【Trademark】Case Holding that Delivery of Purchase Orders to a Single Contract Manufacturer Did Not Constitute “Distribution” under Article 2(3)(viii) of the Trademark Act
the Intellectual Property High Court (IP High Court) September 17, 2026 Case No. 2026 (Gyo-Ke) 10030 Action for Revocation of Trial Decision
Summary
The Plaintiff argued that, with respect to a registered trademark designating cosmetics and supplements, the delivery on two occasions of purchase orders bearing the trademark to a single contract manufacturer constituted the act of “affixing a mark to transaction documents and distributing them” under Article 2(3)(viii) of the Trademark Act. The court held that “distribution” under that provision means “causing advertisements or other materials bearing the mark to circulate to the extent that they are placed in a state where they can be viewed by the public,” and found that delivery of purchase orders to a single contract manufacturer, which was not a consumer of the goods, lacked such substantive character. The court therefore held that use during the evidentiary period had not been proven, upheld the trial decision revoking the trademark registration, and dismissed the Plaintiff’s claim.
Case Overview
Subject Mark/Plaintiff’s Mark
（Revi with Katakana）
The designated goods of the trademark at issue are Class 3 goods, including “body oil, other cosmetics, soaps, and fragrances,” and Class 5 goods, including “processed foods in various forms primarily containing borage seed oil or natural plants, and other supplements.”
The application for registration was filed on October 10, 2014, and the registration was established on March 13, 2015.
On July 1, 2025, the Defendant filed a petition for a trial for cancellation of the trademark registration of the trademark at issue, and the request was registered on July 14 of the same year. The Japan Patent Office examined the case as Trial No. Cancellation 2025-300537 and, on March 24, 2026, rendered a trial decision revoking the registration of the trademark at issue. The evidentiary period under the main clause of Article 50(2) of the Trademark Act was from July 14, 2022 to July 13, 2025. On April 27, 2026, the Plaintiff filed the present action seeking revocation of the trial decision.
As the principal fact constituting use of the trademark at issue, the Plaintiff asserted that, in March 2025, it delivered on two occasions purchase orders bearing the trademark at issue to a contractor engaged to manufacture cosmetics and supplements. The Plaintiff argued that these purchase orders constituted “transaction documents” relating to the designated goods and that their delivery constituted “distribution” under Article 2(3)(viii) of the Trademark Act, thereby constituting use of the trademark at issue. In response, the Defendant contended that the purchase orders were not directed to traders or consumers of the goods and did not perform any advertising function of a trademark, and therefore their delivery did not constitute “distribution” under that provision.
Court’s Decision
(1) Meaning of “Distribution” under Article 2(3)(viii) of the Trademark Act
The court first explained the purpose of the provision. The provision treats acts such as displaying or distributing advertisements, price lists, or transaction documents bearing a mark as constituting “use” of the mark. The court held that the purpose of the provision is that goodwill may accumulate in a trademark through its use in advertisements and similar materials, and that goodwill embodied in a trademark may also be harmed when another person uses the trademark in such a manner. Therefore, the circulation of advertisements and similar materials bearing a trademark at a stage preceding the circulation of goods should also be regarded as “use.”
Based on that purpose, as well as the fact that “distribution” is listed alongside “display” in the provision and the ordinary meaning of the word “distribution,” the court understood that to “distribute” by “affixing a mark to advertisements, price lists, or transaction documents” means causing advertisements or similar materials bearing the mark to circulate to the extent that they are placed in a state where they can be viewed by the public.
(2) Delivery of Purchase Orders to a Single Contract Manufacturer
Based on the evidence, the court found that, in March 2025, the Plaintiff delivered on two occasions purchase orders bearing the mark at issue (the “Purchase Orders at Issue”) to Saisei Medical Co., Ltd. It was undisputed between the parties that the company was engaged by the Plaintiff to manufacture cosmetics and supplements. The Purchase Orders at Issue were delivered only to that single company.
The court held that merely delivering on two occasions purchase orders prepared solely for a single entity that was not envisioned as a consumer of the Plaintiff’s goods could not be regarded as causing transaction documents bearing the mark to circulate to the extent that they were placed in a state where they could be viewed by the public. Accordingly, the court held that it could not be recognized that the Plaintiff had “distributed” “transaction documents concerning goods … bearing a mark” under Article 2(3)(viii) of the Trademark Act. The court did not expressly determine whether the Purchase Orders at Issue constituted “transaction documents” within the meaning of that provision.
The Plaintiff also argued that it delivered to the same company, around June 2025, a purchase order stating “Product Name: REVI SHAKE LOTION 150ml.” The court held that it was not clear whether that purchase order had actually been delivered and further held that, even if it had been delivered, its nature was the same as that of the Purchase Orders at Issue and would not affect the conclusion.
(3) Court’s Response to the Plaintiff’s Arguments
The Plaintiff argued that, even where delivery is made to a specific business partner, there remains a need to protect the mark if documents bearing the mark were actually delivered, and therefore such conduct should constitute “distribution.” In response, the court held, in light of the purpose discussed in section (1), that in order for conduct to constitute use under that provision, it must possess substantive character comparable to circulating advertisements or similar materials bearing a trademark. The court then held that merely delivering on two occasions purchase orders addressed solely to a single contract manufacturer that was not a consumer of the goods did not possess such substantive character and therefore declined to adopt the Plaintiff’s argument.
