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2009:

〔June〕

MIKI SPORTS Case (Cancellation Case of Trial Decision)

IP High Court 2009.6.29 H21(Gyo-Ke)10007

MIKI SPORTS

A trademark which is similar to an unregistered well-known trademark is rejected for its identical or similar goods. (§4-1-10). A trademark registered contrary to this Article is subject to an Invalidation Trial within five years from the registration date (except where the registration was obtained with the intention of unfair competition) (§47-1).

The Invalidation Trial was filed against the registered trademark “miki SPORTS” & Horse device on the basis of the trademark “mikihouse” which is well-known for children clothing after the five years insisting that “miki SPORTS” & Horse device was registered with the intention of unfair competition.

However, the IP High Court dismissed the allegation by “mikihouse” saying that since the two trademarks are not confusingly similar, the registration was not registered with the intention of unfair competition.

The trademark “miki SPORTS” & Horse device was registered in May, 1994 and the five year passed in May, 1999. However, the Invalidation was filed in February, 2008 that was after 14 years from the registration date. Therefore it should be thinkable that the trademark “miki SPORTS” & Horse device has obtained a goodwill to be protected by the use for the 14 years.

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MUG Bottle Case (Unfair Competition Case)

Osaka District Court 2009. 6.4 H20(Wa)15970

MUG Bottle

Article 2-1-3 defines it as “unfair competition” to sell or import goods which imitate the configuration of the other persons’ goods. However, this Article is not applicable to goods that imitate the configuration of goods for which three years have elapsed from the date they were first sold in Japan (§19-1-5-a).

The plaintiff filed an Injunction suit against the defendant’s mug bottles because the defendant’s goods imitated the configuration of the plaintiff’s mug bottles that ware firstly sold in September, 2007.

The Osaka District Court dismissed the plaintiff’s allegation saying there is a fact that mug bottles with almost identical configuration to the defendants’ goods were imported from China in August, 2003 that was prior to the first sales of the plaintiff’s goods. Therefore, the defendant’s goods do not imitate the configuration of the plaintiff’s goods.

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〔May〕

FACTORY 900 Case (Cancellation Case of Trial Decision)

IP High Court 2009.5.28 H20(Gyo-Ke)10439

This is the case as to whether or not the applied-for trademark "Factory 900" is confusingly similar to the cited trademark "SAPPORO/FACTORY" written in two lines. The Trial Decision decided them as similar because "900" in the applied-for trademark is not distinctive and "SAPPORO" in the cited mark is a place name in Hokkaido.

However, the IP High Court cancelled the Trial Decision and decided them as dissimilar with the following reasons.

  1. 1.In the eyeglass market, the numerals are used as parts of trademarks and therefore, the applied-for trademark should be considered as a whole.
  2. 2.The cited trademark "SAPPORO FACTORY" is a name of an emporium managed by the proprietor of the cited trademark and therefore, the cited trademark should also be considered as a whole.

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ISO-Mount-Extender Case (Cancellation Case of Trial Decision)

IP High Court 2009.5.28 H20(Gyo-Ke)10351

The applied-for trademark "ISO-Mount-Extender" was rejected because it contains the famous mark "ISO" indicating a public organization, "International Organization for Standardization" (Article 4-1-6).

The IP High Court also rejected the application with the following reasons.

  1. 1.The ISO part in the trademark is different from the other parts in the appearance.
  2. 2.The trademark has no specific meaning as a whole.
  3. 3.The ISO mark of the International Organization for Standardization is very famous.
  4. 4.As the result, the consumers mistakenly understand the goods bearing the trademark as those meeting the standards provided by the International Organization for Standardization.

The trademarks such as "ISO CORDINATOR", "Olympic", and "FSA (=Financial Services Agency)" are also rejected by Article 4-1-6 while the trademarks such as "ISONATE DIAMOND", "ITTO (=International Tropical Timber Organization)" and "CBCC (=Council for Better Corporate Citizenship)" are accepted irrespective of Article 4-1-6.

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Jeans Pocket Stitch Device Case (Cancellation Case of Trial Decision)

IP High Court 2009.5.12 H20(Gyo-Ke)10449

Jeans Pocket Stitch

The Jeans Pocket Stitch Device mark shown in the right side is registered for clothing in Class 25. Levi Strauss filed an Invalidation Trial against this registered trademark.

The IP High Court admitted the Trial Decision with the following reasons.

  1. 1.The two stitch devices are not similar to each other denying application of Article 4-1-10 and 4-1-11.
  2. 2.The LEVI jeans’ stitch device is well known in Japan.
  3. 3.The basic composition of the two stitch devices are almost identical and they are similar to a respectable degree.
  4. 4.Therefore, the registered trademark is liable to cause confusion with the goods of Levi Strauss company (Article 4-1-15).

