Famous mark Protection under Trademark Law

Japan is a rigid “first-to-file” jurisdiction, meaning that it is necessary to register a trademark in order to obtain proprietary rights over it in principle. Prior use of the trademark is insufficient to be protected under the Trademark Law. The only meaningful exception to this rule is the treatment of so-called famous trademarks even if they have not been filed yet. But it should note owners of famous trademarks can’t file an infringement lawsuit based on the trademark right without registration in Japan. The Trademark Law provides special provisions to protect the famous trademarks. However, the statute never refers to the “famous” mark. It only refers to “recognized” marks, “widely recognized” marks, and “highly recognized” marks.


Relative grounds for refusal, opposition, invalidation

Like other jurisdictions, the Japan Trademark Law prohibits registration of junior marks which are the same as or similar to senior marks that are effectively registered in Japan under Article 4(1)(xi). In order to provide broader protection of famous trademarks, the Law stipulates extra grounds for refusal, opposition, and invalidation on Article 4(1)(x), (xv), (xix).

Article 4(1)(x)

Trademarks that are the same as or similar to trademarks that are widely recognized by consumers as marks indicating the goods or services of another and are used on the same goods or services or similar to those of the other party may not be registered.

Article 4(1)(xv)

Trademarks that are likely to cause confusion in connection with the goods or services related to another’s business may not be registered.

Article 4(1)(xix)

Trademarks which are the same as or similar to trademarks that are widely recognized among consumers either in Japan or in foreign countries as identifying the goods or services related to another’s business and are used for illicit purposes such as trading off the goodwill of another or causing damage to another may not be registered.

These articles spotlight that the Japan Trademark Law considers (1) “similarity” as a most critical issue to determine the scope of protection to famous trademark and (2) “likelihood of confusion” as other legal concepts different from “similarity”.


Defensive mark

A famous trademark may be registered as a defensive mark to cover other identified goods or services than those listed in the original registration under Article 64. These additional goods or services need to be dissimilar to the original goods or services and the registrant needs to prove (1) that the mark is “widely recognized by consumers” and (2) that confusion is likely if the mark is used on these additional goods or services by a third party.

Noteworthy is that defensive mark registration would not be vulnerable to non-use cancellation. Besides, the registrant is entitled to take action against a third party for trademark infringement even if the mark was used on the goods or services that are remotely associated with his business.


Prior use rights

As stated above, a mere prior use is insufficient to be protected under the Trademark Law. Prior user is entitled to defense for trademark infringement only where the mark is “widely recognized by consumers” as identifying the goods or services of the prior user at the filing date of initial trademark application by the registrant under Article 32.


Enforcement/Infringement

Unauthorized use of the mark that is the same as or similar to the registered mark constitutes trademark infringement under Articles 25 and 37(i).

As a matter of law, the Trademark Law does not provide broader protection of famous trademarks in enforcement. No specific provision is given to prohibit famous trademark dilution and parody. There is a considerable gray zone in the Trademark Law when it comes to the unauthorized use of “non-similar” marks that are likely to cause confusion with famous trademarks.

IP High Court affirmed TM infringement in favor of Wenger over cross design

On April 21, 2021, the Japan IP High Court affirmed the Tokyo District Court’s decision in favor of Wenger S.A. and ruled to dismiss the appeal brought by TravelPlus International who was sentenced for trademark infringement by using cross design marks similar to the Wegner cross on backpacks. [Court case nos. IP High Court Reiwa2(ne)10060]

WENGER

Wenger, the Swiss company, has owned international registration no. 1002196 for the cross mark (see below) for use on backpacks of class 18 and others goods in Japan since November 5, 2010.

SWISSWIN

TravelPlus International (TI) distributed “SWISSWIN” brand backpacks adorned with a logo evoking the Swiss flag which consists of a cross surrounded by a square in Japan. According to the court decision, an affiliated company of TI has produced the Wenger bags as an OEM vendor.   

IP High Court ruling

The IP High Court dismissed the appeal entirely and issued a decision addressing the interpretation of similar marks evoking the Swiss flag that is unregistrable under the Trademark Law.

1. Evaluation of color difference on cross design

TI argued color difference shall be a crucial factor in this case based on Article 4(1)(iv) of the Japan Trademark Law that prohibits registration of an identical or similar mark to the Red Cross.


However, the judge denied the allegation by stating that any cross design dissimilar to the Red Cross can be registrable under the article. If so, it does not make sense to find the color difference on cross designs that would materially affect the similarity of the marks. Both marks should be assessed in their entirety by taking account of other elements as well.

2.  Assessing figurative element except for cross design

TI argued both marks should be assessed similarly on the assumption that the square plays a dominant role of source indicator based on Article 4(1)(i). Any mark identical or similar to a foreign national flag is unregistrable under the article. If so, it should not be allowed to claim trademark infringement based on the cross design which is undoubtedly similar to the Swiss flag.

