【Trademark Act ★】A case in which the Intellectual Property High Court held that the registered trademark (the trademark in question) owned by the plaintiff, which consists of “スマホ修理王” in standard characters and whose designated service is “repair or maintenance of telephone equipment” in Class 37, is a “trademark that is likely to negatively affect public policy” in light of the purpose and background of the application for registration, therefore, it falls under Article 4, paragraph 1, item 7 of the Trademark Act and the court maintained a trial decision of invalidation made by the Japanese Patent Office (the “JPO Decision”) to the same effect.

Intellectual Property High Court Decision of September 14, 2022 (Case No. 2022 [Gyo-ke] 10034―Presiding Judge Kanno)

◆Main text of the case

【Summary of the Judgment】

1. Regarding whether or not the trademark in question corresponds to Article 4, paragraph 1, item 7 of the Trademark Act
   
   The application for registration of the trademark in question was filed by the former franchisee four days after the termination of the franchise agreement in order to continue to use the franchisor’s goodwill through the continued use of the former name, which is in great violation of the principle of good faith. In addition, the application was made for an improper purpose to interfere with the franchisor’s franchise business or to induce the franchisor to purchase the trademark in question at a high price, taking advantage of the fact that the franchisor had not registered a trademark of franchise name.
   
   In light of the purpose and background of the application for registration, the registration of the trademark in question is an abuse of the first-to-file principle and lacks social appropriateness, and if allowed, would be contrary to the purpose of the Trademark Act, which is to protect trademarks in order to enhance the business reputation of those who use them, thereby contributing to the development of industry, and to protect the interests of consumers. Therefore, the trademark in question is against public policy and falls under Article 4, paragraph 1, item 7 of the Trademark Act.

【Comments】

1. Regarding whether or not so-called malicious or plagiaristic applications correspond to Article 4, paragraph 1, item 7 of the Trademark Act which provides that “a trademark that is likely to negatively affect public policy” is a ground for non-registration, in contrast to the previous trend of expanding the application of Article 4, paragraph 1, item 7 of the Trademark Act, recent court decisions (such as the Intellectual Property High Court decision on June 26, 2008 (コンマ―／CONMAR case) etc.) and theories (Tadashi Aso, “HanHi” Patent Kenkyu No. 62, p. 46, etc.) have been favoring the view to limit the application in recent year. Under such circumstances, Summary of the Judgement 1 affirmed the application of the provision in the same cases as those in which the application of the provision was affirmed (IP High Court decision on August 30, 2015 [のらや case] and IP High Court decision on October 23, 2019 [仙三七 case]).

【Keywords】malicious application, plagiaristic application, Article 4, paragraph 1, item 7 of the Trademark Act, public policy, social appropriateness, “スマホ修理王”

※ 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 @.)