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〔April〕

LOVE COSME Case (Cancellation Case of Trial Decision)

IP High Court 2009.4.27 H20(Gyo-Ke)10380

An Invalidation Trial was filed against the registered trademark "LOVE COSME" citing the prior registered trademarks "LOVE". The JPO issued a Trial Decision invalidating the registration for "LOVE COSME" because the word "COSME" in the trademark means "cosmetic" in view of its specified goods "cosmetics" in Class 3.

However, the IP High Court cancelled the Trial Decision saying that the trademark "LOVE COSME" should be inseparable because the word "COSME" is not familiar to Japanese people as the meaning of "cosmetics" and the trademark "LOVE COSME" is a short composition for pronunciation.

We disagree with the Court judgment that the word "COSME" is not familiar to Japanese as "cosmetics". However, even if the word "COSME" is familiar to Japanese, the trademark "LOVE COSME" should be regarded as one inseparable mark such like "COCA COLA" is always called as "COCA COLA" in Japan because a short trademark is always pronounced as a one word.

There was an infringement case between the parties in Osaka. In November 2008, the Osaka High Court also decided that the defendant’s trademarks "LOVE COSME" and "Love cosmetics" and the Plaintiff’s registered trademarks "LOVE" are not confusingly similar.

However, the IP High Court decided in June 2008 that the applied-for trademark "Love cosmetic" is confusingly similar to the registered trademarks "LOVE" supporting the Trial Decision rejecting the application for "Love cosmetic".

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Tokyo Walker Cases (Cancellation Case of Trial Decision)

IP High Court 2009.4.8

  1. (1) Girls Walker … H20(Gyo-Ke)10361

  2. (2) Raking Walker … H20(Gyo-Ke)10362

  3. (3) Boys Walker … H20(Gyo-Ke)10363

  4. (4) Music Walker … H20(Gyo-Ke)10013

  5. (5) Shopping Walker … H20(Gyo-Ke)10014

The magazine "Tokyo Walker"" is well known for city information magazines. Its publisher also publishes similar magazines with the titles consisting of place names and "Walker" such as "Yokohama Walker" and "Hokkaido Walker".

The publisher filed Invalidation Trials against the registered trademarks "Girls Walker", "Ranking Walker", "Boys Walker", "Music Walker" and "Shopping Walker" since these trademarks are liable to cause confusion with the magazines of the publisher.

The JPO dismissed these petitions for Invalidation Trials and the IP High Court also maintained the Trial Decisions with the following reasons.

  1. 1. There was no actual confusion in the web-site of the Defendant.
  2. 2. Many trademarks including the word "Walker" are registered by third parties.
  3. 3. The trademarks themselves are not confusingly similar.

These are cases that many people have adopted trademarks including the word "Walker" since "Tokyo Walker", "Yokohama Walker", "Hokkaido Walker" and so on are rather good titles for magazines because the word "Walker" seems somewhat suggestive for city information magazines.

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〔March〕

IP FIRM Case (Cancellation Case of Trial Decision)

IP High Court 2009.3.24 H20(Gyo-Ke)10371

This is the case whether the trademark "IP FIRM" is distinctive or not for "patent office services, law office services" in Class 42.

The trademark "IP FIRM" was registered on July 2, 2004 by a patent attorney. Another patent attorney filed an Invalidation Trial against the registered trademark. The Patent Office invalidated the registration.

The Court also decided it as non-distinctive because there are several patent offices using "IP FIRM" in their English names.

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ARIKA Case(Cancellation Case of Trial Decision)

IP High Court 2009.3.24 H20(Gyo-Ke)10414

A Cancellation Trial for non-use was filed against the registered trademark "ARIKA" in Class 35. The Defendant submitted as evidence of use a copy of the web-site for the sales of music CDs and game software manufactured by other companies.

The Trial Decision cancelled the registration because the web-site is merely for the advertisements of the sales of its own goods and it is not the service "providing information on commodity sales" for others in Class 35.

However, the Court cancelled the Trial Decision since the web-site provides information on sales of the other companies’ music CDs and game software which services are made for others.

According to the evidence as submitted, the plaintiff received 20% royalty from the manufacturer when the music CDs are sold at the plaintiff’s web-site. This would mean that the plaintiff sold the goods as a retail shop or that the plaintiff advertised the goods for the manufacturers at the advertisement fee of 20%.

In addition, the plaintiff did not receive any fee for "providing information on commodity sales" from the people who obtain such information.

Therefore, the Court should have decided that the trademark had been used for the advertisement services in Class 35 if it wanted to cancel the Trial Decision.

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〔February〕

Agatha Naomi Case (Injunction Case on Trademark Infringement)

Tokyo D.C. 2009.2.27 H20(wa)21018

This is the injunction and damage suit case because the defendant trademark "Agatha Naomi" infringes the trademark right of the registered trademark "AGATHA" (assumed TM No. 1545326-2).

