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1

the japan Trademark Association

1. ARIKA Supreme Court Decision

(2009 (gyo HI) 217, Cancellation Case of the JPO

Appeal Board Decision, The Third Petty Bench of

the Supreme Court, December 20, 2011)

- The Japanese Supreme Court has clarified the

meaning of “providing information on commodity

sales” in Class 35.

KAWAI, Chiaki

Kawai & Associates

The class heading of International Class 35 in the

Nice Agreement Concerning the International

Classification of Goods and Services of the

Registration of Marks is provided as “Advertising;

business management; business administration;

office functions.” The Class includes services

“providing information on commodity sales” in the

Japanese Ordinance for Enforcement of the

Trademark Law. The Supreme Court has at this time

clarified the meaning of said services as follows:

“providing information on commodity sales’ in Class

35 shall be interpreted as the services provided to

commercial undertakings and not end-consumers.”

In this case, KK ARICA filed a partial cancellation

action based on non-use against a registered

trademark “ARIKA” (Reg. No. 4548297) owned by the

Introduction

This issue features some of the latest topics and trends concerning trademarks in Japan. Article 1addresses a recent Supreme Court decision concerning the services in International Class 35.Article 2 offers insight into a strategy for registering three-dimensional marks in Japan based onseveral notable court decisions concerning three-dimensional marks rendered during the lastthree years. Articles 3 (1)~(3) explore recent trends in Japanese trademark practice, consideringseveral noteworthy decisions of the IP High Court, Appeal Board and/or Trial Board.

CONTENTS1. ARIKA Supreme Court Decision

2. 3D Trade Marks IP High Court Decisions

3. Recent IP High Court Decisions and Appeal/Trial Board Decisions (1) Distinctiveness(2) Similarity(3) Well Known marks and Famous marks

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registrant KK ARIKA (in katakana) in respect of

“Advertising and publicity services; Business

management analysis or business consultancy;

Marketing research; Providing information on

commodity sales; Business management of hotels;

Publicity material rental.” In Japan, if the registrant

of a mark has not used a trademark for three

consecutive years in respect of the designated goods

and/or services, then any person may cancel the

mark. The registrant of the mark is a company that

designs, manufactures, and sells computer game

software. The registrant used its mark on its website

in relation to computer game software designed by

the company and sold by other undertakings, and

CDs of music used in the software sold by other

undertakings. The website included information on

game content, price, launch dates, and how to buy;

links to other companies’ websites were provided in

introducing ARIKA’s game software and music CDs.

The proprietor submitted said evidence as proof of

use, and asserted the mark has been used in respect

of the services in Class 35, in particular, “providing

information on commodity sales” as covered by the

specification of the registration.

The Appeal Board of the JPO decided this did not

constitute use of the trademark in respect of the

services in Class 35, in particular, “providing

information on commodity sales” as covered by the

registration. The reason cited by the Appeal Board

was that it merely advertised goods designed by the

registrant, which, not being independent services for

the benefit of others, are not protectable. Therefore,

the Appeal Board of JPO ruled that the registration

should be cancelled.

However, the registrant of the mark appealed to the

IP High Court, which overruled the Appeal Board

decision, affirming the registrant’s claim that the

trademark has been used. The decision was based

on the fact that the mark was indicated on the

registrant’s website where music CDs and computer

game software sold by others were introduced, and

where links to the others’ web sites were provided.

The IP High Court regarded these acts as services

“providing information on commodity sales.” So, the

IP High Court ruled that the Appeal Board decision

should be overturned.

