Date of
Judgment:
July 11, 2000
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 is quashed.
2.The trial decision rendered by the Japan
Patent Office on February 24, 1997, with regard to Trial Case No. 1992-12599,
is revoked.
3.The appellee of final appeal shall bear the
total court costs.
Reasons:
Concerning
the reasons for petition for acceptance of final appeal argued by the appeal
counsel
I. The outline of the facts legally determined
by the court of prior instance is as follows.
1. On May 21, 1986, the appellee of final appeal
filed a trademark registration application regarding the trademark consisting
of horizontally written katakana characters, "レールデュタン"
(rērudyutan), designating the goods in Class 21 "accessories and other
similar goods" as prescribed in the appended table of the Order for
Enforcement of the Trademark Act (prior to the amendment by Act No. 299 of
1991). This trademark was registered on December 19, 1988 (Registration No.
2099693; hereinafter referred to as the "Registered Trademark").
2. The appellant holds a trademark right for the
trademark consisting of horizontally written alphabetical characters,
"L'AIR DU TEMPS," for which goods in Class 4 "perfumes and other
similar goods" in said appended table are designated (Registration No.
661424; hereinafter referred to as the "cited trademark"). For its
perfumes, the appellant uses the trademarks of "L'Air du Temps" and
"レール・デュ・タン" (rēru dyu tan) (hereinafter
collectively referred to as the "Trademarks in Use") as well as the cited
trademark. At the time of the filing of the registration application regarding
the Registered Trademark, the Trademarks in Use and the cited trademark were
famous in Japan among traders who deal with perfumes and consumers who were
interested in luxury perfumes as indications of one of the appellant's
perfumes.
3. On July 3, 1992, the appellant filed a
request for a trial to seek invalidation of the trademark registration in
question with regard to some of the goods designated for the Registered Trademark,
i.e. "cosmetic utensils, body ornaments, hair ornaments, bags,
sacks," on the grounds of violation of Article 4, paragraph (1), item (xv)
of the Trademark Act (Trial No. 1992-12599).
4. On February 24, 1997, the Japan Patent Office
(JPO) rendered a trial decision to dismiss the claim in the appellant's request
for a trial (hereinafter referred to as the "JPO Decision").
II. In this case, the appellant seeks revocation
of the JPO Decision. Given the facts mentioned above, the court of prior
instance dismissed the appellant's claim, holding as follows.
At the time of the filing of the registration
application regarding the Registered Trademark, although the Trademarks in Use
and the cited trademark were famous in Japan among traders who deal with perfumes
and consumers who were interested in luxury perfumes as indications or marks
for specific goods for one of the appellant's perfumes, they cannot be deemed
to have been known and famous among the general public. In addition, since the
Registered Trademark cannot be considered to have the same sound as the cited
trademark, it cannot be deemed to be likely to cause confusion as to the source
of goods.
III. However, we cannot affirm the holding of
the court of prior instance mentioned above, on the following grounds.
1. It is appropriate to construe that the scope
of "trademark that is likely to cause confusion in connection with the
goods or services pertaining to a business of another person" as referred
to in Article 4, paragraph (1), item (xv) of the Trademark Act includes not
only a trademark which, when used for its designated goods or services, is
likely to cause people to mistake these goods or services as another person's
goods or services, but also a trademark which is likely to cause people to mistake
the designated goods or services as goods or services pertaining to the
business of an entity that has a close business relationship with such other
person, for example, a relationship between a parent company and its subsidy or
affiliated company, or a relationship of members of a group of companies that
carry out product development projects under the same indication (hereinafter
such likelihood is referred to as "likelihood of confusion in a broad
sense"). The purpose of the provisions of said item is to prevent free
ride on a well-known indication or famous indication and dilution of such
indication and protect a trademark's function of distinguishing the trademark
holder's goods from others, thereby ensuring the maintenance of business
confidence of persons who use trademarks and protecting the interests of
consumers. In light of such purpose, in order to protect legitimate interests
of users of well-known or famous indications for goods or services according to
changes in corporate forms and markets, as represented by diversification of
corporate management, formation of a corporate group in which member companies
are bound together by carrying out product development projects under the same
indication, and establishment of famous brands, it is necessary to exclude
trademarks that have the likelihood of confusion in a broad sense from the
scope of registrable trademarks.
Whether or not a trademark is likely to cause
confusion should be determined comprehensively in light of factors such as the
degree of similarity between the trademark and another person's indication, the
degree of well-knowness, fame and creative nature of the other person's
indication, and the degree of association in terms of nature, use or purpose
between the designated goods or services of the trademark and the goods or
services pertaining to the other person's business, as well as the commonality
in terms of traders and consumers of goods or services and other circumstances
of transactions. Furthermore, such determination should be made on the basis of
the level of care that traders and consumers of the designated goods or
services of the trademark normally have.
2. The Registered Trademark is identical at
least in sound and similar in appearance when compared with one of the Trademarks
in Use, "レール・デュ・タン" (rēru dyu tan).
Furthermore, in view of the spelling of the cited trademark and its designated
goods, the cited trademark, when pronounced in French, can be deemed to make a
sound of "レールデュタン" (rērudyutan), and thus the
Registered Trademark is identical in sound with the cited trademark as well. In
addition, the Trademarks in Use and the cited trademark are famous among
traders who are dealing with perfumes and consumers who are interested in
luxury perfumes as indications of one of the appellant's perfumes, and they
have originality as trademarks. Moreover, some of the designated goods of the
Registered Trademark which were named in the request for a trial for
invalidation, i.e. "cosmetic utensils, body ornaments, hair ornaments,
bags, sacks," have a very close association with perfumes in terms of
their primary use, that is, adorning women, and hence consumers of these goods
mostly overlap. In light of these circumstances, when the Registered Trademark
is used for "cosmetic utensils, body ornaments, hair ornaments, bags,
sacks," it can be said that the Registered Trademark has the likelihood of
confusion in a broad sense among traders and consumers of these goods, that is,
it is likely to cause these parties to mistake said goods as those pertaining
to the business of an entity that has a close relationship as mentioned above
with the appellant. The fact that the Trademarks in Use and the cited trademark
are used as marks for specific goods cannot affect this determination, in light
of the degree of famous nature of the Trademarks in Use and the close
association between the goods of the Trademarks in Use and those of the
Registered Trademark.
IV. On grounds that are contrary to the above,
the court of prior instance dismissed the appellant's claim for revocation of
the JPO Decision. Such determination involves violation of laws and regulations
that apparently affects the judgment. The appeal counsel's arguments are
well-grounded as they allege this point, and the judgment in prior instance
should inevitably be quashed. According to the explanation given above, the
appellant's claim for revocation of the JPO Decision should be upheld.
Therefore, the judgment has been rendered in the
form of the main text by the unanimous consent of the Justices.
(This translation is
provisional and subject to revision.)