Articles on Trademark

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

【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.

【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).

【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.

【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.

【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.

【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.

【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.

【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.

【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.