Legal Updates

【Trademark Act★】 A case in which the Intellectual Property High Court held as follows: The court found that each of the Defendant’s indications posted on each webpage of this case does not fall under “advertisement materials … relating to … services” (Article 2, Paragraph 3, Item (viii) of the Trademark Act) and does not infringe on the function of source indicatior of the Plaintiff’s trademark. The court also found that, for the same reasons, the posting in question does not fall under Article 2, Paragraph 1, Item (i) or (ii) of the Unfair Competition Prevention Act. In conclusion, the court revoked the decision by the court of first instance in which infringement on the Plaintiff’s trademarks was found, and dismissed the Plaintiff’s claims.

Intellectual Property High Court Decision of October 30 2024 (Case No. 10031 [Ne] 2024―Presiding Judge Shimizu)   ◆Main text of the case   Outline of the case The Plaintiff (later, the Appellee) uses indications 1 to 3 below (the Plaintiff’s indications) as indication of goods or business, holds trademarks 1 to 3 below (the Plaintiff’s […]

【Trademark Act★★】 A case in which the Intellectual Property High Court revoked a refusal decision by the JPO that the trademark in this application fell under Article 4, Paragraph 1, Item 11 or 15 of the Trademark Act. The court held that, in accordance with the actual circumstances of transaction related to the designated goods in Class 16, “information magazines concerning parts and accessories used for modifying off-road vehicles”, the trademark in the application, which is a two-line composite trademark consisting of “Jimny Fan” in Latin letters and “ジムニーファン” in Japanese katakana characters as shown below, is not similar to cited trademark 1 below, which is a logo consisting of “Jimny” in Latin letters, or cited trademark 2 below, which is a two-line trademark consisting of “Jimny” in Latin letters and “ジムニー” in Japanese katakana characters, and does not fall under Article 4, Paragraph 1, Item 11 of the Trademark Act. Moreover, the court held that there is no risk of confusion with Suzuki Motor Corporation’s goods or services bearing the “Jimny” trademark and that it does not fall under Item 15 of the same Paragraph.

Trademark in the Application   Cited Trademark１　　　　　　　　Cited Trademark２   ◆Main text of the case   Summary of the Judgment 1. Concerning the “actual circumstances of transaction” when interpreting Article 4, Paragraph 1, Items 11 and 15 of the Trademark Act (1) Concerning the “actual circumstances of transaction” when interpreting Article 4, Paragraph 1, Item 11 of […]

【Trademark act★】A case in which, with respect to a trademark determined to fall under Article 3,paragraph (1), item (iii) of the Trademark Act in the initial decision of refusal but subsequently determined to fall under item (vi) of the same paragraph in a trial decision, the court held that, although a separate notice of grounds for refusal under Article 55-2, paragraph (1) and Article 15-2 of the same Act was required as a general rule, and the trial proceedings not complying with this procedural requirement contain a defect (a violation of the law), such defect is not a ground for rescission as it is not found to affect the result of the trial decision. A case in which the court found that the trademark, “奇跡のラカンカ (kiseki-no rakanka),” written in horizontal direction (the “Trademark”), falls under Article 3, paragraph (1), item (vi) of the Trademark Act for “confectionery flavored with siraitia (other than fruit-based, vegetable-based, bean-based or nut-based)” etc. in Class 30 and the decision to maintain the trial decision is finalized.

August 20, 2024 ＜Trademark＞ (kiseki-no rakanka) ＜Designated Goods＞ Class: 30 Confectionery flavored with siraitia (other than fruit-based, vegetable-based, bean-based or nut-based), Coffee flavored with siraitia, Intellectual Property High Court Judgement 　April 24, 2024 Case number : 2023 (Gyo-Ke) 10109 Presiding judge: Masatoshi MIYASAKA ◆ Full text of the Judgement https://www.courts.go.jp/app/files/hanrei_jp/984/092984_hanrei.pdf 【Summary of the Judgement】 1. […]

【Trademark Act★】 A case in which the Intellectual Property High Court determined that the registered trademark, which the Defendant owns, for the designated goods of class 30 “Gummi Candy” and indicating the Japanese characters “地球グミ” [chikyu gumi] in standard characters falls under Article 4, Paragraph 1, Item 10 of the Trademark Act, holding that the term “地球グミ” of the cited mark is widely recognized among consumers of gummi candies, including young people, as indicating the gummi candies “Trolli”, “Planet Gummi” or “Blue Planet” related to the business of the Plaintiff, who is an importer and distributor in Japan, or of the foreign manufacturer, by the date of the examination decision at the latest (February 22, 2022), and that there were no arguments or evidence that the trademark fell under the same item as of December 16, 2021, the filing date of the application (Article 4, Paragraph 3 of the Trademark Act), and rescinded a JPO decision that dismissed the request for a trial for invalidation of a trademark registration.

