Introduction

The Japanese Group formed a special study group for Q 146 "International exhaustion of patent rights" in 1999. We have also formed another study group for this Q156. As in the previous study group for Q146, we have first focused our attention on the economic situation of the international trade. The first half of the study on the economic aspects relates to the toner cartridge of printers and copiers and its related after-sales services, and the second half to pharmaceutical products. Then, we have reviewed the present status of the Japanese trademark law to see if any improvement is necessary in that area of law.

In this report, we first present the results of our study before answering each question in the working guidelines. Since we analyzed the recent development of the patent law in connection with parallel import in our report responding to Q146, we do not repeat the same in this report.

As conclusion, we, the Japanese Group, believe that trademark owners as well as patent owners must be allowed to exercise their right against parallel imports of goods sold outside Japan with consent by them. However, the rationale may be different. In our report on Q146, we paid our attention to the fair opportunity for the patentee to recover the research and development cost. >From that viewpoint, we believed that giving the patentee full freedom in pricing in each market would enable them recover the research and development cost most effectively. On the other hand, trademark owners must be compensated for establishment and maintenance of goodwill in a market. Association between a trademark and goodwill is established and maintained in each market. The strength of the association may be weaker in a market than in another, which could result in a price difference in the two markets. We believe that maintaining such a price difference by blocking parallel imports must be within the right of the trademark owners.

In answering each question in the working guidelines, comments on the copyright law will be added for comparison. Although the copyright may not be regarded as one of the industrial property rights, we believe that the comparison will shed light on the issue.

Part I: The Present Status and Causes of International Price Differentials in the Toner Cartridges

1.

Toner Cartridges and Parallel Importation

Toner cartridges for use in electrophotograpic copying apparatuses (herein below referred to as "TC") are frequently imported into Japan from other countries where they have been put on the market by industrial property rights (IPR) owners or with their consents.

A TC includes therein a toner bottle containing toner used in developing an image in an electrophotographic copying machine, and generally other electrophotographic components such as a photoconductor and a cleaning blade are also packaged in a housing of the TC. The TC is attachable/detachable to and from a main body of a copying apparatus, and by attaching the TC to the main body of the copying apparatus, the copying apparatus is turned into an operable state.

When the toner in the toner bottle is consumed, the toner bottle is replaced with a new one. The other components, such as the photoconductor and so forth, are replaced with new ones at predetermined intervals when respective lives end. For protecting the environment, the empty toner bottle and used photoconductor and so forth are recovered by the manufactures. Further, when the life of the TC itself ends, the TC is recovered by the manufacturer so as to be used again by itself after having been refurbished, or to be broken apart such that the materials and components of the TC can be used again (such activities hereinafter collectively called "recycling").

Currently, almost all of the major manufactures of electrophotographic copying apparatuses, toner and TCs have their respective main developing and manufacturing facilities in Japan, and the TCs distributed in Japan by IPR owners are those manufactured in Japan. Therefore, the current parallel importation problems relating to TCs in Japan are caused by importation of TCs having the same specification as those manufactured and distributed in Japan by the IPR owners, which have been manufactured and put on the market in other countries by subsidiary or affiliated companies of the IPR owners or with their consents, to Japan from the other countries.

The TCs manufactured in Japan by the IPR owners are provided to final users via subsidiary or affiliated sales companies of the IPR owners, and further through retail stores in some territories of the market. They are generally sold through face-to-face contact of sales persons with the customers. On the other hand, the parallel importers ship the imported TCs directly to independent retail stores.

2.

Price differentials between Japan and other countries

The market prices of TCs in the world-wide market ascend in order of Oceania, Asia, U.S., Europe, and Japan. The suggested prices of TCs manufactured and distributed by the IPR owners in Japan are about 3-4 times of the market prices of those manufactured in U.S. or Europe. Therefore, Japan tends to be targeted by the parallel importers.

Often, a large number of the TCs having the same specification as those manufactured and distributed in Japan, manufactured in other countries by overseas parent or subsidiary or affiliated companies of the IPR owners, are bought by the dealers in those other countries and shipped to Japan. For example, US dealers ship the TCs, which have been bought in U.S. from a U. S. subsidiary of the IPR owner, to Japan at such prices in which the shipping cost is just added to a US net sales price. The parallel importers offer the parallel imported TCs, after adding their margins to a landed cost, at market prices of about two-third of those suggested prices of the TCs manufactured and distributed by the IPR owners in Japan. Depending upon the foreign exchange rate and the discount such as a sales promotion fee offered in the other countries, the price differentials between Japan and the other countries may be larger, increasing the chance of parallel importation to Japan.

