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 goods), or on the package or individual packaging of the Plaintiff’s goods. However, in relation to the Plaintiff’s goods:
(1) the Plaintiff’s goods became extremely popular in Korea around 2018, mainly among video creators and their viewers, and the popularity of the Plaintiff’s goods spilled over to Japan from around 2020;
(2) Some retailers with nationwide stores in Japan began promoting the Plaintiff’s goods as “地球グミ” by October of the same year at the latest, when the Plaintiff started imports and sales of the Plaintiff’s goods;
(3) The Plaintiff’s goods became so popular once the Plaintiff started imports and sales of the Plaintiff’s goods that they were sold out at retailers immediately after going on sale, and became extremely difficult to obtain, and some retailers with nationwide stores in Japan repeatedly advertised the Plaintiff’s goods as “地球グミ”, and the Plaintiff’s goods enjoyed high popularity as “地球グミ” on video sharing websites;
(4) In June 2021, the Plaintiff’s goods were featured in national newspapers as very popular goods called “地球グミ”, and were featured on major regional TV stations in Osaka as a one of the highly popular food or beverages chosen by Generation Z, and in July of the same year were also featured on key TV stations in Tokyo as popular goods that young people in their early 20’s all knew;
(5) The Plaintiff’s goods were called “地球グミ” by the Plaintiff on a TV program at the latest in June of the same year, and were called “地球グミ” in the Plaintiff’s advertisement at the latest in September of the same year;
(6) In November of the same year, the Plaintiff’s goods were introduced as an example of goods whose popularity had been triggered by video sharing websites, and the Plaintiff’s goods won the “Café / Gourmet Section” of “Trend Award”, based on the results of surveys of young women by the management company of the youth fashion department store “SHIBUYA 109”; and
(7) The term “地球グミ”, which is a colloquial term for the Plaintiff’s goods, was featured as a hit food-related product in “The Yearbook of the Contemporary Society 2022” (現代用語の基礎知識) issued in January 2022.
In light of the aforementioned circumstances, it is reasonable to admit that the term “地球グミ” falls under a trademark which is widely recognized among consumers, including young people, for gummi candies as the object indicating the goods related to the business of the Plaintiff, who is an importer and distributor in Japan, or of the foreign manufacturer, at the latest by the date of the examination decision (February 22, 2022).
1. The summary 1 of the judgment is:
With regard to “a trademark which is well-known among consumers as that indicating goods … in connection with the business of other parties, if the trademark is used in connection with the goods …” as provided for in Article 4, Paragraph 1, Item 10 of the Trademark Act, which relates to grounds for unregistrable trademarks, there is judicial precedent affirming the fact that, or the possibility that, a trade association or a group of companies such as manufacturers, distributors, etc. are or can be “other parties” (Intellectual Property High Court Decision rendered on July 19, 2017 [“南三陸キラキラ丼” case], Tokyo High Court Decision rendered on December 25, 2002 [“麗姿” case], etc.; also see the Supreme Court Decision rendered on May 29, 1984, holding the same regarding the “indications of goods or business … that are widely recognized among consumers as indications of the goods or business of another party”, as provided for in Article 2, Paragraph 1, Item 1 of the Unfair Competition Prevention Act). As there are also court cases holding that acquiring well-known characteristics is sufficient even if it is through use by a third party (Tokyo High Court Decision rendered on February 26, 1992 [“コンピューターワールド” case] etc.; also see the Supreme Court Decision rendered on February 16, 1993 [“アメックス” case], holding the same effect regarding the “indications of goods or business … that are widely recognized among consumers as indications of the goods or business of another party”, as provided for in Article 2, Paragraph 1, Item 1 of the Unfair Competition Prevention Act), then it is understood that the court affirmed the well-known characteristics of the colloquial term “地球グミ”, which is not the official name of the Plaintiff’s goods “Trolli”, “Planet Gummi”, or “Blue Planet”, due to the circumstances underlying the huge popularity, craze, hit, etc. among gummi candy consumers, especially young people, who were consumers of the Plaintiff’s goods for a relatively short time period (just under two years).
[Cited by https://www.yutaka-trd.co.jp/processedfood/trolli]
Moreover, in relation to “gaining unfair profits” as stipulated in Article 4, Paragraph 1, Item 19 of the Trademark Act, the fact that Plaintiff asserted and proved that the Defendant, who holds the trademark in question, began to manufacture and sell a generic version of the Plaintiff’s gummi candies under the name of “EARTH GUMMY”, as shown below, is assumed to have affected the judgment in Summary 1.
[Cited by https://ssbjapan.com/category-confectionery.html#gummie_earth]
【Keywords】“地球グミ”, Yutaka Trading Company Limited, MEDERER, Trolli, Planet Gummi, Blue Planet, Article 4, Paragraph 1, Item 10 of the Trademark Act, Well-known Characteristics through Use, SSB Co., Ltd., EARTH GUMMY, “アースグミ”
※ The contents of this article are intended to convey general information only and not to provide any legal advice.
Kei IIDA (Writer)
Attorney at Law & Patent Attorney (Daini Tokyo Bar Association)
Contact information for inquiries: k_iida☆nakapat.gr.jp (Please replace ☆ with @.)