Trade Marks 2020

Last Updated February 26, 2020

Japan

Law and Practice

Authors



TMI Associates has an IP practice that has been an integral part of the firm since its establishment. Lawyers and patent/trade mark attorneys, together with patent/trade mark paralegals, form an organisational structure that enables the team to respond in a highly effective manner to the needs of clients across a wide variety of businesses and technologies, all around the globe. The firm's team of IP lawyers and patent/trade mark attorneys work together on all aspects of IP law, including patent/trade mark prosecution, trials before the Japan Patent Office, infringement litigation, IP due diligence and import suspension applications at Customs.

In Japan, “trade marks”, “collective trade marks”, “regional collective trade marks” and “defensive marks” can be registered under the Trade Mark Act. Trade marks can be registered in relation to services as well as goods (Article 2). Collective trade marks can be registered to be used by members of business co-operatives and associations (Article 7). Regional collective trade marks consist of a region’s name and the name of the particular goods or services (eg, Tokyo Silverware, Kyoto Pickled Vegetables) and can be registered to be used by members of business co-operatives and associations (Article 7-2). Defensive marks can extend the protection of a famous mark to include the goods and services for which the applicant does not intend to use the mark (Article 64).

Trade dress, such as the shape of a container of a product, can be protected as a three-dimensional trade mark or under the Unfair Competition Prevention Act. It should be noted, however, that a trade dress such as a basic shape of a container of a product (without any distinctive word mark or sign on it) is often deemed indistinctive and cannot be registered unless acquisition of a secondary meaning is proven. Furthermore, to qualify for protection under the Unfair Competition Prevention Act, it must be shown that the trade dress is well known and that there is likelihood of confusion.

Any newly established company must record its trade name on the company register. However, this only means that no other company can register the same company name with the same address. Another party may record the same company name if its corporate address is different. It is possible to obtain a broader protection by registering the company name as a trade mark on the trade mark register, provided that the company name satisfies all the requirements for registration as provided under the Trade Mark Law. The Companies Act also provides that no one can use any company name or trade name that may cause the likelihood of confusion with another company and any person whose business is damaged by, among others, such act may seek injunctions against such use.

Rights in trade marks are granted based on statutory law upon successful registration of the trade mark on the trade mark register.

A trade mark registration must be obtained to have trade mark rights in Japan. Trade mark rights cannot be acquired merely by using the mark.

Under Article 3 of the Japanese Trade Mark Act, an indistinctive mark, such as including a common name of goods; a mark consisting solely of the place of origin; a descriptive mark; a mark composed solely of a common surname; and a very simple and common mark (eg, numerals and one or two alphabetical letters) may not be registered.  As mentioned above, a product configuration is often deemed indistinctive and is refused registration. However, such indistinctive mark can be registered if the trade mark applicant successfully proves that it has acquired a secondary meaning as the result of continuous and extensive use. Typically, the applicant is required to show that the trade mark in question is well known throughout Japan.

For a colour trade mark, similarly, the applicant is required to show acquisition of secondary meaning through actual use.

There is a trade mark register in which the following matters are recorded (Article 71):

  • the establishment, renewal of the duration, division, transfer, modification, extinguishment, restoration or restriction on disposition of a trade mark right;
  • the establishment, renewal of the duration, transfer or extinguishment of rights based on a defensive mark registration;
  • the establishment, maintenance, transfer, modification, extinguishment or restriction on disposition of an exclusive right to use or a non-exclusive right to use; and
  • the establishment, transfer, modification, extinguishment or restriction on disposition of a right of pledge on a trade mark right, an exclusive right to use or a non-exclusive right to use.

Any person may file a request for the issuance of documents whose contents are registered in a trade mark register (Article 72). In this regard, some of the above matters are also confirmed by using the free database J-Plat Pat.

There is only one trade mark register in Japan. Unlike the USA, Japan does not have a supplementary register on which descriptive marks are registrable.

It is normal practice to search for prior trade marks before applying to register a mark in Japan. The search is usually conducted using J-Plat Pat, which includes both the marks applied for and registered by the Japan Patent Office (JPO). No trade mark right will arise unless it is registered, therefore the search does not generally cover marks in use but not applied for or registered.

Any person who desires to register a trade mark shall submit an application to the Commissioner of the JPO accompanied by the required documents (Article 5). The application must include:

  • the applicant’s name and address;
  • the trade mark to be registered; and
  • the designated goods and/or services.

If priority is claimed under the Paris Convention, the applicant must submit a certificate of priority issued by the trade mark office of the country in which the earlier trade mark application was filed (together with an English translation thereof) within three months from the date of filing in Japan.

There are no other requirements to provide any documents (including a specimen of use, a power of attorney or a certificate of incorporation) in the application process.

No trade mark right will arise unless and until such an application is filed, is examined by the JPO and matures into registration on the trade mark register. A trade mark right will arise upon registration of establishment of such right (Article 18 (1)).

Any entities with the legal capacity to hold rights can register a trade mark. Although such entities include individuals, legal entities and trade bodies, unincorporated associations (eg, a sports club or residents’ association) may not register a trade mark.

Article 2 of the Trade Mark Act defines a trade mark as any character(s), figure(s), sign(s), three-dimensional shape(s) or colour(s), or any combination thereof, sound(s), or other(s) specified by a Cabinet Order, recognisable with human perception as being  used in connection with the goods of a person who produces, certifies or assigns the goods as a business; or used in connection with the services of a person who provides or certifies the services as a business (except for those provided for in the preceding item).

In addition, “services” as set forth in the second point of the preceding paragraph shall include retail services and wholesale services; namely, the provision of benefits for customers conducted in the course of retail and wholesale business.

From 1 April 2015, Japan expanded trade mark protection to cover a further five categories of non-traditional trade marks:

  • motion marks;
  • hologram marks;
  • colour marks;
  • sound marks; and
  • position marks.

The registration procedure for a trade mark in Japan is as follows.

Application

The person wishing to register a trade mark must submit an application with the JPO (Article 5). The applicant can file multi-class applications. The contents of the application will be published (Article 12-2).

Examination

When the application has been found to meet the formality requirements, a substantive examination will be conducted by the JPO (Article 14). In cases where an application fails to meet the substantive requirements, a notification of reasons for refusal will be sent to the applicant (Article 15-2). The applicant is entitled to file an argument and amendment in response to JPO notification (Article 15-2 and Article 68-40).

