Can a product’s shape be protected in Japan without a design right?

Yes. If the configuration is distinctive and widely recognised as indicating source, it can be protected as a well-known indication under UCPA Article 2(1)(1).

What evidence proves secondary meaning for product configuration?

Consumer surveys, long-term sales data, advertising spend, media coverage and demonstrations of uniqueness versus competitors support distinctiveness and fame.

Is there a time limit on copycat claims in Japan?

Yes for ‘dead copy’ claims under UCPA Article 2(1)(3) – limited to three years after first sale – but no fixed limit for confusion-based claims under Article 2(1)(1).

Intellectual Property Law

Protecting Product Configuration in Japan: Using the UCPA to Safeguard Trade Dress

Japanese Attorney at Law - Bengoshi L.L.

05 May 2025 • 5 min read

TL;DR

Japan’s Unfair Competition Prevention Act (UCPA) lets brand owners protect distinctive product shapes that have acquired secondary meaning.
A 2023 IP High Court ruling on yellow-stitched boots shows how courts test distinctiveness, fame and likelihood of confusion.
Evidence of consumer recognition, sales, advertising and highlighted unique features is vital for enforcement.

Table of Contents

The Legal Framework: UCPA and Product Configuration
Case Study: Protecting Iconic Boot Configuration (Intellectual Property High Court, Nov. 9, 2023)
Analysis and Implications
Conclusion

When expanding into the Japanese market, companies rightly focus on protecting their brand names and logos through trademark registration. However, the distinctive shape or overall appearance of a product itself—often called trade dress or product configuration—can also be a crucial element of brand identity. While Japan has specific design rights and trademark law, another important tool for protecting the "look and feel" of products exists under the Unfair Competition Prevention Act (不正競争防止法, Fusei Kyōsō Bōshi Hō, hereinafter "UCPA"). A recent high-profile court decision involving iconic footwear highlights how this protection works.

The Legal Framework: UCPA and Product Configuration

The primary provision relevant to protecting product configurations as source identifiers is Article 2, Section 1, Item 1 of the UCPA. This item prohibits acts that create confusion (kondō) with another party's goods or business by using an "indication of goods or business" (shōhin tō hyōji) that is well-known (shūchi) among consumers or traders.

While shōhin tō hyōji typically refers to names, trade names, or logos, Japanese courts have recognized that the shape or configuration of a product (shōhin keitai) can also function as such an indication if it has acquired "secondary meaning." This means the configuration itself, beyond its functional aspects, has become recognized by the public as identifying the source or brand of the product.

To establish protection for a product configuration under Article 2(1)(1), courts generally require proof of two key elements:

Distinctiveness (特別顕著性, tokubetsu kenchosei): The product shape or its features must be objectively unique and stand out significantly compared to other similar products in the market. It cannot be a commonplace or generic design.
Well-known Status / Secondary Meaning (周知性, shūchisei): The configuration must be widely recognized by relevant consumers or traders as indicating that the product comes from a specific business source.

It's worth noting that the UCPA also has a specific provision against imitating the configuration of another's product (Article 2, Section 1, Item 3). However, protection under this "dead copy" provision is limited to three years from the date the product was first sold in Japan (Article 19, Section 1, Item 5(a)). Consequently, for products with established designs that have been on the market longer than three years, Article 2(1)(1) becomes the primary route for seeking protection based on the configuration's reputation as a source identifier.

Case Study: Protecting Iconic Boot Configuration (Intellectual Property High Court, Nov. 9, 2023)

A ruling by Japan's Intellectual Property High Court (Chiteki Zaisan Kōtō Saibansho) on November 9, 2023, provides a clear example of these principles in action.

Background:
The plaintiff, the owner of a well-known international footwear brand famous for its distinctive boots with yellow stitching, sued a defendant company for selling boots that closely resembled its iconic "8-hole boot" model. The plaintiff alleged trademark infringement and, crucially for this discussion, unfair competition under UCPA Article 2(1)(1), arguing that the overall configuration of its boot had become a well-known indicator of its brand.

