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1
the japan Trademark Association
1. ARIKA Supreme Court Decision
(2009 (gyo HI) 217, Cancellation Case of the JPO
Appeal Board Decision, The Third Petty Bench of
the Supreme Court, December 20, 2011)
- The Japanese Supreme Court has clarified the
meaning of “providing information on commodity
sales” in Class 35.
KAWAI, Chiaki
Kawai & Associates
The class heading of International Class 35 in the
Nice Agreement Concerning the International
Classification of Goods and Services of the
Registration of Marks is provided as “Advertising;
business management; business administration;
office functions.” The Class includes services
“providing information on commodity sales” in the
Japanese Ordinance for Enforcement of the
Trademark Law. The Supreme Court has at this time
clarified the meaning of said services as follows:
“providing information on commodity sales’ in Class
35 shall be interpreted as the services provided to
commercial undertakings and not end-consumers.”
In this case, KK ARICA filed a partial cancellation
action based on non-use against a registered
trademark “ARIKA” (Reg. No. 4548297) owned by the
Introduction
This issue features some of the latest topics and trends concerning trademarks in Japan. Article 1addresses a recent Supreme Court decision concerning the services in International Class 35.Article 2 offers insight into a strategy for registering three-dimensional marks in Japan based onseveral notable court decisions concerning three-dimensional marks rendered during the lastthree years. Articles 3 (1)~(3) explore recent trends in Japanese trademark practice, consideringseveral noteworthy decisions of the IP High Court, Appeal Board and/or Trial Board.
CONTENTS1. ARIKA Supreme Court Decision
2. 3D Trade Marks IP High Court Decisions
3. Recent IP High Court Decisions and Appeal/Trial Board Decisions (1) Distinctiveness(2) Similarity(3) Well Known marks and Famous marks
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registrant KK ARIKA (in katakana) in respect of
“Advertising and publicity services; Business
management analysis or business consultancy;
Marketing research; Providing information on
commodity sales; Business management of hotels;
Publicity material rental.” In Japan, if the registrant
of a mark has not used a trademark for three
consecutive years in respect of the designated goods
and/or services, then any person may cancel the
mark. The registrant of the mark is a company that
designs, manufactures, and sells computer game
software. The registrant used its mark on its website
in relation to computer game software designed by
the company and sold by other undertakings, and
CDs of music used in the software sold by other
undertakings. The website included information on
game content, price, launch dates, and how to buy;
links to other companies’ websites were provided in
introducing ARIKA’s game software and music CDs.
The proprietor submitted said evidence as proof of
use, and asserted the mark has been used in respect
of the services in Class 35, in particular, “providing
information on commodity sales” as covered by the
specification of the registration.
The Appeal Board of the JPO decided this did not
constitute use of the trademark in respect of the
services in Class 35, in particular, “providing
information on commodity sales” as covered by the
registration. The reason cited by the Appeal Board
was that it merely advertised goods designed by the
registrant, which, not being independent services for
the benefit of others, are not protectable. Therefore,
the Appeal Board of JPO ruled that the registration
should be cancelled.
However, the registrant of the mark appealed to the
IP High Court, which overruled the Appeal Board
decision, affirming the registrant’s claim that the
trademark has been used. The decision was based
on the fact that the mark was indicated on the
registrant’s website where music CDs and computer
game software sold by others were introduced, and
where links to the others’ web sites were provided.
The IP High Court regarded these acts as services
“providing information on commodity sales.” So, the
IP High Court ruled that the Appeal Board decision
should be overturned.
