Japan IP High Court Ruling: “Designed, Quality-controlled in France” is not equivalent to “Made in France”

On March 22, 2022, in an appeal against the non-use cancellation decision by the Japan Patent Office (JPO), the Japan IP High Court affirmed the JPO’s decision and ruled it is not construed that a disputed mark “I R O PARIS” has been used on its designated goods with a limitation of the origin ‘All made in France’ because the term is not equivalent to ‘designed, or quality-controlled in France’.

Disputed mark “I R O PARIS”

A French fashion house, IRO has registered a wordmark “I R O PARIS” on various goods e.g., jewelry, watches, leather, bags, umbrella, wallets, clothing, shoes, sports shoes, headgear in classes 14, 18, and 25 with a limitation of the origin ‘all made in France’ in 2013 (TM Reg No. 5623868).

Non-Use Cancellation

Article 50 of the Japan Trademark Law provides if a trademark registered in Japan has never been used in commerce in Japan for three consecutive years or longer after registration, the trademark is vulnerable to cancellation provided that third parties file a petition for cancellation of the trademark registration.

iROO International Co., Ltd., a Taiwanese company, filed a petition for non-use cancellation against the disputed mark on every goods of three classes on October 4, 2019.

In the cancellation action, the registrant produced evidence (order form, invoice, magazines) to demonstrate the actual use of the mark “IRO” and “www.iroparis.com” on skirts, belts, and dresses in Japan. The JPO admitted these marks are equivalent to the registered mark “I R O PARIS”. However, the JPO found the goods bearing the mark are not “made in France”, but “made in China”. If so, the disputed mark has not been precisely used on designated goods. Because of it, the Cancellation Board decided to cancel the disputed mark in whole on March 24, 2021.

IRO filed an appeal against the JPO decision on July 29, 2021, and argued the mark “IRO” has been used on goods designed by employees working at the head office in Paris (France). The head office has exclusive authority to control the quality of every item, namely, selecting suitable materials, producing samples made of materials available in Paris, securing the quality of goods made by suppliers, and storing finished goods in a warehouse in Paris before delivery. In view of actual commitment to quality control of final goods made by suppliers and common industry practice in the apparel, the goods shall be construed ‘made in France’ even if it was manufactured by an overseas supplier.

IP High Court decision

The court found the JPO did not err in fact-findings. In fact, the goods bearing the mark “IRO” were manufactured by suppliers having a place of business out of France. On the plaintiff’s website “IRO FALL WINTER 21 COLLECTION”, it mentions the product was made in China.

The disputed mark designates ‘clothing made in France’. It shall be construed the clothing was made in the territory of France. If so, the clothing made out of France would never be deemed identical to the designated goods.

The court has no reason to believe “designed, quality-controlled in France” is equivalent to ‘made in France’ in the literal interpretation of Article 50 of the Japan Trademark Law.

Based on the foregoing, the IP High Court dismissed the appeal and affirmed the cancellation decision.

[Judicial case no. Reiwa 3(Gyo-ke)10087]

This case teaches how important for brand owners to keep designated goods consistent with the actual business. It often happens that the goods bearing a mark containing GI are made in other countries or regions as a matter of fact. Such inconsistency may result in non-use cancellation if the designated goods limit the origin.

As an experienced trademark practitioner, I never fail to confirm the relation between goods and GI when a mark contains GI. In case a brand owner does not manufacture in the area, it is advisable to limit goods by placing more adequate terms, such as ‘designed by (area), derived from (area), using material from (area).’ Otherwise, you may lose your trademark registration in Japan as a result of non-use cancellation.

“MONA LISA” May Smile At You

In a recent decision, the Japan Patent Office (JPO) disaffirmed the examiner’s refusal and accepted for registration of the world-famous painting, ‘Mona Lisa’ by Leonardo da Vinci.
[Appeal case no. 2020-9377, Gazette issued date: May 28, 2021]


Disputed mark, consisting of a wordmark “MONA LISA” written in a Japanese katakana character (see below), was filed by a Japanese company, Negibito Co., Ltd on February 20, 2019, for use on ‘edible live aquatic animals; edible unprocessed seaweeds; fresh vegetables; fresh fruits; live mammals, fish [not for food], birds and insects and other goods in class 32.

Apparently, the company uses the disputed mark on specially grown scallions with a high sugar content of more than 20 degrees to be sold at JPY10,000 (USD92) for one stalk!

Article 4(1)(vii)

JPO examiner raised her objection by stating that since “MONA LISA” has been known for the world-famous painting, ‘Mona Lisa’ by Leonardo da Vinci, it shall contravene the generally accepted sense of morality or the international faith if registered. Accordingly, the disputed mark shall be rejected in contravention of Article 4(1)(vii) of the Japan Trademark Law.

Article 4(1)(vii) of the Trademark Law prohibits any mark likely to cause damage to public order or morality from registration.

Trademark Examination Guidelines 42.107.05 provides seven criteria to take into consideration to determine if a mark, consisting of valuable cultural products (works of art), shall contravene the article.

(i) Famousness of the cultural products
(ii) Recognition of the cultural products among citizens or local residents
(iii) State of use of the cultural products
(iv) Relationship between the state of use of the cultural products and the designated goods or services
(v) Background, purpose, and reason for filing an application
(vi) Relationship between the cultural products and the applicant
(vii) Authorized entity that manages and owns the cultural products (if any)

The applicant filed an appeal against the refusal on July 3, 2020.

