Region: Japan

Brand acquisitions set to continue as Asian brands eye international growth

The news that Japanese company Suntory Beverage & Food is to purchase British brands Ribena and Lucozade for an estimated $2.1 billion from GSK has grabbed media headlines across the globe. The deal indicates that Asian companies are venturing forth more aggressively than ever in terms of expanding their footprint into new markets. However, Asian companies that are acquiring foreign brands should keep one or two crucial considerations in mind.

17 September 2013

Intel fails to invalidate 'intel' mark for construction goods and services

The IP High Court has upheld the Patent Office's refusal to invalidate the registration for the trademark INTELGROW for goods in Class 19 and services in Class 37. Among other things, the court found that, although Intel Corporation’s INTEL mark was included in the INTELGROW mark, it was embedded within the total structure of the mark and would not be perceived independently.

16 July 2013

Injunction request based on trademark rights held to constitute abuse of rights

In <i>Oak Co Ltd v The Japan Kanji Aptitude Test Association</i>, the Osaka District Court has held that the act by the plaintiff of seeking an injunction against the defendant’s use of two trademarks based on the plaintiff’s rights in the marks constituted an abuse of rights. Among other things, the court found that the plaintiff sought only to jeopardise the continuation of the business of the defendant, which was the rightful owner of the trademarks.

30 April 2013

IP High Court confirms cancellation of mark for unfair use

The IP High Court has affirmed a Japan Patent Office trial decision that admitted a cancellation action for unfair use against the registration for the mark MULTIPROGREENS/MULTIPROGREEN for goods in Class 30. This is one of the rare cases in which a trademark has been cancelled under Article 51(1) of the Trademark Law.

19 April 2013

IP High Court invalidates TARZAN trademark

The IP High Court has reversed a Japan Patent Office decision refusing to invalidate the trademark TARZAN (in Japanese '<i>Katakana</i>') for goods in Class 7. Among other things, the court held that maintaining the registration of a trademark consisting only of the word 'Tarzan' would contravene international morals, even if the word 'Tarzan' itself had no power to attract customers in respect of the designated goods.

22 November 2012

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

The Intellectual Property High Court has overturned a trial decision of the Patent Office in proceedings for the cancellation of a figurative mark, holding that the plaintiff’s registered trademark was identical to the mark actually used in Japan in connection with the designated goods. Among other things, the court concluded that the additional elements found in the mark as used did not have any particular source-identifying function.

30 October 2012

Buggy car mark held to be confusingly similar to famous LAMBORGHINI mark

The IP High Court has reversed a trial decision in which the Patent Office had refused to invalidate the registration for the trademark LAMBORMINI for custom buggies. The court concluded that LAMBORMINI was confusingly similar to Lamborghini’s famous LAMBORGHINI mark for Class 12 goods. The court invalidated the LAMBORMINI mark under Articles 4(1) (10), (15) and (19) of the Trademark Law.

18 September 2012

Word mark held to be confusingly similar to figurative mark

In <i>Kowa Company Ltd v Commissioner of the Japan Patent Office</i>, the Intellectual Property High Court has held that there was a likelihood of confusion between the mark レインボー (Japanese for 'rainbow') and the figurative mark RAINBOW. Among other things, the court found that the word 'rainbow' in the bottom part of the figurative mark would attract the most attention.

10 September 2012

Smell of success for 3D perfume container

The IP High Court has reversed a trial decision in which the Patent Office had rejected the registration of a 3D trademark consisting of the bottle used for Jean-Paul Gaultier Classique perfume products. This is only the third case in which the court has applied the provisions of Article 3(2) of the Trademark Law, notwithstanding the provisions of Article 3(1)(3), in a matter involving a 3D container.

20 September 2011

IP High Court rejects collective trademark

The IP High Court has affirmed a trial decision of the Japan Patent Office in which the latter had upheld the rejection of an application to register KITAKATA RAMEN as a special collective trademark. The court ruled that the mark could not be recognised as having become well known among consumers as indicating the services connected with the plaintiff's business or that of its members.

15 April 2011

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