Date of
Judgment: July 6, 2001
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 judgment in prior instance shall be
reversed.
2.
The appellee's claims shall be dismissed.
3.
The appellee shall bear all the court costs.
Reasons:
Reasons
for petition for acceptance of final appeal as presented by the attorneys for
the appeal; namely, YAMAZAKI Ushio, ISHII Tadao, HATAKEYAMA Minoru, NAGAI
Yukio, ISHIKAWA Yuichi, TERAMOTO Yoshinori, HIROTA Yoneo, KUDO Kanji, KOIKE
Takashi, and KOBAYASHI Kazuo.
1. The outline of the
illegitimate findings of the court of prior instance is as follows.
(1) On July 24, 1992, the
appellee filed an application for registration of a trademark consisting of the
letters, "PALM SPRINGS POLO CLUB," and the katakana characters,
"パームスプリングスポロクラブ"(palm
springs polo club (in katakana)), written horizontally in two rows, one above
the other (hereinafter referred to as "Trademark"), by designating
"Non-Japanese style outerclothing; Coats; Sweaters and the like; Shirts
and the like; Nightwear; Underwear; Swimwear; Swimming caps; Aprons; Collar
protectors for wear; Socks and stockings other than special sportswear; Putees
and gaiters; Fur stoles; Shawls; Scarves; Japanese style socks; Covers for
Japanese style socks; Gloves and mittens; Babies' diapers of textile; Neckties;
Neckerchiefs; Mufflers; Ear muffs; Hoods; Sedge-woven hats; Nightcaps; Helmets;
Headgear for wear; Garters; Sock suspenders; Suspenders; Waistbands; Belts for
clothing; Japanese style wooden clogs; Japanese style sandals; Special clothes
for sports; Special footwear for sports, other than horse-riding boots" as
designated goods in Class 25 of Appendix 1 of the Order for Enforcement of the
Trademark Act.
In response to said filing of the
application for trademark registration, the JPO made a decision of refusal
dated March 3, 1995, and the appellee filed an appeal against the examiner's
decision of refusal on the 28th of the same month.
On June 11, 1999, the JPO rendered
a trial decision to the effect that the above demand for trial by the appellee
is groundless (hereinafter referred to as "Trial Decision") for the
following reasons. When the Trademark is used for its designated goods, the
traders and consumers coming into contact with the Trademark will focus on the
letters, "POLO" and "ポロ"(polo
(in katakana)), which constitute the trademark, thereby associating the
Trademark with, or recalling, the trademarks which consist of the letters,
"POLO" or "ポロ"(polo
(in katakana)) (hereinafter collectively referred to as "Cited
Trademarks"), and which Ralph Lauren, a famous American designer, uses for
clothing and other goods. As such, there is a risk of causing the confusion as
to the source of the goods, as if said goods pertain to the business of Ralph
Lauren or the supporting intervenor in the appeal, or of a person who is in
some way, organizationally or economically, related to Ralph Lauren or the
supporting intervenor in the appeal. Accordingly, the Trademark falls under
Article 4, paragraph (1), item (xv) (hereinafter referred to as
"Item") of the Trademark Act, and cannot be granted trademark
registration.
(2) Ralph Lauren is one of the
representative designers of the United States and uses Cited Trademarks on
men's apparel, men's shoes, neckties, women's apparel, and other goods which he
designs. By 1980 or so, if not earlier, Cited Trademarks had become widely
recognized among traders and consumers in Japan as indicators of goods such as
clothing which are designed by Ralph Lauren, and this situation has continued
to this day.
(3) At the time of the filing of
the application for the Trademark, it was well known in Japan that terms such
as "POLO" and "ポロ"(polo
(in katakana)) refer to the athletic sport in which players ride on horses to
play. As for the term, "polo shirt," it originally meant a shirt
which is worn by polo players, but today it has become a common noun to refer
to a broad range of collared shirts that are worn for leisure.
(4) "PALM SPRINGS" and
"パームスプリングス"(palm
springs (in katakana)) refer to an internationally renowned resort located in
the southeastern area of California, United States. When the application for
the Trademark was filed, even people in Japan knew this name as that of a
resort located in the United States although they may not have known details
such as the actual location of the resort.
2. The present action was filed
by the appellee demanding rescission of the Trial Decision; then the court of
prior instance, rescinded the Trial Decision by the JPO, which was rendered as
follows.
(1) Cited Trademarks are widely
recognized among traders and consumers as indications of clothing and other
goods which are designed by Ralph Lauren. On the other hand, it was also widely
known in Japan, at the time of the filing of the application for the Trademark,
that terms such as "POLO" and "ポロ"(polo
(in katakana)) meant the sport of polo. As such, in the case where a composite
trademark contains the letters, "POLO" or "ポロ"(polo (in katakana)), whether or not it
causes one to associate the trademark with the Cited Trademarks which pertain
to Ralph Lauren should be determined specifically on a case-by-case basis based
on the strongly distinctive feature of Cited Trademarks.