JPO Appeal Board decision

The Appeal Board assessed seven criteria pertinent to the works of art “MONA LISA” in accordance with the Trademark Examination Guideline.

The Board admitted a remarkable degree of recognition and reputation of “MONA LISA” among the general public in Japan as the world-famous painting by Leonardo da Vinci.

In the meantime, the Board questions if the goods in question are closely related to works of art and art exhibitions that the term “MONA LISA” has been used.

Besides, the Board found that the term is not used to promote or develop certain regions associated with the painting in relation to the goods in question.

Based on the foregoing, the Board held that it is unlikely that registration of the disputed mark would constitute a genuine and sufficiently serious threat to a fundamental interest of society when used in connection with the goods in class 32. Therefore, the disputed mark “MONA LISA” shall not be refused on the basis of the public policy exception provided for in Article 4(1)(vii) of the Trademark Law.

Tips to Pass the JPO Trademark Registration Exam in 2 months

“JPO Status Report 2020” reveals more applicants make use of the “Accelerated Examination” in order to obtain an earlier trademark registration.

According to the latest report, the number of requests for accelerated examination in 2019 was 8,110, which increased by 54% than the previous year.

Accelerated Trademark Examination

The accelerated examination has enabled the shortening trademark examination period to 1.7 months on average. Being that it takes 7.9 months or longer for the JPO to notify the examination result at present, accelerated examination must be appealing to an applicant who wants their brand to be registered as early as possible.

The accelerated examination is available in three cases.

[Case 1]

An applicant is in use of or likely to use an applied mark on more than one of the goods/services in the designation, and in urgent need of registration.

To meet an urgent need requirement, the applicant is required to demonstrate; (i) unauthorized third party uses an applied mark, (ii) any third party request a license to use the applied mark, (iii) any third-party demand applicant to cease use of the applied mark, or (iv) applicant filed the identical mark to a foreign country.

[Case 2]

An applicant is in use of or likely to use an applied mark on every goods/service in the designation.

[Case 3]

An applicant is in use of or likely to use an applied mark on more than one of goods/services in the designation, and the description of goods/services are all in conformity with that listed in the Examination guidelines for similar goods and services.

Besides, (v) where the applicant seeks to apply for international registration of trademark identical with the applied mark through the Madrid Protocol, it is also admitted meeting an urgent need requirement for Case 1.

Fashion Designer Lost Trademark Dispute Over His Name

On July 29, 2020, the Japan IP High Court ruled to dismiss an appeal by Kabushiki Kaisha Soloist, founded by Takahiro Miyashita, a Japanese fashion designer, who contested a decision by the Japan Patent Office (JPO) to deny trademark registration for a compound mark consisting of “TAKAHIROMIYASHITA” and “TheSoloist.” under Article 4(1)(viii) of the Trademark Law.
[Judicial case no. Reiwa2(Gyo-ke)10006]


Disputed mark (see below) was filed by Kabushiki Kaisha Soloist, founded by Takahiro Miyashita, on September 21, 2017, covering various fashion items in class 14, 18, and 25. [TM application no. 2017-126259]

In 2010, immediately after starting a company ‘Kabushiki Kaisha Soloist’, Takahiro Miyashita allegedly has launched his new brand “TAKAHIROMIYASHITATheSoloist.” and used the disputed mark on clothing, sandals, sunglass, eyewear, accessories designed by him since then and the disputed mark has become famous for his fashion brand. Consequently, relevant consumers and traders would not associate the disputed mark with any individual other than him.

Refusal decision by JPO

The Japan Patent Office (JPO) refused the mark in contravention of Article 4(1)(viii) of the Trademark Law, on the ground that the disputed mark contains a full name of private individual named “Takahiro Miyashita”. It is obvious that there are several Japanese people with the same name.

Article 4(1)(viii)

Article 4(1)(viii) of the Trademark Law prohibits registration of trademarks which contain the representation or name of any person, famous pseudonym, professional name or pen name of another person, or famous abbreviation thereof for the purpose of protecting personal rights of a living individual. Notwithstanding the provision, the article is not applicable where the applicant of the disputed mark produces the written consent of the person.

The Supreme Court of Japan has ruled the article shall be interpreted to protect the personal rights of a living individual. In line with the Supreme Court ruling, Trademark Examination Manuals (TEM) set forth that the article is applicable not only to natural persons (including foreigners) and corporations but also associations without capacity.

On January 29, 2019, the Appeal Board of JPO decided to affirm the examiner’s refusal on the same ground. [Appeal case no. 2019-1138]

To contest the administrative decision, the applicant filed an appeal to the IP High Court.

IP High Court Ruling

The court dismissed the allegation entirely, by stating that:

  1. Even though the disputed mark contains literal elements unrelated to the name of a living person, Article 4(1)(viii) is still applicable since relevant consumers would conceive the literal portions of “TAKAHIROMIYASHITA” as a name of a Japanese person.
  2. It is indisputable that there are several Japanese with the same name as Takahiro Miyashita and some of their names are written in different Chinese characters.
  3. The applicant failed to prove that he obtained consent from them.
  4. Alleged facts that the founder of the applicant has become famous as a fashion designer and because of it, relevant consumers and traders are unlikely to connect the disputed mark with any individual other than the designer would be construed irrelevant in applying Article 4(1)(viii).

Based on the foregoing, the IP High Court sided with the JPO and upheld the refusal decision.

Click here to see the Court’s official ruling (Japanese only)