13.03.2008
Posted in Marques, Jurisprudence, Japon at 18:06 pm by TMSJ
The case we would like to introduce today is not recent news (it was already decided in January 2006), but it has an interesting company law background.
In 1998, the plaintiff, Kränzle Japan KK, became the distributor for products of the German company I. Kränzle GmbH in Japan. Three years later, the plaintiff suffered business difficulties and was consequently unable to obatin a letter of credit. The plaintiff’s managing director was, however, able to secure the cooperation of another company (company A) for importing the products via a jointly owned newly established company. In November 2001, company A agreed to the establishment of the joint venture, but revoked the agreement a short while later, due to doubts about the plaintiff’s credit-worthiness. Instead of jointly importing the products, company A was now negotiating for an exclusive license to import and sell Kränzle products in Japan. The negotiations were successful and company A became the sole distributor for Kränzle products.
On December 19, 2001, soon after A had revoked the agreement with the plaintiff, the plaintiff’s managing director himself applied for the registration of the subject trademark which was identical with the Kränzle house mark as used by the I. Kränzle GmbH (Germany). The trademark was granted, but later invalidated by the JPO as contravening public order and thus violating article 4 (1) (vii) of the Japanese Trademark Act. The JPO criticized the “wrongful purpose” and “lack of social legitimacy” of the registration.
The plaintiff appealed the JPO’s decision and insisted on his right to registering the trademark in his name. The judges of the IP High Court dismissed the claim following the considerations of the JPO: Since the Kränzle trademark is a “house mark” of I. Kränzle GmbH, no third party is allowed to obtain the registration of the trademark without the consent of I. Kränzle GmbH. When applying for the trademark registration, the plaintiff just pretended to have such consent, in order to wrongfully obtain the registration. The matter should not be simply considered as a matter of private interest, but as a disturbance of the public order of business transactions and breach of international good faith, falling under article 4 (1) (vii) of the Japanese Trademark Act.
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11.10.2007
Posted in Marques, Jurisprudence, Japon at 23:18 pm by TMSJ
Major League Baseball Properties Inc. could gain a victory in Japan: after the JPO has rejected the trademark registration of the Chicago Cubs primary trademark logo for “telephones, radio receivers, baseball video recorded tapes and other goods” in International class 9, “trading cards, amusement cards, calendars, printed matter and other goods” in class 16, and “education information, organization, management or arrangement of baseball games and other services” in class 41, the Intellectual Property High Court overruled the decision of the JPO and the mark could be registered in Japan.
The JPO refused the trademark registration because of Section 4 (1) (xi) of the Japanese Trademark Law, which prohibits the registration of a trademark that is identical or similar to another earlier registered trademark.
The examiner argued that the only distinctive and dominant portion of MLB’s application were the letters “UBS” and cited several prior registered trademark registrations of the Union Bank of Switzerland.
The Intellectual Property High Court did not follow the JPO’ s argumentation. The court rather stated that Japanese consumers would recognize the Chicago Cubs’ logo as CUBS and one would not read it as U, B and S. Additionally, the court argued that the Chicago Cubs logo was well known in Japan as the popular hitter Sammy Sosa played with the Cubs from 1992 to 2004. Sosa is famous for breaking Roger Maris’s single season home run record of 61 home runs, which had stood since 1961. The record received strong media attention in Japan and as a consequence the Cubs’ name and logo became well known to Japanese people. Thus, the court argued, Japanese consumers would usually recognize the Cubs’ logo trademark per se and is not in danger of mistaking it for the logo of the Union Bank of Switzerland.
This decision showed once again that the JPO examines trademark applications very formally and in some cases in an almost escapist way. It is very difficult in Japan to stay away from baseball and from the Major League Baseball. Several Japanese players played at the Major League, including Ichiro Suzuki and Hideki Matsui. As a regular part of the news, Japanese television reports about Japanese MLB players. The Intellectual Property High Court apparently reaches its decisions apparently in a less formal way and sometimes with a little more common sense.
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