Intellectual Property High Court Decision of December 26, 2023 (Case No. 10079 [Gyo-ke] 2023―Presiding Judge Shimizu)   ◆Main text of the case   【Summary of the Judgment】 1. Regarding the well-known characteristics of the cited mark The term “地球グミ” of the cited mark is not present on “Trolli”, “Planet Gummi” or “Blue Planet” (the Plaintiff’s […]

【Trademark Act★】A case in which the Intellectual Property Hight Court determined as similar (falling under Article 4, Paragraph 1, item 11 of the Trademark Act) comparing the following cited trademark with the part “Ｏ！Ｏｉ” of the following registered trademark by separating and observing the main elements of a composite trademark, and revoked the JPO’s decision which determined as dissimilar (not falling under the above provision).

Registered Trademark   Cited Trademark   Intellectual Property High Court Decision of December 4, 2023 (Case No. 10067 [Gyo-ke] 2023―Presiding Judge Honda)   ◆Main text of the case   【Summary of the Judgment】 1. Regarding the method of determining whether trademarks are similar or dissimilar The similarity of trademarks should be determined by whether or […]

【Trademark Act★★】A case in which the Intellectual Property High Court upheld a decision for rejection on the application for a trademark consisting only of the combination of a shade of orange (RGB combination: R221, G103, B44) for the entire box and a shade of brown (RGB combination: R94, G55, B45) for its upper perimeter, denying the acquisition of the ability to distinguish one’s own and other goods and services through the use and advertising of packaging boxes (commonly known as “orange boxes”) bearing the trademark applied for in relation to the designated goods and services in general, including goods and services not using the trademark applied for, based on the ability of general consumers to recognize the goods or services, and maintaining in its decision that Article 3, Paragraph 2, of the Trademark Act was not applicable.

Figure 1. Trademark as applied for   Intellectual Property High Court Decision of March 11, 2024 (Case No. 10095 [Gyo-ke] 2023―Presiding Judge Miyasaka)   ◆Main text of the case   【Summary of the Judgment】 1. Regarding acquisition of distinctiveness of one’s own goods and services by using the trademark applied for When considering general consumers, […]

【Trademark Act★★】A case in which the Intellectual Property High Court held that the defendant’s following indications 1 and 2 which consist of the words “バレナイ” and “二重” in two columns above and below on a black background are not similar to the plaintiff’s trademark 1 which consists of “バレないふたえ” in standard characters and the plaintiff’s following trademark 2 which consists of the words “バレない” and “二重” in two columns above and below. A case in which given the above, the IP High Court dismissed the appeal against the original judgement in which the district court dismissed the plaintiff’s assertion of trademark infringement on the ground that the defendant’s indications are not used as a trademark (Article 26, Paragraph 1, Item 6 of the Trademark Act).

  defendant’s indications 1 and 2 　   plaintiff’s trademark 2   Intellectual Property High Court Decision of December 26, 2023 (Case No. 10011 [Ne] 2023―Presiding Judge Shimizu)   ◆Main text of the case   【Summary of the Judgment】 1. Regarding the method of determining whether trademarks are similar or dissimilar The similarity of trademarks […]

【Trademark Act★★】A case in which the Intellectual Property High Court held that the applied trademark which consists of standard character “VENTURE” is dissimilar to the following cited trademark which consists of a large Chinese character “遊” in brush-style typeface at the top center and the Roman characters “VENTURE” in Gothic-style typeface at the bottom and not applicable to Article 4, Paragraph 1, Item 1 of the Trademark Act, and reversed a trial decision of rejection by JPO which decided them to be similar and applicable to the said provision.

  Intellectual Property High Court Decision of November 30, 2023 (Case No. 10063 [Gyo-ke] 2023―Presiding Judge Miyasaka)   ◆Main text of the case   【Summary of the Judgment】 1.  Regarding method of determining whether trademarks are similar or dissimilar The similarity of trademarks should be considered as a whole, taking into account the impression, memory, […]

【Trademark Act★】A case in which the Intellectual Property High Court held that concerning the trademark consisting solely of the color red (PANTONE 18-1633TP) applied to the sole portion of women’s high-heeled shoes, the trademark cannot be said to acquire the high degree of distinctiveness required under Article 3 Paragraph 2 of the Trademark Act.

Intellectual Property High Court Decision of January 31, 2023 (Case No. 2022 [Gyo-ke] 10089―Presiding Judge Kanno)   ◆Main text of the case   【Summary of the Judgment】 1. Regarding whether or not a trademark consisting solely of a single color corresponds to Article 3 Paragraph 2 of the Trademark Act The intent of Article 3 […]

【Trademark Act★】A case in which the Intellectual Property High Court held that the “朔北” part of the trademark “朔北カレー” is dissimilar (not applicable to Article 4(1)(11) of the Trademark Act) to the cited trademark “サクホク” by separating and observing the elements of the composite trademark and reversed a refusal decision which decided them to be similar (applicable).

