The Intellectual Property High Court (the "IP High Court") maintained the decision of the JPO Appeal Board rejecting the registration for a defensive mark since the evidences submitted by the Plaintiff was not enough to establish that the registered trademark the defensive mark application is based on is "well known among consumers" within the meaning of Article 64(1) of the Trademark Act.
(IP High Court Case No. 2019 (Gyo-Ke) 10166, judgment issued on September 2, 2020)
There is a system called "Defensive Mark" registrations for protecting very well-known registered trademarks. A Defensive mark is registered for dissimilar goods / services that are not covered by the well-known registered trademark.
The Article 64 (1) stipulates as follows:
"Where a registered trademark pertaining to goods is well known among consumers as that indicating the designated goods in connection with the business of a holder of trademark right, the holder of trademark right may, where the use by another person of the registered trademark in connection with goods other than the designated goods pertaining to the registered trademark or goods similar thereto or in connection with services other than those similar to the designated goods is likely to cause confusion between the said other person's goods or services and the designated goods pertaining to his/her own business, obtain a defensive mark registration for the mark identical with the registered trademark in connection with the goods or services for which the likelihood of confusion exists."
Defensive mark registration can only be sought where there is already a well-known trademark registration.
No examination is conducted based on distinctiveness or conflict with prior marks and the defensive mark registration will not be cancelled based on non-use.
In this case, the applicant GUNZE LIMITED has applied for registration of a defensive mark for in classes 5, 18, 24 and 35 on November 26, 2014 based on a trademark registration for the same mark in class 25 which is registered for "clothing; footwear; clothing for sports; special footwear for sports."
is a brand line name for stockings, tights, leggings, trousers, socks, undergarments and inner wear for women
The application was refused because the Examiner concluded that she was not able to recognize that the applied-for mark is so famous that the use of such mark for the applied-for goods / services would cause likelihood of confusion as to the origin of the goods / services.
The applicant has appealed the decision of refusal, and at the same time the designated goods for the defensive mark application were ultimately amended to "sanitary panties; sanitary shorts" in class 5.
At the appeal against the Examiner's decision of refusal, the Plaintiff was requested to present evidences of how famous the registered trademark is. The Appeal Board has concluded that it can be said that there were use of the registered trademark for socks for women, tights, stockings, underwear for women, room wear etc. but the evidences submitted were not enough to prove that the mark was very well-known among the consumers and that is was so famous that the use of the mark by others for even dissimilar goods could lead to likelihood of confusion.
The IP High Court maintained the Appeal Board's decision to reject the defensive mark application.
The IP High Court's findings mainly discuss about "well known among consumers."
The Defensive Mark system is intended to expand the scope of protection for the trademark registration to dissimilar goods / services and it has a risk of limiting the choice and use of trademark by third parties. Therefore, "well known among consumers" in Article 64 (1) should be understood that the registered trademark is very well-known throughout the country amongst all or part of consumers of its designated goods.
First, the Court has considered about the form of allegedly well-known registered trademark and how it is used in the market. The Court acknowledged that the Plaintiff has used the mark "Tuch?" since its introduction continuously, however, from the packaging design and from the fact that Japanese consumer would not be able to pronounce the mark naturally as "tuch?," the Court found that the word "Tuch?" was not instantly recognizable nor stands out vividly in consumers' memory.
Second, the Plaintiff has submitted evidences including places where the goods were sold, sales figures and share of the market. For this, the Court acknowledged that the goods were sold throughout the country for more than 19 years and considerable number of consumers recognized the registered mark as referring to stockings of the Plaintiff. However, the evidence also suggested that the sales figures have been decreasing year by year, the mark was not vividly memorable from the packaging design as mentioned above and the advertising scale was not so large. Thus, the Court held that it could not conclude that the majority of consumer acknowledged the registered trademark.
The Plaintiff has also submitted the result of consumer survey, but it was conducted in 2012 which was more than 7 years before the date of the decision rendered by the Appeal Board. The target of the consumer survey was limited to women of 20s to 50s who live in the area around Tokyo so it was not exhaustive. Further the result of the survey revealed that more than 50% has answered that they do not know the brand.
Consequently, the Court found that the Plaintiff's goods were sold country-wide continuously for more than 19 years and from the sales figures and the share of the market, it acknowledged that considerable number of people have recognized the registered trademark as referring to stockings of the Plaintiff. However, it held that the sales figures have been decreasing year by year and were down to about one third of the sales figures of 2010 in 2017. The market share was also decreasing and the registered trademark was not affixed to the packaging in a way that is vividly memorable or impressive. Advertising was not so wide-spread and the consumer survey was old, the target was limited and its result did not reveal that the majority of consumers recognized the registered trademark. Ultimately, the Court ruled that it could not find that the registered trademark was "well known among consumers" in the meaning of Article 64(1) of the Trademark Act.
Obtaining a defensive mark registration requires well-founded evidences to establish the fame of the registered trademark in Japan such as sales figures, share of the market, outlets throughout the country, advertising efforts, magazine or newspaper articles, consumer survey etc., and the applicant should assume costly and lengthy proceedings until the application gets to registration.
That said, by obtaining a defensive mark registration, you will be able to stop someone register the same trademark for the same goods covered by the defensive mark registration and most importantly, it works as a prima facie evidence that the registered trademark is very well-known in Japan and the mark being certified as well-known by the Japan Patent Office. Therefore if you have a well-known mark in Japan, it would be advisable to consider the necessity of obtaining a defensive mark registration.
Written by Ms. Rika Yamazaki (Admitted to California Bar)