In an unexpected sweet valentine to trademark owners, the Intellectual Property High Court of Japan (IPHCJ) issued, on February 14, 2012, a landmark pro-owner trademark infringement decision regarding an online shopping mall operator's duty to take down infringing materials sold by third party store owners selling goods via the online mall.

In this breakthrough decision, Japan's specialist intellectual property appellate court outlined when the online mall operator could be liable for trademark infringement for sales by such third party online merchants and that an online shopping mall operator could be required to pay damages if it neglects to delete items that violate trademark rights from its website within a reasonable amount of time, Perfetti Van Melle S.p.A v Rakuten, Heisei 22 (ne) 10076 dated February 14, 2012.

John A. Tessensohn and Shusaku Yamamoto

The owner of arguably the world's most famous rock logo, the Rolling Stones' famous tongue and lips mark, suffered a stunning trade mark opposition setback after the Intellectual Property High Court of Japan (IPHCJ) revoked a favorable opposition decision on the basis that a junior lips and tongue mark is not liable to cause confusion amongst rock music consumers. This IPHCJ decision underscores the supremacy of consumer confusion for trade mark similarity determination and the weight that the IPHCJ places on the expertise and sophistication of class of consumers no matter how iconically famous the senior mark may be. The article also highlights the procedural pitfalls and strategic shortcomings in Japan's trade mark opposition system and why brand owners will be better served by using its invalidation appeal system to police competitors' trade marks in the world's second largest economy, Japan.

John A. Tessensohn and Shusaku Yamamoto

E-commerce has transformed the way the world and Japanese retailing with online sale revenues expanding every year by around 17% since 2005, and are expected to grow at nearly 10% a year for the next five years. In Perfetti Van Melle S.p.A v. Rakuten K.K. Heisei 21 (wa) 33872 dated August 31, 2010, the Tokyo District Court declined to hold Japan's largest online shopping operator liable for trademark infringement or unfair competition as the trademark infringer was an independent operator from the online shopping operator website.

John A. Tessensohn and Shusaku Yamamoto

By having confusion as the heartbeat of its similarity analysis, Japanese courts provide the certitude and lucidity for legitimate brandowners seeking to protect their valuable marks and goodwill. Predictable assessments of marks in such a dynamic commercial environment will permit trademark law to better police the marketplace and also provide reasonable clarity and out-of-bounds markers for the competition. Recent IP High Court invalidation decisions are examples of this positivist enlightened judicial attitude. Japanese courts focus on the concept of consumer confusion has served as the dominant touchstone for similarity determination. The IP High Court is certainly more dynamic and less dogmatic than the JPO in such similarity determination issues, which is a refreshing approach that rings true for brandowners everywhere.

John A. Tessensohn and Shusaku Yamamoto

In Uprise Product Yugen Kaisha v. Commissioner of Japan Patent Office, Heisei 22 (gyo-ke) 10274 Intellectual Property High Court of Japan (2010), the owner of arguably the world's most famous rock logo, the iconic tongue and lips mark, suffered a stunning trademark opposition setback after the Intellectual Property High Court of Japan revoked a favorable opposition decision on the basis that the junior lips mark is not liable to cause confusion amongst the relevant class of consumers of rock music.

The decision also highlights the procedural pitfalls and strategic shortcomings in Japan's trademark opposition system.

John A. Tessensohn and Shusaku Yamamoto

In a positive pro-brand owner decision, the Intellectual Property High Court of Japan (IPHCJ) protected one of the world's most famous marks, BlackBerry, when it invalidated an audaciously similar junior trademark "berry mobile" for 'mobile cellular telecommunication services' that was owned by a Japanese start-up venture company, Research in Motion Ltd., v a2network K.K., Case No. Heisei 21 (gyo-ke) 10328 dated March 17, 2010.

The JPO's first instance decision to dismiss RIM's Invalidation Appeal was a routine manifestation of its rigid and mechanical application of its similarity examination provisions its Trademark Examination Standards.

The IPHCJ has repeatedly granted relief to worthy cases suffering dubious outcomes from the JPO's doubtful application of its Trademark Examination Standards. The IPHCJ is certainly more dynamic and less dogmatic than the JPO which is a refreshing approach that rings true for brandowners everywhere.

John A. Tessensohn and Shusaku Yamamoto

Stubbornly deteriorating trademark opposition success rates, coupled with contrasting favorable fortunes of parties' success rates in trademark invalidation actions, and the inherent opposition procedural handicaps have encouraged trademark owners, both Japanese and foreign, to increasingly use Japan's trademark invalidation appeal procedures to police against conflicting trademarks in Japan, the world's second largest economy.

Japanese and foreign brand owners have cottoned on to the superior procedural and statistical advantages of Japan's Invalidation Appeals, and increasing their usage of this vital legal instrument to protect the exclusivity and distinctiveness of their trademarks against intrusions by unlicensed or unauthorized third parties. Almost all of the recent high profile and significant Intellectual Property High Court of Japan trademark decisions have all concerned invalidation proceedings initiated by trademark registrants.

Trademark owners must not only diligently monitor the marketplace for potential infringement, but also use the effective trademark legal mechanisms to police and enforce their trademark rights via the trademark Invalidation Appeal procedure in Japan. The statistical levels of success and procedural advantages make the Invalidation Appeal procedure the default procedure of choice.

John A. Tessensohn and Shusaku Yamamoto

Chocolaterie Guylian NV v Commissioner of Japan Patent Office, Case No. H-19 (gyo-ye) No. 10293, 30 June 2008, Intellectual Property High Court of Japan (IPHCJ) This decision is a significant pro-trade mark development, being the first time that an appellate Japanese court has held that a 3D shape was inherently distinctive and registrable, outlining the distinctiveness criteria which will control future 3D trade mark examinations.

John A. Tessensohn and Shusaku Yamamoto