Intellectual Property High Court Decision of March 9, 2023 (Case No. 2022 [Gyo-ke] 10122―Presiding Judge Honda)   ◆Main text of the case   【Summary of the Judgment】 1. Regarding criteria for determining whether product trademarks are similar or dissimilar The similarity of product trademarks should be determined based on “likelihood of confusion” as to the […]

【Trademark Act ★】A case in which the Court maintained the Japan Patent Office’s decision of refusal of a trademark application on the ground that the trademark consisting of the words “おんじゃくきゅう” and “温石灸” in two columns, which is used for the designated services of “Massage and therapeutic Shiatsu massage; moxibustion; acupuncture; chiropractic; providing medical information; dietary and nutritional guidance” in Class 44, merely describes the quality of the designated services, and therefore falls under Article 3, para.1, item 3 of the Trademark Act. In addition, if the trademark is used for the designated services other than “moxibustion (treatment) using warm stones”, it may be liable to be misleading of the quality of services, and therefore also falls under Article 4, para.1, item 16 of the Trademark Act.

April 10, 2023 Intellectual Property High Court Decision of June 16, 2022 (Case No. 2022 [Gyo-ke] 10002―Presiding Judge Tamotsu SHOJI) ◆Main text of the case 【Summary of the Judgment】 １．Regarding the purport and evaluation criteria of Article 3, para.1, item 3 of the Trademark Act The purport of Article 3, para.1, item 3 of the […]

【Trademark Act ★】A case in which the court maintained the trial decision to dismiss the plaintiff’s request for invalidation, finding that the registered trademark of the defendant (the subject trademark) consisting of the words “sweets/party in Katakana” and the cited trademark of the plaintiff consisting of the words “sweet party in Katakana / SWEET PARTY” are not similar and that the registration of the subject trademark was not made in violation of Article 4(1)(xi) of the Trademark Law.

＜The Subject Trademark＞ ＜The Cited Trademark＞ January 19, 2023 Intellectual Property High Court Decision of October 6, 2021 (Case No. 2021 [Gyo-ke] 10036―Presiding Judge Tamotsu SHOUJI) ◆Main text of the case https://www.courts.go.jp/app/files/hanrei_jp/617/090617_hanrei.pdf 【Summary of the Judgment】 1．Regarding the criteria of Article 4, para.1, item 11 of the Trademark Act The similarity of trademarks should be […]

【Trademark Act ★】A case in which the Court affirmed the Japan Patent Office’s decision which refused an application for registration of a composite trademark composed of a figure part and a word part on the grounds that the trademark falls under Article 4, Paragraph 1, Item 11 of the Trademark Act in view of separate observation/essential part observation, general and constant state of transactions, and similarity between services.

＜Subject Trademark＞ ＜Cited Trademark＞ KANGOL (in standard characters) January 17, 2023 Intellectual Property High Court Decision of June 16, 2021 (Case No. 2020 [Gyo-ke] 10148―Presiding Judge Toshihiko TSURUOKA) ◆Main text of the case 【Summary of the Judgment】 1. Similarity of trademarks (1) Regarding the general theory of similarity of trademarks Similarity of trademarks should be […]

【Trademark Act ★】A case in which the Intellectual Property High Court held that the registered trademark (the trademark in question) owned by the plaintiff, which consists of “スマホ修理王” in standard characters and whose designated service is “repair or maintenance of telephone equipment” in Class 37, is a “trademark that is likely to negatively affect public policy” in light of the purpose and background of the application for registration, therefore, it falls under Article 4, paragraph 1, item 7 of the Trademark Act and the court maintained a trial decision of invalidation made by the Japanese Patent Office (the “JPO Decision”) to the same effect.

Intellectual Property High Court Decision of September 14, 2022 (Case No. 2022 [Gyo-ke] 10034―Presiding Judge Kanno)   ◆Main text of the case   【Summary of the Judgment】 Regarding whether or not the trademark in question corresponds to Article 4, paragraph 1, item 7 of the Trademark Act The application for registration of the trademark in […]

【Trademark Act ★】A case in which the Intellectual Property High Court maintained a cancellation decision made by the Japanese Patent Office (the “JPO Decision”), defendant, in a case of opposition filed by the defendant’s supporting intervener, on the ground that the registered trademark owned by the plaintiff which consists of words “hihachi” standard characters (the trademark in question), which designates “Household electrothermic appliances, non-electric cooking heaters for household purposes” etc. in Class 11, corresponds to a trademark which “is likely to cause confusion in connection with the goods … pertaining to a business of another person” in relation to the cited trademark consisting of “HITACHI” in standard characters for which the defendant’s supporting intervener has obtained trademark registrations, and falls under Article 4, paragraph 1, item 15 of the Trademark Act.