KK ARICA, which filed the cancellation action,

appealed to the Supreme Court. The Supreme Court

annulled the judgment of the IP High Court for the

following reasons:

(1) The Trademark Law provides: “An application for

trademark registration shall be filed for each

trademark and designate one or more goods or

services in connection with which the trademark

is to be used. And, the designation provided for

shall be made in accordance with the class of

goods and services provided by Cabinet Order”

(Trademark Law Art 6(1) and (2)). On this basis,

the Order for Enforcement of the Trademark Law

stipulates that the class of goods and services

shall be provided based on International

Classification (Nice agreement Art.1) and class

headings are provided for each class (Art 1 and

the Annex to the Order for Enforcement of the

Trademark Law). The Ordinance for Enforcement of

the Trademark Law further provides sub-

classification for each class (Art. 6 and the Annex

to the Ordinance for Enforcement of the

Trademark Law). The JPO provides that, for the

purposes of examination, goods and services

similar to each other should be grouped in the

same sub-class in the Examination Guideline for

Similarity of Goods and Services. Accordingly,

the meaning of goods and/or services provided

in the Japanese Ordinance for Enforcement of the

Trademark Law shall be interpreted on the basis

of the whole of these legal materials.

(2) Taking into consideration the fact that (i) the

Annex to the Cabinet Order provides the class

heading for services in Class 35 as

“Advertisement, business management or

administration, or office functions;” (ii) the

Explanation of Class 35 in the Nice Agreement

states that “Class 35 includes mainly services

(rendered by persons or organizations)

principally with the object of help in the working

or management of commercial undertakings, or

help in the management of the business affairs or

commercial functions of an industrial or

commercial enterprise;” and (iii) the services are

classified in the same sub-classification covering

“Business management analysis and business

consultancy, market research, providing

information on commodity sales, business

3

April 2012, Issue no. 17

management of hotels” in the Japanese

Ordinance for Enforcement of the Trademark

Law; “providing information on commodity

sales” shall be interpreted as providing

information on commodity sales with the object

of helping the working and management of

commercial undertakings. Accordingly, for

instance, “providing information on sales figures”

or “statistical analysis concerning commodity

sales to commercial undertakings” would fall

under this definition, but “introducing information

on commodity sales to end-consumers” would

not.

(3) Before the introduction of the retail service mark

system in 2006, intended to protect retail

services, services providing convenience

services to end-consumers (such as helping

consumers select goods through mail order, etc.)

were not protected as services. Thus, they were

not covered by “providing information on

commodity sales” in Class 35.

(4) The Supreme Court annulled the IP High Court

judgment as a violation of law. As a result, the

appeal by the registrant to cancel the JPO’s

Appeal Board decision was rejected.

In Japan, a retail service mark system was

introduced in April 2006. Prior to that time, the

designation service “providing information on

commodity sales” in Class 35 was used by trademark

proprietors in the hopes of obtaining partial

protection of retail service marks. It is apparent that

retail services were not protected before the

introduction of the system. Nonetheless, the

meaning of “providing information on commodity

sales” in Class 35 was unclear. The Supreme Court

has at this time clarified the meaning of “providing

information on commodity sales” in Class 35. It shall

be interpreted as services provided “with the object

of helping in the working and management of

commercial undertakings,” and not end-consumers.

Reg. No.4548297

Specification of goods and services

Advertising and publicity services; Issuance of

trading stamps; Business management analysis or

business consultancy, Marketing research,

Providing information on commodity sales,

Business management of hotels; Employment

agencies; Auctioneering; Import-export agencies;

Arranging newspaper subscriptions; Document

reproduction; Shorthand services, Transcription;

Operation of computers, typewriters, telex machines

and other similar office machines; Office functions,

namely filing, in particular documents or magnetic

tape; Reception for visitors in buildings; Publicity

material rental; Rental of typewriters and copying

machines.

2. Recent Decisions of the IP High Court on 3D Trade

Marks Consisting of a Product’s Shape and a

Product’s Container

HIGASHITANI, Yukihiro

Shobayashi International Patent & Trademark Office

In Japan, 3D Trade Marks have been registrable since

April 1, 1997. The total number of the applications

for the 3D Trade Marks filed with the Japan Patent

Office (“JPO”) from 1997 to 2011 was around 5,000.

