Episode 14

Even if a trademark or design is not registered, it is possible to seek an injunction or damages for infringement under the Unfair Competition Prevention Act.
However, while the hurdle for proving the requirements for an injunction or damages under the Unfair Competition Prevention Act is high, the existence of a trademark right or design right, which requires registration with the Japan Patent Office, is proven by registration. Furthermore, in a claim for damages, intent or negligence is also presumed.
In a lawsuit (Tokyo District Court, 2018 (Wa) No. 26166, judgment dated November 30, 2020), in which a design right holder for a "prefabricated house" filed a lawsuit alleging that the defendant's actions constituted an infringement of the design right and a violation of the Unfair Competition Prevention Act, the violation of the Unfair Competition Prevention Act was not found, but the infringement of the design right was found.
In a lawsuit filed by the owner of the registered trademark "Bike Lifter" for the designated product "transport dolly for motorcycles" alleging that the defendant's actions constituted infringement of the trademark right and violation of the Unfair Competition Prevention Act (Osaka District Court, 2015 (Wa) No. 547, judgment dated January 19, 2017), the violation of the Unfair Competition Prevention Act was not found, but the infringement of the trademark right was acknowledged.
In order for a product to be considered an "indication of goods, etc." under Article 2, Paragraph 1, Item 1 of the Unfair Competition Prevention Act, 1) the shape of the product must have objectively distinctive features that are different from other similar products (particular distinctiveness), and 2) the shape must have been used exclusively by a specific business for a long period of time, or the product must have become well-known among consumers as an indication of the source of a specific business through extremely powerful advertising or explosive sales performance (well-knownness) (Intellectual Property High Court, 2012 (Ne) No. 10069, judgment dated December 26, 2012).
The Unfair Competition Prevention Act imposes a high hurdle for proving the existence of rights, so if you fail to register a trademark or design right, it may become difficult to exercise your rights.