Intellectual Property High Court Decision of January 27, 2022 (Case No. 2021 [Gyo-ke] 10092―Presiding Judge SHOJI)   ◆Main text of the case   【Summary of the Judgment】 1. Regarding the criteria of the trademark which “is likely to cause confusion in connection with the goods … pertaining to a business of another person” as prescribed […]

Strengthening of Regulations on Personal Import of Counterfeit Goods
～The regulations come into effect as of October 1, 2022～

Ⅰ.　Introduction In recent years, as shown in the figure below, the import of counterfeit goods for personal use has been increasing along with the development of cross-border e-commerce via the internet and international parcel post. In order to strengthen regulations on the import of counterfeit goods for personal use, the Trademark Act and Design Act […]

【Trademark Act ★】A Case in which the Intellectual Property High Court partially rescinded a decision made by the Japanese Patent Office (the “JPO Decision”), which partially maintained a request for a trial for trademark invalidation, on the ground that the registered trademark which consists of words “Scrum Master” written horizontally in standard characters is a necessary and appropriate indication for the transaction as describing the quality of the designated services such as “teaching of art, sports or knowledge, education and training, planning, operation or conducting of qualifying examination, planning, operation or holding of seminars” in Class 41 and is generally recognized as indicating the quality of services when used for such designated services by traders and consumers and therefore falls under Article 3, para.1, item 3 of the Trademark Act.

Intellectual Property High Court Decision of May 19, 2022 (Case No. 2021 [Gyo-ke] 10100―Presiding Judge Ichiro OTAKA)   ◆Main text of the case   【Summary of the Judgment】 1. Regarding the purport and evaluation criteria of Article 3, para.1, item 3 of the Trademark Act The purport of Article 3, para.1, item 3 of the […]

【Trademark Act ★】The following registered trademark, which designates “T-shirts and hats” in Class 25, is not similar to the following cited trademark and has not been registered for “unfair purposes”. Therefore, the portion of the plaintiff’s request for invalidation trial based on Article 4(1)(xv) of the Trademark Act is dismissed (Article 47(1) of the Trademark Act) due to the passing of the period of exclusion. The trial court’s decision to dismiss the portion based on Article 4(1)(vii) of the Trademark Act was not erroneous, and the decision of the invalidation trial was affirmed.

＜The Registered Trademark＞   ＜The Cited Trademark＞   Intellectual Property High Court Decision of February 22, 2022 (Case No. 2021 [Gyo-ke] 10104―Presiding Judge Ichiro OOTAKA)   ◆Main text of the case   Summary of the Judgment 1.Whether the trademark is registered for “unfair purposes” (Article 47(1) of the Trademark Act in parentheses) In light of […]

【Trademark Act ★】A case in which the Court maintained the Japan Patent Office’s decision of refusal of a trademark application on the ground that the trademark which consists of the words “睡眠コンサルタント” written horizontally is a necessary and appropriate indication for the transaction as describing the quality of the designated services such as “teaching of art, sports or knowledge, planning, operation or holding of seminars, provision of electronic publications, production of books,” in Class 41, and is generally recognized as indicating the quality of services when used for such designated services by traders and consumers, and therefore falls under Article 3, para.1, item 3 of the Trademark Act

Intellectual Property High Court Decision of January 25, 2022 (Case No. 2021 [Gyo-ke] 10113―Presiding Judge Tamotsu SHOJI)   ◆Main text of the case   【Summary of the Judgment】 1. Regarding the purport and evaluation criteria of Article 3, para.1, item 3 of the Trademark Act The purport of Article 3, para.1, item 3 of the […]

Increase in Patent Annuities And Trademark Registration Fees on April 1, 2022　

In accordance with the 2021 amendment to the Patent Act, patent annuities will be increased for the first time in about 30 years. Trademark registration fees, etc., will be also raised. The new fee schedule is effective on April 1, 2022. It may be advisable for you to pay before March 31, 2021 to save […]

【Trademark Act ★】A case in which the Court maintained the Japan Patent Office’s decision which dismissed a request for an invalidation trial filed by the plaintiff against the defendant’s registered trademark “パールアパタイト” which consists of common characters, and whose designated goods are “chemicals” in Class 1, “cosmetics, soaps” in Class 3, etc., finding that the defendant’s registered trademark is not likely to mislead as to the quality of the goods or services; therefore, the defendant’s registered trademark does not fall under Article 4, Paragraph 1, Item 16 of the Trademark Act.

