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【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.

June 16,2021

The Intellectual Property High Court Decision of December 23, 2020 (Case No. 2020 [Gyo-Ke] 10050―Presiding Judge OTAKA)

 

◆Main text of the case

 

【Summary of the Judgment】

1. Regarding well-knownness of a cited trademark consisting of the characters, “農口尚彦研究所”, written vertically in block style (the “Cited Trademark”)

In order to consider that the Cited Trademark is well known, it is necessary for the Cited Trademark to be widely recognized among general consumers, who are the customers, of the goods “Japanese sake”. It can be acknowledged that, at the time of the JPO Decision, the sake brewery called “農口尚彦研究所” and Japanese sake of “農口尚彦研究所” were recognized, to a considerable degree, among Japanese sake enthusiasts, however, it cannot be acknowledged that these names were widely recognized among general consumers, and moreover, that the Cited Trademark was widely recognized as an indicator for the goods, “Japanese sake”, pertaining to the business of the Plaintiff.

【Example of Use of Cited Trademark: Cited from Exhibit 2 attached to Written Judgment】

 
2. Regarding similarities between the trademarks consisting of the characters, “農口”, written vertically in cursive style or in block style used by the trademark right holder (the Trademarks in Use 1 and 2) and the Cited Trademark

The Trademarks in Use 1 and 2 are different from the Cited Trademark in appearance and pronunciation, and even in concept. Therefore, if the Trademarks in Use 1 and 2 are used for “Japanese sake”, it cannot be acknowledged that they are similar to the Cited Trademark.
 

     

 

      

 

【Example 1 of Trademark in Use 1: Cited from Exhibit 1 attached to Written Judgment】

 
 

【Example 2 of Trademark in Use 2: Cited from Exhibit 1 attached to Written Judgment】

 
3. Regarding confusion as to the source
The Plaintiff asserts that if the Defendant uses the Trademarks in Use 1 and 2 for “Japanese sake”, such use is likely to cause confusion with goods pertaining to the business of a person having an organizational or economic relationship with the Plaintiff and “農口尚彦研究所”, and therefore, they fall under Article 51, Paragraph 1 of the Trademark Act. However, it cannot be acknowledged that the Cited Trademark was widely recognized among general consumers as an indicator for the goods, “Japanese sake”, pertaining to the Plaintiff’s business, and it cannot be acknowledged that the Trademarks in Use 1 and 2 are similar to the Cited Trademark. On that premise, the Plaintiff’s assertion cannot be accepted.

 
4. Regarding misleading as to quality
The “quality of the goods” stipulated in Article 51, Paragraph 1 of the Trademark Act is interpreted to include, if the goods are “Japanese sake”, the case where specific chief sake brewer is involved in the production of the goods. However, the Trademarks in Use 1 and 2 do not generate the concept of the Plaintiff. On that premise, it cannot be acknowledged that the Trademarks in Use 1 and 2 mislead customers into believing that the Japanese sake affixed with the Trademarks in Use 1 and 2 were produced by the Plaintiff as chief sake brewer.

 

【Comments】

1. Article 51, Paragraph 1 of the Trademark Act provides to the effect that when a holder of trademark right intentionally uses a trademark similar to a registered trademark in connection with the designated goods in a manner that causes confusion as to the source of the goods, or misleads as to the quality of the goods, the trademark registration may be cancelled. As a prerequisite for confusion as to the source of the goods, emphasis is placed on whether or not a trademark used in connection with the other party’s business is well known or famous, and the degree of well-knownness thereof in previous court cases (the Intellectual Property High Court Decision of January 13, 2010, Hanji No. 2095, p.120, the Intellectual Property High Court Decision of December 10, 2009, Hanji No. 2089, p.134, etc.) and theories (Yoshiyuki Tamura “Trademark Law [the 2nd edition]”, p.397, Kanji Kudo “Commentaries on Trademark Law and Court Cases”, p. 336, etc.). In this regard, as in the summary of Judgment 1, the Court denied the well-knownness of the Cited Trademark identified and asserted by the Plaintiff (the demandant of the rescission trial) in relation to general consumers, who are the customers, of the goods (Japanese sake).
 
2. As a prerequisite for confusion as to the source of the goods mentioned above, it is considered that the similarity is required to exist between a trademark used in connection with the other party’s business and the trademark in use of the trademark right holder in previous court cases (the Intellectual Property High Court Decision of December 26, 2012, Hanji No. 2191, p.126, the Intellectual Property High Court Decision of December 10, 2009, Hanji No. 2089, p.134, the Intellectual Property High Court Decision of February 24, 2009, Hanji No.2043, p.127, etc.). In this regard, as in the summary of Judgment 2, the Court denied the similarities between the Cited Trademark identified and asserted by the Plaintiff (the demandant of the rescission trial) and the Trademarks in Use 1 and 2 used by the Defendant (the trademark right holder).
 
3. Regarding the summary of Judgment 3, the Court found, based on the summary of Judgments 1 and 2, that the prerequisites for confusion as to the source of the goods mentioned above were not satisfied.
 
4. Regarding the summary of Judgment 4, the Court acknowledged and found that since the Trademarks in Use 1 and 2 per se do not generate the concept of the Plaintiff, they are not considered to mislead as to the quality of Japanese sake produced by the Plaintiff as chief sake brewer.

The Court further found, with respect to labels placed on the bottles of the Defendant’s Japanese sake which indicates “Chief sake brewer Naohiko Noguchi” on the left side of the Trademark in Use 1 or 2, that customers coming in contact with the labels would recognize that the Japanese sake was brewed by the Plaintiff as chief sake brewer.

According to said finding, if the labels which indicate “Chief sake brewer Naohiko Noguchi” on the left side of the Trademark in Use 1 or 2 are placed on the bottles of the Defendant’s Japanese sake which is not brewed by the Plaintiff, the applicability to an act which is likely to mislead as to the quality set forth in Article 2, Paragraph 1, Item 20 of the Unfair Competition Prevention Act may become an issue.
 
 
【Keywords】Article 51, Paragraph 1 of the Trademark Act, rescission trial for trademark registration, well-knownness of a trademark, similarities of trademarks, confusion as to the source of the goods, misleading as to the quality, Japanese sake, 山廃仕込み[Yamahai-jikomi], chief sake brewer, 農口尚彦 [Naohiko Noguchi], 見砂酒造株式会社[Misago Shuzo K.K.], 農口尚彦研究所 [Noguchi Naohiko Sake Institute], 山本酒造本店株式会社 [Yamamoto Shuzo Honten K.K.], 農口酒造株式会社 [Noguchi Shuzo Co., Ltd.]
 

※ 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

 

 
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