Registration

In cases where the application meets the substantive requirements, a decision to register a trade mark will be made (Article 16). In Japan, the trade mark applicant is required to pay the official registration fee to register the trade mark after the decision of registration is granted. Subject to the payment of the registration fee, the registration of the trade mark right will take place and the trade mark right will come into force (Article 18).

Publication

Japan adopts a "post-registration" opposition system. Once the trade mark is registered, the contents of the trade mark registration are published in the trade mark gazette (Article 18). Any person may file an opposition against the registered trade mark within two months after the publication (Article 43-2).

Japan does not allow the registration of series marks.

The JPO refuses the registration of trade marks that do not enable consumers to differentiate the applicant's goods or services from those belonging to other parties (Article 3). According to Article 3, paragraph 1, the trade mark will be refused if it:

  • consists solely of a mark indicating, in a common manner, the common name of the goods or services;
  • is customarily used in connection with the goods or services;
  • consists solely of a mark indicating, in a common manner, in the case of goods, the place of origin, place of sale, quality, raw materials, efficacy, intended purpose, quantity, shape (including shape of packages), price, method or time of production or use, or, in the case of services, the location of provision, quality, articles to be used in such provision, efficacy, intended purpose, quantity, modes, price or method or time of provision;
  • consists solely of a mark indicating, in a common manner, a common surname or a common name of a juridical person;
  • consists solely of a very simple and common mark; or
  • is, in addition to those listed in each of the preceding items, a trade mark by which consumers are not able to recognise the goods or services as those pertaining to a business of a particular person.

The JPO also refuses the registration of trade marks in terms of the public interest (Article 4). According to Article 4, paragraph 1, Items 1 to 7, 9, 16 and 18, the trade mark will be refused if it:

  • is identical or similar to the national flag, the imperial chrysanthemum crest, a decoration, a medal or a foreign national flag;
  • is identical or similar to the coats of arms or any other State emblems (except national flags of any country of the Union to the Paris Convention, member of the WTO or Contracting Party to the Trademark Law Treaty) of a country of the Union to the Paris Convention (refers to the Paris Convention for the Protection of Industrial Property of 20 March 1883, as revised in Brussels on 14 December 1900, in Washington on 2 June 1911, in the Hague on 6 November 1925, in London on 2 June 1934, in Lisbon on 31 October 1958 and in Stockholm on 14 July 1967; the same shall apply hereinafter), a member of the WTO or a Contracting Party to the Trademark Law Treaty designated by the Minister of Economy, Trade and Industry;
  • is identical or similar to a mark indicating the United Nations or any other international organisation that has been designated by the Minister of Economy, Trade and Industry;
  • is identical or similar to the emblems or titles in Article 1 of the Act Concerning Restriction on the Use of Emblems and Titles of the Red Cross and Others (Act No 159 of 1947) or the distinctive emblem in Article 158(1) of the Act Concerning Measures to Protect Japanese Citizens During Armed Attacks and Others (Act No 112 of 2004);
  • is comprised of a mark identical or similar to an official hallmark or sign indicating control or warranty by the national or a local government of Japan, a country of the Union to the Paris Convention, a member of the WTO or a Contracting Party to the Trademark Law Treaty that has been designated by the Minister of Economy, Trade and Industry, if such a trade mark is used in connection with goods or services identical with, or similar to, the goods or services in connection with which the hallmark or sign is used;
  • is identical or similar to a famous mark indicating the State, a local government, an agency thereof, a non-profit organisation undertaking a business for public interest, or a non-profit enterprise undertaking a business for public interest;
  • is likely to cause damage to public order or morality;
  • is comprised of a mark identical or similar to a prize awarded at an exhibition held by the national or a local government (hereinafter referred to as the "Government, etc") or by those who are not the Government, etc, that conforms to the standards specified by the commissioner of the JPO, or at an international exhibition held in a foreign country by the Government, etc of the foreign country or those authorised thereby (except those used by the recipient of such a prize as part of their own trade mark);
  • is likely to mislead as to the quality of the goods or services; or
  • consists solely of a three-dimensional shape of goods or their packaging, which is indispensable for such goods or their packaging to function properly.

Furthermore, an application for a mark identical or similar to another’s trade mark well known in or outside Japan file for bad faith can be refused under Article 4, Item 1, paragraph 19.

Objections regarding the lack of distinctiveness raised by the JPO may be overcome by claiming acquired distinctiveness (Article 3, paragraph 2).

The JPO refuses the registration of trade marks due to the existence of prior rights (Article 4). According to Article 4, paragraph 1, Items 8, 10 to 15, 17 and 19, the trade mark will be refused if it:

  • contains the portrait of another person, or the name, famous pseudonym, professional name or pen name of another person, or famous abbreviation thereof (except those the registration of which has been approved by the person concerned);
  • is identical or similar to another person's trade mark that is well known among consumers as indicating goods or services in connection with the person's business, if such a trade mark is used in connection with such goods or services, or goods or services similar thereto;
  • is identical or similar to another person's registered trade mark that has been filed prior to the filing date of an application for registration of the said trade mark, if such a trade mark is used in connection with the designated goods or designated services relating to the said registered trade mark (referring to goods or services designated in accordance with Article 6(1), including cases where it is applied mutatis mutandis pursuant to Article 68(1); the same shall apply hereinafter), or goods or services similar thereto;
  • is identical to a registered defensive mark of another person (referring to a mark registered as a defensive mark; the same shall apply hereinafter), if such a trade mark is used in connection with designated goods or designated services relating to the defensive mark;
  • is identical or similar to the name of a variety registered in accordance with Article 18(1) of the Plant Variety Protection and Seed Act (Act No 83 of 1998), if such a trade mark is used in connection with seeds and seedlings of the variety or goods or services similar thereto;
  • is likely to cause confusion in connection with the goods or services pertaining to a business of another person (aside from those listed above);
  • is comprised of a mark indicating a place of origin of wines or spirits of Japan that has been designated by the commissioner of the JPO, or a mark indicating a place of origin of wines or spirits of a member of the WTO that is prohibited by the said member from being used on wines or spirits not originating from the region of the said member, if such a trade mark is used in connection with wines or spirits not originating from the region in Japan or of the said member; or
  • is identical or similar to a trade mark that is well known among consumers in Japan or abroad as indicating goods or services pertaining to a business of another person, if such a trade mark is used for unfair purposes (referring to the purpose of gaining unfair profits, the purpose of causing damage to the other person, or any other unfair purposes) (except those provided for in each of the preceding items).