Intellectual Property High Court Decision of June 30, 2021 (Case No. 2021 [Gyo-ke] 10010―Presiding Judge Ichiro OTAKA)   ◆Main text of the case   【Summary of the Judgment】 1. Regarding criteria for determining whether a “trademark is likely to mislead as to the quality of the goods or services” as provided for in Article 4, […]

【Trademark Act ★★】 A case in which the Court found, with respect to the trademark “HIRUDOMILD” consisting of common characters (the “Trademark”), that the Trademark is considered as a composite trademark composed of the parts “HIRUDO” and “MILD”, and when compared to the cited trademark “Hirudoid” (the “Cited Trademark”), the “HIRUDO” part is similar thereto (falls under Article 4, Paragraph 1, Item 11 of the Trademark Act), stating that it is permissible to determine the similarity by separating the parts “HIRUDO” and “MILD” and observing only the “HIRUDO” part as an essential part of the Trademark, and thus revoked a trial decision of the Japan Patent Office which determined the registration of the Trademark to be maintained on the grounds that the Trademark was not similar to the Cited Trademark (did not fall under Article 4, Paragraph 1, Item 1 of the Trademark Act).

Intellectual Property High Court Decision of September 21, 2021 (Case No. 2021 [Gyo-Ke] 10029―Presiding Judge Tomonari HONDA)   ◆Main text of the case   【Summary of the Judgment】 1. Regarding criteria for determining whether it is permitted to separate elements of a composite trademark and observe its essential part With regard to a composite trademark […]

【Trademark Act★★】A case in which the Court found that a sound trademark containing the lyric “matsumotokiyoshi” does not corresponds to a trademark which contains the name of another person set forth in Article 4, Paragraph 1, Item 8 of the Trademark Act, and revoked a decision of the Japan Patent Office which refused an application for registration of the sound trademark because it corresponds to a trademark containing the name of another person.

The Intellectual Property High Court Decision of August 30, 2021 (Case No. 2020 [Gyo-Ke] 10126―Presiding Judge Ichiro OTAKA)   ◆Main text of the case   【Summary of the Judgment】 Regarding the meaning of the “name of another person” set forth in Article 4, Paragraph 1, Item 8 of the Trademark Act Even if a person […]

【Trademark Act★★】 A case in which the Court found that a composite trademark consisting of a figure part and a word part falls under Article 4, Paragraph 1, Item 11 of the Trademark Act, stating that it is permissible to determine the similarity of a composite trademark by separating a figure part and a word part, and observing only the word part as an essential part of the composite trademark.

The Intellectual Property High Court Decision of July 29, 2021 (Case No. 2021 [Gyo-Ke] 10026―Presiding Judge Yoshiyuki MORI)   ◆Main text of the case   【Summary of the Judgment】 Regarding criteria etc. for determining whether it is permitted to separate elements of a composite trademark and observe its essential part   With regard to a […]

【Trademark Act ★】A case in which the Court revoked a decision of the Japan Patent Office which refused an application for registration of the trademark “空調服”, consisting of common Japanese characters, which designates Class 25, “working clothes, shirts and blouson having ventilation function” as its designated goods, by finding that the trademark in question corresponds to a “mark consisting solely of a mark indicating, in a common manner, the quality…of goods” set forth in Article 3, Paragraph 1, Item 3 of the Trademark Act; however, the trademark in question corresponds to a “trademark by which, as a result of the use thereof, consumers are able to recognize the goods…as those pertaining to a business of a particular person” set forth in Article 3, Paragraph 2 of the same Act.

The Intellectual Property High Court Decision of February 25, 2021 (Case No. 2020 [Gyo-Ke] 10084―Presiding Judge MORI)   ◆Main text of the case   【Summary of the Judgment】 Regarding whether or not the trademark in question falls under Article 3, Paragraph 1, Item 3 of the Trademark Act   At the time of the trial […]

【Trademark★】A case in which, with respect to the use of a trademark consisting of the characters, “農口”, written vertically in cursive style or in block style, for the designated goods of “Japanese sake” by Noguchi Shuzo Co., Ltd. [農口酒造株式会社] (formerly Yamamoto Shuzo Honten K.K. [山本酒造本店株式会社]) (the “Defendant”) who is the right holder of the trademark consisting of the characters, “農口”, written in standard characters, the Court affirmed the Japan Patent Office’s decision which dismissed a request for a trial for rescission of the Defendant’s trademark registration filed by 農口尚彦 [Naohiko Noguchi], the Plaintiff, who has strong name recognition among Japanese sake enthusiasts and worked for the Defendant as chief sake brewer, based on a cited trademark consisting of the characters, “農口尚彦研究所”, written vertically in block style, denying the applicability of Article 51, Paragraph 1 of the Trademark Act which stipulates to the effect that where a trademark right holder intentionally uses a trademark similar to a registered trademark in a manner that causes confusion as to the source of or misleads as to the quality of the goods or services, the trademark registration may be cancelled.