As of April, 2012, 2082 of these applications were

registered. Most of the registered 3D Trade Marks

were a combination consisting of a 3D shape and a

definite distinctive element such as a word(s) or a

device, or a statue/mascot such as the statue of

KFC’s founder Colonel Sanders standing in front of

shops or a cartoon character, which clearly function

as indicators of origin for consumers (i.e.,

trademarks). This is because, in contrast, 3D shapes

of a product configuration itself and 3D shapes of the

product’s container, such as perfume bottles and

whiskey bottles (without any word or device mark),

even if they are uniquely designed, are presumed to

be non-distinctive as trademarks under the JPO’s

Examination Guidelines for Trademarks. However, if

it can be proved that these shapes have acquired

secondary meaning as a trademark that identifies

the applicant’s product through use, then it is

possible to be registered under paragraph 2 of

Article 3 of the Japan Trademark Law.

As explained in JTA BULLETIN, April 2009, Issue no.

14, the following 3D Trade Marks consisting of a

product configuration itself or a product’s container

have already been registered with proof that these

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shapes acquired secondary meaning as trademarks

(distinctiveness);

(1) MagLite Case

Case No.: 2006 (gyo KE) 10555

Reg. No. : 5094070

App. Date: Jan. 19, 2001

Reg. Date: Nov. 22, 2007

Plaintiff (Applicant): Mag instrument, Inc. (the U.S.)

The goods: Int'l Class 11- Flashlights

(2) Coca-Cola Case

Case No.: 2007 (Gyo Ke) 10215

Reg. No. : 5225619

App. Date: July 2, 2003

Reg. Date: April 24, 2009

Plaintiff (Applicant): The Coca-Cola Company (the

U.S.)

The goods: Int'l Class 32- Cola drinks

In addition, recently the IP High Court has issued the

following decisions in favor of applicants, that is, the

following 3D Trade Marks should be registered due

to the shapes themselves having acquired secondary

meaning as a trademark (distinctiveness);

(3) Yakult Case

Case No.: 2010 (gyo KE) 10169

Reg. No. : 5384525

App. Date: Sept. 3, 2008

Reg. Date: Jan. 21, 2011

Plaintiff (Applicant): Yakult Honsha Co., Ltd. (Japan)

The goods: Int'l Class 29- Lactic acid drinks

(beverage)

The court particularly took the following facts into

consideration;

(i) Since the beginning of selling the product in 1968,

said product has had an astonishing amount of sales

(e.g. 45 billion YEN in 2008). The market share of the

product was more than 42 % during the period from

2000 to 2008.

(ii) The applicant spent a great amount of money on

advertising the product every year (e.g. 9.5 billion

YEN in 2005, and over 9 billion YEN thereafter). The

advertisement strongly impressed the shape of the

container itself (i.e., the 3D Trade Mark applied for)

on consumers.

(iii) According to consumer surveys carried out in

2008 and 2009, the shape of the container itself (i.e.,

the 3D Trade Mark applied for) reminded 98% of

respondents of the applicant’s (Yakult) product.

(4) Gaultier's perfume bottle Case

Case No.: 2010 (gyo KE) 10366

Int'l Reg. No. : 600167

Int'l Reg. Date: April 28, 2006

Decision Date: April 21, 2011

Plaintiff (Applicant): Beaute Prestige International

S.A. (France)

The goods: Int'l Class 3 - Beauty products (cosmetics),

soaps, perfumery, cosmetics

The court particularly took the following facts into

consideration;

(i) The product container itself is conspicuous and

makes a strong impression on consumers.

(ii) The product has been sold and has appeared in

perfume/fashion magazines for more than 15 years

since it was launched in 1994 in Japan.

(iii) The annual sales of the product from 2004 were

around 45 million YEN to 58 million YEN.

(5) Y Chair Case

Case No.: 2010 (gyo KE) 10253

Reg. No. : 5446392

App. Date: Feb. 19, 2008

Reg. Date: October 28, 2011

5

Decision Date: June 29, 2011

Plaintiff (Applicant): Carl Hansen & Son (Denmark)

Carl Hansen & Son Japan

The goods: Int'l Class 20- Armchairs

The court particularly took the following facts into

consideration;

(i) The shape of the product itself is characteristic.