Any person can provide useful information for the examination in the event that they believe an applied-for trade mark does not meet the substantive requirements for registration (Enforcement Regulations of the Trade Mark Act, Article 19). Specifically, anyone is permitted to submit information about an earlier registered trade mark or unregistered trade mark that they believe should be cited as a bar to registration of the trade mark application under examination. It is entirely up to the JPO examiner as to whether they refuse the application based on the information submitted.

In addition, any person can file an opposition to a registration within two months from the date of publication (Article 43-2).

The applicant can make amendments relating to its application when the case is pending examination, examination on opposition to registration, trial or retrial (Article 68-40). It is very common for the applicant to amend the description of the goods and services at the request of the JPO examiner. Amendment of the trade mark itself is usually not permitted.

An application can be assigned while it is pending examination (Article 33, paragraph 1 of the Patent Act as applied under Article 13 of the Trade Mark Act). However, a licence of the trade mark right can be granted only after the trade mark right is established by the registration. As stated in 1.2 Trade Mark Registration, there is no concept in Japan of trade marks based on use or those based on an intent to use.

An applicant who is dissatisfied with a decision of refusal made by the JPO may appeal against the decision within three months from the date on which a certified copy of the decision is received (Article 44). Examination of an appeal against a decision of refusal is examined by a collegial body of three or five appeal examiners.

A decision by the appeal examiners is referred to as an appeal decision. If the reasons for rejection are overcome as a result of the appeal examination, an appeal decision to register a trade mark is issued. The appeal examiners issue an appeal decision within six to twelve months from the filing of the appeal against the decision of refusal. If the appeal examiners make a decision to refuse the application and the applicant is dissatisfied with the JPO decision, it may make a further appeal to the Intellectual Property High Court (IP High Court) within 30 days of the date on which a certified copy of the decision is received (Article 178 of the Patent Act as applied under Article 63 of the Trade Mark Act).

There is no requirement that a trade mark applicant use its mark in commerce before the registration is issued. Use of a trade mark is not necessary for maintaining a registered trade mark. Therefore, the owner of the registration does not need to file any proof of use when renewing the trade mark right. However, if a third party files a cancellation action against the registration based on non-use, the owner of the registration needs to prove use of the trade mark during the three years prior to the registration of the request for the trial (Article 50).

The applicant is permitted to divide a trade mark application (Article 10). The division of the application may be made provided that the application is pending in examination, trial or retrial, or if a suit against a trial decision to refuse the application is pending in court. Since the application should be divided per designated goods or services, the original application should include two or more designated goods or services to divide the application.

The duration of a trade mark right expires after ten years from the date of registration (Article 19). The owner can file a renewal application during the six-month period prior to the expiration of a trade mark right(Article 19 and Article 20, paragraph 2). Within the six months following the expiration date (the grace period), the owner may file a renewal application by paying double the official fees as a bailout measure (Article 20, paragraph 3). If the trade mark owner has justifiable reasons (such as natural disasters) for having been unable to file an application for renewal within the grace period, it may file the application for renewal within two months from the date on which such reason to justify the inability of the trade mark owner to file the renewal application ceases to exist, but no later than six months after the expiration of the grace period (Article 21, paragraph 1).

There is no provision for exhaustion of trade mark rights under the Japanese Trade Mark Act. Nevertheless, it is generally considered, in accordance with the precedents, that once goods with the registered trade mark are put on the market, subject to the consent of the trade mark owner, further distribution of the goods by any third party will not be considered trade mark infringement.

Japan participates in the Madrid System and adopts a two-part payment of individual fees with the second part of the individual fees needing to be paid directly to the International Bureau after the decision of registration is made by the JPO.

If a trade mark application includes incorrect information such as typos in the applicant name and descriptions of the goods and services, the JPO issues an office action requesting the applicant to correct the information. When the typos are very minor, the JPO tends to correct them by its own authority.

In Japan, once a trade mark is registered, it may not be updated or refreshed.

Although it is not mandatory, it is encouraged to denote that a mark is registered in Japan. No symbol is provided in Japanese trade mark law, but indications such as ® and “a registered trade mark” are widely used for registered trade marks. While there is no concept of "common law rights" in Japan, it is customary practice to use a TM legend if the trade mark is not registered but used as a trade mark.

A trade mark can be assigned before and after registration (Article 24-2 and Article 33, paragraph 1 of the Patent Act as applied under Article 13 of the Trade Mark Act).

A trade mark owned by the State, a local government, an agency thereof, or a non-profit organisation undertaking a business for public interest may not be assigned (Article 24-2, paragraph 2).

A trade mark owned by a non-profit enterprise undertaking a business for public interest may not be transferred unless the business is transferred together with such a right (Article 24-2, paragraph 3). A regional collective trade mark may not be assigned (Article 24-2, paragraph 4). Where the owner of a collective trade mark desires to transfer the collective trade mark as a collective trade mark, they should submit certain documents to the JPO seeking such an assignment. The documents need to state that the collective trade mark should be transferred as a collective trade mark and prove that the assignee is the proper entity entitled to own the collective trade mark (Article 24-3, paragraph 2).

In order to register the assignment of a registered trade mark, an application for recordal of assignment has to be filed with the JPO. Typically required are an assignment deed specifying the subject trade mark by its application/registration number, the consent by the assignor for the assignee to take the steps to record the assignment and a signature by the assignor and a power of attorney by the assignee. The assignment is then recorded on the trade mark register (Article 71).

It is also possible to assign a pending application before registration. Before registration, the documents listed above are typically required.

An assignment of a trade mark right needs to be registered (Article 98, paragraph 1 of the Patent Act as applied under Article 35 of the Trade Mark Act). An assignment of a trade mark right takes effect only upon recordation on the trade mark register. If it is not registered, the assignment may be deemed invalid. Therefore, once the trade mark owner and the assignee agree that a trade mark right is assigned, the assignee must promptly record the assignment with the JPO. If a third party subsequently acquires the trade mark right from the trade mark owner and successfully records acquisition before the previous assignment is recorded on the trade mark register, the third party may acquire the trade mark right (in this case, the assignee would need to institute a lawsuit against the assignor for breach of contract).