3.

The causes of the price differentials

The market prices of TCs in Japan are higher than those in other countries, mainly because that the costs in deriving the profits in the Japanese market, that have been necessitated by the following environments peculiar to the Japanese market, are reflected on the prices of the TCs in Japan;

The demand of the Japanese customers with respect to copying quality is high. Specifically, because of Kanji characters, a high resolution is required, and further, a quality copy is demanded even under a high humidity and temperature condition.

The material costs of TCs are high, due to a long-time existing raw material manufacturing infrastructure in Japan.

The labor cost in Japan is relatively high.

Specifically, the strong demand of Japanese customers for a quality copy has led to extensive and continuing development activities, as evident from that the average development expense ratio to the revenue of Japanese copying apparatuses manufactures is high as about 10% and two Japanese copying apparatuses manufactures rank in top ten companies in terms of the number of Japanese Laid-open patent applications.

Further, the strong demand of Japanese customers for the quality copy has led to the establishment of a complete servicing system for a copying system including a copying apparatus, consumable items such as a photoconductor and toner, and the maintenance of the copying system. The servicing system is consisted of a scheduled maintenance regularly performed based upon the number of copies and an emergency maintenance performed for unexpected troubles. These maintenance services are performed by service persons having high level problem-solving skills, and in particular, the emergency maintenance is performed at extraordinarily quick response speed.

The costs of these activities, inherently high because of the high labor cost in Japan, are all reflected in the prices of the TCs in Japan, resulting in the high market prices of TCs when compared with those in other countries.

4.

The effects that may be caused if the IPR owners cannot use the IPR in the countries of import to block parallel importation

Increase of the parallel imported goods and decrease of the goods manufactured and sold by the IPR owners

Decline in the market prices and retreat of the parallel importers

Decline of the business profits of the IPR owners and difficulty in continuing the servicing and recycling the goods

Collapse of a sales and service system and restructure of the after-sales market

Implementation of non-compatible design and transfer of development and manufacturing functions to overseas countries

5.

Question about International Exhaustion of IPR

Generally, the prices of TCs in Japan are set by the IPR owners based upon the total cost of a copying system including a copying apparatus, consumable items such as toner and a photoconductor, and the maintenance of the copying system. The characteristic points of the Japanese market reside as described above in that the demand of Japanese customers with respect to the copying quality is relatively high because of Kanji characters and the servicing quality demanded in Japan by the Japanese customers is considerably higher than those demanded in other countries. Because the developing activity for developing TCs satisfying the above-described high level demand of the Japanese customers and the servicing activities for meeting the above-described high level demand by the Japanese customers are performed at relatively higher labor costs in Japan, the prices of TCs in Japan are by necessity higher than those in other countries.

On the other hand, parallel importers do not face the risk of investments in research and development, and manufacturing, marketing, servicing, advertisement and promotion, and recycling, which the IPR owners bear. Specifically, the parallel importers offer their parallel imported TCs at considerably lower prices to independent retail stores, as the components of copying systems offered and serviced by IPR owners, and evade maintenance and recycling service for their parallel imported TCs by relying on the servicing and recycling system of the IPR owners.

The parallel importation by parallel importers is "a sneaking free ride" on the goodwill of IPR owners and the reputation of their trademarks, which have been established through extensive efforts by the IPR owners in developing the products and improving the quality of the products and services and in advertising and promoting the products and services and their trademarks, and impairs the equitable right of the IPR owners for gaining a fair return on their investments.

6.

Conclusion

Parallel importation of TCs into Japan divests patent owners of Japan of the equitable opportunities for the patent owners to fairly recover the development cost for a copying system including the TCs, developed in Japan. The parallel importation is the activities to sneak free ride on the credit trademark owners have established in distribution, servicing and recycling in Japan, without bearing the equitable cost, and impedes the growth of the trademarks owner's businesses. Therefore, exhaustion of industrial property rights (patents and trademarks) relating to TCs should not be admitted.

