The Japanese Market and the Protection of Made in Italy

The Japanese Market and the Protection of Made in Italy

The Japanese market, as the world’s fourth-largest economy in terms of nominal gross domestic product and a system characterized by the highest level of global economic complexity, is a commercial ecosystem marked by high systemic stability and strict regulatory standards. Through its adherence to nearly all major treaties administered by the World Intellectual Property Organization (WIPO) and the World Trade Organization (WTO), the country is one of the most active and integrated members of the international intellectual property system.

In this context, the Economic Partnership Agreement (EPA) serves as a legal pillar for mitigating tariff barriers and harmonizing technical standards, facilitating the flow of trade despite recent contractions in operating margins resulting from the volatility of the yen exchange rate.

The protection of the value of Made in Italy within the Japanese legal system does not pertain exclusively to mere product compliance with legal parameters, but extends to the safeguarding of intangible assets related to reputation and identity. From this perspective, intellectual property protection is integrated with economic diplomacy and institutional support to consolidate the trust of local operators and counteract phenomena that devalue imported products.

The prospects for market penetration by Italian companies are particularly significant in sectors covered by government development plans, with specific reference to the Green Transformation and the Digital Transformation. In these areas, high-tech solutions benefit from a favorable environment driven by the local market’s demand for sustainable innovation.

Intellectual Property Protection in Japan

Patents

Since 1978, Japan’s participation in the Patent Cooperation Treaty (PCT) has facilitated the internationalization of intellectual property. Through a single application, innovators can secure priority for their invention within a network that now includes 158 countries. This system guarantees the same legal validity as individual national filings, but with a significant reduction in processing time and costs.

Under domestic law, as set forth in the Patent Act (Law No. 121 of April 13, 1959), patent protection in Japan is structured as a regulatory system designed to encourage inventive activity through the protection and utilization of inventions, with the aim of promoting industrial development. The legal system defines an invention as a creation of high-level technical ideas that exploits the laws of nature.

The grant of exclusive rights is subject to strict requirements of novelty, industrial applicability, and inventive step, understood as the impossibility for a person skilled in the art to readily derive the innovation from the prior art. The Japanese legal system is based on the first-to-file principle, whereby the right to a patent belongs to the first applicant, and provides that protection formally arises only upon registration of the right with the Japan Patent Office, following the successful completion of a substantive examination.

In terms of the scope of the right, the patent grants the owner an exclusive monopoly on the commercial exploitation of the invention for a term of twenty years from the filing date of the application, with the possibility of obtaining extensions of up to five years for products, such as pharmaceuticals, that require lengthy approval processes for commercialization.

The law guarantees the owner robust judicial remedies against infringements, allowing for actions to seek injunctions against acts of infringement, the removal of means used to commit such acts, and compensation for damages. At the same time, the system ensures legal certainty through post-grant opposition procedures and invalidity proceedings, allowing for the revocation of the patent if it is determined that the legal requirements were not met from the outset, thereby ensuring a balance between private interests and the general freedom of economic initiative.

Trademarks

Japan acceded to the Madrid Protocol on March 14, 2000. Thanks to this instrument, it is possible to obtain trademark protection in Japan and in the other 131 member countries of the System through a single simplified international registration procedure.

From the perspective of local legislation, pursuant to the Trademark Act (Law No. 127 of April 13, 1959), trademark protection in Japan is intended to safeguard the commercial reputation of those who use them, while simultaneously contributing to industrial development and the preservation of consumer confidence. Japanese law defines a trademark as a distinctive sign comprising characters, figures, symbols, three-dimensional shapes, colors, sounds, or a combination of these elements, provided they possess distinctiveness and do not fall under the absolute grounds for refusal provided by law, such as the risk of confusion with public institutions or contravention of public order.

Exclusive rights are established solely through registration with the Japan Patent Office, following the “first-to-file” principle, which grants priority to the first applicant in time, resolving any conflicts between simultaneous filings through prior agreement between the parties or, as a last resort, by drawing lots.

The protection afforded by registration grants the owner the exclusive right to use the trademark for the designated goods or services for a period of ten years from the date of entry in the register, with the option of perpetual renewal for equal periods.

