PUBLIC MORALITY
The IP High Court has this year set new standards for the concept of public order and morality, international good faith and fraud regarding trademark registration in Japan, as Diane Beylier and Yoshitaka Sonoda report.
Te IP High Court this year has shown its commitment to taking a tougher stand against trademark registrations that violate public order and morality or are fraudulent, by overruling several Japan Patent Office (JPO) decisions. Te court’s decisions also signify that it will not tolerate trademark registrations that contravene the principles of international good faith, and they are likely in turn to cause the JPO to take a harder line against questionable trademarks that may have been registered for ulterior motives, eg, for fraud (fusei), or that may violate the principles of international good faith (kokusai shingi) or public order and morality (kojo ryozoku).
IP High Court Heisei 23 (gyo-ke) 10399 (May 14, 2012)
Te court reversed a JPO decision and ruled that a trademark registration for ‘Tarzan’ by a third party with no relationship to the Tarzan character was invalid on the grounds that allowing such a registration would violate the principles of international good faith and public order and morality.
On appeal was the trademark ‘Tarzan’, designating ‘plastic-working machinery and tools’ in Class 7 (machines and machine tools, etc). Te plaintiff, a company that manages copyrights for the Tarzan character, initially filed an appeal for invalidation at the JPO on the grounds that the trademark violates the principles of international good faith and public order and morality, but the appeal was dismissed by the JPO.
Te JPO explained that while the name ‘Tarzan’ is vaguely familiar to those in Japan, it cannot be considered to be widely recognisable as the name of the character in the works of the American writer Edgar Rice Burroughs, and the name is also not managed by any public agencies in the US. Furthermore, the plaintiff did not own the rights to the trademark ‘Tarzan’ for goods in Class 7.
In that situation, the JPO held, any dispute regarding the trademark ‘Tarzan’ must be
www.worldipreview.com
resolved as a private action between the relevant parties, and the registration itself is irrelevant to questions of international good faith or public order and morality.
Te court, aſter hearing an appeal, overruled the JPO and deregistered the trademark. At the time the trademark application was filed, the plaintiff held the copyright to novels such as Tarzan, managed these and related works, and held 44 registered trademarks relating to ‘Tarzan’. On the other hand, the trademark ‘Tarzan’ apparently does not have any power to draw customers for ‘plastic-working machinery and tools’, so
the registration cannot be
considered to be a fraudulent attempt to take advantage of the name ‘Tarzan’.
However, despite the lack of widespread recognition in Japan, the unique word ‘Tarzan’ has been consistently used in literature and film globally, particularly in the US, to refer to a fictional character with a certain persona, and the word ‘Tarzan’ does not suggest any other images, whether in Japanese or in other languages. Under such circumstances, to allow a trademark consisting solely of the word ‘Tarzan’ to be registered in the name of a third party is a violation of international good faith, even if
the word ‘Tarzan’ does not have any potential to attract customers to buy the designated goods per se. Moreover, for a third party to enjoy exclusive use of the trademark ‘Tarzan’ with the right to bar even the plaintiff, albeit for the limited types of goods that are designated, cannot be termed appropriate for maintaining fair trade, and such a situation is contrary to public order and morality.
Te decision includes important rulings concerning the principles of international good faith, public order and morality. First, that allowing an unrelated third party to register a trademark using a name that evokes a specific image and is internationally known, even if it is not well-known in Japan, violates the principles of international good faith. Second, that to bar even the original, legitimate user of a name from its free use by allowing registration of a trademark using that name is a violation of the principles of public order and morality.
Tese rulings, although they limit the choice of marks for trademark applicants and broaden the rights of IP right owners, are praiseworthy in view of the increasingly globalised transfer of goods and services and the growing need for their international protection.
IP High Court Heisei 23 (gyo-ke) 10019 (March 22, 2012)
“THESE RULINGS, ALTHOUGH THEY LIMIT THE CHOICE OF MARKS FOR TRADEMARK APPLICANTS AND BROADEN THE RIGHTS OF IP RIGHT OWNERS, ARE PRAISEWORTHY.”
Te court ruled against a trademark registrant who had registered 44 trademarks and trade names that were being used by other parties but remained unregistered. Te plaintiff had filed an appeal for invalidation but this was dismissed by the JPO. Te ground for invalidation of the trademark by the IP High Court was lack of intention to use the trademark.
Te trademark in question was for ‘RC Tavern’ designating
the service ‘Providing food
and beverages’. Te plaintiff had advertised and publicly announced on the Internet, in magazines, and by distributing brochures, the intention to open a restaurant and had
World Intellectual Property Review September/October 2012 41
Page 1 |
Page 2 |
Page 3 |
Page 4 |
Page 5 |
Page 6 |
Page 7 |
Page 8 |
Page 9 |
Page 10 |
Page 11 |
Page 12 |
Page 13 |
Page 14 |
Page 15 |
Page 16 |
Page 17 |
Page 18 |
Page 19 |
Page 20 |
Page 21 |
Page 22 |
Page 23 |
Page 24 |
Page 25 |
Page 26 |
Page 27 |
Page 28 |
Page 29 |
Page 30 |
Page 31 |
Page 32 |
Page 33 |
Page 34 |
Page 35 |
Page 36 |
Page 37 |
Page 38 |
Page 39 |
Page 40 |
Page 41 |
Page 42 |
Page 43 |
Page 44 |
Page 45 |
Page 46 |
Page 47 |
Page 48 |
Page 49 |
Page 50 |
Page 51 |
Page 52 |
Page 53 |
Page 54 |
Page 55 |
Page 56 |
Page 57 |
Page 58 |
Page 59 |
Page 60 |
Page 61 |
Page 62 |
Page 63 |
Page 64 |
Page 65 |
Page 66 |
Page 67 |
Page 68 |
Page 69 |
Page 70 |
Page 71 |
Page 72 |
Page 73 |
Page 74 |
Page 75 |
Page 76 |
Page 77 |
Page 78 |
Page 79 |
Page 80 |
Page 81 |
Page 82 |
Page 83 |
Page 84 |
Page 85 |
Page 86 |
Page 87 |
Page 88 |
Page 89 |
Page 90 |
Page 91 |
Page 92 |
Page 93 |
Page 94 |
Page 95 |
Page 96 |
Page 97 |
Page 98 |
Page 99 |
Page 100 |
Page 101 |
Page 102 |
Page 103 |
Page 104 |
Page 105 |
Page 106 |
Page 107 |
Page 108 |
Page 109 |
Page 110 |
Page 111 |
Page 112 |
Page 113 |
Page 114 |
Page 115 |
Page 116 |
Page 117 |
Page 118 |
Page 119 |
Page 120 |
Page 121 |
Page 122 |
Page 123 |
Page 124 |
Page 125 |
Page 126 |
Page 127 |
Page 128