Center for Advanced Study & Research on Intellectual Property

 

CASRIP Newsletter - Winter 1997, Volume 4, Issue 1

Protection of Foreign Well-known Trademarks in Japan: Cases in Which a "Piratical" Trademark Registration is Rejected

How to protect trademarks which are well-known in foreign countries but are not domestically registered is one of the troubling problems in today's worldwide business expansion. Typically, a piratical trademark registration of a foreign well-known trademark can be a great barrier to the original trademark owner's business expansion. In order to prevent piratical trademark registration, Japanese trademark law denies eligibility for registration of trademarks that fall within the following three categories. The first category consists of trademarks which are identical with or similar to one, which are well known among prospective customers in Japan or other countries, if they are used for unfair purposes (including a purpose to gain unfair profit, a purpose to harm another person)(emphasis added). Art. 4(1)(xix). The second category contains trademarks which are identical with or similar to ones which are well-known among prospective customers in Japan, and are used on similar goods or services. Art. 4(1)(x). The third category consists of trademarks which are likely to cause confusion among prospective customers in Japan as to the origin. Art. 4(1)(xv).

The first category was newly added by a recent amendment to Japanese trademark law which will become effective on April 1, 1997. The second and third categories have been used prior to the amendment and there are noteworthy court decisions in favor of foreign trademark owners, as outlined below.

With regard to the second category, the Tokyo High Court interpreted the requirement that a trademark be well-known among prospective customers in Japan (art. 4(1)(x)). In the "COMPUTERWORLD" case (Tokyo High Court decision, February 26, 1992), the Tokyo High Court stated that the requirement of being well-known in Japan is satisfied either: (i) when a trademark becomes well-known in Japan through the report or reference of the fact that the trademark is used mainly outside of Japan; or (ii) when a trademark becomes well-known in Japan through its use in Japan. While a trademark which has never been used in Japan will not be included in (i) above, its use in Japan does not have to be so extensive as to one contemplated in (ii) above.

"COMPUTERWORLD" was a trademark registered in the U.S.A. and used on the computer information weekly newspaper named "COMPUTERWORLD." The number of copies of "COMPUTERWORLD" distributed in Japan was less than 2600 (the second half of 1974) and 4200 (the second half of 1979) out of a total number of approximately 60,000 (the second half of 1974) and 100,000 (the second half of 1979). The court admitted that these numbers are small. Nevertheless, the court found that "COMPUTERWORLD" was well-known in Japan. The court noted the following facts: the defendant corporation, which was a Japanese issuer of a daily newspaper on electronics, telegrams and the like, had recognized "COMPUTERWORLD" as one of the authorities on computer information in the U.S.A. "COMPUTERWORLD" was frequently referred to in printed materials issued in Japan. Those who are in the computer business in Japan have paid attention to the information available in the U.S.A. In this case, the prospective customers in Japan were found to be workers and engineers of firms engaging in activities such as manufacturing and sales of computers, computer-related products, software or the like, and workers and engineers of firms which use computers. The court did not mention the geographical scope.

Concerning the third category, the Tokyo High Court interpreted the requirement of the likelihood of confusion (art. 4 (1) (xv)). In the "IZOD" case (Tokyo High Court decision, August 5, 1996), a trademark "IZOD" has been registered in the U.S.A. and used on clothes. The court stated that in the fashion industry, a trademark which is famous in the U.S.A. is considered to be well-known in Japan. The court stated that the Japanese fashion industry is sensitive to trends and movements in foreign countries, including the U.S.A., and has introduced and advertised the information it collected to prospective customers in Japan. The court also noted that "IZOD" was an artificial word and has a high degree of distinctiveness. In support of its view, the court noted that worldwide exchange of humans, products and information has been expanded, that trips abroad have become popular, and that new transportation and communication methods have been developed. Based on these facts, the court found a likelihood of confusion.

Although it may be argued that the court went too far in the "IZOD" case, these two cases show the possible protection of foreign well-known trademarks under Japanese trademark law.

- Tetsuya Ito

Last updated 4/27/2012