(ii) The product has been continuously sold since

1950 without changing its character and feature

portions although there were some variations of this

product in its material and color.

(ii) 97,548 chairs were sold from July, 1994 to June,

2010 and said amount of sales is remarkable as a sale

of a chair.

(iii) In Japan, since 1960s, the product has appeared

in magazines and was evaluated as the biggest-

selling imported chair therein. In addition, the

product has appeared in art textbooks for junior

high school students and in books for people in

furniture industries.

(iv) The product became well known to general

consumers also due to continuous advertising

campaigns.

Comments:

(1) In the above-mentioned (4) and (5) cases, the IP

High Court stated that generally 3D shapes of the

product configurations and 3D shapes of

product’s containers are not distinctive as a

trademark because they are originally for

ensuring functions of products and/or creating

aesthetic impressions. In other words, the IP

High Court did not deny the JPO’s Examination

Manuals about registrability of 3D Trade Marks.

Thus, the product shapes and the product’s

container shapes remain difficult to protect as

trademarks.

(2) In this connection, however, the IP High Court

pointed out that whereas the 3D shape of

product/product container, which was applied

for as a trademark, must be substantially the

same as that actually used (i.e., sold in a market),

in principle, even if there is a slight variance

(difference) between the former shape and the

latter shape, the former may still be determined

to have acquired distinctiveness as a trademark

because of the commonly occurring change of

product shapes/product containers’ shapes for

sales promotions.

(3) After having reviewed the above-mentioned

cases, we find that in order to obtain trademark

registration for a 3D product shape/product’s

container shape it is essential that such shape be

originally unique or characteristic.

(4) Furthermore, as seen in the (3) Yakult Case, a

consumer survey properly and professionally

conducted is helpful in proving acquisition of

distinctiveness although it is not essential.

In this connection, please be informed that prior

to the (3) Yakult Case, the applicant, Yakult, filed

another trademark application for a product’s

container which is substantially the same as that

in the (3) Yakult Case, but the Supreme Court did

not allow the registration of the prior case. Then

the applicant, Yakult, re-filed the 3D Trade Mark

in the (3) Yakult Case and submitted further

evidence for proving the acquisition of the

distinctiveness, and the IP High Court then

recognized the acquisition of the distinctiveness.

April 2012, Issue no. 17

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3. Recent IP High Court Decisions and Appeal/Trial Board Decisions including Opposition Decisions

(1) Cases where Distinctiveness of the mark was discussed

HASE, Reiko

OKUYAMA & SASAJIMA

Appeal/Opposition

No. DateTrademark in

questionDecision

Yes/NoReason

Appeal Board Decisions

2010-16742May 23, 2011

OPENINGCEREMONY

25

35

The Examiner found that the trademarkin question lacks distinctivenessbecause it may be recognized as a sale orevent commemorating a store’s opening.However, the trademark in question doesnot directly indicate an opening sale.

All the designated goods/ services Yes

2010-650105Jun. 7, 2011

12

18

25

28

The trademark in question is recognizedas one set of four letters rather than twosets of two letters because the spacebetween the two sets of letters is narrow;therefore, it is not a very simple andcommon mark (see footnote).

All the designated goods/ services Yes

2008-650116Jun. 7, 2011

AdvancedSecurity for Life

9

25

41

Although the trademark in question isthe name of an American rock band, itdoes not evoke the name of the rockband because of the band’s very lowsales volumes in recent years.

All the designated goods/ services (Cl. 9, Cl.41)

Yes

Goods/services inquestionCl.

2010-24807Jun. 7, 2011

29

The average Japanese consumer doesnot recognize “Cerdo” as “pork” becauseSpanish is an unfamiliar language tothem.

