Date of
Judgment: July 11, 2005
Issuing
Authority:
Supreme Court
Level of
the Issuing Authority: Final Instance
Type of
Procedure: Judicial（Administrative）
Subject
Matter: Trademarks
Main
text of the judgment (decision):
1.
The present final appeal shall be dismissed.
2.
Appellant shall bear the cost of the final appeal.
Reasons:
Reason
of the second petition for acceptance of final appeal by the attorneys of the
final appeal, ●●●● and ●●●●
1. The outline of factual
relations legally finalized in the court of prior instance is as follows.
(1) Appellant of final appeal is
the holder of a trademark right of the registered trademark with Registration
No. 2357409 (trademark registration filed on July 31, 1978, establishment of
the trademark right registered on November 29, 1991, hereinafter, the trademark
shall be referred to as the "present trademark", and the trademark
registration as the "present trademark registration") consisting of
laterally written European characters of "RUDOLPH VALENTINO" with the
designated goods in Class 17 "clothes (excluding special clothes for
exercise), fabric belongings (excluding those belonging to the other classes),
bedclothes (excluding beds)" in the attachment to the Ordinance of the
Trademark Act (before revision by Ordinance No. 299 of 1991).
(2) Appellee made a request for an
invalidation trial of the present trademark registration on November 28, 1996
(hereinafter, this request is referred to as the "present request for
trial"). The written request
for trial submitted by Appellee on the same date (hereinafter, referred to as
the "present written request") described as the grounds for the
request that the present trademark registration was made in violation of the
provisions of Article 4, paragraph (1), item (xv) (hereinafter, referred to simply
as "item (xv)") of the Trademark Act (before revision by Act No. 65
of 1991) and thus, it should be invalidated pursuant to the provisions in
Article 46, paragraph (1) of the same Act, and the detailed grounds would be
supplemented later. The present
request for trial was made immediately before expiration of the period of
exclusion prescribed in Article 47 (hereinafter, referred to simply as
"Article 47") of the Trademark Act (before revision by Act No. 68 of
1996) of the present trademark registration.
The present request for trial was
examined at the Japan Patent Office as the case of Trial No. 20103 of
1996. The chief administrative
judge in charge of this case ordered Appellee to submit a document describing the
grounds for the request within 30 days from the date of dispatch by the
"written order of procedural amendment (format)" dispatched on
January 24, 1997.
Appellee submitted the document on
February 18 of the same year, describing as the grounds for the request that
each of the trademarks "VALENTINO GARAVANI" and "VALENTINO"
used by Appellee for clothes for men and women had become well-known before the
date of filing the trademark registration of the present trademark and thus, if
Appellant uses the present trademark for the designated goods, it would
misleadingly indicate the goods as those relating to the business operation of
Appellee and there is a concern that a place of origin of the goods would be
confused.
(3) Regarding the present request
for trial, the decision that the present trademark registration should be
invalidated (hereinafter, referred to as the "present JPO decision")
was made on June 14, 2002.
Regarding the aforementioned assertion by Appellant related to the
period of exclusion, on the grounds that the applicable provisions are
explicitly indicated as the reasons for invalidation in the present written
request and also, that the document describing the specific grounds was
submitted within the period for which the amendment was ordered, it was judged
that the present request for trial is not an unlawful one which did not observe
the period of exclusion.
2. This case is a lawsuit in which
Appellant asserts that the present JPO decision has an error in interpretation
and application of the provisions of Article 47 and the like and seeks
rescission thereof.
3. The court of prior instance
judged that the present written request has only description that the present
trademark registration violates the provisions in item (xv) and does not
describe assertion of the facts constituting the specific invalidation reasons,
but in view of the circumstances that the indications such as
"VALENTINO", "barentino (Japanese)" used by Appellee for
the goods relating to the business operation thereof are well-known to the
dealers and consumers in the fashion-related field of our country, that the
word "barentino" is included in the name of the demandant (Appellee)
described in the present written request and the like, it can be deemed that
the present written request has description of the invalidation reasons that
the present trademark is a trademark which is likely to cause confusion in
relation with the aforementioned indication by Appellee and thus, it was judged
that the present request for trial is not an unlawful one that did not observe
the period of exclusion.
4. Article 47 prescribes that the
invalidation trial of the trademark registration on the ground of violation of
the item (xv) should be requested within the period of exclusion of 5 years
from the date of registration of establishment of the trademark right. The purpose thereof is interpreted such
that the trademark registration violating the provisions in the item (xv)
should be invalidated, but if the period of exclusion has elapsed without
request for the invalidation trial of the trademark registration, validity of
the trademark registration is made undisputable in order to protect an existing
continuous state generated by the trademark registration. In view of the purpose of the provisions
described above, such trademark may not have been granted trademark registration
and thus, there is no strong demand for protection of the holder of a trademark
right by ensuring the validity thereof at an early stage. And it can be considered that the
existing continuous state is overcome as long as the invalidation trial of the
trademark registration was requested within the period of exclusion, and the
written request for trial has description that the trademark registration
violates the provisions in item (xv).
Then, in order to assert that the
request for invalidation trial of the trademark registration on the ground of
violation of item (xv) observes the period of exclusion, it is only necessary
that the written request for trial submitted within the period of exclusion has
the description as the grounds for the request that the trademark registration
concerned violates the provisions of the item (xv), and it is reasonable to
interpret that description of the assertion relating to the specific factual
relations which should be applicable to the provisions of the item (xv) is not
required.
By examining this for this case,
according to the aforementioned factual relations, it is obvious that the
present request for trial observes the period of exclusion, and there are no
errors in interpretation and application of Article 47 in the present JPO
decision. The aforementioned
judgment of the court of prior instance that the present request for trial is
not unlawful can be accepted as a conclusion. The gist cannot be employed.
Therefore, the judgment shall be
rendered as in the main text unanimously by all the judges.
(This translation is provisional and
subject to revision.)