On the other hand, if a transfer of a trade mark right occurs as the result of a general succession (eg, a merger of a company or inheritance), the transfer takes effect when the general succession occurred but the transferee is encouraged to record the transfer to keep the record up to date (Article 98, paragraph 2 of the Patent Act applied under Article 35 of the Trade Mark Act).

A trade mark can be subject to pledge and assigned by way of security. In the event of a compulsory execution, a trade mark may be subject to seizure and be auctioned as part of the property of the obligator.

Under the Japanese Trade Mark Act, a licence can be granted with regard to a registered trade mark. There are two types of licences under the Japanese Trade Mark Act: an exclusive licence (senyo shiyoken) and a non-exclusive licence (tsujo shiyoken) are available (Articles 30 and 31). An exclusive licence under Article 30 of the Japanese Trade Mark Act is a very strong right for the licensee. Once an exclusive licence is established under such article (which requires the licence to be recorded at the JPO), the trade mark owner (Licensor) is prohibited from using the trade mark without an authorisation from the exclusive licensee. An exclusive licence cannot be established in connection with a trade mark owned by the State or a local government, an agency thereof, a non-profit organisation undertaking a business for public interest, or a person undertaking a non-profit activity for public interest or a regional collective trade mark (Article 30, paragraph 1).

A non-exclusive licence cannot be established in connection with a trade mark owned by the state or a local government, an agency thereof, a non-profit organisation undertaking a business for public interest, or a person undertaking a non-profit activity for public interest (Article 31, paragraph 1). On the other hand, a trade mark owner can grant an exclusive or non-exclusive licence based on a licence agreement. Such licence is considered a contractual right that comes into existence by agreement of the parties and is not eligible for registration of a licence under the Japanese Trade Mark Act.

In order to register a trade mark licence under the Japanese Trade Mark Act, an application for recordal may be filed with the JPO (Article 71). Typically required are a deed of licence specifying the subject trade mark by its application/registration number and the content of the licence to be granted, the consent by the licensor for the licensee to take the steps to record the licence and a signature by the licensor, and a power of attorney by the licensee. The financial conditions of the licence agreement do not need to be disclosed. Further, it is not necessary to file the original licence agreement. If all the formalities are fulfilled, the licence is recorded on the trade mark register.

An exclusive licence under the Japanese Trade Mark Act must be registered to take effect (Article 98, paragraph 2 of the Patent Act as applied mutatis mutandis under Article 30 of the Trade Mark Act).

It is not mandatory to register a non-exclusive licence under the Japanese Trade Mark Act for such licence to take effect, however, if the non-exclusive licence has not been registered, the licensee cannot assert its licence against the third party. Therefore, if the trade mark owner assigns rights to a third party, the licensee of a non-exclusive licence that has not been recorded may lose its license (Article 31, paragraph 4).

If there is a gap between the licence being entered into and its registration on the trade mark register, the licensee can claim its licence and other rights only against the trade mark owner based on the contract (licence agreement) vis-à-vis the trade mark owner. Without recordation on the trade mark register, the licensee cannot claim its licence against third parties.

There is no reason to prohibit a trade mark owner from granting a perpetual licence in Japan. In other words, setting the term of the perpetual licence does not necessarily render the licence agreement invalid or unenforceable. However, the trade mark right must be renewed every ten years and, if not, the licence may be lost as a consequence.

There are no other requirements.

Japan adopts a "post-registration" opposition system; that is to say, newly filed trade marks are published for opposition purposes only after they have been approved by the examiner, the official registration fee has been paid and the trade mark is registered on the trade mark register. It is not possible to oppose a pending trade mark application. However, anyone is permitted to file an information statement to assert reasons why a pending trade mark application may not be approved and evidence to substantiate such position. Whether the argument or evidence is adopted is at the examiner’s discretion.)

An opposition may be filed based on the following grounds (Article 43-2):

  • lack of distinctiveness (Article 3);
  • unregistrability (Article 4, paragraph 1) – most notably, an opposition can be filed based on relative grounds for refusal (ie, the published mark is identical or similar to an earlier trade mark and used for the same or similar goods/services);
  • violation of requirements for a collective mark (Article 7-2, paragraph 1);
  • violation of the first-to-file rule (Article 8, paragraphs 1, 2 and 5);
  • violation of provisions prohibiting re-registration of cancelled trade marks (Article 51, paragraph 2, Article 52-2, paragraph 2 and Article 53, paragraph 2);
  • violation of the enjoyment of trade mark rights by foreign nationals (Article 25 of the Patent Act as applied under Article 77, paragraph 3 of the Trade Mark Act);
  • infringement of the provisions of the Trademark Law Treaty, Paris Convention and relevant treaties; and
  • violation of the requirement for explanation of the trade mark (Article 5, paragraph 5).

The opposition deadline is not extendable. It usually takes about one year from filing an opposition until the decision is issued.

Any person can file an opposition (Article 43-2). Representation is not necessary to file an opposition. The average cost for opposing a registration in one class is about JPY311,000, comprising JPY11,000 for the official fee and JPY300,000 for the attorneys' fees.

An opposition to a trade mark registration can be filed with the JPO for each or all of the designated goods and services within two months of the publication (Article 43-2, paragraph 1). Once a bare-bones notice of opposition is filed, the opponent can supplement detailed grounds and supporting evidence within 30 days (if resident in Japan) or within 90 days (if not resident in Japan). The examination of the opposition is conducted by a collegial body of trial examiners (Article 43-3, paragraph 1).

In principle, the examination of the opposition is conducted on the basis of documents, however, oral examinations may be conducted under the chief trial examiner’s authority (Article 43-6). When the chief trial examiner intends to render a rescission decision, they shall notify the owner of the trade mark right and give the owner the opportunity to submit an argument within an adequate period (Article 43-12). When a decision has been rendered, the commissioner of the JPO shall serve a transcript of the decision on the owner of the trade mark right and the opponent (Article 43-13).

Trade mark opposition proceedings in Japan are quite different from those in the USA. In Japan, after a trade mark opposition is filed is in essence a re-examination of the trade mark application and the JPO will make a decision on its own as to whether the initial examination was correct. In trade mark opposition procedures, there is no proceeding for discovery or any other process to oblige parties to collect and submit evidence surrounding the application.