(2) Based on the fact that the
letters, "PALM SPRINGS", constituting the Trademark, are widely known
in Japan as the name of a resort located in the United States, and the fact
that the term, "club", refers to a group consisting of people having
the same purpose, it is acknowledged that if a trader or consumer of designated
goods for the Trademark comes into contact with the Trademark, such person
would naturally recognize the Trademark as meaning a "club for playing
polo, located in Palm Springs", and even by taking into consideration how
well-known or famous the Cited Trademarks are, it cannot be acknowledged that
the Trademark generates the concept of a "club for fans of polo products
which are designed by Ralph Lauren, located in Palm Springs", or that the
part, "POLO" or "ポロ"(polo
(in katakana)), alone attracts attention and is immediately associated with
Cited Trademarks.
(3) Accordingly, it cannot be
acknowledged that the use of the Trademark for its designated goods will cause
a trader or consumer, who comes into contact with the Trademark, to associate
it with Cited Trademarks, or to recall Cited Trademarks, and thus the Trial
Decision should be rescinded.
3. However, the above
determination by the court of prior instance cannot be accepted, for the
reasons described below.
(1) A trademark that "is
likely to cause confusion in connection with the goods or services pertaining
to a business of another person", as per the Item, not only refers to a
trademark which, when said trademark is used for its designated goods or
services, has a risk of causing the misunderstanding that said goods or
services are the goods or services pertaining to a business of another person,
but also refers to a trademark which has a risk of causing the misunderstanding
that said goods or services are the goods or services pertaining to a business
of a proprietor who is related to said other person, whether by being closely
related in business as the so-called parent-subsidiary companies or as
affiliated companies, or by belonging to a group of companies which engage in
commercialization under the same indication. Then, whether or not it "is
likely to cause confusion" should be determined comprehensively in light
of factors such as the level of similarity between said trademark and the other
person's indication, how well-known and famous as well as how unique the
indication of the other person is, the level of association between the
designated goods or services for said trademark and the goods or services for a
business of the other person in terms of nature, use, or purpose, the
commonalities in terms of traders and consumers for goods or services, and
other conditions of transactions, based on the attention that is normally paid
by traders and consumers of designated goods or services for said trademark (Supreme
Court Case 1998 (Gyo-Hi) 85, judgment rendered on July 11, 2000 by Third Petty
Bench/Minshu vol. 54, no. 6, page 1848).
(2) When the
above is considered in the present case, the following are true.
A The Trademark has the appearance
consisting of four English words and the corresponding katakana characters, and
is a composite trademark in which the terms, "POLO" and "ポロ"(polo (in katakana)), which are the same
as the Cited Trademarks, are combined with the terms, "PALM", "パーム"(palm (in katakana)), "SPRINGS",
and "スプリングス"(springs
(in katakana)), as well as "CLUB" and "クラブ"(club (in katakana)). It cannot be
acknowledged that the Trademark in its entirety indicates any single and
inseparable, existing concept, and since the Trademark has a relatively long
appearance and sound, consisting of 19 letters and 14 katakana characters, it
can be said that, in an actual transaction where simplicity and promptness are
valued, the Trademark can simply be written or called by only a part thereof.
B Cited Trademarks are widely
recognized among traders and consumers in Japan as indicating clothing and
other goods which are designed by Ralph Lauren, and they are highly well-known
and famous as indications. Of course, the terms, "POLO" and "ポロ"(polo (in katakana)), originally come
from the name of an athletic sport in which players ride on horses to play, and
since the term, "polo shirt", is a common noun showing a type of
clothing, it must be said that the level of uniqueness of Cited Trademarks is
low compared to a trademark which is made of a coined word. However, designated
goods for the Trademark are clothing and other goods, which are the same as, or
which are strongly associated with, the goods for which the Cited Trademarks
are currently used. It is also evident, therefore, that the traders and
consumers of the goods of the two sides are in common. Furthermore, based on
the fact that the designated goods for the Trademark are of the nature of being
consumed on a daily basis, and the fact that the consumers of the goods are the
general public with no particular knowledge or experience of expertise, it must
be considered that the attention that is paid upon purchasing the goods is not
so great. In that case, upon determining the applicability of the Item to the
Trademark, it must be said that focusing on the low level of uniqueness of
Cited Trademarks is not reasonable.