Part II: The Global Pricing of Pharmaceuticals and the Underlying Reason in the Context of Its Relevance to Parallel Importation

Pharmaceuticals and Parallel Importation

Pharmaceuticals are susceptible to parallel importation chiefly for the following reasons:

Pharmaceuticals are in themselves international products effective regardless of differences in various factors such as the country and ethnic race.

Pharmaceuticals are light and small in size and generally high in price (cf. steel and cement).

Price differentials among countries, which are large, arise inevitably, and

For one therapeutic area, a number of pharmaceuticals with different mode of mechanism are available and this brings about stiff competition and, in most cases, an oversupply of products.

The reason why parallel importation of pharmaceuticals does not occur in Japan may principally be ascribed to the strict requirements imposed by the pharmaceutical affairs authorities. Nevertheless, this barrier of requirements against parallel importation is not necessarily insurmountable.

2.

Global price of pharmaceuticals

The Japanese Group reported in response to Q146 that the price differentials of 34 major pharmaceuticals in 5 developed countries (i.e. USA, UK, Germany, France and Japan) are such that when Japan's price is taken as 100, that in USA, where the price is highest among the 5 countries, is rated 181, whereas that in France, where the price is lowest is rated 74, showing a 2.4-fold price difference between the countries with the lowest and highest price. In Asia, unreported data show that the relative prices of product X of company Y in Japan, China, Korea and Thailand are 100, 58, 48 and 30, respectively, when the price in Japan is taken as 100.

Thus, such enormous differences in price of pharmaceuticals can easily trigger parallel importation from countries with lowly priced to highly priced pharmaceuticals. According to cases in the EEA, it is said that parallel importation is profitable if the prices of parallel imported products and those of the IP holders differ by 25% or more.

3.

Reasons behind global price differentials of pharmaceuticals

Pharmaceuticals are directly linked to life and health. They are also closely linked to the social welfare and medical supply systems. Therefore, governments are actively involved in the determination of pharmaceutical prices as seen in Europe and Japan, although the measures taken and the degree of involvement differ from country to country. This means that suppliers of pharmaceuticals are not free to fix the prices on the basis of their market policy, and this brings about an established price differential of pharmaceuticals among the countries involved. In addition, the following factors mainly contribute to the global price differential of pharmaceuticals:

Variations in per-capita national income

Discounting or donation of products to the LDCs

Differences in the patent system and the remaining patent term among the countries

Differences in regulatory systems, product liability laws and taxation

Inflation differences and exchange-rate changes.

4.

Comparisons between parallel importation of pharmaceuticals and the international exhaustion of IP rights

At a glance, parallel importation of pharmaceuticals may seem like an answer to the international price differential of pharmaceuticals. However, insofar as Japan is concerned, the benefits that the state and ultimately the consumers, or patients, draw by parallel importation is quite small from a pharmaco-economic aspect. This is so presumed because the pharmaceutical prices are grossly controlled by the government and the prices of parallel imported products would be set to closely match those of the IP holder's products (parallel imported products would be treated as generic drugs whose prices are set at 90% that of the IP holder's products). Consequently, the market share of the parallel imported products would be fairly small. According to observations in Europe, up to 80% of the price gap may be acquired by traders, showing greater benefits for individual parallel importers than for the public in general. Thus, parallel importation of pharmaceuticals is only marginally beneficial from the viewpoint of public interest.

Furthermore, the repackaging of parallel imported products is necessitated due to differences in the language used, route of administration, dosage, etc. Such repackaging could prove disadvantageous for both IP holders and consumers in the case of damage of product quality. As a matter of fact, quite recently, the FDA opposed the bills passed by both Houses regarding the promotion of parallel importation of pharmaceuticals from Canada and Mexico aimed at reducing the high prices of pharmaceuticals in the USA, on the grounds that it would render the imported pharmaceuticals to be unsafe. In Japan, the trademark holder of MAGAMP won a case arguing that repackaging and re-labeling of the genuine fertilizer by a third party infringed the trademark right owned by the proprietor, regardless of whether such repackaging caused deterioration of the fertilizer of not, and further that in the event of deterioration, the confidence of the trademark owner would be damaged and the interest of the end users lost.