If the collegial body of trial examiners renders a decision to maintain the trade mark registration and dismisses the opposition, the decision cannot be appealed. However, if the opponent is dissatisfied with the dismissal, it is possible for it to file an invalidation action for the same grounds. If the trial examiners render a rescission decision and if the owner of trade mark is dissatisfied with the decision, it may appeal to the IP High Court within 30 days from the date on which a certified copy of the decision is served (Article 178 of the Patent Act as applied under Article 63 of the Trade Mark Act). The chief trial examiner may ex officio designate an additional period extending the above time period for a person in a remote area or an area with transportation difficulties, eg, a foreign resident (Article 178 of the Patent Act as applied under Article 63 of the Trade Mark Act). It usually takes about eight months from the time of filing an appeal to the decision by the court.

The trade mark owner may claim damages or injunction (including a preliminary injunction) against the infringement of a trade mark right in the infringement litigation. Under the Japanese Trade Mark Act, a trade mark right comes into existence upon registration at the JPO (Article 19, paragraph 1 of the Trade Mark Act). Therefore, the owner of an unregistered trade mark cannot enjoy protections against infringement of a trade mark right under the Trade Mark Act, although unregistered marks can be protected under the UCPA if the mark is well known or famous as an indicator of origin and satisfies other requirements of protection under the UCPA. In addition, if the infringing goods are imported, the owner of a registered and/or well-known/famous trade mark may file an import suspension application with the Customs Office. Further, the trade mark owner may use ADR proceedings, such as mediation or arbitration, if the other party agrees to it. These actions are available to the claim under the UCPA.

The trade mark owner may file a lawsuit before the court that has jurisdiction over the location of the infringing act or defendant. In addition, with respect to a claim for damages, the court that has jurisdiction over the location of the plaintiff can hear the case. Further, for a trade mark infringement case, the plaintiff may select the Tokyo District Court as its option if a District Court is located within the jurisdictional district of any of the High Courts in the east part of Japan (ie, the Tokyo High Court, the Nagoya High Court, the Sendai High Court or the Sapporo High Court) and the plaintiff may select the Osaka District Court as its option if a District Court is located within the jurisdictional district of any of the High Courts in the west part of Japan (ie, the Osaka High Court, the Hiroshima High Court, the Fukuoka High Court or the Takamatsu High Court). However, the court can transfer the case to another court with jurisdiction when it finds it necessary in order to avoid undue delay of the procedure or ensure equity between the parties.

Once the decision of the JPO becomes final, the effect caused by the decision is binding on any persons and thus the decision could legally affect the infringement actions in case the JPO decision is to invalidate or cancel the trade mark registration that is the basis of the infringement action. Until the decision becomes final, the decision will not be legally binding and technically have no effect on infringement actions, provided that it might affect the perception of the court in practice.

The alleged infringer can initiate a lawsuit for declaratory judgment to confirm that there is no trade mark infringement and, therefore, the trade mark owner has no right to seek an injunction. When the trade mark owner initiates a lawsuit for trade mark infringement, the defendant can still initiate a lawsuit for declaratory judgment for the same trade mark but the claim will be dismissed due to lack of benefit of suit.

The District Court or the Summary Court will have jurisdiction to hear trade mark matters in the first instance, provided that the Summary Court will only deal with cases whose jurisdictional amount is less than JPY1.4 million.

Where the District Court is the Court of First Instance, the Appeal Court will be the relevant High Court that has jurisdiction over the case heard by the District Court and the parties may appeal decisions of the High Court to the Supreme Court as the Court of Third and Final Instance.

Where the Summary Court is the Court of First Instance, the Appeal Court will be the District Court and the parties may appeal decisions of the District Court to the High Court as the Court of Third and Final instance. However, it is not common for the Summary Court to deal with trade mark matters.

There are no prerequisites or remedies. The trade mark right comes into existence when the trade mark is registered.

In Japan, a party may select at its discretion whether he or she will be represented by a lawyer. However, in practice, it is common for lawyers to represent the parties in trade mark litigation matters. A patent attorney (benrishi), which is a different profession from a lawyer (bengoshi), can also represent a party in trade mark litigation matters under certain conditions.

Preliminary injunctions are available under the Civil Preservation Act in cases where injunctions are necessary for a rights owner to avoid any substantial detriment or imminent danger with respect to the trade mark rights in dispute.

A potential defendant can file a request for a trade mark invalidation trial before the JPO and/or initiate a lawsuit for declaratory judgment to confirm the absence of the right to demand an injunction, etc. There is no need for a potential opponent to lodge a protective brief to take these actions. It should be noted that if a trade mark owner starts the proceeding for a preliminary injunction under the Civil Preservation Act, the respondent/a potential defendant in the formal litigation is not entitled to require a bond to be posted by the trade mark owner under the Civil Preservation Act, while a court usually orders the owner to deposit a certain amount of money as a security when issuing an interim injunction order.

Although there is no discovery procedure in Japan, the Trade Mark Act provides that a court can order a party to produce documents upon the other party’s request for the purpose of proving infringement activities or calculating damages, provided that this shall not apply where there are reasonable grounds for the alleged infringer possessing the documents to refuse production.

A complaint must identify the names and addresses of the plaintiff and defendant (and plaintiff’s attorneys’ names and addresses, if appointed), the gist of the demand and the grounds for the demand. In particular, the infringing goods or services and the infringing acts must be specified in detail in the complaint. To identify those facts, a trade mark owner is expected to conduct a sufficiently detailed investigation and analysis on the case prior to initiating the lawsuit.

There are no special provisions for lawsuits in trade mark proceedings that differ from non-IP proceedings.

Supplementing pleadings with additional arguments is acceptable. The court examines the case through periodic hearing procedures (generally once a month) and each party is allowed to add its legal/factual arguments or evidence in the course of those procedures. The plaintiff may even expand or amend the claim or statement of claim until oral argument is concluded.

However, the court may limit such additional arguments or evidence if it considers such additional argument or evidence would substantially delay the court proceedings.

Once a lawsuit is initiated, the defendant cannot initiate a lawsuit for the same subject and if the defendant files such a lawsuit, it will be dismissed by the court. Provided that the litigation initiated by the plaintiff itself is considered to constitute a tort (see 8.2 Rights and Remedies for the Prevailing Defendant), the defendant may initiate a lawsuit against the plaintiff seeking damages arising out of the infringement litigation.

There is no legal system that allows for representative or collective actions for trade mark proceedings, provided that if the subject matter of the suits is common to two or more persons, or is based on the same factual or statutory cause, these persons may sue or be sued as co-parties.

