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Date of the judgement
----------------------------------------------------------------2000.07.11
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Case Number
----------------------------------------------------------------1998(Gyo-Hi)85
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Title
----------------------------------------------------------------Judgment upon case concerning the effect that "trademarks that entail the risk of confusion with
products or services relating to the business of another party" as referred to in Article 4, para.1,
subpara.15 of the Trademark Law include trademarks that risk causing confusation in the broad
sense of the term
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Result
----------------------------------------------------------------the judgment of the third Petty Bench
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Court of the Second Instance
----------------------------------------------------------------Tokyo High Court
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Main text of the judgement
----------------------------------------------------------------The original judgment is revoked.
The trial decision reached by the Patent Office on February 24, 1997 in connection with Case
No. 12599 filed with the Patent Office in 1992 shall be cancelled.
All the costs of the action shall be borne by the appellee.
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Reasons
----------------------------------------------------------------Concerning the grounds for acceptance of the appeal of the appellant's attorneys Noritaka
Moriuchi, Junichi Kondo, Takayasu Koga, and Michiko Terushima.
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1. The facts found duly in the original court are as follows:
(1) In connection with the trademark consisting of the horizontally written katakana script that
may be transliterated in alphabetic script as "reerudyutan," the appellee applied on May 21,
1986 for registration of a trademark for designated goods as "clothing, accessories and other
products of this kind" as specified in Class 21 in the attached table of the regulations for
implementation of the Trademark Law (prior to revision in accordance with Cabinet Ordinance
No. 299 of 1991), and the trademark was registered on December 19, 1988 (Registration No.
2099693; hereinafter referred to as "Registered Trademark").
(2) The appellant is the holder of rights to the trademark consisting of the horizontally written
alphabetic script characters "L'AIR DU TEMPS" in association with "perfumes and other
related products belonging within this category" as specified in Class 4 of the separate table
(Registration No. 661424; hereinafter referred to as "Quoted Trademark."). The appellant was
using the trademarks "L'Air du Temps" and "reeru-dyu-tan" in the katakana script (hereinafter
referred to jointly as "Used Trademarks") and Quoted Trademark at the time the application was
made for registration of Registered Trademark, although Used Trademarks and Quoted
Trademark were well known among companies handling perfumes in Japan and consumers with
an interest in high-class perfumes as referring to the name of a perfume produced by the
appellant.
(3) On the grounds that there was an infringement of Article 4, paragraph 1, item 15 of the
Trademark Law, on July 3, 1992, the appellant filed a demand for trial with the Patent Office to
invalidate registration of the trademark in this case in connection with "cosmetic appliances,
bodily accessories, head accessories, cases, and bags" from among the designated goods with
Registered Trademark (Trial No. 12599 of 1992).
(4) On February 24, 1997, the Patent Office reached the trial decision that the demand for trial
by the appellant was not denied (hereinafter referred to as "Trial Decision").
2. The appellant demanded that Trial Decision be cancelled, to which the original court rejected,
in the light of the circumstances already mentioned, the demand of the appellant for the reasons
specified hereunder.
Although, at the time the application was made for registration of Registered Trademark, each
of Used Trademarks and Quoted Trademark were familiar in Japan to businesses handling
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perfumes and consumers with an interest in high-class perfumes as the name of a perfume of the
appellant (a so-called "pet mark"), it would not be true to say that these names were generally
well-known. Furthermore, it cannot be said that the names in Registered Trademark and Quoted
Trademark are identical, and it cannot therefore be said that confusion is likely to arise
regarding the provenance of the merchandise.
3. However, the above judgment of the original court cannot be affirmed for the following
reasons.
(1) It is legitimate to assume that "trademarks that entail the risk of confusion with products or
services relating to the business of another party" as referred to in Article 4, paragraph 1, item
15 of the Trademark Law, when said trademarks are used with such designated goods or
designated services (hereinafter referred to as "designated goods, etc."), should be taken to
include not only trademarks in the case of which the said goods, etc., entail the risk of being
confused with the goods or services of other parties (hereinafter referred to as "the goods, etc."),
but also trademarks that entail the risk that the goods, etc., will be confused with the goods, etc.,
relating to the business of commercial organizations connected in terms of close business
relations such as parent-subsidiary companies or family (keiretsu) companies with the other
party or in a relationship of subordination to the group involved in commercial operations
employing the same labeling (here inafter referred to as "risk of confusion in the broad sense").
This is because the stipulation in this item is intended to preserve the business trust of the party
using the trademark and to protect the interests of consumers by preventing another party from
taking a "free ride" on a generally known labeling or a well-known labeling and by preventing
the dilution of said labeling. In this light, in order to protect the legitimate rights of the party
using the labeling of generally known or well-known goods, etc., in accordance with changes in
companies and the market such as diversification of corporate management and the formation of
corporate groups held together by commercial operations involving use of the same labeling,
and the establishment of famous brands, the judgment should have been made that it is not
possible to register trademarks that run the risk of confusion in the broad sense.
The question of whether there is indeed any "risk of confusion" needs to be considered in a
comprehensive manner in light of the extent to which there is similarity between the trademark
in question and the labeling employed by another party, the extent to which the labeling of the
other party is generally known and the extent of its originality, the extent to which designated
goods, etc., bearing the trademark and the goods, etc., relating to the business of the other party
are related in terms of character, use, or purpose, and other conditions bearing on business such
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as similarity in terms of dealers in the goods and consumers, and on the basis of the extent to
which dealers and consumers concerned with the goods, etc., bearing the trademark in question
generally pay attention to the trademark.
(2) From among Used Trademarks, Registered Trademark is identical at least in pronunciation
as far as the trademark for "reeru-dyu-tan" [L'Air du Temps] is concerned. It bears an obvious
superficial resemblance, and to judge from the representation of Quoted Trademark and the
goods that it designates, the name "reerudyutan" is clearly created from the French reading of
Quoted Trademark, meaning that Registered Trademark is identical in name to Quoted
Trademark. Each of Used Trademarks and Quoted Trademark are well-known as labels of a
perfume created by the appellant to businesses handling perfumes and to consumers with an
interest in high-class perfumes, and they are original trademarks. Of the designated goods
bearing Registered Trademark, "cosmetic appliances, bodily accessories, head accessories, cases
and bags" and perfumes bear an extremely close connection in terms of use principally with
women's wear, and t he consumers who purchase both types of goods are to a considerable
extent the same. In light of the above circumstances, when Registered Trademark is used to
denote "cosmetic appliances, bodily accessories, hair accessories, cases and bags," it may be
said that there is a risk of dealers and consumers of these goods confusing in a broad sense these
goods with goods relating to commercial enterprises in a close relationship as described
previously with the appellant. It should be mentioned that the fact that Used Trademarks and the
Quoted Trademark are being used as so-called "pet marks" is not sufficient to influence the
above judgment, bearing in mind the celebrity of Used Trademarks and the close connection
between Used Trademarks and goods related to Registered Trademark.
4. As indicated above, the original decision rejecting the demand for cancellation of Trial
Decision made by the appellant was based on a different interpretation and clearly contains a
misconstruing of the law likely to influence the judgment. The argument of the appellant is
upheld in expressing this opinion, and the original judgment must be revoked. In accordance
with the explanation presented above, the demand of the appellant for cancellation of Trial
Decision must be granted.
A judgment is thus ordered in accordance with the text according to the unanimous decision of
the judges.
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Presiding judge
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Justice OKUDA Masamichi
Justice CHIKUSA Hideo
Justice MOTOHARA Toshifumi
Justice KANATANI Toshihiro
(Translated by Judicial Research Foundation)
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