However, the judge dismissed the allegation and reiterated its stance that in finding similarity of the mark, both marks should be assessed in their entirety, not only with the square but also the cross, since both marks just consist of these elements.

Hermès beat Birkin Bag Imitator for Trademark Infringement

On December 17, 2020, the Japan IP High Court upheld awards for JPY2,900,000 for damages suffered by Hermès in relation to a trademark infringement and passing-off case regarding the Birkin Bag imitations.
[Court case no. Reiwa2(Ne)10040]

Hermès Birkin Bag

HERMES INTERNATIONAL, a French luxury fashion house, has owned Japanese trademark registration no. 5438059 for the 3D shape of the “Birkin” bag in connection with handbags of class 25 since 2011 by successfully demonstrating acquired secondary meaning as a specific source indicator of Hermès’ luxury bags.

The iconic Birkin bag was firstly created for Jane Birkin in 1984. It is known for its superior craftsmanship and jaw-dropping price tag, with standard models starting around JPY1,000,000. Its annual sales figures exceed 3,000 in 1998, 8,000 in 2003, and 17,000 in 2009.

Birkin Bag Imitations

Hermes sued Kabushiki Kaisha Tia Maria at the Tokyo District Court for violating its trademark right and the unfair competition prevention law by allegedly promoting 100 or more Birkin look-alike bags (see below) in Japan with a price tag of JPY27,300 from August 2010 to February 2018.

Court decision

On June 3, 2020, the Tokyo District Court decided in favor of HERMES INTERNATIONAL and awarded damages for trademark infringement and passing-off in the amount of JPY2,900,000.
[court case no. Heisei31(wa)9997]

In the decision, the Tokyo District Court found that Hermès Birkin Bag has acquired distinctiveness and become remarkably famous as a source indicator of Hermès’ luxury bags by 2009.

Besides, the court held that defendant’s goods constitutes an infringement of the 3D shape of the “Birkin” bag trademark since both are confusingly similar in view of the following aspects:
(a) a distinctive three-lobed flap design with keyhole-shaped notches to fit around the base of the handle, (b) a dimpled triangular profile, (c) a closure which consists of two thin, horizontal straps designed to fit over the flap, with metal plates at their end that fit over a circular turn lock, (d) a padlock which fits through the center eye of the turn lock and (e), typically, a key fob affixed to a leather strap, one end of which is affixed to the bag by wrapping around the base of one end of the handle.

Screen capture of TIA MARIA’s website (http://tiamaria.zf.shopserve.jp/SHOP/V1172S.html)

The court measured damages to recover (i) defendant’s actual sales of infringing bags (JPY2,730,780) by subtracting appropriate variable cost (40% of the offered price) for JPY1,638,468, (ii) “mental suffering” caused by an infringement for JPY1,000,000, and (iii) reasonable attorney fee for JPY260,000.

The district court decision was challenged by the defendant before the High Court to set aside or vary it, however, the IP High Court dismissed the appeal entirely and sided with HERMES INTERNATIONAL.

To read a full text of the IP High Court decision (Japanese only), click here.

Court Case: Parallel imports of trademarked goods in Japan

In a trademark dispute pertinent to parallel imports, on October 22, 2020, the Japan Tokyo District Court allowed the parallel import of “2UNDR” men’s underwear from Singapore into Japan.
[Court case no. Heisei30(Wa)35053]

2UNDR

Harris Williams Design Inc. (Harris), a Canadian corporation, is an owner of Japanese Trademark Registration no. 5696029 for the mark “2UNDR” over men’s underwear, clothing, and others in class 25 as well as Canadian Trademark Registration for the same mark, jointly with EYE IN THE SKY CO, Ltd., an exclusive distributor and licensee in Japan, sued Kabushiki Kaisha Bright, a Japanese company who imported and distributed 2,387 pcs of men’s underwear bearing the “2UNDR” mark as follows in Japan, for trademark infringement.

Defendant argued the goods in dispute were all purchased from a Singapore company M-Golf which was originally imported to Singapore under the license of another Canadian corporation owned by the CEO of Harris. If so, the import of the 2UNDR goods in Japan would not constitute trademark infringement and it is not prohibited the defendant from selling such goods in Japan as a parallel importer.

Parallel imports

Parallel imports involve the import and distribution of genuine trademarked goods by parties other than the trademark owner or their agent. In contrast to counterfeit products, products that are the subject of parallel imports were produced abroad with the consent of the trademark owner.