From the IP holder's viewpoint, during the effective period of IP rights, parallel importation is undesirable but occurs due to international price differentials which arises sometimes unwillingly from uncontrollable events and circumstances. Put simply, prohibiting the right to profit doubly in the first and second country would not lead to obtaining the maximum profit in the first country of the products. This is surely a great disadvantage for the IP holders. If the international exhaustion of IP rights were to be allowed, it would inevitably bring about the undue outcome of obstructing the series of processes whereby the enormous funds put into the R&D of new pharmaceuticals are recovered, and the continuing of R&D activities for further new products are made possible. If account is taken of the low level of the social benefits achieved by parallel importation as mentioned in the previous section, the application of international exhaustion of IP rights to the extent of eliminating by the law is unjustified.

Pharmaceuticals possess a high degree of public good. It is not acceptable to try to avoid or refuse putting pharmaceuticals on a market in certain countries just for the sake of avoiding foreseeable parallel importation of the product to other high price countries (Merck v. Primecrown). In actual fact, no one is able to control the supply of products in such a way as to only meet the domestic consumption and avoid the over-supply of pharmaceuticals for parallel importation.

If the proposition and encouragement of parallel importation is aimed at the leveling of global prices of pharmaceuticals, then, such an aim would not be achieved due to established disparity of global prices of pharmaceuticals, as described above.

Even proponents of parallel importation admit that free pricing is the prerequisite for the international exhaustion of IP rights (ILA, November 1998, Geneva). With regard to parallel importation of pharmaceuticals manufactured under a compulsory license, the international exhaustion of patent rights is not permitted even within the EEA (Pharmon v. Hoechst). In other words, with pharmaceuticals where no free price fixing by the IP holders is realized, there can be no premise for justifying parallel importation under the international exhaustion of IP rights.

5.

Conclusion

In allowing the parallel importation of pharmaceuticals, assuming that the international exhaustion of IP rights is deemed admissible, the benefit to be acquired by the general public is small, and the right of IP holders is unduly restricted. Moreover, parallel importation of pharmaceuticals will not bring about the anticipated leveling effect of the global prices of pharmaceuticals. Therefore, the international exhaustion of IP rights should under no circumstances be used as justification for admitting parallel importation.

Part III: Parallel Imports of Goods Bearing Registered Trademarks

1.

Japanese Precedents of Parallel Imports and Trademarks

In Japan, the Supreme Court has no precedents concerning parallel imports and Trademarks. However, there is a famous case named the "Parker" case, the decision of the Osaka District Court of February 27, 1970. In this decision, the Osaka District Court mentioned that Trademarks have two major functions, namely the "function of indicating origin and ownership" and the "guarantee function", and took the position that parallel imports are permissible as long as such functions of the Trademark are not impaired.

It is recognized that, after this decision, the Japanese Courts are applying this concept of the Osaka District Court in treating parallel imports of goods bearing Trademarks. Summarizing the precedents of the lower Courts, parallel imports are permissible in Japan when, (i) the Japanese Trademark owner and the person from whom the imported good originated are the same or can be deemed to be the same, and (ii) the quality of the imported good is not quite different from the "Authorized goods".

Although this standard may look similar to the "affiliate exception" and the "physical and material differences" that are considered in the US (such as in the Lever Bros. case), the Japanese Courts are more reluctant in finding differences in the quality of the goods.

2.

Difference between Trademarks and Patents

In considering the matter of parallel imports and Industrial Property rights, we felt that Trademarks and Patents should be treated differently. Patents concern technology and although the market is considered when deciding to which Region applications should be made, Patents do not have strong ties with the market in nature. On the other hand, as mentioned below, Trademarks have strong ties with the market and the Country or Nation where it is registered. Therefore, it may be said that Trademarks are more "territorial" in nature than Patents. That is why we came to a conclusion that more strict standards should be applied to parallel import of goods bearing Trademarks.

3.

Our view to the Japanese precedents

The Japanese Courts allow parallel imports to a certain extent by reason that the "function" of the Trademark is not impaired. However, we find that this reasoning gives too little consideration to the fact that Trademark rights are private rights. Although we are aware that Trademarks also function to protect the general public, Trademark rights are originally rights to protect the business of the Trademark owner. Adding to the functions mentioned by the Courts, Trademarks have "advertising functions" and this "advertising function" is becoming more and more important. The "private" nature of Trademarks should be given weight.

4.

