graduate school of intellectual property, osaka institute

2020/10/12

1

0

0

© Michihiko Otsuka. All rights reserved. Reproduction, modification or retransmission is prohibited.

Professor, Michihiko Otsuka

Graduate School of Intellectual Property, Osaka Institute of Technology

Trade Secretand Unfair Competition Prevention Act

October 2020Intellectual Property Studies I

@OIT in Osaka, JAPAN

1


Contents

１．Overview２．General Observation３．Trade Secret４．Latest Revision

2

2020/10/12

2


Contents


3


１．Overview

１－１．What is the Unfair Competition Prevention Act?１－２．Overview on the Unfair Competition Prevention Act１－３．Revision History

This part is based on the following website. Ministry of Economy, Trade and Industry, "Unfair Competition Prevention Act". https://www.meti.go.jp/english/policy/economy/chizai/chiteki/index.html

4

2020/10/12

3


１．Overview



5


１－１．What is the UCPA

6


UCPA : Unfair Competition Prevention Act

2020/10/12

4



7


Ex.1 Providing a product which circumvents

technological restriction measures

Ex.2 Infringement of Trade Secrets

Ex.3 Misleading representation regarding

the place of origin, quality, etc.



8


Ex.4 Prohibition of bribery of

foreign public officials

Ex.5 Misleading representation regarding

the place of origin, quality, etc.

2020/10/12

5



9




10


2020/10/12

6


１．Overview


11



１－２．Overview on the UCPA

12


Item1

Item2

Item3

Item4-10

Art2 Para1

Art3

Art4

Art21,22

Art21 Para6,7

Art16

Art17

Art18

2020/10/12

7



13


Item11-16

Item17,18

Item19

Item20

Art2 Para1

Item21

Item22

Art5

Art22 Para1

Art7

Art10,11

Art14



14

This slide is based on the following document. Ministry of Economy, Trade and Industry, "Overview of Guidelines on Protected Data". https://www.meti.go.jp/english/policy/economy/chizai/chiteki/pdf/guideline_protected_data.pdf

2020/10/12

8


１．Overview


15



１－３．Revision History

16


2020/10/12

9


１－３．Revision History

17


TRM : Technological Restriction Measures


Contents


18

2020/10/12

10


２．General Observation

２－１．General Observation２－２．Remedies

19




20

2020/10/12

11


２－１．General Observation

21

Free competition is only allowed to the extent that it does not interfere with fair competition. The UCPA aims to regulate unacceptable competition and maintain a fair competitive order.



22

(Purpose)Article 1 The purpose of this Act is to provide measures, etc. for the prevention of unfair competition and for the compensation for loss or damage caused by unfair competition, in order to ensure fair competition among companies, and proper implementation of international agreements related thereto, thereby contributing to the sound development of the national economy.

Provisions of the UCPA are available in the following web site.http://www.japaneselawtranslation.go.jp/law/detail/?id=3569&vm=02&re=02

2020/10/12

12



23

The UCPA does not include general provisions such as the German Unfair Competition Prevention Act. Instead, the UCPA lists unfair competition in a limited way.



24

The acts of unfair competition prohibited by the UCPA is described in Article 2, Paragraph 1, Items 1 to 22 as follows.

2020/10/12

13



25

Item1：Creation of confusion with a well-known indication of goods, etc.

Acts that cause confusion with other person's goods / services by using the same or similar indications as those well-known among consumers as other person's goods / services indications



26

Item2：Misappropriation of a famous indication of goods, etc.

Acts of using famous indications of other person's goods / services as indications of one's own goods / services

2020/10/12

14



27

Item3：Imitation of the configuration of another person’s product

Acts of transferring a product that imitates the form of another person's product



28

Item4-10：Infringement of Trade Secrets

Acts of acquiring Trade Secrets by fraudulent means such as theft, using them by oneself, or disclosing them to third parties, etc.

2020/10/12

15



29

Item11-16：Wrongful acquisition, usage of Protected Data

Acts of acquiring Protected Data by fraudulent means such as theft, using it by oneself, or disclosing it to third parties, etc.