The plaintiffs contended the defendant’s act would be anything but permissible since M-Golf has been restricted under trademark license to export the licensed goods out of Singapore. Besides, when the defendant purchased the disputed goods, M-Golf was no longer an authorized distributor in Singapore. Therefore, defendant goods would never be construed the genuine products as a matter of law.

Supreme Court Ruling

In the “Fred Perry Case” decision ruled on February 27, 2003, the Japan Supreme Court established the criteria to determine whether parallel imports shall constitute trademark infringements, by relying on ‘functional theory’:

  1. Is the trademark affixed on the goods, which the alleged infringer wishes to import, by the trademark owner or with its consent in the country of export?
  2. Is the party who owns trademark right in the country of export also an owner of Japanese trademark right for the same mark or closely associated with the owner so that the trademark affixed in the country of export could indicate the same source with a registered mark in Japan?
  3. Is the owner of Japanese trademark right, directly or indirectly, effectively in control of the quality of imported goods with the trademark which is sought to be enforced so that the imported goods would be estimated virtually identical in view of quality with the goods placed on the market under the same trademark by the owner in Japan?

Given the answer to the above three tests is yes, the essential function of a trademark, namely “source indicator” and “quality assurance”, would not be harmed by virtue of parallel imports in fact. In this respect, parallel imports shall be permissible even if the defendant’s act nominally constitutes trademark infringement.

Tokyo District Court Decision

In line with the criteria, the Tokyo District Court found that answer to the first test is “yes” because the 2UNDR mark was originally affixed on the disputed goods under a license of Harris in Canada. The territorial restriction imposed on a licensee and termination of license agreement would be irrelevant to the test.

Unquestionably, the answer to the second test is “yes” since Harris is the sole owner of Japanese trademark registration and Canadian trademark registration for the 2UNDR mark. If so, both marks indicate the same source of origin as a matter of course.

As for the third test, the court could not find a reasonable ground to believe that territorial restriction is beneficial to assure the quality of men’s underwear by taking into consideration such goods would neither easily decline quality nor damage during shipment. Besides, there seems no difference in quality between the defendant’s imported goods and the plaintiff’s 2UNDR goods distributed in Japan. Therefore, the court held the case satisfies the third test as well.

Based on the foregoing, the court decided the defendant’s act to import and distribute the disputed goods in Japan would not adversely affect the essential function of the 2UNDR mark owned by plaintiffs and thus permissible as parallel imports under the Trademark Law.

Click here to read the full decision

LUIS POULSEN Victory over trademark infringement lawsuit for Pendant Lamp Shade

On December 27, 2018, the Tokyo District Court sided with Luis Poulsen A/S, a Danish company, in a lawsuit for trademark infringement against R&M Japan Co., Ltd. who imported into Japan and sold lighting apparatus allegedly identical with or confusingly similar to a registered 3D mark in the shape of unique pendant lamp shade well-known for “PH5” and awarded damages of 4.4 million JPY. [Case no. Heisei 29(Wa)22543]

 

Luis Poulsen “PH-5”

Luis Poulsen A/S has manufactured and sold lighting apparatus with a unique lamp shape well-known for “PH-5” in Japan past four decades. The shape was successfully registered as a 3D mark by the JPO in 2016 as a result of demonstrating acquired distinctiveness of the shape as a source indicator in connection with goods of ramp shade in class 11 (see below) [Trademark registration no. 5825191].

 

Infringing product

R&M Japan, Defendant, imported into Japan and sold lighting apparatus which apparently looks identical with the shape of PH-5 (see below).

Defendant argued that the Court should dismiss the complaint in its entirely.

According to the court decision, defendant admitted to reproducing a design which has terminated its exclusive right after the lapse of statutory period and thus became public domain.

Defendant also disputed there happened no damages to plaintiff on the grounds that the company put consumers on notice to offer replica designer lighting or free generic design items in the marketplace. There exists a remarkable price gap between genuine PH-5 and defendant product. If so, claimed damages shall not be linked to defendant’s act.

 

Court decision

The Tokyo District Court ruled in favor of Luis Poulsen by stating that:

  1. It is unquestionable that infringing product constitutes trademark infringement given the same shape with registered 3D mark representing “PH-5” owned by plaintiff.
  2. Provided that the 3D shape of “PH-5” has been successfully registered as a trademark in Japan, expiration of design right shall not prevent the owner from enforcing trademark right against the shape once registered as design right.
  3. Even if infringing product was offered to sell on notice of replica designer lighting or free generic design items at a lower price than genuine PH-5, it shall not deny a fact that infringing product is likely to compete with plaintiff.

Based on the foregoing, the Court ruled that R&M Japan committed a trademark infringement and awarded Luis Poulsen 4.4 million JPYen for damages.

R&M Japan once challenged validity of trademark registration for the 3D mark of PH-5, but resulted in vain. click here.