Abuse of rights is restricted under the Civil Code. For example, if a trade mark registration has a ground for invalidation, the trade mark right may not be exercised, even before the trade mark right is actually cancelled, on the ground that it is considered to be an abuse of the right. Moreover, the act of filing a lawsuit may cause tort liability where the allegation of the infringement is entirely baseless, the owner of the trade mark right is fully aware of the lack of legal grounds and the litigation is unreasonable. Even without filing a lawsuit, groundless threat of trade mark infringement may be considered as an act of obstruction of business and cause tort liability or could even constitute criminal liability.

In addition, according to the competition law guidelines provided by the Japan Fair Trade Commission (JFTC), interference with legitimate parallel importation by a trade mark owner may be considered to constitute a violation of competition law and such act may even be considered to constitute a tort against the parallel importers.

Furthermore, if the owner of the trade mark right makes or disseminates a false allegation of infringement of the trade mark right, the act could constitute an act of unfair competition under the Unfair Competition Prevention Act and the owner of the trade mark right may be subject to a claim for injunction and/or damages.

The plaintiff (ie, trade mark owner) and the defendant (ie, the alleged infringer) are the necessary parties to a trade mark infringement litigation. A registered exclusive licensee is entitled to file an action based on infringement of the registered exclusive licence seeking the same remedies as the trade mark owner. In this regard, there are arguments over whether non-registered exclusive licensees or non-exclusive licensees can initiate an action for infringement. With regard to injunctions, it is generally considered that neither a non-registered exclusive licensee nor a non-exclusive licensee is entitled to claim for an injunction. With respect to a claim for damages, a non-registered exclusive licensee may claim for damages, although a non-exclusive licensee is still not permitted to claim for damages.

The plaintiff must prove the existence of the trade mark registration, the similarity between the registered trade mark and the mark at issue and the similarity between the designated goods/services and the goods/services at issue. The distinctiveness of the registered mark is presumed and it is the defendant who has the burden of proving lack of distinctiveness as their defence. The similarity of the marks is determined by taking into account the similarity in terms of appearance, connotation and pronunciation between the marks, as well as the likelihood of confusion.

It is necessary to establish that the defendant has used the sign as a trade mark; that is, as a source indicator of origin for the designated goods and/or services. If the defendant successfully proves that the sign has not been used as a source indicator, trade mark infringement will not be established.

If the defendant has used a mark and the mark has become famous prior to the registration of the trade mark at issue, the defendant can claim "prior use" as a defence. Furthermore, the defendant may claim that a trade mark is a generic term or that the use thereof is only descriptive (ie, indicating the contents, quality, origin, shape, or materials) and/or that the defendant’s mark is not being used as an indicator of origin (ie, a "trade mark use"). In addition, the defendant may also claim abuse of trade mark rights if there is any ground for invalidation or cancellation of the trade mark registration.

Non-use of a trade mark cannot be directly claimed as a defence. Nevertheless, non-use of a trade mark for a continuous period of three years or more could be grounds for cancellation of the trade mark registration and therefore the defendant may claim abuse of rights on the ground of non-use for such period.

As to the statute of limitations, the trade mark owner cannot claim damages for an infringement when more than three years have passed from the date on which the trade mark owner become aware of the infringement and the identity of the infringer that caused the damage, and there is an overall limit of ten years from the act of infringement.

Expert opinions and surveys can be used as substantive evidence for certain legal issues, such as the likelihood of confusion, secondary meaning or genericness. However, given that the court may consider such evidence to be somehow partial or biased, this evidence is unlikely to be decisive and the court will determine the case taking into account all other evidence as well.

Trade mark infringement can constitute a criminal offence; however, there is no such administrative offence under Japanese law. The criminal offence of trade mark infringement by way of using a mark identical to the registered trade mark for the designated goods or services carries a penalty of up to ten years' imprisonment and a fine of up to JPY10,000,000 for those infringing upon the trade mark. Using a mark similar to the registered trade mark for the designated goods or services — or using a mark identical or similar to the registered trade mark for goods or services similar to the designated goods or services — carries a penalty of up to five years’ imprisonment and a fine of up to JPY5,000,000.

Japan Customs seizes counterfeit goods upon request from the owner of a registered and/or well-known/famous trade mark, or at Customs' discretion.

Parallel imports will not be subject to Customs seizure if they are considered to be the parallel importation of genuine goods. According to the precedents, parallel imports will not be considered as infringement if:

  • the trade mark on the parallel imported goods is duly affixed under the authorisation of the trade mark owner or its licensee in a foreign jurisdiction;
  • the trade mark on the parallel imported goods indicates the same origin as that of the Japanese registered trade mark, on the grounds that the trade mark owner in the foreign jurisdiction is the same as that in Japan, or the trade mark owners in both jurisdictions have so close a relationship that they could be legally or economically treated as the same person; and
  • there is no substantial difference in quality guaranteed by the trade mark between the parallel imported goods and the products to which the trade mark was attached by the Japanese trade mark owner.

The trade mark owner submits a written request for seizure of certain counterfeit goods to Japan Customs and Japan Customs will seize those goods. Meanwhile, if Japan Customs finds any suspicious goods by itself, it will contact the trade mark owner to confirm if the goods are counterfeit goods and, upon receiving confirmation from the trade mark owner, seize the goods at its discretion.

Cancellation Action Based on Non-use

Any person may file a request for a trial for cancellation of a trade mark where the trade mark has not been used for three years or longer (Article 50, paragraph 1). Where such request is filed, the burden of proof of use is on the owner (Article 50, paragraph 2). The use of the mark within the three months before the filing of the request cannot be a defence if the person requesting cancellation can prove that the owner knew the cancellation action was likely to be filed (Article 50, paragraph 3).

Cancellation Action Due to Misuse

Any person may file a request for a trial for cancellation of a trade mark where the use of the trade mark misleads the consumers as to the nature of the goods/services or causes confusion with the goods/services of another person (Article 51, Article 52-2 and Article 53).

Cancellation Action Against a Trade Mark Registered Without Approval

A person who has the right pertaining to the trade mark in a foreign member country of the Paris Convention, WTO or Trademark Law Treaty may file a request for a trial for cancellation of a trade mark where the application for trade mark registration was filed by their agent or representative without their approval (Article 53-2).