KK ARICA, which filed the cancellation action,
appealed to the Supreme Court. The Supreme Court
annulled the judgment of the IP High Court for the
following reasons:
(1) The Trademark Law provides: “An application for
trademark registration shall be filed for each
trademark and designate one or more goods or
services in connection with which the trademark
is to be used. And, the designation provided for
shall be made in accordance with the class of
goods and services provided by Cabinet Order”
(Trademark Law Art 6(1) and (2)). On this basis,
the Order for Enforcement of the Trademark Law
stipulates that the class of goods and services
shall be provided based on International
Classification (Nice agreement Art.1) and class
headings are provided for each class (Art 1 and
the Annex to the Order for Enforcement of the
Trademark Law). The Ordinance for Enforcement of
the Trademark Law further provides sub-
classification for each class (Art. 6 and the Annex
to the Ordinance for Enforcement of the
Trademark Law). The JPO provides that, for the
purposes of examination, goods and services
similar to each other should be grouped in the
same sub-class in the Examination Guideline for
Similarity of Goods and Services. Accordingly,
the meaning of goods and/or services provided
in the Japanese Ordinance for Enforcement of the
Trademark Law shall be interpreted on the basis
of the whole of these legal materials.
(2) Taking into consideration the fact that (i) the
Annex to the Cabinet Order provides the class
heading for services in Class 35 as
“Advertisement, business management or
administration, or office functions;” (ii) the
Explanation of Class 35 in the Nice Agreement
states that “Class 35 includes mainly services
(rendered by persons or organizations)
principally with the object of help in the working
or management of commercial undertakings, or
help in the management of the business affairs or
commercial functions of an industrial or
commercial enterprise;” and (iii) the services are
classified in the same sub-classification covering
“Business management analysis and business
consultancy, market research, providing
information on commodity sales, business
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April 2012, Issue no. 17
management of hotels” in the Japanese
Ordinance for Enforcement of the Trademark
Law; “providing information on commodity
sales” shall be interpreted as providing
information on commodity sales with the object
of helping the working and management of
commercial undertakings. Accordingly, for
instance, “providing information on sales figures”
or “statistical analysis concerning commodity
sales to commercial undertakings” would fall
under this definition, but “introducing information
on commodity sales to end-consumers” would
not.
(3) Before the introduction of the retail service mark
system in 2006, intended to protect retail
services, services providing convenience
services to end-consumers (such as helping
consumers select goods through mail order, etc.)
were not protected as services. Thus, they were
not covered by “providing information on
commodity sales” in Class 35.
(4) The Supreme Court annulled the IP High Court
judgment as a violation of law. As a result, the
appeal by the registrant to cancel the JPO’s
Appeal Board decision was rejected.
In Japan, a retail service mark system was
introduced in April 2006. Prior to that time, the
designation service “providing information on
commodity sales” in Class 35 was used by trademark
proprietors in the hopes of obtaining partial
protection of retail service marks. It is apparent that
retail services were not protected before the
introduction of the system. Nonetheless, the
meaning of “providing information on commodity
sales” in Class 35 was unclear. The Supreme Court
has at this time clarified the meaning of “providing
information on commodity sales” in Class 35. It shall
be interpreted as services provided “with the object
of helping in the working and management of
commercial undertakings,” and not end-consumers.
Reg. No.4548297
Specification of goods and services
Advertising and publicity services; Issuance of
trading stamps; Business management analysis or
business consultancy, Marketing research,
Providing information on commodity sales,
Business management of hotels; Employment
agencies; Auctioneering; Import-export agencies;
Arranging newspaper subscriptions; Document
reproduction; Shorthand services, Transcription;
Operation of computers, typewriters, telex machines
and other similar office machines; Office functions,
namely filing, in particular documents or magnetic
tape; Reception for visitors in buildings; Publicity
material rental; Rental of typewriters and copying
machines.
2. Recent Decisions of the IP High Court on 3D Trade
Marks Consisting of a Product’s Shape and a
Product’s Container
HIGASHITANI, Yukihiro
Shobayashi International Patent & Trademark Office
In Japan, 3D Trade Marks have been registrable since
April 1, 1997. The total number of the applications
for the 3D Trade Marks filed with the Japan Patent
Office (“JPO”) from 1997 to 2011 was around 5,000.
