Japanese perspective of well-known trademark protection viewed

from the Japanese Supreme Court's overruling in Case H10 (Gyo-Hi) No. 85[1]

Email: vinh@bross.vn

In Japan, the protection of well-known trademarks is provided for in the trademark law and unfair competition prevention act (UCPA). One of the provisions frequently invoked in disputes involving well-known trademarks is Article 4, paragraph 1, point (xv) of the Trademark Law, which contains the meaning of the concept of "likelihood of confusion" in very broad sense. It stipulates that a trademark registration will not be effective in the event that it is likely to confuse with goods, services of others (which are not covered by Article 4(1)(x) to 4(1)(xiv) [4]

In Case H10 (Gyo-Hi) No. 85 (July 11, 2000), we can witness how the legal concept of "likelihood of confusion" whose connotation is regarded too broad implied by the above provision would be interpreted by the Supreme Court through its final judgment.

Both JPO and Tokyo High Court Denied a Likelihood of Confusion

The junior trademark "レ ー ル デ ュ タ ン" (in Japanese katakana is read as 'le: rudutan') used for products in class 21 (by former classification) covering personal articles registered in December 1988 under registration no. 2,099,693. The owner of a well-known senior trademark "L'Air du Temps" (reg. no. 661,424 issued in December 1964), Perfumes NINA RICCI, also uses the Japanese version "katakana" for its trademark, "レ ー ル ・デ ュ ・ タ ン "(phonetically in Japanese" katakana "is equivalent to L'Air du Temps"), requested cancellation of the junior trademark based on the reputation of the senior trademark associated with perfumes in the Japanese market

The Japanese Patent and Trademark Office (JPO) refuted the possibility of confusion between the junior trademark and the owner of senior trademark. The Tokyo High Court also rejected a finding of likelihood of confusion, adding that although the senior trademark "L'Air du Temps" has earned a reputation among consumers who use perfumes as well as including group of relevant consumers regarding the makeup market, but it is not well known or familiar to consumers other than perfume products. Thus, the senior trademark “L'Air du Temps”, although well known in its field, is not widely known to general consuming public and in addition, the junior trademark and senior trademark (in French) are not considered as similar in pronunciation.

Overruling by the Supreme Court of Japan

On 11 July 2000, the Supreme Court of Japan issued a judgment in which some of the main contents are summarized as follows:

1. The scope of application of "trademarks which are liable to cause confusion with goods or services connected with another person’s business (other than the trademarks mentioned in paragraphs (x) to (xiv))” pursuant to Article 4(1) (xv) above would be any potential trademark, when are used for a particular goods/services, may mislead customers into believing that the protected goods/services with those associated with business activity of others, ie. it may exist close commercial relationships with each other, for example, relationships between a parent company and its subsidiaries and partners, or relationships between members of a group of companies that actually conduct a product development project under the same instruction, or in other words, the trademark that is likely to cause confusion in the broad sense.

2. Whether or not it is likely to cause confusion as referred to in Article 4(1)(xv), a comprehensive determination on such factors as the degree of similarity between this person’s trademark and the other’s commercial identifiers, the extent of well-knownness, the fame and the nature of creation of the trade indications of others, the degree of association between trademarked goods, services and those pertaining to other’s business activities, as well as the popularity among traders and consumers related to goods, services and other trading practices. Moreover, all decisions must also be made on the basis of the degree of attention by traders and consumers for the protected goods, services containing ordinary trademarks.

3. The junior trademark consists the characters in katakana as "レ ー ル デ ュ タ ン" (rērudyutan) presented horizontally in connection with cosmetic utensils, body ornaments, hair ornaments, bags, and sacks under the applicability scope of Article 4(1)(xv) of the Trademark Law as indicated in the earlier judgements: The junior mark is identical as to the pronunciation compared with the senior mark. The senior mark is well-known amongst traders those who use luxury perfumes including consumers who are interested in luxury perfumes, and the goods bearing the junior mark have a very close association with perfumes in terms of their primary use; and the products bearing the junior mark and those pertaining to the senior mark in question almost overlap each other

Based on the above analyses, the Supreme Court of Japan decided that the pronunciation of the junior trademark and the senior trademark was identical with each other according to the Japanese reading method and thus the junior trademark is deemed as possibly confused with the senior trademark when they are used for the registered products including personal items, toilet kit because of the widely known reputation of the senior trademark in the perfume market. Moreover, even if the goods protected by the two trademark are different, confronting the junior trademark would be  likely to make customers think that the plaintiff and defendant are companies related to each other or the partners of each other[5].

Bross & Partners has had experience in assisting the clients to prepare and submit dosier and relevant evidence asking for recognition of well-known trademark in Vietnam. We also helped some clients successfully defend against well-known trademark claims in Vietnam, Cambodia and Thailand. Should you have any query, please contact us at vinh@bross.vn or 84-903 287 057.

Bross & Partners, a renowned and qualified Patent, Design, Trademark and Copyright agent of Vietnam, constantly ranked and recommended by the Managing Intellectual Property (MIP), World Trademark Review (WTR), Legal 500 Asia Pacific, AsiaLaw Profiles, Asia IP and Asian Legal Business, is providing clients all over the world with the reliable, affordable contentious and non-contentious IP services including enforcement, anti-counterfeiting,  litigation regarding trademark, trade name, industrial design, patent, copyright and domain name.