Cases re:well-known/famous marks

2003 AIPLA Meeting

Ken Nakayama

Nakayama@ip-mandm.com

Japan Trademark Association

Matsubara, Muraki & Associates

Palm Springs Polo Club• JPO rejected this mark under 4-1-15• Tokyo High Court reversed the JPO rejection

– No likelihood of confusion w/Polo marks• Supreme Ct. reversed the High Ct. decision in

2000– Prominent part of the above mark resides in the

“Polo”– Need to prevent free-ride or dilution of the Polo

marks

CAMBRIDGE Univ. POLO CLUB

• The Polo/Ralph Lauren filed opposition• JPO supported such opposition and rejected

the mark under 4-1-15• Cambridge Univ. filed appeal to Tokyo Hig

h Ct.• Tokyo High Ct. recognized registrability in

2002– Prominent part of the mark resides in CA

MBRIDGE UNIVERSITY– No likelihood of confusion

Levi’s

• Unfair Competition 2-1-1

• Tokyo High Ct. in 2001

• Pattern of stitch on back-pocket of jeans can work to identify source of products

• Peculiar stitch of Levi’s jeans has been well-known

• ‘△ S stitch confusingly similar to Levi’s and likelihood of confusion

ILANCELI• 4-1-15

• Tokyo High Ct. 1999

• G of the above mark: clothings, shoes, belts

• G of LANCEL: bags, belts, etc.

• Likelihood of confusion

ETNIES

• 4-1-19

• Tokyo High Ct. 2001

• JPO, via invalidation trial, invalidated reg. for the mark ETNIES cl 25 under 4-1-19

• Registrant filed appeal

• Tokyo High Ct. supported JPO’s decision

ETNIES (2)• Tokyo High Ct’s decision in 2002

– 4-1-19 prevents dilution , no requirement of likelihood of confusion

– 4-1-19 only requires the prior mark has been well known; not require highly well known

– If the mark has been well known in foreign country, that is enough to apply 4-1-15

– 4-1-15 requires bad faith(intention to gaining unfair interests, to inflict damage on another person or other unlawful objects

ETNIES (3)

• Here, there was business contact b/w the registrant and the owner of ETNIES mark prior to the filing of the application

• The registrant seems to obtain a trademark registration to obtain leverage for setting up business relation

THANK YOU