As of April, 2012, 2082 of these applications were
registered. Most of the registered 3D Trade Marks
were a combination consisting of a 3D shape and a
definite distinctive element such as a word(s) or a
device, or a statue/mascot such as the statue of
KFC’s founder Colonel Sanders standing in front of
shops or a cartoon character, which clearly function
as indicators of origin for consumers (i.e.,
trademarks). This is because, in contrast, 3D shapes
of a product configuration itself and 3D shapes of the
product’s container, such as perfume bottles and
whiskey bottles (without any word or device mark),
even if they are uniquely designed, are presumed to
be non-distinctive as trademarks under the JPO’s
Examination Guidelines for Trademarks. However, if
it can be proved that these shapes have acquired
secondary meaning as a trademark that identifies
the applicant’s product through use, then it is
possible to be registered under paragraph 2 of
Article 3 of the Japan Trademark Law.
As explained in JTA BULLETIN, April 2009, Issue no.
14, the following 3D Trade Marks consisting of a
product configuration itself or a product’s container
have already been registered with proof that these
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shapes acquired secondary meaning as trademarks
(distinctiveness);
(1) MagLite Case
Case No.: 2006 (gyo KE) 10555
Reg. No. : 5094070
App. Date: Jan. 19, 2001
Reg. Date: Nov. 22, 2007
Plaintiff (Applicant): Mag instrument, Inc. (the U.S.)
The goods: Int'l Class 11- Flashlights
(2) Coca-Cola Case
Case No.: 2007 (Gyo Ke) 10215
Reg. No. : 5225619
App. Date: July 2, 2003
Reg. Date: April 24, 2009
Plaintiff (Applicant): The Coca-Cola Company (the
U.S.)
The goods: Int'l Class 32- Cola drinks
In addition, recently the IP High Court has issued the
following decisions in favor of applicants, that is, the
following 3D Trade Marks should be registered due
to the shapes themselves having acquired secondary
meaning as a trademark (distinctiveness);
(3) Yakult Case
Case No.: 2010 (gyo KE) 10169
Reg. No. : 5384525
App. Date: Sept. 3, 2008
Reg. Date: Jan. 21, 2011
Plaintiff (Applicant): Yakult Honsha Co., Ltd. (Japan)
The goods: Int'l Class 29- Lactic acid drinks
(beverage)
The court particularly took the following facts into
consideration;
(i) Since the beginning of selling the product in 1968,
said product has had an astonishing amount of sales
(e.g. 45 billion YEN in 2008). The market share of the
product was more than 42 % during the period from
2000 to 2008.
(ii) The applicant spent a great amount of money on
advertising the product every year (e.g. 9.5 billion
YEN in 2005, and over 9 billion YEN thereafter). The
advertisement strongly impressed the shape of the
container itself (i.e., the 3D Trade Mark applied for)
on consumers.
(iii) According to consumer surveys carried out in
2008 and 2009, the shape of the container itself (i.e.,
the 3D Trade Mark applied for) reminded 98% of
respondents of the applicant’s (Yakult) product.
(4) Gaultier's perfume bottle Case
Case No.: 2010 (gyo KE) 10366
Int'l Reg. No. : 600167
Int'l Reg. Date: April 28, 2006
Decision Date: April 21, 2011
Plaintiff (Applicant): Beaute Prestige International
S.A. (France)
The goods: Int'l Class 3 - Beauty products (cosmetics),
soaps, perfumery, cosmetics
The court particularly took the following facts into
consideration;
(i) The product container itself is conspicuous and
makes a strong impression on consumers.
(ii) The product has been sold and has appeared in
perfume/fashion magazines for more than 15 years
since it was launched in 1994 in Japan.
(iii) The annual sales of the product from 2004 were
around 45 million YEN to 58 million YEN.
(5) Y Chair Case
Case No.: 2010 (gyo KE) 10253
Reg. No. : 5446392
App. Date: Feb. 19, 2008
Reg. Date: October 28, 2011
5
Decision Date: June 29, 2011
Plaintiff (Applicant): Carl Hansen & Son (Denmark)
Carl Hansen & Son Japan
The goods: Int'l Class 20- Armchairs
The court particularly took the following facts into
consideration;
(i) The shape of the product itself is characteristic.
