MARKS IP Law Firm represents a wide variety of cases. Regardless of the nature of your case, our attorney will represent you with professionalism and passion.
Followings are examples of achievements for domestic trademark litigations to which we are entrusted.
Trademark Litigation / Judicial action
Awarding Highest damages at the High Court
Our attorney, Masaki MIKAMI, on behalf of a Japanese confectionery company, initiated a trademark infringement lawsuit at the Osaka District Court and consequently succeeded in awarding damages exceeding JPY 51 million (approximately USD 500,000) for trademark infringement which ranks at the highest damages ruled by the Japan High Court (2013).
Landmark decision at the Supreme Court of Japan
Masaki MIKAMI appeared before the Supreme Court as a representative of the Japanese educational institute in a dispute regarding the interpretation of Article 4(1)(viii) of the Japan Trademark Law. The ruling by the Supreme Court clarified the significance of the article and corrected misinterpretation by inferior courts.
APPEAL TRIAL (2017)
We are successful in an appeal against the JPO examiner’s refusal to our client’s wordmark “OHO” [Case no. 2017-7884]. Examiner refused the mark due to a conflict with senior registration for a mark consisting of the OHO device and “ORIENTAL HEALTH ORIGIN”. In an appeal, we strongly argued dissimilarity of mark on the grounds that the OHO device is apparently unreadable due to its figurative design, and the remaining literal elements are too distinctive to ignore in the assessment of mark similarity.
IP HIGH COURT APPEAL (2019)
As a representative of PUMA SE (Germany), we acted in front of the Japan IP High Court for trademark cases to dispute the validity of single cat device marks and successfully obtained favorable decisions to PUMA and it’s famous iconic jumping cat logo. See more details here. In judicial appeals, we strongly argued the likelihood of confusion as well as bad faith of the applicant by citing precedent court cases, a written confession by the applicant, and an expert opinion to search result showing 40% of the interviewees conceived PUMA from the disputed mark.
INVALIDATION TRIAL (2019)
We, on behalf of PUMA SE, have successfully Japanese TM Registration nos. 5661816 and 5861923 for the KUMA mark invalidate due to a likelihood of confusion with world-renowned PUMA logos. PUMA entrusted the cases to us after unfavorable decisions by the JPO to dismiss trademark opposition represented by other Japanese law firms. Regardless of making the same argument – a likelihood of confusion – with the opposition, the JPO sided with PUMA and overruled the decisions. Read more details here for #5661816 and here for #5861923.