February 25,2020
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 by a Japanese national living abroad while recognizing that said products are sold to consumers in Japan, and at the online shop, the products bearing the trademark at issue are transferred to consumers in Japan or displayed for the purpose of transferring the same. From the foregoing fact, it can be found that “…a registered trademark has…been used in Japan in connection with…the designated goods…by the holder of trademark right…” under Article 50, Paragraph 1 of the Trademark Act.
- If the foreign holder of the trademark at issue located abroad transfers the products bearing the trademark at issue while recognizing that they are sold in Japan, and then the products bearing the trademark at issue are sold as is in Japan, such sale is considered to have been performed based on the intention of the foreign holder of the trademark at issue located abroad, and therefore “the use by the holder of trademark right in Japan” under Article 50, Paragraph 1 of the Trademark Act can be affirmed. There is no reason to require the foreign holder of the trademark at issue located abroad to contractually recognize that the sale of the products bearing the trademark at issue in Japan is made by a third party on behalf the foreign holder of the trademark at issue based on a distributor agreement and the like concluded between the third party and the foreign holder of the trademark at issue.
【Comments】
- Regarding the summary of Judgment 1 and 2, it is considered that the Court found that the foreign holder of the trademark at issue located abroad uses the trademark at issue by itself in Japan through the use of the online shop for Japan as its tools to sell the products bearing the trademark at issue to consumers in Japan. This is an unusual case and judgment, and it is worth paying attention to whether this kind of judgment will become increased and established.
【Keywords】Article 50, Paragraph 1 of the Trademark Act, cancellation of trademark registration based on non-use, use of a trademark in Japan based on the intention of a foreign holder of the trademark located abroad, online shop, distributor agreement
※ 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