Pork and pork products Yes

2010-650115Jun. 17, 2011

39

“SAL” is used as an abbreviation for“Surface Air Lifted (mail),” a service tosend mail by air and by sea. However,the trademark is considered a coinedword because the designated servicesare limited to transport by sea.

Organisation andconducting of thetransport of goods bywater, in particular bysea

Yes

2010-26967Jun. 20, 2011

9

37

45

Although “advanced security for life” hasa certain meaning when translated intoJapanese, it is not perceived as acatchphrase. There is no evidence thatthe phrase is being used as acatchphrase; therefore, the trademarkhas a distinctive character.

Surveillance cameras;security and surveillanceapparatus consistingof surveillance camerasand peripheral equipment,etc. (Cl. 9)Repair and maintenanceapparatus for securitysystems, etc. (Cl. 37)Security information,etc. (Cl. 45)

Yes

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Opposition Decisions

2010-20984Jun. 16, 2011

SP SERIES 9

“SP” is considered a model number;therefore, the trademark in question ismerely recognized as a “series of SPproducts” (see footnote).

Spectacles No

2011-8957Sep. 27, 2011 EM・1

24hr

1

31

The trademark in question is descriptiveof quality or an ingredient used in thegoods because “EM” is an abbreviationfor “Effective Microorganisms.”

Goods using effectivemicroorganisms

No

2010-27286Oct. 12, 2011

QuickLook

3

The trademark in question is descriptiveof the quality or efficacy of the cosmeticsbecause consumers recognize thetrademark as solely indicating that thecosmetics will last for 24 hours.

Cosmetics No

2010-900377Jul. 30, 2011

5

29

32

No evidence was found showing that“feplus” is being used to indicateproducts containing iron or that “fe” isbeing used to indicate iron. Thetrademark in question is not recognizedas “products containing iron.”

Processed foodscontaining vitamins,minerals, etc.(Cl.29)

Yes

2010-900164Aug. 11, 2011

9

42

Even though the trademark in questionmay indirectly indicate “data converterfor large companies,” it is notimmediately recognized as such.

Computer programs,etc. (Cl. 9)

Providing computerprograms, etc. (Cl.42)

Yes

2010-900336Nov. 18, 2011

9

42

The trademark in question is notdistinctive when used with devices suchas mobile phones or computers with a“quicklook” function (a function whichenables one to look quickly at thecontents of files without opening them).

Mobile phones,computers, etc. (Cl. 9)Computer softwaredesign, computerprogramming, etc. (Cl.42)

No

Footnote:

Trademarks composed of one or two Roman characters, a single Roman character accompanied by simplified Japanesekana characters, or Japanese katakana characters representing the sound of a single Roman character are consideredvery simple and common marks and fall under Article 3(1)(v).

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Case No.

Date

RegisteredTrademark /

Plaintiff’s markCL(s) ReasonChallenged mark

Decision= / =/

Trademark Infringement Cases / Unfair Competition Cases

2010 (Ne)10015

Nov. 29, 2010(IP High Court

Decision)

18

The Tokyo District Court and the IP HighCourt found that the challenged markswere dissimilar to the registeredtrademark and the Plaintiff’s mark inappearance.

=/2009 (Wa)

19888Dec. 24, 2009(Tokyo Dist.

Court Decision)

2008 (Wa)10735

Mar. 4, 2010(Tokyo Dist.

Court Decision)

44

In addition to both of the marks havingthe individual elements of “I,” “ ,” and“NAIL,” the alphabetical elements werewritten in black and the “ ” elementwas written in red, and thus, both theregistered trademark and the challengedmark were found to be similar inappearance, sound, and connotation.

=

(Registered trademark)

(Plaintiff’s mark)

(GOYARD) (adidas)

Case No.

Date

Trademark

in questionCL(s) Reason

Prior

Trademark

Decision= / =/

IP High Court Decisions (Lawsuits against JPO’s Appeal Board Decisions)

2008 (gyo KE)10409

Jun. 28, 20109

Since the “e” portion of the trademark inquestion did not function as a sourceindicator, the mark was not taken as awhole and “watching” was recognized asbeing a separate element.

