give each the necessary amount of attention." Undoubtedly this is a case of 'much easier said than done' but she is adamant that making a double commitment to both career and family is both a realistic and very rewarding goal.

Having always shown academic ability, Fujita won a place at Seikei University, one of Japan's top academic institutions. Its alumni include former President of the Japan Bar Association, Go Kajitani, and several famous novelists. Graduating from the Faculty of Economics & Management, Fujita showed a strong aptitude for marketing and then sailed into her first job at the Tokyu Agency, one of Japan's most powerful marketing and advertising agencies. However, having always had an interest in intellectual property (IP), in 1994 she embarked on a career as a benrishi working at a patent firm in Tokyo. In total there are 7,264 benrishi in Japan of which only 842 are women. Fujita has a wide knowledge and experience of IP law and her firm has put a great deal of effort into handling trademark issues.

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Understanding trademark law in Japan

As with most aspects of modern Japanese law, the origins of Japan's trademark laws can be traced to the Meiji period when Japanese legal experts studied European law extensively and ended up passing Japan's first trademark law in 1884--based largely upon the German law enacted a decade earlier. However, even before that, in 1860 the Tokugawa shogunate sent over 75 scholars to the US to study intellectual property and in his book Japanese Trademark Jurisprudence, Kenneth Port argues that there was a rudimentary trademark system in existence throughout the Tokugawa period (1603-1868). Like so many of life's complications, the trademark system apparently started with a drink. Port claims that as sake brewers started to evolve into companies that marketed and sold their products beyond their immediate local vicinity, they began to use symbols in order to prevent confusion among customers, and plagiarism from rivals. Throughout the Meiji period however, the laws for the protection of IP in Japan were gradually brought into line with those of Europe and the US.

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According to Fujita's partner at LIL, Fumihiko Yagisawa, a fellow benrishi, "foreign corporations do not have a sufficient understanding of trademark law in Japan. Many foreign companies in Japan don't realize that the TM mark granted by the authorities in the US does not register them globally." It is thus necessary to make an application in Japan regardless of whether TM status has been attained. Failure to register a trademark through the Japanese system could leave companies open to accusations of infringement should a Japanese organization beat them past the post. It might also force them to change their established brand name solely for the Japanese market--an action that could be damaging for business given the Japanese consumers' preference for brand heritage. In registering trademarks in Japan, according to Yagisawa and Fujita, there are three major difficulties to overcome.

1. The language barrier

Applications must be submitted using a special form of Japanese. The format does not need to be as detailed as required by the authorities in the US but the overview must be written according to Japanese convention. Beyond this, so-called 'Japanese English' can be very confusing for both the party making the application and the trademark examiners. For example, in Japan the word 'Y-shirt' is used for a white business shirt while the Japanese refer to a food blender as a 'mixer.'

2. Concepts

It is difficult to make applications for products not yet in existence. For example, farming machinery that is common in Australia but not known in Japan is extremely difficult to describe to trademark examiners in Japan. This requires not only knowledge and experience of legal language but also a technical understanding of the product.

3. The examination process

In many countries such as the US, the outcome of applications is predictable. In Japan, the triangle of communication between the client, attorney and examiner can be as important to an application's success as the legal framework. The patent attorney is thus forced to transpose viewpoints in terms that can be understood on either side.

Both Yagisawa and Fujita have experience with these problems and LIL has put a number of measures in place to tackle the issues. Because both points 1 and 3 above relate to issues of communication, LIL have created a translation capacity of foreign and Japanese multilinguals who also have either technical or trademark law experience, and often both (see translation information box). In dealing with foreign clients, Yagisawa stresses that "in contrast to other Japanese patent firms that basically tend to correspond via email and letters, LIL prefer direct follow-up with clients by either telephone conferencing or in person, as well as using native speakers to enhance the quality of communication." Making regular trips overseas to visit clients, LIL stay in tune with client expectations and linguistic nuances as well as being able build up its international network from Russia to Saudi Arabia and from the US to Italy.

In addition to the above difficulties, Fujita told us that there is no consent system concerning trademark usage in Japan--in many countries a trademark can be registered even if there is a similar one in use, if consent can be gained from the other party due to there being enough difference in the product or service in question for there to be an absence of confusion. For example, Apple, The Beatles recording label in Abbey Road gave consent to Apple, the Macintosh computer manufacturer, to use the name for their computer business as there was no apparent conflict of interest--with the advent of iTunes and the iPod this has changed and become a notorious source of friction between the two.

In theory, in Japan such an issue could not arise because the nature of the business isn't considered in the application process, only in name. However, Michiru Takahashi, a Japanese trademark law expert from Jones Day says that in practice, "practitioners take a roundabout method ... [they] transfer the pending application to the owner of the cited mark, and then the mark is transferred back to them once it is registered." A convoluted system indeed, but one wonders if in today's world of boundless brand extension it might help prevent more headaches than it creates.

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IP protection for small-medium enterprises

In particular, Ms Fujita has experienced that foreign small-medium enterprises (SMEs) have difficulties understanding the Japanese system because they don't have the advisers and experience. Having written a book on protecting IP for SMEs (Judicial Business: Practical Defense of Brand Names for Small-Medium Enterprises) she is also sympathetic to the needs and difficulties of such businesses. For foreign SMEs she says that one of the main difficulties is realizing that "while in the US, the original inventor is considered to be the rightful owner of the patent, in Japan, the right belongs to the first to file a successful application--regardless of the timing of the original invention." This often leads to differences in expectation that can be particularly difficult for smaller companies who tend to be much more dependent on only one or a handful of inventions.

However, contextual differences aside, Fujita thinks that the greatest problem for SMEs is confidentiality, "either an employee lets slip the idea to a friend or the marketing starts too early and the media publicize a new invention or product before the application has gone through." Before they know it, a larger competitor is able to get everything up and running first and thus gets through the patent or trademark application process faster. It sounds obvious, but knowing when to let the cat out of the bag can be a very hard learned lesson if you don't know every nook and cranny of the law. In Japan the 'pro-patent' culture is a new development and inventors are still often inclined to wait until they are able to produce a complete product as opposed to getting in there and protecting the idea.

LIL are unique in that they actually employ a team of designers that can facilitate trademark registration from the formulation phase. While other firms may have staff capable of providing text, LIL is able to create logo designs, thus deepening their support services available for those entering the market for the first time or under a new name. For larger clients this facility is also useful if the logo needs special adaptation for Japan.

The road ahead