Court considers whether use of mark in different form constitutes genuine use

The Intellectual Property High Court of Japan has overturned a trial decision of the Japan Patent Office (JPO) in proceedings for the cancellation of a figurative mark (Year 2012 Gyou-Ke Case 10080, July 25 2012).

On March 16 2007 plaintiff Cheena Japan Ltd submitted an application for the registration of the following trademark for "maple syrup and cakes with maple syrup" (Application 2007-23339):

The mark was registered on October 19 2007 (Registration 5085500).

On October 7 2011 defendant Mic KK requested a trial for the cancellation of the registered trademark on the grounds of non-use. The request for the trial was registered on October 21 2011. On January 24 2012 the JPO ordered the cancellation of the mark. On April 29 2012 Cheena commenced a court action before the Intellectual Property High Court to overturn the JPO's trial decision. 

At issue was whether the court should, under Article 63 of the Japanese Trademark Act, overturn the trial decision of the JPO ordering the cancellation of the plaintiff’s registered trademark on the grounds of non-use under Article 50 of the act, because the registered trademark was identical to a trademark used by the plaintiff in Japan in connection with the designated goods.

On July 25 2012 the Intellectual Property High Court overturned the trial decision of the JPO. The court held that the registered trademark and the trademark actually used by the plaintiff were identical following commonly accepted norms. Moreover, the trademark actually used by the plaintiff had been affixed on advertisements for maple syrup and distributed in Japan within the three-year period preceding the request for the trial.

In particular, the court held as follows with respect to the identity of the plaintiff’s trademark as registered and as used:

• When comparing the trademark as registered and that actually used, the court noted that their overall impression was identical (ie, they both consisted of a rectangle placed horizontally, with a gradation of colour from orange at the top to ochre at the bottom, with the same composition of characters and images, and the words 'First Tap' at the top and 'Sirop d’érable Pur' at the bottom), with the exception of the following characteristics:
  • Unlike the registered trademark, the trademark as used was missing the element 'TM' after the words 'Fine Maple Products'; however, this represented only a very small portion of the overall trademark.
  • Unlike the registered trademark, the trademark as used displayed a serial number and elements such as 'Extra Light' below the words 'Sirop d’érable Pur'; however, these elements only indicated the product number and its quality - this additional information, in and of itself, did not have any particular source-identifying function.
• Accordingly, it was reasonable to conclude that the trademark as registered and the trademark as used were virtually identical, at least in terms of their appearance. Moreover, under commonly accepted norms, they were also identical in terms of their pronunciation and meaning.

The court has held in the past that, “in actual commercial transactions, it is commonplace to use registered trademarks after making appropriate changes to their component parts; so, unless these changes affect the unique distinctiveness of the registered trademarks, it should be a generally accepted notion that consumers and parties dealing in such goods or services will perceive the mark to be identical” (Year 2010 Gyou-Ke Case 10027). The court reached a similar conclusion in the present case.

Masazumi Kano, Squire Sanders Miki Yoshida Gaikokuho Kyodo Jigyo Horitsu Tokkyo Jimusho, Tokyo