Analysis of the present market

At present, a "world market" does not exist. Unless the countries are tied strongly by region, language and culture, the market of one country is individual from a market of another. Therefore, different business strategies are taken in different countries, and decisions will be made on how much investment should be made in each country to develop each market. By such strategies, the investment and sales promotion in each country will differ and the goodwill carried by the same Trademark will be different in different nations. Strategies will then be based on the goodwill created in each country and in countries where the guarantee function and advertising function of the Trademark is strong, the Trademark itself will add certain value to the goods. In such countries, it will be possible to sell such goods at higher prices. The high prices created by such goodwill are created because there was enough investment of resources to develop the market and such high pricing should not be looked on as something "evil". Prices are created by the balance of demand and supply and consumers buy such products at high prices because they trust the goodwill carried by the trademark. It is wrong to see that the consumers are victimized by such high pricing.

If the same products are imported without any restrictions from other countries at lower prices to countries where such high pricing is accepted because of the trust and goodwill the Trademark carries, the Trademark owner will lose its proper profits created by its investment and on the other hand, parallel importers will benefit by free-riding on the goodwill created by the Trademark owner. Maybe the consumers will be happy because they can acquire the same products at lower prices, but it should not be forgotten that these lower prices are less than the prices that the consumers are willing to pay.

5.

Consideration of Anti-Trust Laws

Anti-Trust or Anti-Monopoly Laws are laws that should be applied when the pricing process of matching the demand and supply is malfunctioning. In order to keep this pricing process working, there should be competition in the market and this competition includes competition between different brands (inter-brand competition) and competition within a certain brand (intra-brand competition). However, in considering the "market" where competition takes place, the market in each country should be considered and it is not proper to see the world as one market. To accept parallel imports means to create intra-brand competition throughout the world, but such worldwide intra-brand competition is not at all realistic. If such worldwide intra-brand competition should take place, a single worldwide business strategy will be taken, and the prices of a certain product cannot be significantly different worldwide. This means that the prices will become lower in wealthy countries and higher in poor countries.

6.

Conclusion of the Japanese Group

As mentioned above, given the present situation of the markets, to accept parallel imports of goods bearing Trademarks leads to the free-riding of investments made in each market and will bring a difficult situation for the people in poor countries. Therefore, we conclude that parallel imports of such goods should be banned without exceptions.

However, this conclusion is based on the present situation of the world market, and if a real "world market" can be created in the future, we may have to reconsider our conclusions.

Part IV: Answers to the Questions

1.

Is there international exhaustion of (i) patents; (ii) trade marks; and (iii) other industrial property rights? That is, can an industrial property right owner use industrial property rights against parallel imports from another country, when the imported products have been put on the market in that country by the industrial property right owner or with his consent?

Patents: Patent owners can use their rights against parallel imports.

Trademarks: Trademark owners are generally precluded from using their rights against parallel imports of "genuine" goods, though the Japanese law is unclear as to what are regarded as "genuine" goods.

Copyrights: Copyright owners cannot use their rights against parallel imports, because the first sale doctrine applies to them under the Japanese law.

2(a)

Can contractual restrictions imposed by an industrial property right owner be used to limit the effect of international exhaustion?

Patents: If a patent owner fails to impose a contractual obligation not to resell it to Japan when the product covered by a Japanese patent is first placed in the market in a foreign country, regardless of whether a counterpart patent exists in that country or not, he will be deemed to have waived the right to enforce his patent against importation of that product into Japan.

Trademarks: The law is not clear in Japan.

Copyrights: The contractual obligation will not have an effect against third parties.

(b)

What is the effect of breach of contractual restriction by a purchaser - does exhaustion occur?

Patents: Breach of contractual restriction will not affect the right of the patent owner.

Trademarks: The law is not clear in Japan.

Copyrights: The contractual restriction does not affect the right of third parties under the first sale doctrine.

3(a)

If contractual restrictions can be used to limit importation, does it matter whether they are express or implied?

Patents: Contractual restrictions must be express in usual cases. However, if a product is sold in a foreign country in a manner that causes every reasonable person to believe that there should be a contractual restriction not to resell it to Japan, we could at least argue that the patent owner should not be deemed to have waived his right against parallel imports.

Trademarks: The law is not clear in Japan.

Copyrights: Even if the contractual restrictions are express, they will have no effect on third parties.

(b)

If contractual limitations are express, are there any particular marking requirements?

Patents: The recent Supreme Court decision said that there should be a label or the like to place subsequent purchaser of the product on notice that importation of that product into Japan is prohibited. The Japanese Group opposes to marking requirements.