Invalidation

A person who has a legal interest in invalidating the trade mark at issue may appeal for invalidation of the trade mark based on the following grounds (Article 46):

  • lack of distinctiveness (Article 3);
  • violation due to unregistrability (Article 4, paragraph 1) – most notably, an invalidation action can be filed based on the relative grounds for refusal (ie, the trade mark in question is identical or similar to an earlier trade mark and used for the same or similar goods/services);
  • violation of requirements to be a collective mark (Article 7-2, paragraph 1);
  • violation of the first-to-file rule (Article 8, paragraphs 1, 2 and 5);
  • violation of provisions prohibiting re-registration of cancelled trade marks (Article 51, paragraph 2, Article 52-2, paragraph 2 and Article 53, paragraph 2);
  • violation of the enjoyment of trade mark rights by foreign nationals (Article 25 of the Patent Act applied under Article 77, Paragraph 3 of the Trade Mark Act);
  • infringement of the provisions of the Trademark Law Treaty, Paris Convention and relevant treaties;
  • violation of the requirement of explanation of the trade mark (Article 5, paragraph 5);
  • misappropriated application; or
  • other subsequent grounds.

Cancellation actions and invalidations must be filed with the JPO.

The time period of five years applies for cancellation actions due to misuse or against trade marks registered without approval (Article 52, Article 53, paragraph 2 and Article 53-3).

The time period of five years also applies for invalidations, depending on the grounds for invalidation (Article 47). Most notably, invalidation actions based on absolute grounds for refusal and relative grounds for refusal are time-barred except for cases of trade marks filed in bad faith or for the purposes of unfair competition.

Any person may request a trial for a cancellation action, except for a cancellation action based on Article 53-2 (a registration obtained by an agent or representative without authorisation), which must be filed by the owner of the right pertaining to the trade mark in the foreign member country of the Paris Convention, WTO or Trademark Law Treaty.

An invalidation action needs to be filed by a person who has a legal interest in invalidating the trade mark at issue, such as an applicant who received an office action from the JPO citing the trade mark at issue as an obstacle against their application.

Cancellation actions based on non-use and invalidation can be filed in a partial manner specifying certain designated goods/services. It is not permitted to seek partial cancellation in a cancellation action for misuse or in a cancellation action for unauthorised registration by an agent or representative.

The owner of the trade mark cannot make amendments in cancellation/invalidation proceedings if the amendments alter the situation. For example, it is not permitted to add cited trade marks or expand the scope of the goods and services attacked in the cancellation action/invalidation actions. Filing of additional evidence may be disallowed if such evidence involves a new legal argument and necessitates a defence by the defending party that was not expected when the action was originally filed.

Revocation/cancellation of the trade mark registration is separate from the infringement procedure. Nevertheless, the court may dismiss the claim of infringement if it believes that the trade mark registration should be revoked or cancelled. In such an event in an infringement case, the registration of the trade mark at issue will still remain until it is revoked or cancelled in a separate cancellation/revocation procedure at the JPO.

There are no provisions specifically applicable to trial and settlement for trade mark rights proceedings. However, in practice, the trial will be divided into two parts. The court firstly focuses on determining whether the infringement of the trade mark rights is established. Then, only after the court tentatively concludes the establishment of the infringement will the court assess the damages incurred by the plaintiff.

The case is determined solely by a legal judge. The Japanese legal system has neither technical judges nor jury trials for IP cases.

In the Tokyo District Court and the Osaka District Court, there are special divisions for IP matters (four divisions at the Tokyo District Court and two divisions at the Osaka District Court) where judges who are experienced in IP matters will hear and decide the cases.

The judges in these courts and the IP High Court rarely have technical backgrounds. Technical advisers may be appointed to support the judge for advanced or complicated technical issues and to conduct research of highly advanced issues on the judge's behalf. The parties cannot influence who will judge the case, except to request to avoid a certain judge if they have reason to believe they cannot be impartial due to a relationship with the other party (eg, a relative).

The judge usually takes the initiative on settlement negotiations unless the parties clearly refuse to settle the case. In no event will the defendant be obliged to settle the case. Generally speaking, the court prefers to resolve cases via settlements rather than judgments. The judge may disclose or imply to the parties (or only one party) their unofficial opinion on the case to facilitate the settlement negotiations. The judge will cease settlement negotiations if one party decides that they require a court decision rather than a settlement.

Even if there are any pending parallel revocation or infringement proceedings, the current proceedings will not normally be stayed and the court will separately and independently make the judgment for the case. The court can even dismiss the claim for infringement on the grounds that the trade mark at issue is invalid, without the need to conduct a revocation proceeding, which means that it is possible for there to be a contradiction between two cases on the same subject matter. However, in practice, the High Court, as the Court of Second Instance, will make consistent judgments with those cases so that any such contradiction in the first instance will be resolved.

The remedy available for a trade mark owner is injunctive relief. Damages or an account of profit is available as a remedy for trade mark infringement under the Civil Code. In addition, the court may order the defendant to take measures necessary to restore the business credibility of the trade mark owner, such as publication of an apology. As part of the injunctive relief, the trade mark owner can also seek disposal of the infringing goods. Attorneys' fees can be recovered as part of the damages, although the recovery thereof is very limited; in practice, around 10% of the total amount of damages is admitted as the amount of reasonable attorneys' fees by the court. A trade mark owner can only seek compensatory damages.

Claims for enhanced damages, eg, punitive damages, are not eligible, even in cases of wilful infringement. The Trade Mark Act provides for certain presumptions of the damages that are to be calculated based on the profit from the infringement or the assumed royalties. The judge has discretion to determine the appropriate remedies or amount of damages provided that such discretion is only within the scope of claims sought by the plaintiff (ie, if the plaintiff does not seek an injunctive relief, the judge cannot order such relief) and within the amount of the claim made by the plaintiff. In addition, a trade mark owner may request banks to freeze the bank accounts that infringers have used to receive prices for counterfeit goods.

If the defendant prevails, the court can order the plaintiff to pay the court costs (such as transportation fees to attend court hearings and daily allowances for witnesses), provided that the court costs do not include the defendant’s attorneys’ fees or other costs incurred by the defendant in the course of the procedure. There is no right or remedy for a prevailing defendant to recover their own costs.