The Intellectual Property High Court Decision of December 23, 2020 (Case No. 2020 [Gyo-Ke] 10050―Presiding Judge OTAKA)   ◆Main text of the case   【Summary of the Judgment】 1. Regarding well-knownness of a cited trademark consisting of the characters, “農口尚彦研究所”, written vertically in block style (the “Cited Trademark”) In order to consider that the Cited […]

【Trademark★】A case in which the Court affirmed the Japan Patent Office’s decision which refused an application for registration of a trademark, which is a position mark consisting of the shape of a packaging container of a product, finding that since the position mark in question consists only of a mark that indicates, in a common manner, the shape of a package of goods etc., the position mark in question corresponds to a trademark set forth in Article 3, Paragraph 1, Item 3 of the Trademark Act, and does not correspond to a trademark which has acquired distinctiveness through use as set forth in Article 3, Paragraph 2 of the same Act.

The Intellectual Property High Court Decision of December 15, 2020 (Case No. 2020 [Gyo-Ke] 10076―Presiding Judge TSURUOKA)   ◆Main text of the case   【Summary of the Judgment】 1. Regarding whether or not the position mark in question falls under Article 3, Paragraph 1, Item 3 of the Trademark Act Article 3, Paragraph 1, Item […]

【Trademark Act★】A case in which the Court affirmed the Japan Patent Office’s decision which dismissed a request for an invalidation trial filed by the plaintiff against the defendant’s registered trademark which consists of the letters “BULLPULU TAPIOCA” and figures, and whose designated goods are “dairy products containing tapioca” etc. in Class 29 (the “Defendant’s Registered Trademark”), finding that the Defendant’s Registered Trademark is not similar to the plaintiff’s registered trademark which consists of the letters “STARBUCKS COFFEE” and figures, and whose designated goods are “coffee beverage” etc. in Class 30 (the “Plaintiff’s Registered Trademark”); and therefore, the Defendant’s Registered Trademark does not fall under Article 4, Paragraph 1, Item 11 of the Trademark Act, and further, the Defendant’s Registered Trademark is not likely to cause confusion in connection with the goods or services pertaining to the plaintiff’s business; and therefore, the Defendant’s Registered Trademark does not fall under Article 4, Paragraph 1, Item 15 of the Trademark Act.

The Intellectual Property High Court Decision of September 16, 2020 (Case No. 2019 [Gyo-ke] 10170―Presiding Judge OTAKA)   ◆Main text of the case   【Summary of the Judgment】 Regarding whether the Defendant’s Registered Trademark falls under Article 4, Paragraph 1, Item 11 of the Trademark Act   It is recognized that, at the end of […]

【Trademark Act★】A case in which the Court affirmed the Japan Patent Office’s decision which refused an application for a defensive mark registration based on a registered trademark (the “original registered trademark”), finding that the requirement of being “well known among consumers” stipulated in Article 64, Paragraph 1 of the Trademark Act for a defensive mark registration refers to the case where the original registered trademark is recognized nationwide among the relevant consumers of all or some of the designated goods of the original registered trademark as that indicating the designated goods pertaining to the business of the holder of the trademark right, and that the relevant consumers recognize the original registered trademark as having reached the level of being famous.

The Intellectual Property High Court Decision of September 2, 2020 (Case No. 2019 [Gyo-ke] 10166―Presiding Judge OTAKA)   ◆Main text of the case   【Summary of the Judgment】 Meaning of being “well known among consumers” stipulated in Article 64, Paragraph 1 of the Trademark Act as a requirement for a defensive mark registration The defensive […]

【Trademark Act ★】A case in which the Court found that the defendant’s marks containing the letter part of “MMPI” which was widely recognized among consumers as that referring to the “Minnesota Multiphasic Personality Inventory”, which is the questionnaire-based psychological testing developed by Hathaway and Mckinley for understanding character tendencies, or to the abbreviation of the testing, correspond to a trademark indicating, “in a common manner”, the “quality” of the designated service pertaining to the Trademark “MMPI”, or “psychological testing”, and that Article 26, Paragraph 1, Item 3 of the Trademark Act applies to the defendant’s marks and the effect of the right for the Trademark does not extend to the defendant marks.

