Articles on Trademark

【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.

【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 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.

【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.

【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).

【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.

【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).

【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.

【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.