In terms of sanctions and remedies, the law provides the rights holder with a range of civil law instruments designed to combat counterfeiting, including injunctive relief to cease infringing acts, a request for the destruction of counterfeit goods and the equipment used for their production, as well as an action for damages. The system also provides for defensive trademarks, which allow the protection of a sign of exceptional renown to be extended to product categories other than the original ones, in order to prevent the dilution of its distinctive character. Finally, the legal system ensures market dynamism through the doctrine of revocation for non-use, which allows any interested party to request the cancellation of a registered trademark that has not been effectively used for an uninterrupted period of at least three years within the territory of the State.

Utility Models and Designs

Japan formally acceded to the Hague System for the International Registration of Industrial Designs on May 13, 2015. This agreement offers a practical and centralized solution for the protection of creativity: through a single international application, it is possible to seek protection for up to 100 designs in 99 countries, ensuring effective global coverage with an extremely streamlined bureaucratic process.

The utility model protection system in Japan, governed by the Utility Model Act (Law No. 123 of April 13, 1959), is designed to promote industrial development by incentivizing and protecting technical creations that utilize the laws of nature. These creations must specifically relate to the shape or structure of the article, or a combination of articles, and must meet the requirement of industrial applicability.

Granting of registration is subject to verification of novelty and inventive step, excluding devices already made public or easily derivable from the prior art by a person skilled in the art, as well as those contrary to public order, morality, or public health. The system adopts the “first-to-file” principle, granting priority to the first applicant in the event of competing applications for the same device. From a procedural standpoint, the application for registration must be accompanied by a detailed description, claims defining the scope of protection, and the relevant technical drawings. The administration may order amendments to the documentation if the design does not fall within the protected categories or if the application does not meet the clarity and completeness requirements set forth by the law.

The protection resulting from registration grants the owner the exclusive right to exploit the design, understood as the right to manufacture, use, market, license, or import the article covered by the protection. Finally, the law provides specific tools such as a technical opinion on the validity of the design and the possibility of claiming priority based on prior filings, ensuring a flexible framework of protection.

Anti-Counterfeiting and the Role of INTA

The Japanese intellectual property system, based on the above regulations and theUnfair Competition Prevention Act, offers an extremely robust scope of protection. Counterfeiting is prosecuted not only as a violation of the owner’s exclusive right but also as an act detrimental to market transparency and consumer confidence. A key role is played by Japanese Customs, which constantly monitors import flows based on a reporting system that allows trademark owners to preemptively block suspicious goods at the border. This administrative procedure, characterized by high bureaucratic efficiency, makes it possible to prevent counterfeit products from entering the market even before they reach the domestic distribution network, thereby mitigating the risk of brand value dilution.

In this context, the International Trademark Association (INTA) acts as a catalyst for best practices and as an authoritative policy advocate. Through its specialized committees, such as the Anticounterfeiting Committee, INTA engages in constant monitoring and legislative advocacy, collaborating closely with the Japan Patent Office and the Ministry of Economy, Trade and Industry. The association intervenes specifically within the Japanese context to promote the adoption of corrective measures against new forms of digital counterfeiting and the phenomenon of abusive domain names. INTA’s strength lies in its ability to unite major global trademark holders, providing them with a collective voice to demand protection and the removal of illegal content.

For Italian companies, the interplay between Japan’s strict regulations and INTA’s influence is vital for protecting the added value associated with a product’s origin. Since the Japanese market values brand identity and manufacturing excellence, every act of counterfeiting causes reputational damage disproportionate to its immediate economic value. Cooperation between INTA and customs authorities facilitates the exchange of technical information needed to distinguish genuine products from high-quality imitations, which are often difficult to identify without specialized expertise. Furthermore, the educational campaigns promoted by INTA in Japan help raise awareness among local consumers about the risks associated with purchasing non-genuine products, indirectly strengthening the positioning of premium brands that focus on sustainability and supply chain traceability.
The evolution of production technologies, such as 3D printing and generative artificial intelligence, poses new challenges to Japan’s anti-counterfeiting system. In response to these changes, the dialogue between Japanese lawmakers and INTA is focusing on updating civil and criminal remedies to include violations committed in the metaverse and through decentralized distribution channels. In any case, the stability of the Japanese market, combined with the constant vigilance of international bodies, ensures that the country remains a safe jurisdiction for investments in innovation.