The Plaintiff further argued that the use was not merely nominal because the purchase orders had in fact been used to commission the manufacture of 500 cosmetic products and the products had been delivered, thereby involving actual expenditures of cost and effort. In response, the court held that, even if the Plaintiff had in fact commissioned product manufacturing and incurred expenses, the delivery of the Purchase Orders at Issue did not constitute “distribution” under the provision, and that, as stated in section (2), no other specific facts sufficient to establish use during the evidentiary period had been shown. Accordingly, the court held that, even taking the Plaintiff’s arguments into account, it could not be recognized that the trademark at issue had been used during the evidentiary period.
(4) Conclusion
The court held that it could not be found that any of the trademark owner, an exclusive licensee, or a non-exclusive licensee had used the trademark at issue with respect to the designated goods during the evidentiary period. Accordingly, the court held that there was no error in the findings or conclusions of the trial decision revoking the registration of the trademark at issue and that the grounds for revocation asserted by the Plaintiff were without merit, and it therefore dismissed the Plaintiff’s claim.
Key Findings and Practical Implications
The significance of this judgment lies in the fact that it provides a concrete standard for interpreting the meaning of “distribution” under Article 2(3)(viii) of the Trademark Act. Specifically, the judgment held that “distribution” means causing advertisements, price lists, or transaction documents bearing a mark to circulate to the extent that they are placed in a state where they can be viewed by the public. As grounds for this interpretation, the court referred to the purpose of the provision, the fact that “distribution” is listed together with “display,” and the ordinary meaning of the term “distribution.” The court also held that, in order to constitute “use” under the provision, the conduct must possess substantive character comparable to circulating advertisements or similar materials bearing a trademark.
In this case, the court found that there was no “distribution” because the recipient of the purchase orders was a contract manufacturer rather than a consumer of the goods, the recipient consisted of only one company, and the purchase orders were delivered only twice. It should be noted, however, that the judgment reached this conclusion with the qualification that these circumstances alone were insufficient. Accordingly, it should be noted that the judgment does not generally hold that delivery of documents to a specific counterparty can never constitute “distribution.”
In addition, unlike the trial decision, the judgment did not directly determine whether the Purchase Orders at Issue constituted “transaction documents” or whether the goods covered by the purchase orders constituted “goods” under the Trademark Act. Instead, it maintained the conclusion of the trial decision on the ground that the requirement of “distribution” had not been satisfied. Nor did it address the Defendant’s arguments concerning nominal or formalistic use or the Plaintiff’s purpose in acquiring the trademark right. Accordingly, it is not appropriate to understand this judgment as holding either that purchase orders sent to a contract manufacturer do not constitute “transaction documents” as a general matter or that delivery of documents to a single specified recipient does not constitute “distribution” as a general matter.
With respect to “distribution” under Article 2(3)(viii) of the Trademark Act, past cases have likewise considered whether delivery of documents to a specific recipient constitutes “use.” In the ICOM case (Tokyo High Court, January 22, 2003, Case No. 2001 (Gyo-Ke) 530), transmission of a quotation by facsimile to a single business partner was found to constitute “distribution.” In the Cosmedicals case (Tokyo High Court, October 27, 2004, Case No. 2004 (Gyo-Ke) 150), it was also held that “distribution” need not be directed to an unspecified large number of persons. On the other hand, in the TOD’S case (IP High Court, September 28, 2006, Case No. 2006 (Gyo-Ke) 10104), distribution of catalogs to a wholly owned subsidiary and an exclusive importer was held not to constitute “distribution” because the catalogs had been prepared and distributed exclusively for transactions with those two entities. These cases suggest that the conclusion is not determined solely by the number or specificity of recipients and that factors such as the relationship with the recipient, the nature and purpose of the documents, and the scope of distribution may be taken into consideration. In the present judgment as well, the nature of the recipient and the scope and frequency of delivery were taken into consideration in determining whether “distribution” was present.
Furthermore, the Plaintiff argued that the use was not merely nominal because it had actually commissioned the manufacture of 500 cosmetic products, received delivery of those products, and incurred related expenses. However, the court held that, even under such circumstances, trademark use under the Trademark Act could not be found where the delivery of the purchase orders itself did not constitute “distribution.” The existence of actual business activities or expenditures and the existence of conduct constituting “use” under the Trademark Act must be examined separately.
From a practical perspective, in preparation for a non-use cancellation trial, it is important not to rely solely on limited exchanges of documents at the manufacturing preparation stage. Rather, materials concerning sales documents directed to consumers or traders, advertisements, online product listings, transfers or deliveries of goods, and similar matters should be retained so that the trademark, the relevant goods, the timing, and the counterparty or scope of public disclosure can be verified.
※This article is intended solely to provide general information and should not be construed as legal advice.
Author: Eriko Kitahara
