Aoki - trademark presentation
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Recent Court cases regarding Internet Sales AIPLA Mid-Winter Institute IP Practice in Japan Committee Pre-Meeting Seminar By Atsushi Aoki January 27, 2016 1 Popularization / problems of Internet commerce Counterfeiting relating to net sales Amount of expenditure of net sales per family Amount of each purchase Percentage of families using net sales The above chart is an extract from the 2015 white paper of Ministry of Internal Affairs and Communications According to the response from JP companies, counterfeiting in net sales has increased recently. In 2009----48.9 % In 2013----60.5% The above charts are extracts from the Counterfeiting research report of 2014 by JPO 2 Types of the problems are vary Example Use of a sign on a website ----Use of a TM? Domain Name Is this a TM? / or is this a use as TM? Paid Listing Service (Search Advertising) Internet commerce Domain Name Cyber squatting? Use of a sign in HTML Meta TagIt it Use of TM? Topic of today 3 Extracts from the HTML to display Seiwa’ s web-page <!DOCTYPE html PUBLIC "-//W3C//DTD XHTML 1.0 Transitional//EN" "http://www.w3.org/TR/xhtml1/DTD/xhtml1-transitional.dtd"> <html xmlns="http://www.w3.org/1999/xhtml" xml:lang="ja" lang="ja"> <head> <meta http-equiv="Content-Type" content="text/html; charset=utf-8" /> <meta http-equiv="Content-Style-Type" content="text/css" /> <meta http-equiv="Content-Script-Type" content="text/javascript" /> <meta name="keywords" content="A. AOKI, PATENT, TRADEMARK, DESIGN, LAW, IP" /> <meta name="description" content="Seiwa Patent &amp; Law is an international patent and law firm located in Tokyo, Japan, handling IP-related matters for associates and clients in the USA, Canada, Europe China, Korea, Southeast Asia, India, Oceania, Middle East, etc., as well as in Japan." /> <title>SEIWA PATENT &amp; LAW</title> <link rel="stylesheet" href="/css/importtop.css" type="text/css" media="all" /> <link rel="stylesheet" href="http://www.google.com/cse/style/look/default.css" type="text/css" media="all" /> </head> 4 Search screen of Internet 5 Example of a web-site 6 Dial 110 of Cars CASE Decided on October 20, 2005 at Osaka District Court H17 (wa) 12032 Summary of the case (Except TM2) Plaintiff (P) is a company providing car maintenance service and has two trademark registrations [Dial 110 for second hand car (car) [中古車（くるまの）の（１１０番）](TM 1), [Dial 119----](TM2) while Defendant (D) is a company providing consumers with similar services. D had a website in which explanations / introductions of D’s business were indicated as the advertisement of D’s service. Although, on the D’s website, there are no indications of a sign that is similar to TM1, D uses a sign “（クルマの１１０番） Dial 110 for cars” as a meta tag (Description tag) in the HTML file of the web-site. The meta tag (Description tag) in the HTML file reads as follows; “Dial 110 for cars. Please ask to us anything regarding cars, such as importation, exhaust gas, registration, compulsory inspection, spare parts/accessories of cars”. When consumers input the key word “（クルマの１１０番）in a browse (like Internet Explorer), a search page showing titles and introduction of several websites relevant to the key word is displayed. Among such web-sites is the D’s website which includes the identical sentence (“Dial 110 for cars. Please ask ---) that D incorporated in the HTML. When consumers click on D’s website on the search page, the top page of D’s web-site is displayed. However, on the website itself there are no phrases that include the (“Dial 110 for cars. Please ask ---) . 7 Dial 110 of Cars CASE Explanatory Chart: HTML File <meta name=“description” content= “クルマの１１０番--------> Input the key-word “クルマ１１０番” in PC Search page Dial 110 for cars (クルマの１１０番） Please ask us anything regarding ----- Click D’s part in the search page On D’s website (Dial 110 for cars (クルマの１１０番）------) is not indicated 8 Dial 110 of Cars CASE Points of D’s objection While P claims that D’s indications in the HTML infringe on P’s trademark rights, D objects based on the following points; (1) P’s TM and D’s signs are dissimilar, and D has not used the signs as a TM. (2) Although, “Dial 110 for cars---” was incorporated in the HTML file by D, entity who displays “Dial 110 for cars” is not D but is MSN (Search engine). MSN did so without D’s permission. (3) On D’s website, there are no indications of “Dial 110 for cars----”, thus there is no confusion and the function of TM showing source of service cannot be impaired. (4) For these reasons, an incorporation of signs as a meta tag shall not be evaluated as an infringement of a TM right. 9 Dial 110 of Cars CASE Issue Whether D’s activity is an act infringing P’s trademark right. More specifically, the issue is whether signs that are only incorporated as “Meta –tag” but are not indicated on a website can infringe on a trademark right. 