Trademarks: The law is not clear in Japan. However, if a product sold in a foreign country is different from the corresponding product sold in Japan, even without marking, we could at least argue that the product sold in that country should not be regarded as "genuine" within the meaning of the Trademark Law. On the other hand, if the product sold in a foreign country is the same as the one sold in Japan, but designated as "Outside-Japan model" on its package, it is unclear whether parallel imports of that product is permissible.

Copyrights: Even if a label or the like is placed on the product, it would not prevent the application of the first sale doctrine.

(c)

If protected products are marked to indicate some marketing restriction, what are the consequences of removal or loss of any marking?

Patents: The question still remains unsolved in Japan. The Japanese Group is of the opinion that removal or loss of marking should not affect the right of the patent owner.

Trademarks: The law is not clear in Japan.

Copyrights: Marking is not relevant.

4.

Does international exhaustion of industrial property rights apply where a product has been put on the market under a compulsory license (if applicable)?

Patents: Although the Supreme Court decision said nothing about a compulsory license, the patent owner should not be deemed to have waived his right against parallel imports when the product was first placed on the market under a compulsory license.

Trademarks: It would be difficult to conceive a situation in which a trademarked product is placed in the market under a compulsory license of the trademark.

Copyrights: Copyright owners can use their rights against parallel imports of copies if the copies to be imported have been distributed in a foreign country under a compulsory license. We have a precedent in which importation of copies of paintings distributed in France under a court order was successfully blocked by the copyright owner. Since Japan has no compulsory license of a copyright, the copy made under the French court order was regarded as the same as a copy made in a country in which works of Japanese artists are not protected under one or more of the copyright conventions.

5.

Is "consent" which gives rise to exhaustion limited to specific arrangements, (for example a relationship with a subsidiary or affiliated company, or an agreement with a licensee), or a question of fact in each case?

Patents: The Supreme Court decision applies to a situation in which the product is placed in the market in a foreign country by a party that should be deemed identical to the owner of the Japanese patent. The Japanese Group believes that if the patent owner and the party in the foreign country are under a common control, they should be deemed identical. Although we believe that licensees are not identical to the licenser, the question still remains unsolved.

Trademarks: The law is not clear in Japan. However, it seems that what matters is whether the parallel-import product is the same as the product sold in Japan, but not the relationship between the party selling the product outside Japan and the owner of the Japanese trademark.

Copyrights: If a copy of a work is made and distributed in a foreign country by an act that would be permissible in Japan, importation of that copy into Japan is legal. Since copying by a licensee is permissible in Japan, copies made and distributed in a foreign country can be imported into Japan. In contrast, since copying under a court order does not exist in Japan, copies made and distributed under a court order in a foreign country cannot be imported into Japan, as mentioned above in connection with compulsory licenses.

6.

Can an IPR owner object to parallel importation where (a) goods or (b) their packaging have been modified?

Patents: (a) Although the Supreme Court decision said nothing about modification of goods, it is unlikely that the patent owner is deemed to have waived his rights if goods are modified. (b) Although the Supreme Court decision said nothing about modification of packaging, it would not probably affect the rights under a patent.

Trademarks: (a) If the goods are modified, they will be no longer regarded as genuine, and importation of modified goods can be blocked by the trademark right. (b) If the packaging is modified, it should be deemed that the trademarks are newly attached to the product without consent by the trademark owner. Therefore, it would probably preclude application of the doctrine of parallel imports

Copyrights: (a) and (b) Modifications of a work without the author's consent are prohibited under the Copyright Law, which recognizes the moral right of authors and artists.

7.

As well as stating the laws in their respective countries, the groups are also invited to (a) make any proposals for changes; and (b) offer any observations of interest on the topics raised above.

(i), (ii) and (iii) The comments of the Japanese Group are presented in the first three parts of this report.

Summary

As in responding to Q 146, the Japanese Group has formed a special study group for Q156, which has studied both economic and legal aspects concerning parallel imports. Based on the study, the Japanese Group believes that IP owners should be allowed to use their IP rights against parallel imports of patented and/or trademarked goods.

Because of the recent Supreme Court decision, patent owners can use their rights against parallel imports if they impose proper restrictions on the first purchaser as to the importation into Japan when the patented product is first placed in the market in a foreign country. However, labeling or some other method of notice is required to put subsequent purchasers on notice regarding the restrictions.

