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Cases re:well-known/famous marks
2003 AIPLA Meeting
Ken Nakayama
Japan Trademark Association
Matsubara, Muraki & Associates
Palm Springs Polo Club• JPO rejected this mark under 4-1-15• Tokyo High Court reversed the JPO rejection
– No likelihood of confusion w/Polo marks• Supreme Ct. reversed the High Ct. decision in
2000– Prominent part of the above mark resides in the
“Polo”– Need to prevent free-ride or dilution of the Polo
marks
CAMBRIDGE Univ. POLO CLUB
• The Polo/Ralph Lauren filed opposition• JPO supported such opposition and rejected
the mark under 4-1-15• Cambridge Univ. filed appeal to Tokyo Hig
h Ct.• Tokyo High Ct. recognized registrability in
2002– Prominent part of the mark resides in CA
MBRIDGE UNIVERSITY– No likelihood of confusion
Levi’s
• Unfair Competition 2-1-1
• Tokyo High Ct. in 2001
• Pattern of stitch on back-pocket of jeans can work to identify source of products
• Peculiar stitch of Levi’s jeans has been well-known
• ‘△ S stitch confusingly similar to Levi’s and likelihood of confusion
ILANCELI• 4-1-15
• Tokyo High Ct. 1999
• G of the above mark: clothings, shoes, belts
• G of LANCEL: bags, belts, etc.
• Likelihood of confusion
ETNIES
• 4-1-19
• Tokyo High Ct. 2001
• JPO, via invalidation trial, invalidated reg. for the mark ETNIES cl 25 under 4-1-19
• Registrant filed appeal
• Tokyo High Ct. supported JPO’s decision
ETNIES (2)• Tokyo High Ct’s decision in 2002
– 4-1-19 prevents dilution , no requirement of likelihood of confusion
– 4-1-19 only requires the prior mark has been well known; not require highly well known
– If the mark has been well known in foreign country, that is enough to apply 4-1-15
– 4-1-15 requires bad faith(intention to gaining unfair interests, to inflict damage on another person or other unlawful objects
ETNIES (3)
• Here, there was business contact b/w the registrant and the owner of ETNIES mark prior to the filing of the application
• The registrant seems to obtain a trademark registration to obtain leverage for setting up business relation
THANK YOU