1. Regarding whether or not the plaintiff’s indication constitutes an appellee’s (plaintiff’s) famous indication of goods or business.
The plaintiff’s indication not only refers to the monster “GODZILLA” and the “GODZILLA” series of movies themselves, but also functions as an indication of goods or business indicating its origin as of the appellee (plaintiff) which is the main producer of the above and is used as a plaintiff’s famous indication of goods or business.
2. Criteria for determining the similarity between the plaintiff’s indication and the defendant’s indication as stipulated in Article 2, Paragraph 1, Item 2 of the Unfair Competition Prevention Act
Concerning the similarity between the plaintiff’s indication and the defendant’s indication as stipulated in Article 2, Paragraph 1, Item 2 of the Unfair Competition Prevention Act, as in the court cases regarding Item 1 of the same Paragraph, under the actual circumstances of the transaction, the judgement should be made based on whether or not there is a risk that a trader or consumer may perceive the two indications as similar overall from impressions, memories, associations, etc. based on the appearance, pronunciation, or conception of the two indications. With respect to item 2 of the same paragraph, however, it is particularly important to consider whether the indications are so similar as to easily evoke a famous indication.
3. Judgement of similarity between the plaintiff’s indication and the defendant’s indication 1
Given that the plaintiff’s indication is famous as an indication of goods or business of the appellee (plaintiff), that the appellants (defendants) used the defendant’s indication as a mark of goods or business for advertising with general consumers as consumers, and that the association with monsters and special effects movies was appealed in the same advertising, etc., the defendant’s indication 1 is such an indication that is so similar to easily evoke the appellee’s (plaintiff’s) famous indication of goods or business, which could take advantage of the customer attraction of the plaintiff’s indication and cause a dilution of the plaintiff’s indication, and the appellants (defendants) have infringed on the plaintiff’s business interests.
1. Abstract 1 of the judgment affirmed that the plaintiff’s indication, which was originally the name of the monster “Godzilla” appearing in the movie and the title derived from the same name of the monster movie series in which the said “Godzilla” appears, became famous as an indication of the goods or business of the producer of the said movies as a result of its use (licensing).
2. Abstract 2 of the judgment determined the criteria for determining similarity between the plaintiff’s indication and the defendant’s indication as stipulated in Article 2, Paragraph 1, Item 2 of the Unfair Competition Prevention Act as follows: Basically, it is the same as the criteria for judging the similarity of the plaintiff’s indication and defendant’s indication according to the precedents concerning item 1 of the same paragraph (Supreme Court Case, October 7, 1983, [Manpower case]), which protect the well-known indication of the plaintiff from the likelihood of confusion. Moreover, in light of the original purpose of Paragraph 1 Item 2, which protects the famous plaintiff’s indications from dilution, the court considered that, while in Paragraph 1 Item 1, the focus should be on whether there is a likelihood of confusion, in Paragraph 1 Item 2, the court should consider whether the indications are similar enough to easily evoke the plaintiff’s famous indication. This is in line with a precedent case (Tokyo District Court, December 26, 2008 [Black Oolong Tea Case]).
3. Abstract 3 of the judgement affirmed the similarity by applying the judgement criteria in Abstract 2 of the judgement to the similarity between the plaintiff’s indication and the defendant’s indication and further affirms the infringement of the plaintiff’s business interest as stipulated in Articles 3 and 4 of the Unfair Competition Prevention Act, which is considered a requirement for a request for injunction and damages, by diluting the plaintiff’s famous indication of goods or business and by utilizing customer attracting power of the plaintiff’s indication without permission.
【Keywords】Criteria for determining the similarity of indications for goods or business, dilution, TOHO Co., Ltd, “ゴジラ”, “GODZILLA”, “ガジラ”, “GUZZILLA”, Taguchi Industrial Co., Ltd.
※ 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 @.)