The Trademark Law of Japan is not clear about parallel imports. Because of an old precedent, it is widely believed that trademark owners cannot use their rights against parallel imports of genuine goods. The case law has not been well developed to define the "genuine" goods.

The Copyright Law of Japan is relatively clear about parallel imports. We have a statutory provision prohibiting importation of copies that are made in a foreign country by an act that would be regarded violation of the Copyright Law if committed in Japan. This provision is interpreted as permitting parallel imports if copies are made in a foreign country with consent by the copyright owner.

Résumé

Comme pour la réponse à la question Q 146, le Groupe japonais a constitué un groupe d'étude spécial pour la question 156, lequel a étudié à la fois les aspects économiques et légaux concernant les importations parallèles. Sur la base de l'étude, le Groupe japonais considère que les propriétaires d'importations parallèles doivent être autorisés à utiliser leurs droits d'importations parallèles vis-à-vis d'importations parallèles de marchandises brevetées et/ou portant une marque de commerce.

En raison de la récente décision de la Cour Suprême, les propriétaires de brevet peuvent utiliser leurs droits contre les importations parallèles s'ils imposent des restrictions appropriées au premier acheteur en ce qui concerne l'importation au Japon lorsque le produit breveté est mis une première fois sur le marché dans un pays étranger. Cependant, un étiquetage ou un autre procédé d'avertissement est nécessaire pour prévenir les acheteurs suivants, en ce qui concerne les restrictions.

La Loi sur les Marques de Commerce du Japon n'est pas claire en ce qui concerne les importations parallèles. En raison d'un précédent ancien, il est largement considéré que des propriétaires de marques de commerce ne peuvent pas utiliser leurs droits contre les importations parallèles de marchandises authentiques. La jurisprudence n'a pas été bien développée pour définir les marchandises "authentiques".

La Loi sur le Copyright du Japon est relativement claire en ce qui concerne les importations parallèles. Nous avons une clause réglementaire interdisant l'importation de copies qui sont faites dans un pays étranger par une action qui serait considérée comme une violation de la Loi sur le Copyright si elle était commise au Japon. Cette clause est interprétée comme permettant des importations parallèles si des copies sont faites dans un pays étranger avec le consentement du propriétaire du copyright.

Zusammenfassung

Wie bei der Beantwortung von Q 146 hat die japanische Gruppe eine spezielle Studiengruppe für Q 156 gebildet, die sowohl wirtschaftliche als auch rechtliche Aspekte bezüglich paralleler Importe untersucht hat. Basierend auf dieser Studie glaubt die japanische Gruppe, dass Eigentümer von geistigem Eigentum erlaubt werden sollte, ihre Rechte aus geistigem Eigentum gegen parallele Importe von durch Patente und/oder Warenzeichen geschützte Güter zu nutzen.

Aufgrund der kürzlich erfolgten Entscheidung des Obersten Gerichtes, können Patenteigentümer ihre Rechte gegen parallele Importe verwenden, falls diese dem ersten Käufer bei dem Import nach Japan wesensgemässe Beschränkungen auferlegen, wenn das patentierte Produkt zuerst in einem Markt in einem fremden Land angeboten wird. Jedoch wird eine Etikettierung oder eine andere Methode der Kennzeichnung benötigt, um weitere Käufer hinsichtlich der Beschränkungen aufmerksam zu machen.

Das japanische Warenzeichen-Gesetz äussert sich nicht klar bezüglich paralleler Importe. Aufgrund eines alten Präzedenzfalles wird weithin angenommen, dass Eigentümer von Warenzeichen ihre Rechte nicht gegenüber parallelen Importen von Originalprodukten nutzen können. Das Case-Law ist nicht gut entwickelt worden, um "Original"-Produkte zu definieren.

Das japanische Urheberrecht ist vergleichsweise klar hinsichtlich paralleler Importe. Wir haben eine gesetzliche Bestimmung, die den Import von Kopien verbietet, die in einem fremden Land durch eine Handlung hergestellt wurden, die nach dem Urheberrecht als Verletzung gelten würde, wenn diese in Japan begangen worden wäre. Diese Bestimmung wird als Verbot paralleler Importe interpretiert, wenn die Kopien in einem fremden Land mit Zustimmung des Eigentümers des Urheberrechtes hergestellt werden.