Spotlight Interview: John Kakinuki on the progress of Japan's intellectual property rights system | Print |
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December 2005 -- John Kakinuki, partner at Baker & McKenzie in Tokyo, spoke to JETRO about the significant progress Japan has made in the last ten years in protecting the intellectual property rights (IPR) of foreign companies conducting business in Japan.  Of his 20 years with the firm, Mr. Kakinuki has spent 15 years at the Tokyo office and has served two years each as governor and vice president of the American Chamber of Commerce in Japan and before that, six years as chair of its intellectual property committee.  He was a key facilitator in negotiations between the U.S. and Japanese governments and IPR organizations on improving Japan’s IPR system and helped bring about many of the IPR provisions granted in Japan today.

JETRO: Could you go over some of the changes in Japan’s IPR system over the past years?

Kakinuki: Japan has made a lot of progress in the past ten years.  Ten years ago, I was fighting the same battles in Japan that people are now fighting in China.  Japan is now a fully modern intellectual property protecting country.  The courts are fair, and the patent office is fair.

Things improved bit by bit through the 60s and 70s.  But the early 80s was when we were having serious battles with the Japanese patent office and the Japanese government.  I went into a lot of negotiations with representatives of the United States government and the United States business community with the Japanese government to negotiate on harmonization and modernization of the Japanese IPR system.  The Japanese patent office started to give us a lot of what we’ve been asking for around the mid-90s to the early 2000s.

And what did we get?  We got broader protection of patents, meaning that the Japanese patent office and the Japanese courts stopped interpreting patents very narrowly.  This was helped by the fact that in the last 20 years, Japanese companies have become bigger patent owners than American companies.  The courts also began to be more aggressive in finding what constitutes patent infringement, and they began giving bigger damages awards.

So those are the sorts of improvements we’ve seen for patents in the last ten years.  And in the trademark world, we’ve also seen similar pro-IPR changes.  Now, until a few years ago, a company had to show that its trademark was famous in Japan to be able to sue another company for unfair competition, and the requirement to show fame in Japan was very high.  You had to submit a lot of sales documents and submit records showing a lot of money spent on advertising in Japan.  But now, one can sue for unfair competition based on a trademark shown to be famous overseas. 

JETRO:  And you said this wasn’t possible until a few years ago.  What happened a few years ago that allowed this?

Kakinuki: Amendments were made to the Trademark Law and the Unfair Competition Prevention Law.  The Trademark Law was amended to allow you to oppose or invalidate third-party registrations based on fame overseas.  And the Unfair Competition Prevention Law was amended to allow you to sue someone based on a famous mark, removing the limitation that the marks be famous “in Japan”.  You could always sue someone over a famous mark, but in the old days, you had to prove it was famous in Japan which could beg the question when a free-rider who notices that a brand is becoming well known overseas tries to register or use the mark in Japan to get leverage over the true brand owner.  This used to be a very common practice, where unscrupulous Japanese “trademark brokers” would register a well-known foreign mark then use it to try to force the brand owner to use them as distributor or licensee when they entered the Japanese market, or else they would try to sell the trademark registration to the foreign brand owner for a high price.  This practice still continues to a certain extent, but to a much smaller degree than before.

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