30

Item17,18：Provision of a device, etc. which circumvents technological restriction measures

Acts of transferring a device or program that enables viewing, recording, or copying of content whose viewing, recording, or copying is restricted by technological restriction measures

2020/10/12

16



31

Item19：Wrongful acquisition, usage of a domain name

Acts of acquiring or holding the right to use a domain name that is the same as or similar to the indication of other person's goods / services or using it for the purpose of gaining fraudulent profits or harming other person



32

Item20：Misleading representation regarding the place of origin, quality, etc.

Acts of representing display misleading the origin, quality, content, etc. of the products / services or its advertisement

2020/10/12

17



33

Item21：Act of harming business reputation

Acts of announcing or disseminating false facts that damage the business credibility of others in a competitive relationship



34

Item22：Misappropriation of a trademark by an agent of the trademark owner

Acts by an agent of a person who has a trademark right in an ally of the Paris Convention, etc., using the trademark without a justifiable reason

2020/10/12

18



35

Chapter III of the UCPA also prohibits the following acts under international agreements.



36

Article16 ：Prohibition of commercial use of foreign national flags, etc.

It is prohibited to use foreign national flags or coats of arms as trademarks, and to use foreign coats of arms in a way that misleads the place of origin.

2020/10/12

19



37

Article17 ：Prohibition of commercial use of the mark of an international organization

It is prohibited to use the mark of an international organization as a trademark in a way that makes it misleading to be related to the international organization.



38

Article18 ：Prohibition of bribery of foreign public officials

It is prohibited to bribe foreign public officials in order to obtain unfair business profits in international commercial transactions.

2020/10/12

20




39


２－２．Remedies

40

Civil Remedies

Article3 ：Right to Claim for an InjunctionArticle4 ：Compensation for Loss or DamageArticle14 ：Measures to Restore Business Reputation

2020/10/12

21



41

Article3 ：Right to Claim for an Injunction

A person who infringes or may infringe business interests due to unfair competition may be claimed to stop or prevent the infringement and to dispose of the material which constitutes the act of infringement.



42

Article4 ：Compensation for Loss or Damage

Compensation for loss or damage may be claimed against a person who intentionally or negligently engaged in unfair competition and infringes the business interests of another person.

2020/10/12

22



43

Article14 ：Measures to Restore Business Reputation

Measures to restore business reputation may be claimed against a person who intentionally or negligently engaged in unfair competition and damaged the business reputation of another person.



44

Criminal Remedies

Article21 ：Penal ProvisionsArticle22 ：Corporate Penalties

2020/10/12

23



45

Article21 ：Penal Provisions

Trade secret infringement ：not more than 10 years imprisonment with required labor ornot more than 20 million yen as a fine(30 million yen in the case of use outside Japan, etc.) or both.



46

Article21 ：Penal Provisions

Others ：not more than 5 years imprisonment with required labor ornot more than 5 million yen as a fineor both.

2020/10/12

24



47

Article22 ：Corporate Penalties

Trade secret infringement ：not more than 500 million yen as a fine(1 billion yen in the case of use outside Japan, etc.)



48

Article22 ：Corporate Penalties

Others ：not more than 300 million yen as a fine

2020/10/12

25


Contents


49


３．Trade Secret

３－１．What Is Trade Secret?３－２．Acts of Unfair CompetitionConcerning with Trade Secret３－３．Exclusion from Application３－４．Court Case

50

2020/10/12

26


３．Trade Secret


51


３－１．What is TS?

52


TS : Trade Secret

2020/10/12

27



53

(Definitions)Article 2 (6) The term "trade secret" as used in this Act shall mean a production method, sales method, or any other technical or operational information useful for business activities that is controlled as a secret and is not publicly known.

Provisions of the UCPA are available in the following web site.http://www.japaneselawtranslation.go.jp/law/detail/?id=3569&vm=02&re=02



54

Requirement for TS(Art2 Para6)

①Useful for business activities.②Controlled as a secret within two aspects, in particular:access is limited only to authorized persons,indication that can determine whether it is TS or

not is provided.(It might be different depending on scale and

type of the company.)③Not publicly known.