The Intellectual Property High Court Decision of June 24, 2020 (Case No. 2019 [Ne] 10069―Presiding Judge OTAKA)   ◆Main text of the case   【Summary of the Judgment】 1. Consumer recognition of the MMPI indication It is acknowledged that consumers of the “psychological testing”, which is the designated service of the Trademark, include psychologists and […]

【Trademark Act ★】A case in which the Court affirmed the Japan Patent Office’s decision which refused an application for registration of a trademark which is a position mark, finding that since the position mark in question cannot be considered to contain distinctive character in its functional composition itself in light of attentiveness possessed by general consumers who are considered as consumers of the designated goods, the position mark in question corresponds to a trademark set forth in Article 3, Paragraph 1, Item 6 of the Trademark Act, and does not correspond to a trademark which has acquired distinctiveness through use as set forth in Article 3, Paragraph 2 of the same Act.

The Intellectual Property High Court Decision of August 27, 2020 (Case No. 2019 [Gyo-Ke] 10143―Presiding Judge TSURUOKA)   ◆Main text of the case   【Summary of the Judgment】 1. Regarding distinctiveness of the composition of the position mark in question (the “Applied Trademark”) (whether or not Article 3, Paragraph 1, Item 6 of the Trademark […]

【Trademark Act ★】A case in which the Court affirmed the Japan Patent Office’s decision which refused an application for registration of the mark consisting of the letter “I” and a heart shape placed horizontally side by side, with the letters “JAPAN” written underneath, finding that since the mark in question is one which cannot be recognized by consumers as pertaining to any person’s business, it falls under Article 3, Paragraph 1, Item 6 of the Trademark Act and cannot be registered.

The Intellectual Property High Court Decision of June 17, 2020 (Case No. 2019 [Gyo-Ke] 10164―Presiding Judge MORI)   ◆Main text of the case   【Summary of the Judgment】 1. As specified below, the mark in question consists of the letter “I” and a heart shape placed horizontally side by side (hereinafter referred to as “I […]

【Trademark Act ★】A case in which the Court affirmed the Japan Patent Office’s decision which refused an application for registration of the mark “TAKAHIROMIYASHITATheSoloist.”, finding that the mark in question consisting of common characters corresponds to a “trademark which contains…the name…of another person” set forth in Article 4, Paragraph 1, Item 8 of the Trademark Act, and the mark in question is not acknowledged that the “registration of which has been approved by the person concerned” under the same Item.

The Intellectual Property High Court Decision of July 29, 2020 (Case No. 2020 [Gyo-Ke] 10006―Presiding Judge MORI)   ◆Main text of the case   【Summary of the Judgment】 The mark “TAKAHIROMIYASHITATheSoloist.” (common characters) is easily recognized as a composite trademark composed of the portions of “TAKAHIROMIYASHITA” and “TheSoloist.”, and the portion of “TAKAHIROMIYASHITA” is objectively […]

【Trademark Act ★】A case in which the Court found that a color trademark consisting solely of orange without contours cannot be said to have acquired distinctiveness as a source indicator under Article 3, Paragraph 2 of the Trademark Act even if such a trademark has been used for a long period of time for hydraulic excavators, the designated goods of the trademark.

The Intellectual Property High Court Decision of June 23, 2020 (Case No. 2019 [Gyo-Ke] 10147―Presiding Judge TAKABE)   ◆Main text of the case   【Summary of the Judgment】 1. Whether or not a trademark has acquired distinctiveness as a source indicator under Article 3, Paragraph 2 of the Patent Act must be determined by taking […]

【Trademark Act ★】 A case in which the Court revoked a decision of the Japan Patent Office which refused an application for registration of the mark “CORE ML” by finding that the mark “CORE ML” consisting of common characters is not similar to either of the cited trademarks “CORE” and “コア” (KO-A in English) which consist of common characters.

The Intellectual Property High Court Decision of May 20, 2020 (Case No. 2019 (Gyo-Ke) 10151 — Presiding Judge MORI)   ◆ Main text of the case   【Summary of the Judgment】 1. When judging the similarity of the mark “CORE ML” consisting of common characters and the cited trademarks consisting of common characters, or “CORE” […]

【Trademark Act ★】 A case in which the Court revoked a decision of the Japan Patent Office which refused an application for registration of the mark “ベジバリア／塩・糖・脂” (BEJIBARIA/Salt・Sugar・Fat) on the grounds that the mark is similar to the registered trademark “塩糖脂” (Salt, Sugar, Fat).

The Intellectual Property High Court Decision of March 19, 2020 (Case No. 2019 (Gyo-Ke) 10152 — Presiding Judge TSURUOKA)   ◆  Main text of the case   【Summary of the Judgment】 Regarding the mark “ベジバリア／塩・糖・脂” (“／” indicates a line break) , the overall mark “ベジバリア塩・糖・脂” or only part of the mark, “ベジバリア” produces a sound […]

【Trademark Act ★】 A case in which the Court affirmed the use of a registered trademark in Japan based on the intention of a foreign holder of the registered trademark located abroad, and revoked a decision of the Japan Patent Office which had cancelled the registered trademark by reason of non-use.