The prevailing defendant may seek damages arising out of the infringement litigation, including their attorneys’ fees, if the litigation itself is considered to constitute a tort on the grounds that:

  • an allegation of trade mark infringement is entirely baseless and the trade mark owner is fully aware of the lack of legal grounds;
  • such litigation is quite unreasonable; and
  • the lawsuit itself should therefore be considered to constitute a tort; however, the courts rarely accept such claims.

There are no different remedies for different types of trade marks.

Generally speaking, there is no special provision concerning the appellate procedure for trade mark proceedings.

It should be noted, however, that the appeal court for a trade mark case will be the IP High Court, which specialises in IP matters, if the District Court of First Instance is located within the jurisdictional district of the Tokyo High Courts.

The High Court, as the Court of Second Instance, conducts not only a legal review of the facts of the case, but also a full review of the decisions made by District Courts in the first instance. The High Court can also conduct factual findings on its own. A party may submit additional legal arguments, facts or evidence to the Appeal Court, unless an additional claim is considered to be causing delay to the procedure due to that party’s fault. The Supreme Court, as the Court of Third Instance, only reviews the legal issues of the case.

Timeframes are dependent on the case in question, however, according to the report published by the IP High Court, the current average period for trial of IP-related cases in the Appeal Court is less than eight months.

Dilution is not explicitly recognised as a ground to oppose a trade mark registration, whereas Article 4, Item 1, paragraph 19 of the Trade Mark Act may be a ground to oppose a trade mark that causes dilution of the famous trade mark (see 1.9 Prior Rights). In addition, dilution is not explicitly recognised as a ground to prevent use of a mark in a lawsuit, but could be taken into account in a decision of likelihood of confusion with respect to the claim under Article 2.1.1 of the Unfair Competition Prevention Act if the mark is well known among the customers (see 1.10 Third-Party Rights).

Marks that are famous outside Japan are not directly protected under Japanese law. However, the Japanese Trade Mark Act provides that an application for registration shall be rejected or a registration of a trade mark shall be invalidated if it is identical with, or similar to, a trade mark that is well known among consumers outside Japan as indicating goods or services pertaining to a business of another person and if such a trade mark is used for unfair purposes (ie, gaining unfair profits, causing damage to other persons, or any other unfair purposes).

Japan has a Geographical Indication (GI) protection system, under which the names of regional brand products that have obtained high quality and reputation as a result of unique production methods and natural characteristics, such as regional climate and soil conditions, are registered by the Ministry of Agriculture, Forestry and Fisheries, and protected as IP. In addition, if geographic indicators are to be used by members of business co-operatives and associations, and are well known among consumers, they may be registered by the JPO and protected as “regional collective trade marks”.

Japan does not have any specific rules in this regard and it is not possible to file and register a mark as a certification mark. A trade mark used by a trade mark applicant to certify goods or services is registered as a normal trade mark.

Japan does not have any special rules that would allow one to use their own surname as a trade mark, despite that such use causes confusion with a pre-existing mark. If use of one’s surname as a trade mark causes confusion, it would constitute an unfair competition. Further, if the surname is registered as a trade mark, use of the same surname as a trade mark by others would constitute a trade mark infringement. That said, given that a surname is in many cases indistinctive unless it is a very rare one, in reality it would be quite exceptional that use of one’s surname actually causes confusion. Further, under the Trade Mark Act, a common surname may not be registered because a common surname is indistinctive.

A common surname can be registered as a trade mark if the surname has acquired a secondary meaning as the result of actual use. Toyota and Honda are good examples of such registered trade marks composed of a surname. Further, an uncommon surname can be registered as a trade mark. If a surname is registered as a trade mark (because it is a common surname but it acquired a secondary meaning or because it is deemed as a rare surname), the use of the same surname by others as a trade mark for the goods or services for which the surname trade mark is registered would infringe upon such registered trade mark. For avoidance of doubt, use of one’s surname just as their own surname (and not as a trade mark) would not be restricted under the Unfair Competition Prevention Act or the Trade Mark Act.

With respect to trade mark infringement litigation, costs that typically arise before filing a lawsuit would be for investigating the accused products or services, sending warning letters and for preparing for the litigation.

For filing litigation, a stamp fee will be incurred, the amount of which will vary depending on the amount of claim of the case. The other costs are mainly for attorneys' fees and are dependent on the case and the individual attorney’s fee structure. Generally speaking, the costs for trade mark infringement cases would be lower than those for trade mark cases.

In general, court costs are borne by the losing party. However, the proportion of the responsibility for the court costs is left up to the court’s discretion and the court may allocate the responsibility of the court costs to the prevailing party in proportion to the part of its claim not accepted by the court.

The court costs do not include attorneys' fees and thus, generally speaking, each party must bear their own attorney’s fee by itself. The plaintiff may seek compensation for their attorney’s fees as part of the damages but the recovery rate is left up to the court’s discretion and it is usually quite limited, even if the plaintiff wins the case (in practice approximately 10% of the total amount of damages admitted by the court).

ADR is not a common way to settle trade mark cases in Japan. However, ADR, such as mediation or arbitration, is available and the Japan Intellectual Property Arbitration Centre (JIPAC) is the sole ADR organisation providing dispute resolution in the field of IP.

Technically speaking, if a trade mark is so creative as to be considered as “copyrighted work” under the Copyright Act (such as a unique device mark), it can be protected by copyright; however, in practice, a trade mark is often considered insufficiently creative, especially for a word mark. A trade mark can also be protected as a design patent if its design (typically its shape) satisfies requisites such as novelty and creative difficulty, and is registered as a design patent under the Design Act. A trade dress could be protected under the Unfair Competition Prevention Act if it is well known or famous as an indicator of origin of goods or service (see 1.1 Types of Trade Marks).

TMI Associates

23rd Floor, Roppongi Hills Mori Tower
6-10-1 Roppongi
Minato-ku
Tokyo 106-6123
Japan

+81 0 3 6438 5511

+81 0 3 6438 5522

info_general@tmi.gr.jp www.tmi.gr.jp
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Law and Practice

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TMI Associates has an IP practice that has been an integral part of the firm since its establishment. Lawyers and patent/trade mark attorneys, together with patent/trade mark paralegals, form an organisational structure that enables the team to respond in a highly effective manner to the needs of clients across a wide variety of businesses and technologies, all around the globe. The firm's team of IP lawyers and patent/trade mark attorneys work together on all aspects of IP law, including patent/trade mark prosecution, trials before the Japan Patent Office, infringement litigation, IP due diligence and import suspension applications at Customs.

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