PUBLIC MORALITY
“THE COURT APPEARS TO BE TAKING A PROACTIVE ATTITUDE TOWARD PREVENTING SO-CALLED
TRADEMARK TROLLS WHO REGISTER TRADEMARKS
WITHOUT INTENDING TO USE THEM AND SUBSEQUENTLY SELL THEM FOR A FEE.”
actually opened a restaurant named ‘RC Tavern’. However, the plaintiff had never bothered to register the trademark. Te defendant not only filed an application for ‘RC Tavern’ immediately aſter the opening of the restaurant but also held 44 registered trademarks with questionable intentions. Indeed, those trademarks were actually being used, albeit without registration, by various third parties that had no connection with the defendant, and the designated services were in many diverse areas. Additionally, while the statutory three years to use the trademark had not yet passed aſter registration, there were no records showing that the defendant had actually used the registered trademarks.
In view of the above circumstances, the court ruled that the defendant was merely collecting registered trademarks and did not appear to be using them or to have any intention to use them, and therefore violated the requirement of the Trademark Law to have an intention to use the trademark. Furthermore, the reasoning of the JPO was found incorrect because the defendant must prove the intention to use the trademark rather than the plaintiff disproving the intention.
In addition, although this was sufficient to invalidate the trademark, the court took the liberty of mentioning that the present trademark must be considered to have been registered for the fraudulent purpose of hijacking the plaintiff ’s
trademark, which is a violation
of public order and morality. Terefore the trademark should be invalidated for that reason also, the court said.
Tis is a stern warning from the IP High Court to those attempting to register trademarks for fraudulent purposes. Te court appears to be
42
morality, is confusingly similar to a well- known trademark, and is deemed to have a fraudulent purpose.
Te plaintiff, Lamborghini Automobile SpA, is the world famous automaker, owner of a registered trademark for ‘Lamborghini’. Te trademark in question, registered to a third party, consisted of the name ‘Lambormini’ together with a graphical representation of a cow’s tail, and designates “Automobiles, their components and accessories”. Te defendant used the registered trademark on custom buggies (automobiles with small engines of less than 50cc). Lamborghini filed an invalidation action against ‘Lambormini’ at the JPO, but the action was rejected.
Te JPO held that the registered trademark would be pronounced ‘lambormini’ and not ‘lambormeeni’, so the trademark is not similar in pronunciation and therefore as a whole to ‘Lamborghini’. Te court disagreed, adopting the arguments by Lamborghini that the defendant’s
World Intellectual Property Review September/October 2012
taking a proactive attitude toward preventing so-called trademark trolls who register trademarks without intending to use them and subsequently sell them for a fee.
IP High Court Heisei 23 (gyo-ke) 10426 (March 6, 2012)
Te IP High Court ruled in the case ‘Lambormini/Lamborghini’,
that the three
grounds for invalidation offered were relevant and therefore invalidated the trademark ‘Lambormini’, reversing the JPO decision in the appeal for invalidation.
According to the IP High Court, ‘Lambormini’, in light of the famous trademark ‘Lamborghini’, violates the principles of public order and
website uses a Japanese pronunciation, which would be
‘lambormeeni’, demonstrating that
such a pronunciation is at least conceivable, in which case the trademarks sound similar.
We believe that the IP High Court was right in judging the similarity of
the trademarks and
taking a strict stance against an attempt to take advantage of a third party’s famous trademark.
Diane Beylier is director of international affairs at Sonoda & Kobayashi. She can be contacted at:
dbeylier@patents.jp
Yoshitaka Sonoda is a partner at Sonoda & Kobayashi. He can be contacted at:
ysonoda@patents.jp
Diane Beylier provides advice to international clients on the Japanese IP system, helping them obtain IP rights in Japan. She specialised in comparative IP law and oſten speaks at seminars abroad. Beylier graduated from the University of Strasbourg’s centre of intellectual property studies (CEIPI) and has studied economics and international management in France, Canada, Germany and Japan.
Yoshitaka Sonoda, PhD, is a patent
attorney. His practice
involves patent prosecution, client counselling, patent
litigation and
licence negotiations in the areas of physics, electronics and mechanical engineering. Sonoda founded the firm with Yoshinori Kobayashi in 1998.
www.worldipreview.com
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