The Intellectual Property High Court Decision of January 28, 2020 (Case No. 2019 (Gyo-Ke) 10078 — Presiding Judge Tsuruoka)   ◆Main text of the case 【Summary of the Judgment】 The foreign holder of the trademark at issue located abroad transfers products bearing the trademark at issue to an online shop operated in Japanese for Japan […]

【Trademark】 Fast-track examination (Changed from February 1, 2020)

Due to the increase in the number of trademark applications, the regular term for examination of a trademark application at the Japan Patent Office (JPO) would be around 10 to 14 months, on average, from filing of the trademark application. Under this situation, the JPO has introduced the examination operation called “fast-track examination” since October […]

【Trademark Act ★】 A case in which the court affirmed the Japan Patent Office’s decision which dismissed a request for trial on the invalidation of a registered trademark for a three-dimensional shape of a “lamp shade”, which is the designated goods of the registered trademark, stating that the registered trademark (the “Trademark”) corresponds to a “trademark [that] consists solely of a mark indicating, in a common manner, in the case of goods, …shape” set forth in Article 3, Paragraph 1, Item 3 of the Trademark Act; however, it corresponds to a “trademark that…may be registered if, as a result of the use of the trademark, consumers are able to recognize the goods…as those pertaining to a business of a particular person” set forth in Article 3, Paragraph 2 of the same Act; and it further does not correspond to a “trademark [that] consists solely of features…that are naturally provided to goods…” set forth in Article 4, Paragraph 1, Item 18 of the same Act, nor a “trademark [that] is likely to negatively affect public policy” set forth in Article 4, Paragraph 1, Item 7 of the same Act; and therefore, the Trademark cannot be invalidated pursuant to the provision of Article 46, Paragraph1 of the same Act.

The Intellectual Property High Court Decision of November 26, 2019 (Case No. 2019 (Gyo-Ke) 10086 — Presiding Judge Otaka) ◆ Main text of the case   【Summary of the Judgment】 The defendant’s Trademark for the three-dimensional shape of “lamp shade”, which is the designated goods of the Trademark, corresponds to a “trademark [that] consists solely […]

【Trademark Act ★★】 A case in which the court revoked a decision of the Japan Patent Office which refused an application for registration of the mark “EQ” on the grounds that the mark “EQ” corresponds to a “trademark which consists solely of a very simple and common mark” set forth in Article 3, Paragraph 1, Item 5 of the Trademark Act, and it does not correspond to a “trademark which, as a result of the use of the trademark, consumers are able to recognize the goods or services as those pertaining to a business of a particular person” set forth in Article 3, Paragraph 2 of the same Act.

  The Intellectual Property High Court decision of July 3, 2019 (Case No. 2019 (Gyo-Ke) 10004 — Presiding Judge Takabe)   ◆ Main text of the case   【Summary of the Judgment】  The mark in question consists of the alphabetical letters “E” and “Q” written horizontally in the commonly used font style, and the form […]

Fast-track examination

 Japan Patent Office (JPO) announced that they will introduce a “fast-track examination” as a pilot program for the examination of trademark applications.    I. Overview If an application is subject to a fast-track examination, a first official action (either of refusal or grant) will be issued approximately two months earlier than an application under normal […]

Amendment of practice about a preliminary notice of rejection based on the Principal Paragraph of Article 3 (1)

Amendment of practice about a preliminary notice of rejection based on the Principal Paragraph of Article 3 (1)    Under the Japan Patent Office’s practice, in a case where a trademark application covers a broad range of goods and services in a Class, the Examiner will issue a preliminary notice of rejection based on the […]

Amendment of Trademark Act Registration of Non-traditional Trademarks

I. Date the Amended Act Comes into Effect The amended Japanese Trademark Act, which provides that a trademark registration for a non-traditional mark is accepted, came into effect on April 1, 2015. Non-traditional marks which can be registered are as follows: 1. Color marks (a single color or a combination of colors) 2. Sound marks […]

Tokyo District Court issued a first judicial ruling for the book scanning service

1. Factual background In recent years, many people have become accustomed to reading or browsing electronic books and web pages on their mobile terminal such as a smartphone and a tablet PC in Japan. With the rapid spread of such mobile terminals, book scanning gradually becomes popular among users of mobile terminals. The act of […]

Copyright Law amended to make illegal downloads incur criminal penalty

Overview The Japanese Diet just passed an amendment to the copyright law on June 20, 2012. There are several revisions to be made to the copyright law by this amendment and the revised copyright law will take effect on January 1, 2013. According to one of these revisions, a person who illegally downloads copyrighted contents […]