(ii) The product has been continuously sold since
1950 without changing its character and feature
portions although there were some variations of this
product in its material and color.
(ii) 97,548 chairs were sold from July, 1994 to June,
2010 and said amount of sales is remarkable as a sale
of a chair.
(iii) In Japan, since 1960s, the product has appeared
in magazines and was evaluated as the biggest-
selling imported chair therein. In addition, the
product has appeared in art textbooks for junior
high school students and in books for people in
furniture industries.
(iv) The product became well known to general
consumers also due to continuous advertising
campaigns.
Comments:
(1) In the above-mentioned (4) and (5) cases, the IP
High Court stated that generally 3D shapes of the
product configurations and 3D shapes of
product’s containers are not distinctive as a
trademark because they are originally for
ensuring functions of products and/or creating
aesthetic impressions. In other words, the IP
High Court did not deny the JPO’s Examination
Manuals about registrability of 3D Trade Marks.
Thus, the product shapes and the product’s
container shapes remain difficult to protect as
trademarks.
(2) In this connection, however, the IP High Court
pointed out that whereas the 3D shape of
product/product container, which was applied
for as a trademark, must be substantially the
same as that actually used (i.e., sold in a market),
in principle, even if there is a slight variance
(difference) between the former shape and the
latter shape, the former may still be determined
to have acquired distinctiveness as a trademark
because of the commonly occurring change of
product shapes/product containers’ shapes for
sales promotions.
(3) After having reviewed the above-mentioned
cases, we find that in order to obtain trademark
registration for a 3D product shape/product’s
container shape it is essential that such shape be
originally unique or characteristic.
(4) Furthermore, as seen in the (3) Yakult Case, a
consumer survey properly and professionally
conducted is helpful in proving acquisition of
distinctiveness although it is not essential.
In this connection, please be informed that prior
to the (3) Yakult Case, the applicant, Yakult, filed
another trademark application for a product’s
container which is substantially the same as that
in the (3) Yakult Case, but the Supreme Court did
not allow the registration of the prior case. Then
the applicant, Yakult, re-filed the 3D Trade Mark
in the (3) Yakult Case and submitted further
evidence for proving the acquisition of the
distinctiveness, and the IP High Court then
recognized the acquisition of the distinctiveness.
April 2012, Issue no. 17
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3. Recent IP High Court Decisions and Appeal/Trial Board Decisions including Opposition Decisions
(1) Cases where Distinctiveness of the mark was discussed
HASE, Reiko
OKUYAMA & SASAJIMA
Appeal/Opposition
No. DateTrademark in
questionDecision
Yes/NoReason
Appeal Board Decisions
2010-16742May 23, 2011
OPENINGCEREMONY
25
35
The Examiner found that the trademarkin question lacks distinctivenessbecause it may be recognized as a sale orevent commemorating a store’s opening.However, the trademark in question doesnot directly indicate an opening sale.
All the designated goods/ services Yes
2010-650105Jun. 7, 2011
12
18
25
28
The trademark in question is recognizedas one set of four letters rather than twosets of two letters because the spacebetween the two sets of letters is narrow;therefore, it is not a very simple andcommon mark (see footnote).
All the designated goods/ services Yes
2008-650116Jun. 7, 2011
AdvancedSecurity for Life
9
25
41
Although the trademark in question isthe name of an American rock band, itdoes not evoke the name of the rockband because of the band’s very lowsales volumes in recent years.
All the designated goods/ services (Cl. 9, Cl.41)
Yes
Goods/services inquestionCl.
2010-24807Jun. 7, 2011
29
The average Japanese consumer doesnot recognize “Cerdo” as “pork” becauseSpanish is an unfamiliar language tothem.