The Court Decision dismissed the plaintiff’s claim. The reasons are that the Defendant trademark "Agatha Naomi" is written in the same size and the color. Since the word of "Agatha" is known by novelist "Agatha Christie", and "Naomi" is woman's name, the defendant trademark consists of the name of a person. Therefore, the Defendant trademark "Agatha Naomi" is pronounced only as a whole and it is not similar to the Plaintiff trademark "AGATHA".

The Trial Decisions show that the trademarks of the full names are decided as dissimilar to the trademark of the family name or the name, either part is the same as that of the full name trademark.

However, when a common part among name trademarks is a well-known trademark, it is likely to be judged as similar trademarks by Article 4-1-15 (Fear of Confusion) of the Trademark Law ("McGUINNES"="GUINNESS" Trial No.S58-14745).

In this case as well, the plaintiff insisted that "AGATHA" is well-known in Japan. However, the submitted evidence was a web page of a plaintiff Japanese subsidiary company, alone, the Court did not accept the plaintiff’ s allegation.

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Kabushiki Kaisha OPTO Case (Cancellation Case of Trial Decision)

IP High Court 2009.2.26 H20(Gyo-Ke)10309

The applied-for trademark is "Kabushiki Kaisha OPTO = OPTO Co., LTD." Since there were several companies, the name of which is identical to the applied-for trademark, the application was rejected due to Article 4-1-8 of the Trademark Law. This is the case that the applicant (=Plaintiff) demanded the cancellation of the Trial Decision.

The Court Decision dismissed the plaintiff's claim. The reasons are as follows. Since Article 4-1-8 of the Trademark Law is aimed at protection of the personal right, the points as to whether the applicant’s business competes with others, or either company is famous, need not be considered.

However, there are some Trial Decisions that did not apply Article 4-1-8 because of the difference of business such as Trademarks "TBK Ltd." (Trial No.2007-15117), "System D Ltd." (Trial No.2007-303), and "Maruzen Ltd." (Trial No.2006-19635). Therefore, you should insist the difference of business under the Trial procedures.

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Otaka Forest Case (Cancellation Case of Trial Decision)

IP High Court 2009.2.24 H20(Gyo-Ke)10344

The Trial Decision was rendered to cancel the trademark registration for non-use. The plaintiff demanded the cancellation of the Trial Decision insisting that there was a justified reason for non-use.

The plaintiff alleged as a justified reason that he resided in the United States after the trademark was registered, and he was busy with research of the agricultural resource economics in University of Hawaii.

However, the Court Decision dismissed the plaintiff’ claim saying that the justified reasons are limited to the cases that the owner of the trademark could not manufacture and sell the goods;

  1. 1.by the statutory regulation
  2. 2.by natural disaster
  3. 3.by the circumstances not referable to the owner.

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〔January〕

Sportsman.jp Case (Cancellation Case of Trial Decision)

IP High Court 2009.1.29 H20(Gyo-Ke)10295

It is the case as to whether the applied-for trademark "Sportsman.jp" and the cited trademark "SPORTSMAN" is similar or not. The Trial Decision decided them as similar since the difference is only ".jp".

The IP High Court sustained the Trial Decision. It mentioned as follows as the reason.  ".jp" only means now at the time of spread the Internet that the user of the web-site is a company or an individual in Japan. Therefore, ".jp" in the applied-for trademark is irrelevant to the pronunciation and meaning of the trademark, and the main part of "Sportsman.jp" is "Sportsman", as a result, it is similar to the cited trademark "SPORTSMAN".

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COLLAGE VEIL CASE (Cancellation Case of Trial Decision)

IP High Court 2009.1.28 H20(Gyo-Ke)10219

The Trial Decision did not admit though the plaintiff who had the registered trademark "Collage" filed an Invalidation Trial against the later registered trademark "COLLAGE VEIL". Then, the Plaintiff demanded cancellation of the Trial Decision before the IP High Court.

The IP High Court dismissed the plaintiff's claim. It describes as follows as the reason. The Defendant trademark "COLLAGE VEIL" can be considered as a coined word because it is written in the same styles of type and the sizes. As the result, a part of "COLLAGE" alone in the Defendant trademark is not separated. Therefore, the defendant trademark "COLLAGE VEIL" is not similar to the plaintiff trademark "Collage".

Moreover, the plaintiff insisted that the trademarks including "COLLAGE" were plaintiff's family mark. However, the Court denied its allegation saying that the word of "collage" recollects "collagen" widely used for cosmetics by the purpose of the aging prevention of the skin and rejuvenation, etc., its distinctiveness is not strong. In addition, the Plaintiff trademark was not well known and therefore, the Defendant trademark was not considered as a family mark of the Plaintiff.

The Plaintiff filed Invalidation Trials against the trademarks such as "COLLAGE TECHTO", "COLLAGEDEEP" and "DEEP COLLAGE". However, the IP Court dismissed the Plaintiff’ claim as well, on the same day.

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