The change of the institutional procedures for the legal protection of the intellectual property of Japan
Keywords: domain names, intellectual property, industrial property, Japan Intellectual Property Arbitration Centre, arbitration, mediation, alternative dispute resolution, intermediation, method of protection of intellectual property rights, Arbitration Court.
The Japanese government is engaged in the development and implementation of national strategic programmes for the development of mechanisms for the protection of intellectual property rights (hereinafter referred to as “IP”). At the state level, it have developed in detail the relevant documents regulating in detail the legal relations and their development in the IP field up to the year 2025. In order to achieve this, the main principle of implementing the policy of the business expansion in the IP field sets an objective to create an advanced legal system for its protection, in the implementation of which three scientific and technical councils interact successfully and effectively, the main of which is the Council for Science and Technology Policy, headed directly by a Prime Minister.
Basic law of Japan of 04.12.2002 No. 122 “Intellectual Property Basic Act” defines institutions, subject-matters and procedures for regulating the relations in the IP field.
The Japan Intellectual Property High Court may accept the petition of any individual or legal entity who wishes to challenge the decision made by the Patent Office of Japan regarding an obtainable patent or the patent that has already been obtained, as well as for the dispute resolution between individuals and/or legal entities. Also, before applying to this court, you can apply to district and city courts of Japan for the dispute resolution with regarding the IP.
New information technologies have set an objective to ensure the legal protection of the intellectual property and the quality of the Internet information. With the growth of the commercial use of the Internet, the number of cases related to the copyright infringement has increased sharply. The fact that the Internet has gone across the national borders requires international efforts to solve the above problems. The World Intellectual Property Organization (hereinafter referred to as the “WIPO”) has already taken up this issue. Within its framework the Standing Committee on Copyright and Related Rights and the Advisory Committee on the Management of Copyright and Related Rights in Global Information Networks with the participation of right holders and service providers have already been established.
Currently, the governments of the USA, Japan and the EU countries activate the cooperation in the field of improving the protection of the intellectual property in the Internet in general and the inventions regarding the business methods, including the issues of patenting the methods of electronic payments and the certification, electronic signatures, etc.
The procedure for an alternative dispute resolution (hereinafter referred to as the “ADR”) is becoming increasingly popular all over the world. This is due to the fact that the intellectual property rights have become the most popular product on the international market, while the means of protection have been still tied to territoriality. The legal systems of countries are unable to resolve effectively such conflicts, as the virtual space is beyond the scope of the state legal regulation.
It should be noted that for the dispute resolution in the intellectual property field, even in the process of the ADR, there should be a specialized body that will deal with the resolution of the legal conflicts only in the intellectual property field. This is due to the fact that this is a specific area of citizens' rights, where it is necessary to take into account an international nature of the Internet and a low effectiveness of the legal mechanisms for regulating relations in a virtual space.
In connection with the global change in priorities of the economic development, the government of Japan optimizes the country's patent system, bringing it in line with today's realities. However, according to experts, Japan is still behind the Western Europe countries and the USA in terms of the level of the intellectual property protection.
By the way, the need to resolve the current situation, which requires the improvement of the judicial system, has found an understanding in the Russian Federation (hereinafter referred to as the “RF”).
One of the main directions for such improvement was the introduction into the judicial system of the arbitration courts of the Russian Federation – a specialized court for Intellectual Property Rights.
Such a specialized court has already been functioning in the Russian Federation since 2013. This is an independent, permanent arbitration court for the intellectual property affiliated with the Republican Research Institute for the Intellectual Property (hereinafter referred to as the “RRIIP”), formed by the decision of the Board of the RRIIP Corporation of 27.08.2012 in accordance with the Federal Law “On Arbitration Courts in the Russian Federation” for the effective and comprehensive resolution of specific disputes in the intellectual property field, the protection of rights and legitimate interests of the right holders in the field of copyright and related rights, the patent law, the right to know-how and the means of individualization (trademarks, commercial designations, company names, the name of the product origin).
At the international level, the ADR procedures fall within the jurisdiction of the Arbitration and Mediation Centre of the World Intellectual Property Organization. The Arbitration and Mediation Centre of the WIPO was founded in 1994 to facilitate the dispute resolution in the intellectual property field through the alternative dispute resolution.
High growth rates of the Japanese economy, the innovative development in the field of technical and information means, the widespread use of electronic resources have led to the necessity of the creation of a special system of the dispute resolution in Japan as well.
In Japan, as in many other foreign countries, the civil justice is characterized by long terms of considering the case, as well as high legal costs. Therefore, the parties increasingly try to find a more effective method of the dispute resolution. The ADR procedures are the most effective in the dispute resolution in the intellectual property field, which is due to several reasons.
Firstly, the judicial proceedings are more expensive and not always available to the parties to the dispute, what entails ignoring a significant number of violations of intellectual property rights.
Secondly, since the judicial proceedings are open and public, it does not provide confidentiality for the right holders of intellectual property rights, what is sometimes an important factor for the right holders. In addition, the examination, in the majority of cases the technical one, which is necessary at the violation of intellectual property rights in a virtual space, is not always available within the framework of the state court systems.