C Of the phrases other than the
terms, "POLO" and "ポロ"(polo
(in katakana)), which constitute the Trademark, if the fact that "PALM
SPRINGS" and "パームスプリングス"(palm
springs" (in katakana)) are known as the names of a resort in the United
States, and the fact that "CLUB" and "クラブ"(club (in katakana)) are everyday
expressions meaning a group of like-minded people, it is possible, as per the
judgment in prior instance, that the Trademark generates the concept of a
"club for playing polo, located in Palm Springs". However, while it
is often the case that a single trademark generates multiple concepts, if the
fact of how well-known or famous the Cited Trademark are, and the fact of the
Trademark and Cited Trademarks being identical, as well as the commonalities
between the Trademark and Cited Trademarks in terms of traders and consumers
are taken into consideration, it is easily predictable that, when the Trademark
is used for its designated goods, the constituent parts, "POLO" and
"ポロ"(polo
(in katakana)), will, in particular, strongly attract the attention of traders
and consumers who come into contact with them, and thus it can also be said
that the Trademark generates the aforementioned concept as well as the concept
of being the goods pertaining to a business of Ralph Lauren or a company
operated by Ralph Lauren, or a proprietor who is closely related to Ralph
Lauren or said company.
(3) As described above, the
Trademark is a composite trademark that contains, as its constituent parts, the
same part that constitutes Cited Trademarks. In addition to the fact that said
part can be recognized apart from the rest in terms of appearance, sound, and
concept, the Cited Trademarks are highly well-known and famous, and
furthermore, the designated goods for the Trademark overlap with the goods for
which the Cited Trademarks are used, and even the traders and consumers of the
two sides are in common. When these circumstances are comprehensively
determined, the Trademark causes the misunderstanding to the traders and
consumers, who come into contact with the Trademark, as to the source of the
goods by causing them to associate the Trademark with the Cited Trademarks, and
if the Trademark is granted trademark registration, there is a risk of inviting
results such as the so-called free riding on the power of customer attraction
embodied by Cited Trademarks and the so-called dilution of the Cited
Trademarks. [Summary] In that case, it is reasonable to determine that the
Trademark falls under a trademark that "is likely to cause
confusion", as per the Item, and it should be said that this determination
is not something to be influenced by the fact that Cited Trademarks are less
unique than a trademark that is made up of a coined word.
4. Based on the above, the
decision made in the court of prior instance contains a violation of the law
which clearly affects the judgment. The theory is reasonable, and thus the
judgment in prior instance shall definitely be reversed. Then, based on the
aforementioned, the Trial Decision which determined that the Trademark falls
under the Item is not unlawful, and the appellee's demand in the present case
for rescission of the Trial Decision is groundless. Accordingly, the appellee's
demand shall be dismissed.
Therefore, the court unanimously
renders the judgment as per the main text, with supporting opinions by Judge
FUKUDA Hiroshi.
Judge FUKUDA Hiroshi provides the
following supporting opinions.
Although I believe that the
judgment in prior instance, which is contrary to the precedent(s) found by this
court concerning similar case(s), will definitely be reversed as a case of
erroneous interpretation of Article 4, paragraph (1), item (xv) of the
Trademark Act, I wish to point out the following just to be on the safe side.
Polo, which is an athletic sport,
is still played in places, mostly in England and other areas which are former
British colonies. The term, "polo shirt", which refers to a type of
clothing, originally came from the shirt being worn by polo players when they
played the sport. The term is said to have been used for the first time in a
best-selling novel by American author, F. Scott Fitzgerald, "This Side of
Paradise" (published in 1920), and polo shirts are known to have gained
popularity among the young generation (refer to "Eigo-gogen-jiten"
(Dictionary of Origins of English Words), edited by TERASAWA Yoshio, and
"Eibei-shi-Jiten" (Dictionary of British-American Histories), compiled
and written by MATSUMURA Takeshi and TOMITA Torao, among other references).
Furthermore, the name, "polo shirt", is widely used as a common noun,
not just in the United States but in other countries as well, including Japan.
As described above, while the
terms, "ポロ"(polo
(in katakana)) or "POLO" and "Polo", are used as a
trademark of Ralph Lauren, it is a common noun from the perspective of
etymology. It is also evident that, before Ralph Lauren began to use these
terms as trademarks, the term, "polo shirt", was widely used in the
United States, where polo was not necessarily a popular sport, as a name that
refers to a type of clothing. Under such circumstances, it should be considered
that in trademarks such as "ポロ"(polo
(in katakana)) or "POLO" and "Polo", one of the inherent
functions of a trademark, which is a function of indicating the source of
goods, has been diminished to a certain degree.
Furthermore, even if a trademark
for which an application for trademark registration was filed contains the
letters, "ポロ"(polo
(in katakana)) or "POLO", or "Polo", in cases where, for
example, a term that is a combination of "ポロ"
(polo (in katakana)) or "POLO", or "Polo" and some other
term(s) causes a person to strongly associate the trademark with a source of
goods other than Ralph Lauren, or when the trademark contains, among its
constituent factors, an indication that negates any association with Ralph
Lauren, it should be said that Article 4, paragraph (1), item (xv) of the
Trademark Act is not applicable, and thus the trademark should be granted
trademark registration.
(This translation is provisional and
subject to revision.)