Newsletter (No.7) February 2021

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This Newsletter summarizes legal information updated in the latest one month.

*PATENT

*TRADEMARK

【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.

The Intellectual Property High Court Decision of September 2, 2020 (Case No. 2019 [Gyo-ke] 10166―Presiding Judge OTAKA)

【Summary of the Judgment】

Meaning of being “well known among consumers” stipulated in Article 64, Paragraph 1 of the Trademark Act as a requirement for a defensive mark registration

The defensive mark registration system broadens the scope of extension of the right of prohibition of the original registered trademark to include goods or services that are not similar. On the other hand, there is a risk of restricting a third party from selecting or using a trademark. In light of these circumstances, it is reasonable to interpret that the part, “well known among consumers”, according to Article 64, Paragraph 1 of the Trademark Act 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.

Whether or not the requirement of being “well known among consumers” for a defensive mark registration is fulfilled

Given the circumstances, such as that the “stockings” bearing the original registered trademark “Tuché” on their packages have been continuously sold nationwide for more than 19 years, it is acknowledged that the original registered trademark came to be recognized among a considerable number of consumers as that indicating the stockings pertaining to the plaintiff’s business, but on the other hand, given the circumstances such as that the sales amount has declined year after year, and that the market share has also been on the decline, it cannot be said that, at the time of the JPO Decision, the majority of consumers recognized the original registered trademark as that indicating the stockings pertaining to the plaintiff’s business, and thus it cannot be acknowledged that the relevant consumers recognize the original registered trademark as having reached the level of being famous, and that the same is true of the consumers for “women’s socks and tights” as well as for “women’s innerwear”.

Therefore, it cannot be acknowledged that the original registered trademark is “well known among consumers” as that indicating the designated goods pertaining to the plaintiff’s business.

【Comments】

With respect to meaning of being “well known among consumers” stipulated in Article 64, Paragraph 1 of the Trademark Act as a requirement for a defensive mark registration, it was generally understood in court cases that “the requirement, ‘a registered trademark…is well known among consumers’, according to Article 64, Paragraph 1 of the Trademark Act, should be interpreted to refer to the case where the registered trademark is not only well recognized among consumers, but also has such a strong distinctiveness, or has reached such a level of being famous, as to cause confusion about the source of goods or services even when the registered trademark is used by any other person for goods or services dissimilar to the designated goods or services of the registered trademark” (the IP High Court Decision of February 25, 2010 [Case No. 2009 (Gyo-ke) 10189] etc.) Regarding the summary of Judgment 1, the Court interpreted the meaning and geographical scope of consumers and the level of recognition by consumers more concretely; that is, the original registered trademark is required to be recognized nationwide among the relevant consumers of all or some of the designated goods of the original registered trademark, and it is required that the relevant consumers recognize the original registered trademark as having reached the level of being famous.

Regarding the summary of Judgment 2, the Court found based on the summary of Judgment 1 that, at the time of the JPO Decision, the original registered trademark did not fulfill the requirement of being “well known among consumers” for a defensive mark registration as stipulated in Article 64, Paragraph 1 of the Trademark Act.

Hideki Takaishi (Attorney at Law & Patent Attorney) (Publishing Manager)

Nakamura & Partners

Room No. 616, Shin-Tokyo Building, 3-3-1 Marunouchi, Chiyoda-ku,

E-mail: nakamura_and_partners---magazine@nakapat.gr.jp

*The content of this newsletter provides general information and is not legal advice.

*Nakamura & Partners was founded in 1914 and provides comprehensive IP-related services both domestically and internationally as an international IP law