The ADR procedures allow the parties to avoid many of these inconveniences. In case of the ADR, the parties themselves can choose an intermediary, who, in their opinion, is the most competent in intellectual property issues, technically competent and has an extensive experience in such a field.
In this connection, the most attractive are the alternative methods of the dispute resolution, such as arbitration, mediation, the advice, the examiner’s point of view and many others.
The procedural advantages of an arbitration form of the proceedings are as follows.
Firstly, the parties, agreeing to arbitration proceedings, shall undertake to implement the arbitral decision without delay and disclaim their right to any form of an appeal or a judicial appeal.
Secondly, the parties themselves shall form the composition of the court, determining the arbitrators who will consider this dispute, but the arbitration court must approve their candidacies.
Thirdly, the parties themselves shall determine the place of the proceedings.
Fourthly, the parties themselves shall determine the applicable law in this dispute, etc.
Consequently, the arbitrations can be guided by the rules of the substantive law of the country, which the parties have chosen. Arbitrators resolve disputes on the basis of the rules of the applicable substantive law chosen by the parties, guided by the terms of the agreements and taking into account the international customs.
In case the parties have not provided for the law of the country to be applied, the law of the country of arbitration as a general rule shall be considered applicable to the arbitration agreement.
One of the most famous centres for the dispute consideration related to the protection of intellectual property rights, not only in Japan, but throughout the Asia-Pacific region is the Industrial Property Arbitration Centre of the Japan Patent Attorneys Association and the Japan Federation of Bar Association (hereinafter referred to as the “Centre”). The Arbitration Centre for Intellectual Property Disputes has started to provide services for the alternative dispute resolution starting since April 1, 1998.
In August 2000, the Centre concluded an agreement with the Japan Network Information Centre and became an organization considering the disputes related to the domain names registered in the Japan Network Information Centre. Frequently, the network hackers register a domain name which they have nothing to do with, for the purpose of the further resale of it to a person with the similar means of individualization or to create a new domain with a similar spelling having a difference of one letter. Obviously, such a situation leads to disputes in this field.
In 2001, the Centre was renamed to the Japan Intellectual Property Arbitration Centre. From that moment, it expanded the scope of its activities: starting from the protection of industrial property rights to intellectual property subject-matters.
In March 2004, the Centre began offering a new service, “Advisory Opinion on Law Violation” and “Advisory Opinion on Legality,” and in April 2011, another new service, “Independent Opinion on Action,” was added; these procedures are in demand among the parties in connection with the swiftness of the dispute resolution.
According to the Japanese Law on alternative methods of the dispute resolution, since November 2012, the Centre has been approved as an organization specializing in conducting independent proceedings: internal and those, which have been complicated with a foreign element. The Centre operates at eight of its representative offices.
As noted earlier, the alternative methods of the dispute resolution without appealing to court are arbitration and mediation, among which mediation is the most commonly used method. These procedures are substantially different; arbitration is characterized with a mandatory arbitration agreement between the parties with a mandatory indication of the number of arbitrators and the binding nature of the decision to the parties.
The Japan Intellectual Property High Court and the Japan Intellectual Property Arbitration Centre play a key role in the dissemination and promotion of mediation. The offer or direction of the court to a mediation procedure, the explanation to the parties of the substance of this procedure allows solving several tasks at once. On the one hand, the court performs an informational and educational function, which itself is an important social mission of the judiciary system as a whole, as the most authoritative institution of the state power – the guarantor of justice and fairness. On the other hand, in case of the offer to conduct a mediation procedure, the parties to the dispute are more likely to turn to this procedure, fearing negative procedural consequences. At the same time, the objective for stimulating the parties to turn to a mediation procedure in case, when they are potentially interested in the dispute resolution without the intervention of the court, but for some subjective reasons they do not initiate this process themselves, is solved partially.
In fact, mediation is a method of the dispute resolution through the negotiations conducted with the participation of a neutral third party. The process is voluntary and does not lead to a mandatory implementation of the decision, the parties individually decide for themselves how to implement this decision.
The success of this procedure depends entirely on the parties, therefore, if in course of this procedure the parties understand its futility, they can stop it at any time.
The persons appointed by the mediators must resolve the dispute through a mediation procedure, using their knowledge and experience. Prior to the approval of their candidatures as mediators and the beginning of a mediation procedure, they are considered to be only the candidates. As a general rule, there should be two of them, except if the parties have indicated that the dispute should be considered by one or three mediators, in which case their candidatures must be approved by both parties. The mediator must be guided by the Mediation Rules and make every effort to ensure that the dispute will be resolved with an amicable agreement.
This Centre is the most popular place for the dispute resolution related to the industrial property and intellectual property rights. This is evidenced by statistics: since 2011 there has been a systematic increase in cases. The mediation procedure is the most popular, it covers about 95% of all cases, and only 5% falls at arbitration.
Thus, the adoption by the professional community of Japan of the changes in the procedures for the legal protection and the dispute resolution related to the protection of intellectual property rights to alternative methods of the dispute resolution and the expediency of creating separate institutions and structures specializing in conducting independent proceedings can be stated definitely.
The original article was published in journal “Science and Education Today” No. 4 (5), June 2016, p. 61-65: http://publikacija.ru/images/PDF/2016/5/Science-and-education-today-4-5.pdf