Thus, the trademark in question andprior trademark were found to be similar.The IP High Court sustained the JPO’sAppeal Board decision.

=

(2) IP High Court and District Court Cases in 2010 and 2011 where the similarity between the marks was

discussed

SATO, Shunji

TMI Associates

(Hereinafter “=” means “similar” and “≠” means “not similar”)

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2009 (gyo KE)10396

Jul. 21, 2010

7

11

The IP High Court cancelled the JPO’sAppeal Board decision, which decidedboth Cited prior trademarks to besimilar. The IP High court found that thetrademark in question should beconsidered as a whole, and thus,dissimilar to the prior trademarks. Withregard to Cited mark 2, the IP High courtconsidered the fact that the holder of theCited mark 2 went bankrupt before theapplication date of the trademark inquestion and decided that there was nolikelihood of confusion between thetrademark in question and Cited mark 2,since Cited mark 2 is unlikely to be used.

=/

=2009-6517Oct. 28, 2009

2010 (gyo KE)10171

Dec. 14, 2010

2009-650090Apr. 19, 2010

39

43

The IP High Court overturned the JPO’sAppeal Board decision, which decidedboth trademarks to be similar. The IPHigh court recognized that bothtrademarks had a commonpronunciation of “booking,” however,they decided that both trademarks weredissimilar, because the prior trademarkwas cancelled due to non-use during theprevious three years.

=/

=

2010 (gyo KE)10257

Dec. 22, 20109

The trademark in question was similar tothe prior mark in terms of pronunciation.Thus, the IP High Court sustained theJPO’s Appeal Board decision whichfound the trademark in question and theprior trademark to be similar.

=

2010 (gyo KE)10326/10327Apr. 27, 2011

2010-214/215Aug. 31, 2010

=/

=

(Cited mark 1)

(Cited mark 2)

EXTRIMA

2011 (gyo KE)10087

Jul. 21, 201116

The trademark in question was similar tothe prior mark in terms of sound,although the appearance of both marksis not similar. The IP High Courtsustained the JPO’s Appeal Boarddecision, which found the trademark inquestion and the prior trademark to besimilar.

=

36

Although the JPO’s Appeal Boarddecided that the trademark in questionand the prior trademark were similar, theIP High Court found that bothtrademarks were dissimilar inappearance and sound, and thus,decided that there was no likelihood ofconfusion between the trademark inquestion and the prior mark, consideringthe sophistication of traders andconsumers in relation to financialservices.

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berry mobile

2011 (gyo KE)10093

0ct. 24, 2011

9

42

The IP High Court overturned the JPO’sAppeal Board decision, which decidedthat both trademarks were similar. TheIP High Court found that bothtrademarks were dissimilar in sound,upon considering the weakness of “PAG”and the fact that the prior trademark wascancelled due to non-use during theprevious three years.

=/

=2010-6516Jan. 25, 2011

2009 (gyo KE)10328

Mar. 17, 2010

38

The IP High Court overturned the JPO’sinvalidation decision, which decidedthat both trademarks were dissimilar,because the “mobile” element of thetrademark in question lacksdistinctiveness in relation to thedesignated services and the “black”element of the prior trademark is weak.The IP High Court found bothtrademarks to be similar, since thedominant portion of the trademark inquestion and the prior trademarks was“berry.”

=

=/2008-890055Jun. 17, 2009

2009 (gyo KE)10411

Apr. 28, 2010

3

Considering that the word “ATHLETE”had become well known among traders,“ATHLETE” was considered to be thedominant portion of the trademark inquestion. The IP High Court found thetrademark in question and the priortrademark to be similar and overturnedthe JPO’s decision, which decided bothtrademarks to be dissimilar.

=

=/2008-890051Nov. 11, 2009

Case No.