Pork and pork products Yes
2010-650115Jun. 17, 2011
39
“SAL” is used as an abbreviation for“Surface Air Lifted (mail),” a service tosend mail by air and by sea. However,the trademark is considered a coinedword because the designated servicesare limited to transport by sea.
Organisation andconducting of thetransport of goods bywater, in particular bysea
Yes
2010-26967Jun. 20, 2011
9
37
45
Although “advanced security for life” hasa certain meaning when translated intoJapanese, it is not perceived as acatchphrase. There is no evidence thatthe phrase is being used as acatchphrase; therefore, the trademarkhas a distinctive character.
Surveillance cameras;security and surveillanceapparatus consistingof surveillance camerasand peripheral equipment,etc. (Cl. 9)Repair and maintenanceapparatus for securitysystems, etc. (Cl. 37)Security information,etc. (Cl. 45)
Yes
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Opposition Decisions
2010-20984Jun. 16, 2011
SP SERIES 9
“SP” is considered a model number;therefore, the trademark in question ismerely recognized as a “series of SPproducts” (see footnote).
Spectacles No
2011-8957Sep. 27, 2011 EM・1
24hr
1
31
The trademark in question is descriptiveof quality or an ingredient used in thegoods because “EM” is an abbreviationfor “Effective Microorganisms.”
Goods using effectivemicroorganisms
No
2010-27286Oct. 12, 2011
QuickLook
3
The trademark in question is descriptiveof the quality or efficacy of the cosmeticsbecause consumers recognize thetrademark as solely indicating that thecosmetics will last for 24 hours.
Cosmetics No
2010-900377Jul. 30, 2011
5
29
32
No evidence was found showing that“feplus” is being used to indicateproducts containing iron or that “fe” isbeing used to indicate iron. Thetrademark in question is not recognizedas “products containing iron.”
Processed foodscontaining vitamins,minerals, etc.(Cl.29)
Yes
2010-900164Aug. 11, 2011
9
42
Even though the trademark in questionmay indirectly indicate “data converterfor large companies,” it is notimmediately recognized as such.
Computer programs,etc. (Cl. 9)
Providing computerprograms, etc. (Cl.42)
Yes
2010-900336Nov. 18, 2011
9
42
The trademark in question is notdistinctive when used with devices suchas mobile phones or computers with a“quicklook” function (a function whichenables one to look quickly at thecontents of files without opening them).
Mobile phones,computers, etc. (Cl. 9)Computer softwaredesign, computerprogramming, etc. (Cl.42)
No
Footnote:
Trademarks composed of one or two Roman characters, a single Roman character accompanied by simplified Japanesekana characters, or Japanese katakana characters representing the sound of a single Roman character are consideredvery simple and common marks and fall under Article 3(1)(v).
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Case No.
Date
RegisteredTrademark /
Plaintiff’s markCL(s) ReasonChallenged mark
Decision= / =/
Trademark Infringement Cases / Unfair Competition Cases
2010 (Ne)10015
Nov. 29, 2010(IP High Court
Decision)
18
The Tokyo District Court and the IP HighCourt found that the challenged markswere dissimilar to the registeredtrademark and the Plaintiff’s mark inappearance.
=/2009 (Wa)
19888Dec. 24, 2009(Tokyo Dist.
Court Decision)
2008 (Wa)10735
Mar. 4, 2010(Tokyo Dist.
Court Decision)
44
In addition to both of the marks havingthe individual elements of “I,” “ ,” and“NAIL,” the alphabetical elements werewritten in black and the “ ” elementwas written in red, and thus, both theregistered trademark and the challengedmark were found to be similar inappearance, sound, and connotation.
=
(Registered trademark)
(Plaintiff’s mark)
(GOYARD) (adidas)
Case No.
Date
Trademark
in questionCL(s) Reason
Prior
Trademark
Decision= / =/
IP High Court Decisions (Lawsuits against JPO’s Appeal Board Decisions)
2008 (gyo KE)10409
Jun. 28, 20109
Since the “e” portion of the trademark inquestion did not function as a sourceindicator, the mark was not taken as awhole and “watching” was recognized asbeing a separate element.
