Articles on Trademark

【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.

【Trademark Act ★】A case in which the Court found that the defendant’s marks containing the letter part of “MMPI” which was widely recognized among consumers as that referring to the “Minnesota Multiphasic Personality Inventory”, which is the questionnaire-based psychological testing developed by Hathaway and Mckinley for understanding character tendencies, or to the abbreviation of the testing, correspond to a trademark indicating, “in a common manner”, the “quality” of the designated service pertaining to the Trademark “MMPI”, or “psychological testing”, and that Article 26, Paragraph 1, Item 3 of the Trademark Act applies to the defendant’s marks and the effect of the right for the Trademark does not extend to the defendant marks.

【Trademark Act ★】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, finding that since the position mark in question cannot be considered to contain distinctive character in its functional composition itself in light of attentiveness possessed by general consumers who are considered as consumers of the designated goods, the position mark in question corresponds to a trademark set forth in Article 3, Paragraph 1, Item 6 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 refused an application for registration of the mark consisting of the letter “I” and a heart shape placed horizontally side by side, with the letters “JAPAN” written underneath, finding that since the mark in question is one which cannot be recognized by consumers as pertaining to any person’s business, it falls under Article 3, Paragraph 1, Item 6 of the Trademark Act and cannot be registered.

【Trademark Act ★】A case in which the Court affirmed the Japan Patent Office’s decision which refused an application for registration of the mark “TAKAHIROMIYASHITATheSoloist.”, finding that the mark in question consisting of common characters 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 the mark in question is not acknowledged that the “registration of which has been approved by the person concerned” under the same Item.

【Trademark Act ★】A case in which the Court found that a color trademark consisting solely of orange without contours cannot be said to have acquired distinctiveness as a source indicator under Article 3, Paragraph 2 of the Trademark Act even if such a trademark has been used for a long period of time for hydraulic excavators, the designated goods of the 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 mark “CORE ML” by finding that the mark “CORE ML” consisting of common characters is not similar to either of the cited trademarks “CORE” and “コア” (KO-A in English) which consist of common characters.

【Trademark Act ★】 A case in which the Court revoked a decision of the Japan Patent Office which refused an application for registration of the mark “ベジバリア／塩・糖・脂” (BEJIBARIA/Salt・Sugar・Fat) on the grounds that the mark is similar to the registered trademark “塩糖脂” (Salt, Sugar, Fat).

【Trademark Act ★】 A case in which the Court affirmed the use of a registered trademark in Japan based on the intention of a foreign holder of the registered trademark located abroad, and revoked a decision of the Japan Patent Office which had cancelled the registered trademark by reason of non-use.