10 Dial 110 of Cars CASE Decision / Holdings Decision: D used a similar sign to P’s trademark in connection with D’s service. Holdings: (1) It shall be understood that to incorporate “[<meta name=“description" content =------>] in a HTML file (that has a function to display the top page of a website on the internet) purposes to display the portion “[<meta name =“description" content =------>] as the explanation of the website in a search screen of the internet. (2) In general, the contents of a website on the internet regarding its service shall be found to be an advertisement of its service, thus, the explanations of the contents of a website displayed in a search screen on the internet is also said to be an advertisement of its service. Thus, to incorporate the meta tag in a HTML file in order to show the same in the search screen corresponds to “an act providing information showing the contents of advertisement of service by an electromagnetic means.” (3) Even if the explanation is not displayed in D’s website linked from a search site, the “explanation is not indicated” does not necessary mean that the function showing sources of service cannot be impaired since it sometimes common to use different signs for the same service simultaneously. * The above purple sentence is correspondent to Article 2(1)8 of Trademark Law 11 IKEA CASE Decided on January 29, 2015 at Tokyo District Court H24(wa)21067 Summary of the case The plaintiff, IKEA, is a world famous furniture company and has a few retail stores in Japan, though IKEA does not do any mail (or net) order sales. Since the locations of the IKEA stores are limited, some consumers wanting to purchase IKEA furniture depended on so called “Shopping-Delivery Agent”. One of those agents (The Defendant--- “D”), to invite offers from possible purchases, operated a web-site indicating on which IKEA’s products (genuine products)are indicated. At around July, 2012, and March, 2013, on the HTML file of the D’s web-site; (1) 「<title> IKEA[STORE]イケア通販</title>」was indicated as a title tag, (2) 「<meta name=“Description” content =イケア通販[STORE]IKEA通販です。期間限定！！最 大１万円割引クーポン を商品ご購入者様、全員にプレゼント！！カタログにあるスウェーデン製輸入家具・雑貨イケアの通販サ イトです。 tag.Trans 「<title> IKEA store, ikea mail order</title>」；「<meta name=“Description” content=This is IKEA mail order[STORE] , Limited time! We will present ＩＫＥＡではハイデザインと機能性をそなえた商品を幅広く揃えています。＞」was indicated as a meta discount coupon maximum limit of 10,000 JP yen to all who purchase the IKEA products! ! We are mail order agent dealing with the mail order for import furniture / miscellaneous goods indicated in the catalog. IKEA is selling products that are high designed and are highly functional」 12 IKEA CASE Because of the title tag or the meta tag, when key-words 「IKEA」 or 「イケア」 were used in a search engine, the above sentence can be indicated on a search result screen. IKEA’s Claim and Points of D’s Objection IKEA claimed that use of four signs ① [IKEA STORE], in the ② イケア 通販, ③ IKEA [STORE], ④ IKEA通販 HTML file of D ‘s website as a title tag / and a meta tag infringe on IKEA’s trademark rights. D objected that even if D uses IKEA’s signs as a meta tag / or a title tag, the use is not a use of signs as trademarks nor a commercial use since a meta tag / or title tag cannot be observed by an ordinary person. 13 IKEA Case Issue Whether the use of D’s sign [①～④] in D’s HTML file as a title tag and as a meta tag infringe on IKEA’s trademark rights. IKEA Use of a sign as a Meta tag may infringe on a TM right D V.S. Use of a metatag, etc., cannot be an infringement of TM right Non visible Not a use as a trademark Note 1. 2. The Plaintiff, IKEA, owns many trademark registrations in Japan covering variety of products and services. The trademarks, “IKEA” / “イケア”are among such registered trademarks. In this case, there are three other issues, including copyright infringement. 14 IKEA Case Decision / Holdings Decision: D should not record signs （①～③）as a title tag, and signs （①②④）as a meta tag in a HTML file to display the top-page of D’s website on the internet. Infringement is found Holdings: Explanation of website displayed as the result of search engine use of Internet can be found to be an advertisement showing summary of the website. Thus, to incorporate a meta tag / or title tag in the html file corresponds to an act providing information showing the contents of an advertisement of service by an electromagnetic means. 15 IKEA Case Finding As D’s signs were indicated as a meta tag and title tag in the HTML file, D’s signs were displayed as a summary or contents of D’s web-site / or displayed as a title of its website as the result of searches of a search engine, and the signs show the source of retail service of furniture on D’s website, thereby lure the possible buyers to D’s website by the showing of the signs to internet users. Thus, use of the signs as a meta tag or title tag can be said to be use of the signs as a trademark. 16 Postscript Viewing a various types of usage of third parties trademarks / trade names on the Internet, we need to study further which are permissible and which are not. Non-authorized use of third parson’s signs as a meta-tag in a HTML file is one of such issues. In Japan, there are only a few court cases regarding these issues while there are a lot of examples that everyone can routinely watch on the internet. Therefore, it is premature to conclude that any style of meta-tags shall be judged as infringement of trademark rights / or unfair competition. However, it is very important for us internationally to have the same view and the same standard against these issue. JP cases Infringement? (Cases) Description Meta-Tag Can be Title Tag Can be Keyword Meta-Tag -------- (No case) Paid Listing Service (Search Advertising) May be No 17 * Thank you for your attention! 18