Thus, the trademark in question andprior trademark were found to be similar.The IP High Court sustained the JPO’sAppeal Board decision.
=
(2) IP High Court and District Court Cases in 2010 and 2011 where the similarity between the marks was
discussed
SATO, Shunji
TMI Associates
(Hereinafter “=” means “similar” and “≠” means “not similar”)
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2009 (gyo KE)10396
Jul. 21, 2010
7
11
The IP High Court cancelled the JPO’sAppeal Board decision, which decidedboth Cited prior trademarks to besimilar. The IP High court found that thetrademark in question should beconsidered as a whole, and thus,dissimilar to the prior trademarks. Withregard to Cited mark 2, the IP High courtconsidered the fact that the holder of theCited mark 2 went bankrupt before theapplication date of the trademark inquestion and decided that there was nolikelihood of confusion between thetrademark in question and Cited mark 2,since Cited mark 2 is unlikely to be used.
=/
=2009-6517Oct. 28, 2009
2010 (gyo KE)10171
Dec. 14, 2010
2009-650090Apr. 19, 2010
39
43
The IP High Court overturned the JPO’sAppeal Board decision, which decidedboth trademarks to be similar. The IPHigh court recognized that bothtrademarks had a commonpronunciation of “booking,” however,they decided that both trademarks weredissimilar, because the prior trademarkwas cancelled due to non-use during theprevious three years.
=/
=
2010 (gyo KE)10257
Dec. 22, 20109
The trademark in question was similar tothe prior mark in terms of pronunciation.Thus, the IP High Court sustained theJPO’s Appeal Board decision whichfound the trademark in question and theprior trademark to be similar.
=
2010 (gyo KE)10326/10327Apr. 27, 2011
2010-214/215Aug. 31, 2010
=/
=
(Cited mark 1)
(Cited mark 2)
EXTRIMA
2011 (gyo KE)10087
Jul. 21, 201116
The trademark in question was similar tothe prior mark in terms of sound,although the appearance of both marksis not similar. The IP High Courtsustained the JPO’s Appeal Boarddecision, which found the trademark inquestion and the prior trademark to besimilar.
=
36
Although the JPO’s Appeal Boarddecided that the trademark in questionand the prior trademark were similar, theIP High Court found that bothtrademarks were dissimilar inappearance and sound, and thus,decided that there was no likelihood ofconfusion between the trademark inquestion and the prior mark, consideringthe sophistication of traders andconsumers in relation to financialservices.
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berry mobile
2011 (gyo KE)10093
0ct. 24, 2011
9
42
The IP High Court overturned the JPO’sAppeal Board decision, which decidedthat both trademarks were similar. TheIP High Court found that bothtrademarks were dissimilar in sound,upon considering the weakness of “PAG”and the fact that the prior trademark wascancelled due to non-use during theprevious three years.
=/
=2010-6516Jan. 25, 2011
2009 (gyo KE)10328
Mar. 17, 2010
38
The IP High Court overturned the JPO’sinvalidation decision, which decidedthat both trademarks were dissimilar,because the “mobile” element of thetrademark in question lacksdistinctiveness in relation to thedesignated services and the “black”element of the prior trademark is weak.The IP High Court found bothtrademarks to be similar, since thedominant portion of the trademark inquestion and the prior trademarks was“berry.”
=
=/2008-890055Jun. 17, 2009
2009 (gyo KE)10411
Apr. 28, 2010
3
Considering that the word “ATHLETE”had become well known among traders,“ATHLETE” was considered to be thedominant portion of the trademark inquestion. The IP High Court found thetrademark in question and the priortrademark to be similar and overturnedthe JPO’s decision, which decided bothtrademarks to be dissimilar.
=
=/2008-890051Nov. 11, 2009
Case No.