The Configuration in Question:
The court identified the specific combination of features claimed by the plaintiff as constituting its distinctive and well-known product configuration:

(ア) Yellow welt stitching around the sole.
(イ) A distinctive grooved pattern on the sole edge.
(ウ) A specific branded heel loop.
(エ) A particular two-toned, cleated sole pattern.
(オ) A noticeable incline in the heel portion of the outsole.
(カ) A rounded toe shape.
(キ) A specific three-line "Puritan stitch" near the eyelets.
(ク) An 8-eyelet lacing system.

The IP High Court's Findings:
The High Court upheld the lower court's finding in favor of the plaintiff on the UCPA claim.

Distinctiveness (Tokubetsu Kenchosei): The court acknowledged that some individual elements, like a rounded toe or 8 eyelets, might be common in boots. However, it found that the overall combination of these features—and particularly the prominent yellow welt stitching (ア), the unique sole edge (イ), and the branded heel loop (ウ)—gave the plaintiff's boot a "specially conspicuous" (tokubetsu kencho) appearance, clearly distinguishing it from competing products on the market.
Well-known Status / Secondary Meaning (Shūchisei): The court confirmed the boot's configuration was "widely known" (shūchi) as indicating the plaintiff's brand. It relied significantly on consumer survey evidence showing that a substantial portion of the relevant public associated key features, like the yellow stitching on a leather boot, specifically with the plaintiff's brand (30.7% identified the brand unaided, rising to 37.6% when given choices). The court concluded the configuration, especially incorporating elements (ア), (イ), and (ウ), functioned as a well-known source identifier.
Likelihood of Confusion (Kondō): Comparing the plaintiff's established configuration with the defendant's products, the court found one of the defendant's boot models to be essentially a "dead copy" (detto kopī) and clearly similar. Given the established distinctiveness and reputation (shūchisei) of the plaintiff's configuration, the court determined that the sale of the defendant's similar boots was likely to cause confusion among consumers as to their origin.

Outcome:
Based on these findings, the High Court affirmed the injunction preventing the defendant from selling the infringing boots and ordered their destruction.

Analysis and Implications

This decision offers several important takeaways for businesses seeking to protect their product designs in Japan:

UCPA as a Tool for Trade Dress: The case strongly reaffirms that a product's unique overall look and feel can be protected as a well-known source identifier under UCPA Article 2(1)(1), providing a valuable complement or alternative to design rights and shape trademarks.
Evidence is Key: Proving tokubetsu kenchosei (distinctiveness) and shūchisei (well-known status/secondary meaning) is crucial. Evidence such as consumer surveys, details of advertising spend and reach, sales volume and duration, media coverage, and examples showcasing the uniqueness compared to competitors can be vital.
Highlight Unique Elements: While the court considered the overall combination of features, it emphasized the most recognizable and unique elements (in this case, the yellow stitch, sole edge, and heel loop) as anchors of distinctiveness. Businesses should identify and strategically promote the core features that make their product configuration stand out.
UCPA vs. Trademark Law: It's interesting to note, as legal commentaries point out, that attempts to register the yellow stitching itself as a position trademark in Japan had previously been unsuccessful, primarily on grounds that the feature lacked inherent distinctiveness required for trademark registration in isolation. This case demonstrates that even if a single feature doesn't meet the threshold for trademark registration on its own, the overall product configuration incorporating that feature can achieve protection under the UCPA if the combination is distinctive and has acquired secondary meaning through use. This contrasts with some other famous trade dress disputes internationally, such as difficulties faced by a luxury shoe brand in protecting the use of a specific color on soles, where arguments about functionality and lack of inherent distinctiveness were central.
Effective Enforcement: The outcome shows that the UCPA can be a potent tool to stop the sale of products that confusingly mimic the established look and feel of a well-known product, particularly in cases of near-identical copying.

Conclusion

Protecting a brand in Japan involves more than just safeguarding names and logos. As the recent footwear case illustrates, the distinctive appearance of a product itself can function as a powerful source identifier protectable under the Unfair Competition Prevention Act. By establishing that a specific product configuration is both unique (tokubetsu kencho) and widely recognized (shūchi) by consumers as belonging to their brand, companies can leverage the UCPA to combat confusingly similar imitations and defend their valuable trade dress in the Japanese market. Understanding and potentially utilizing this avenue of protection should be part of a comprehensive brand strategy for businesses operating in Japan.