Trademark registration alone is not enough to protect your brand. Combine the Unfair Competition Prevention Act, copyright, design rights, and more — use an "IP mix" to protect your business from multiple angles.
"If I haven't registered a trademark, is there no way to protect my name?" — Not necessarily. The Unfair Competition Prevention Act can protect your brand under certain conditions, regardless of whether you have a trademark registration.
Using a product name, shop name, logo, or other indication that is widely recognized among consumers, in a way that causes confusion. Even without trademark registration, protection may be available if the name is "well-known in the region."
Criminal penalties apply: imprisonment up to 5 years or fines up to 5 million yen
Unauthorized use of a famous product name or logo. Injunctions and damages are available even without confusion (e.g., when used in an entirely different field). This prevents "free riding" on famous brands.
Selling products that are dead copies of another's product design or shape. Protection lasts 3 years from the date of sale. Product packaging designs may also be covered.
A confectionery maker that became famous for "Dojima Roll" changed its trade name to "Mon Chou Chou," triggering a major dispute.
Goncharoff Confectionary, an established confectionery maker in Kobe, had held the trademark "MONCHOUCHOU" since 1981.
The defendant company, which had rapidly grown with "Dojima Roll," changed its trade name to "Mon Chou Chou" in 2007 and prominently used it on shop signs and packaging. However, they had not conducted a search for similar trademarks before making the change.
The Osaka District Court found trademark infringement and ordered approximately 35.6 million yen in damages. On appeal, the Osaka High Court increased the amount to approximately 51.4 million yen. The defendant was also ordered to cease using "Mon Chou Chou" and changed its name to "Mon Cher."
Note: This case was based on trademark infringement under the Trademark Act; the Unfair Competition Prevention Act was not applied.
A company operating a go-kart rental business in Tokyo used "MariCar" — a well-known abbreviation of Nintendo's popular game "Mario Kart" — as its company name and provided costumes of Mario and other characters for customers to wear while driving on public roads.
The IP High Court found that "MariCar" was widely recognized among consumers as an abbreviation of Nintendo's famous game "Mario Kart." The defendant's conduct was held to constitute famous indication misappropriation under Article 2(1)(ii) of the Unfair Competition Prevention Act.
The court ordered approximately 50 million yen in damages.
Even with trademark registration, neglecting to manage your rights can lead to their loss.
The sushi restaurant "Kodai Suzumezushi Sushiman" held the registered trademark "Shofuku-Maki." As Ehomaki (fortune sushi rolls eaten on Setsubun) spread nationwide, Aeon, a major supermarket chain, sold "Juni-Hitoe no Shofuku-Maki." The trademark holder sued for an injunction and approximately 23 million yen in damages.
The Osaka High Court ruled that "Shofuku-Maki" had become a generic name for Ehomaki. The court found that "Shofuku" (meaning "inviting fortune") was a common Japanese phrase, and "Maki" is a suffix for sushi rolls. By around 2005, the term was widely used by supermarkets nationwide.
As a result, the court held that the trademark right did not extend to this use and entirely dismissed the trademark holder's claims.
In 1975, Sakamoto Brewery in Kagoshima coined the name "Kurozu" (Black Vinegar) for its pot-brewed natural rice vinegar. The name perfectly described the vinegar, which darkens as it ages.
However, at the time, there was insufficient awareness of IP protection, and the company did not file a trademark application for "Kurozu." As a result, "Black Vinegar" became a generic name for this type of product, and when Sakamoto tried to secure the rights later, it was too late.
Learning from this "bitter experience," Sakamoto Brewery now prioritizes IP protection: registering the distinctive pot shape and vinegar field scenery as trademarks, securing the new "Kurozu Farm" brand, filing international applications, and pursuing an active IP strategy.
The problem of overseas brand protection is not limited to large corporations. "Arita-yaki," a traditional craft from Saga Prefecture, also fell victim to trademark squatting.
In November 2002, a Chinese individual filed a trademark application for "Arita-yaki" in China. In November 2004, the Chinese Trademark Office approved the registration.
At the 2010 Shanghai World Expo, during a "Saga Prefecture Products Exhibition," Saga Prefecture could not use the name "Arita-yaki" for its own traditional pottery. They were forced to use alternative labels such as "Made in Arita, Japan" and "ARITA JAPAN."
Rather than relying on trademark rights alone, an "IP mix" that combines multiple intellectual property rights is more effective for brand protection.
| Right | What It Protects | Duration | Relevance for SMEs |
|---|---|---|---|
| Trademark | Names, logos, brand names | 10 years (renewable indefinitely) | Most Important |
| Design Right | Product designs, packaging | 25 years from filing | High |
| Copyright | Illustrations, photos, text | 70 years after author's death | High |
| Patent | Technology, manufacturing methods | 20 years from filing | Moderate (industry-dependent) |
| Unfair Competition Prevention Act | Well-known names, product forms, trade secrets | Conditional (form: 3 years) | Supplementary |
| Plant Variety Rights | New plant varieties | 25 years from registration (30 for trees) | Moderate (agricultural businesses) |
Kyoto-based Otokomae Tofu (with revenue exceeding 2 billion yen) established a brand in the highly competitive tofu industry through unique naming, packaging, and website design.
For IP protection, they combined trademark rights ("Otokomae Tofu," "Kaze ni Fukarete Tofu-ya Johnny," etc.) with design rights (container design) and confidential management of manufacturing know-how. Despite these efforts, similar products still appeared, demonstrating the need for ongoing IP protection efforts.
The "Amaou" strawberry developed by Fukuoka Prefecture uses plant variety registration to prevent unauthorized propagation while protecting the brand name with trademark registration ("Amaou"). By limiting authorized growers and controlling quality, they achieved a premium pricing strategy — an excellent example of combining IP rights for brand strategy.
Club Cosmetics, an established cosmetics manufacturer, held trademark registrations for "LOVE" in the cosmetics field.
An online retailer unknowingly used "Love cosmetic" as a brand name for its cosmetics line. The court ruled that "cosmetic" is a generic term for the product category with no distinctiveness, and the dominant element was "Love." Finding it similar to the plaintiff's "LOVE" trademark, the court awarded approximately 16.02 million yen in damages.
Your shop's recipes, manufacturing know-how, customer lists, and transaction terms may be protectable as trade secrets under the law. However, three requirements must be met for legal protection:
Managed as confidential: "Confidential" labels, access restrictions, password protection, etc.
Useful for business operations with objective economic value
Not publicly known; publicly available information is excluded
In the restaurant industry in particular, issues arise when employees leave to start their own businesses and take recipes or customer data with them. As in the Ganso Nagahamaya Case, former employee disputes require consideration from both trademark and trade secret perspectives.
Check the current state of your business's brand protection.
From trademark registration to leveraging the Unfair Competition Prevention Act to contract preparation — comprehensive support as both attorney and patent attorney.