Date
Trademark
in questionCL(s) Reason
Prior
Trademark
Decision= / =/
IP High Court Decisions (Lawsuits against JPO’s Trial Board Decisions)
TVプロテクタ
(Protecta inkatakana)
PROTECTOR
2011 (gyo KE)10085
Sep. 20, 2011
2010-7669Jan. 25, 2011
=/
=
9
The IP High Court cancelled the JPO’sAppeal Board decision, which declaredboth trademarks to be similar. The IPHigh Court found that the trademark inquestion should be considered as awhole and, upon such consideration,decided that the trademark in questionwas dissimilar to the prior trademark.
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April 2012, Issue no. 17
2011 (gyo KE)10040
Jun. 29, 2011
25
Although the JPO’s Trial Board decidedthat there was a likelihood of confusionbetween the trademark in question andprior mark, since both marks have samepronunciation, the IP High Courtcancelled the JPO’s Trial Board decision.The IP High Court recognized thesimilarity in sound, however, it based itsdecision on the difference inappearance, the fact that the trademarkin question was well-known, anddifference of consumer’s taste ofclothing and decided that there was nolikelihood of confusion between thetrademarks.
=/
=2010-890048Dec. 28, 2010
Invalidation2010-890002Nov. 10, 2010
2012 (gyo KE)10086
35
The mark is well-known as a Jazz recordlabel and also for the sales of relatedgoods but is not widely known in theother fields of business such as retailsales for clothing, food and living ware.
No
Invalidation 2010-890021Mar. 30, 2010
18
Invalidated since the registrant hadmany registered marks which weresimilar to the world famous fashionbrand, thus admitted an intention toobtain unjust enrichment throughregistration and use of the mark.
Yes
Trial No.Trademark in
Question Class ResultPrior TrademarkDecision
Y/N
(3) Recent Trial Board Decisions where well-known among consumers outside Japan was discussed.
HIROSE, Fumihiko
HIROSE Int’l Patent & Trademark
“Yes” means the decision was made that the mark in question fell under Article 4(1) 19
2009 (gyo KE)10152
Apr. 27, 2010
9
16
18
20
21
24
25
27
28
The JPO’s Trial Board decided that thetrademark in question and the priortrademark were similar, finding that“JEANS” is descriptive. However, the IPHigh Court found that the dominantportion of the trademark in question isboth “POLO” and “RALPH LAUREN,”considering that traders and consumerswould understand the goods wasdesigned by a designer RALPH LAUREN.In conclusion, the IP High Courtcancelled the JPO’s Trial Board decision.
=/
=2008-890025Feb. 3, 2009
12
JTA Bulletin is a newsletter issued from time to time when necessity takes place.Subjects covered by this Bulletin include trademark protection, unfair competition andanything new and noteworthy to foreign practitioners. All articles on the JTA Bulletinmay be accessed on the web site of JTA. URL: http://www.jp-ta.jp/committee/005.html
Written and edited by JTA Bulletin Group of The International Activities Committee© Chiaki Kawai, Yukihiro Higashitani, Reiko Hase, Shunji Sato, Fumihiko Hirose, Koji Murai, Junko Saito
Japan Trademark Associationc/o Oshimoto Patent and Trademark Office
Akasaka Chalet II No.201, 18-19, Akasaka 2-chomeMinato-ku, Tokyo 107-0052 Japan
TEL: 81-3-5575-3648 FAX: 81-3-5575-3120
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Invalidation 2010-890081Sep. 24, 2010
18
BIRKIN Bag Design of HERMES is a well-known configuration of Bag, even thoughnot registered as a trademark. This markwith such bag design is consideredsimilar to the famous Bag Design and willcause confusion in relation to businessand gain profit through unfair means.
Yes
Trial No.Trademark in
Question Class ResultPrior TrademarkDecision
Y/N
Invalidation 2010-890063Jun. 15, 2011
35
The mark is well known in the U.S. forrunner’s watches with GPS receivers andexercise monitors. The registrant furtherregistered several related marks in thedifferent classes including related retailsales which proved his unfair intention.
YesFORERUNNER FORERUNNER