The Tokyo High Court has upheld the Japanese Patent Office ban on obtaining trade marks for retail services. The internationalization of the country's trade mark system could persuade the authorities to change their stance.

John A. Tessensohn and Shusaku Yamamoto

In a welcome development for owners of famous trade marks, the Supreme Court in Palm Springs Polo Club denied an attempt by a Japanese firm, Heaven Corporation, to register a trade mark bearing the Polo name, reversing an earlier Tokyo High Court ruling.

John A. Tessensohn and Shusaku Yamamoto

EUROPEAN INTELLECTUAL PROPERTY REVIEW,September 2001

In an important victory for trade mark owners an opposition filed on behalf of the owners of the name of the world-famous and celebrated physicist Albert Einstein, was accepted by the Japanese Patent Office ("JPO") against an unauthorised trade mark application for einstein (stylised script). The opposition succeeded on the basis that the unauthorised trade mark application contravened public order and morality under Japan's Trade Mark Law.

John A. Tessensohn and Shusaku Yamamoto

The first trademark law of Japan was enacted in 1899 together with the Patent Law. Even though Japan's trademark law is slightly more than 100 years old, a recent ferment of legislative and judicial groundbreaking changes in the last few years has reformed the law. Several significant developments in 2000 reinforced this spirit of progressive change, and this article will highlight these developments.

John A. Tessensohn and Shusaku Yamamoto

In the first case over a .jp domain name, the Toyama District Court has ordered a website to be shut down for infringing a famous name. John A Tessensohn examines the decision

In a landmark court decision, the Toyama District Court has ordered a portable-toilet manufacturer, Toyama-based Nihonkai Pakuto, to stop using its internet domain name, jaccs.co.jp, which is identical to the name of a well-known Tokyo-based consumer credit firm Jaccs Co (Jaccs KK v Nihonkai Pakuto YK Heisei 10 (wa) 323, Toyama Dist Ct, dated December 6 2000).

Jaccs had initiated a lawsuit against the portable-toilet manufacturer alleging that Nihonkai Pakuto's use of the domain name, which is identical or similar to Jacc's well-known trade mark, constituted an act of unfair competition. It also argued that a domain name is an indicator of goods and services since a domain name has an important function in indicating which company provides the goods and services. When consumers access a famous company's web site, they generally presume that the company incorporates its trade mark into its domain name. Jaccs requested the Toyama District Court for relief under Japan's Law to Prevent Unfair Competition.

The portable-toilet manufacturer's response was that the domain name was not a trade mark but a symbol representing an internet protocol address linked to a particular website and, in this respect, it served the same function as a telephone number. The company has further claimed that "JACCS" on the company's home page stands for the name of a group of local companies, in full the Japan Associated Cozy Cradle Society. The Toyama-based firm argued that an internet domain name can be obtained on a first-come first-served basis and that Jaccs's domain name need not be the same as a trade mark right.

(C) 2001 John Tessensohn.
The author is a member of Shusaku Yamamoto in Osaka

Jones New York Japan

In Jones New York, the Tokyo High Court was successfully persuaded to consider favourably the evidence of shopping and retail patterns of Japanese tourists outside Japan. The court held that TV news reports documenting Japanese shoppers frequenting and visiting outlet malls were material in determining whether the mark was well known among Japanese consumers in general. The Tokyo High Court also adopted the pronunciation of the mark by the commonly accepted consumer and trade usage in the market-place rather than the JPO's static aural/oral examination (a side-by-side) comparison of the marks. This was crucial in the Tokyo High Court's finding that the cited senior registration of Jones was not similar to the junior filed application, Jones New York. This comment will outline this unprecedented pro-foreign trade mark owner decision and explain its significance to foreign owners of trade marks that are well known overseas and not in Japan.

Shusaku Yamamoto and John A. Tessensohn

John A Tessensohn and Shusaku Yamamoto explain the evolution of a trade mark dispute over the Starbucks logo, and examine the usefulness of Japan's Unfair Competition Prevention Law

On June 26 2000 Starbucks Coffee Japan Ltd petitioned to the Tokyo District Court for a preliminary injunction against Japanese coffee chain-operator, Doutor Coffee Co, for allegedly using a design that is confusingly similar to Starbucks world-famous logo.

The plaintiff, Starbucks Coffee Japan, Ltd, is a joint venture between Starbucks Coffee International and Japanese retailer and restaurateur, SAZABY Inc. Since Starbucks' first Japanese store opening on August 2 1996, Starbucks Coffee Japan has opened 131 stores. However, Doutor is no shrinking violet in Japan's coffee marketplace as this Japanese chain of European-style coffee bars is also extremely popular. From two shops at the end of December 1980, the company has 667 shops as of the end March 1999.

Starbucks Coffee Japan requested the court to order its Japanese competitor to stop using the current logo advertising Excelsior Cafe, an upmarket coffee-shop chain run by Doutor at 21 locations in Tokyo, Kanagawa and Saitama prefectures. Starbucks Coffee Japan alleged that the Excelsior logo, which uses a round green background with white block letters, is confusingly similar to Starbucks own distinctive logo. Starbucks signature logo consists of a crowned mermaid-siren with long flowing hair, abstract-representational in form, depicted in black and white and encircled by a band of green.

(C) 2000 John A Tessensohn and Shusaku Yamamoto.
John A Tessensohn is a member of Shusaku Yamamoto and Shusaku Yamamoto is the founder-owner of the firm in Osaka, Japan. This paper reflects only the present considerations and views of the authors, which should not be attributed to Shusaku Yamamoto or to any of its present or future clients.