2020/10/12

28



55

Types of TS(Art2 Para6)

①Technical information for example,manufacturing method, know-how, new material

information, design drawing etc.②Operational information for example,list of customers, new business plan, pricing

information etc.


３．Trade Secret


56

2020/10/12

29


３－２．Acts of Unfair Competition Concerning with TS

57

Ministry of Economy, Trade and Industry, "Unfair Competition Prevention Act", p23, modified by the author. Circled numbers are correspond to provision item numbers, for example ④ to item 4.https://www.meti.go.jp/policy/economy/chizai/chiteki/pdf/20181201unfaircompetitiontext.pdf



58

Category1(Art2 Para1 Item4-6)Upper part of the previous figureStart from a wrongful person

Circled numbers indicate item numbers.Ex. ④ means item4.

2020/10/12

30



59

Red person with ④

The act of acquiring trade secrets by theft, fraud, duress, or other wrongful means (hereinafter referred to as an "act of wrongful acquisition of trade secrets"), or the act of using or disclosing trade secrets acquired through an act of wrongful acquisition of trade secrets;



60

Blue person with ⑤

The act of acquiring trade secrets with the knowledge, or through gross negligence in not knowing, that there has been an intervening act of wrongful acquisition of trade secrets, or the act of using or disclosing trade secrets acquired in such a way;

2020/10/12

31



61

Green person with ⑥

The act of using or disclosing acquired trade secrets after having learned, or through gross negligence in not having learned, subsequent to their acquisition, that there had been an intervening act of wrongful acquisition of trade secrets;



62


2020/10/12

32



63

Category2(Art2 Para1 Item7-9)Lower part of the previous figureStart from an innocent person

Circled numbers indicate item numbers.Ex. ⑦ means item7.



64

Red person with ⑦

The act of using or disclosing trade secrets disclosed by the company that owns them (hereinafter referred to as the "trade secret owner") for the purpose of wrongful gain, or causing damage to the trade secret owner;

2020/10/12

33



65

Blue person with ⑧

The act of acquiring trade secrets with the knowledge, or with gross negligence in not knowing, that the trade secrets' disclosure is an act of improper disclosure of trade secrets or that there has been an intervening act of improper disclosure of trade secrets with regard to the relevant trade secrets, or the act of using or disclosing trade secrets acquired in such a way;



66

Green person with ⑨

The act of using or disclosing acquired trade secrets after having learned, or through gross negligence in not having learned, subsequent to their acquisition, that disclosing them was an act of improper disclosure of trade secrets or that there had been an intervening act of improper disclosure of trade secrets with regard to the relevant trade secrets;

2020/10/12

34



67




68

Category3(Art2 Para1 Item10)Upper right of the previous figure

The act of transferring, delivering, displaying for the purpose of transfer or delivery, exporting, importing, or providing through a telecommunications line things created by the acts set forth in item4 to 9 (limited to acts of using a technical secret);

2020/10/12

35


３．Trade Secret


69


３－３．Exclusion from Application

70

Exclusion from Application(Art19 Para1 Item6)

Unfair competition set forth in art2 para1 item4-9 - the act by a person that has acquired trade secrets through a transaction, of using or disclosing the trade secrets within the scope of title acquired through the transaction;

2020/10/12

36


３－３．Exclusion from Application

71

Exclusion from Application(Art19 Para1 Item6)

Limited to a person that, at the time of acquiring the trade secrets, was without knowledge that the disclosure of the trade secrets was an act of improper disclosure of trade secrets or that there had been an intervening act of wrongful acquisition of trade secrets or an act of improper disclosure of trade secrets with regard to that trade secrets, and was without gross negligence in not knowing the fact;


３．Trade Secret


72

2020/10/12

37


３－４．Court Case

73

Please check the reference material.


Contents


74

2020/10/12

38


４．Latest Revision

75




76


2020/10/12

39



77




78


2020/10/12

40


Thank you!

79

This is the end of this lecture.Thank you for your attention.

If you have any question, please send an email to our office.

graduate school of intellectual property, osaka institute

Documents