Date

Trademark

in questionCL(s) Reason

Prior

Trademark

Decision= / =/

IP High Court Decisions (Lawsuits against JPO’s Trial Board Decisions)

TVプロテクタ

(Protecta inkatakana)

PROTECTOR

2011 (gyo KE)10085

Sep. 20, 2011

2010-7669Jan. 25, 2011

=/

=

9

The IP High Court cancelled the JPO’sAppeal Board decision, which declaredboth trademarks to be similar. The IPHigh Court found that the trademark inquestion should be considered as awhole and, upon such consideration,decided that the trademark in questionwas dissimilar to the prior trademark.

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April 2012, Issue no. 17

2011 (gyo KE)10040

Jun. 29, 2011

25

Although the JPO’s Trial Board decidedthat there was a likelihood of confusionbetween the trademark in question andprior mark, since both marks have samepronunciation, the IP High Courtcancelled the JPO’s Trial Board decision.The IP High Court recognized thesimilarity in sound, however, it based itsdecision on the difference inappearance, the fact that the trademarkin question was well-known, anddifference of consumer’s taste ofclothing and decided that there was nolikelihood of confusion between thetrademarks.

=/

=2010-890048Dec. 28, 2010

Invalidation2010-890002Nov. 10, 2010

2012 (gyo KE)10086

35

The mark is well-known as a Jazz recordlabel and also for the sales of relatedgoods but is not widely known in theother fields of business such as retailsales for clothing, food and living ware.

No

Invalidation 2010-890021Mar. 30, 2010

18

Invalidated since the registrant hadmany registered marks which weresimilar to the world famous fashionbrand, thus admitted an intention toobtain unjust enrichment throughregistration and use of the mark.

Yes

Trial No.Trademark in

Question Class ResultPrior TrademarkDecision

Y/N

(3) Recent Trial Board Decisions where well-known among consumers outside Japan was discussed.

HIROSE, Fumihiko

HIROSE Int’l Patent & Trademark

“Yes” means the decision was made that the mark in question fell under Article 4(1) 19

2009 (gyo KE)10152

Apr. 27, 2010

9

16

18

20

21

24

25

27

28

The JPO’s Trial Board decided that thetrademark in question and the priortrademark were similar, finding that“JEANS” is descriptive. However, the IPHigh Court found that the dominantportion of the trademark in question isboth “POLO” and “RALPH LAUREN,”considering that traders and consumerswould understand the goods wasdesigned by a designer RALPH LAUREN.In conclusion, the IP High Courtcancelled the JPO’s Trial Board decision.

=/

=2008-890025Feb. 3, 2009

12

JTA Bulletin is a newsletter issued from time to time when necessity takes place.Subjects covered by this Bulletin include trademark protection, unfair competition andanything new and noteworthy to foreign practitioners. All articles on the JTA Bulletinmay be accessed on the web site of JTA. URL: http://www.jp-ta.jp/committee/005.html

Written and edited by JTA Bulletin Group of The International Activities Committee© Chiaki Kawai, Yukihiro Higashitani, Reiko Hase, Shunji Sato, Fumihiko Hirose, Koji Murai, Junko Saito

Japan Trademark Associationc/o Oshimoto Patent and Trademark Office

Akasaka Chalet II No.201, 18-19, Akasaka 2-chomeMinato-ku, Tokyo 107-0052 Japan

TEL: 81-3-5575-3648 FAX: 81-3-5575-3120

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Invalidation 2010-890081Sep. 24, 2010

18

BIRKIN Bag Design of HERMES is a well-known configuration of Bag, even thoughnot registered as a trademark. This markwith such bag design is consideredsimilar to the famous Bag Design and willcause confusion in relation to businessand gain profit through unfair means.

Yes

Trial No.Trademark in

Question Class ResultPrior TrademarkDecision

Y/N

Invalidation 2010-890063Jun. 15, 2011

35

The mark is well known in the U.S. forrunner’s watches with GPS receivers andexercise monitors. The registrant furtherregistered several related marks in thedifferent classes including related retailsales which proved his unfair intention.

YesFORERUNNER FORERUNNER