APAA e-Newsletter (Issue No. 31, October 2022)
Injunctive Action For Trademark Infringement Case – Reiwa 2 (WA)1160 Judgment of Tokyo District Court, on January 31, 2022
Toyoko Yoshida, Shimizu and Daigo (Japan)
Plaintiff’s Registered Mark 1:
Reg. No. 0653109 “KENT (stylized)” 【】
Goods: Clothing, etc. in Class 25
There is a licensee to use this mark, who started exclusive sales of clothing with “Kent” brand since 2001.
Plaintiff’s Registered Mark 2:
Reg. No. 5037926 “Kent (logo)” 【】
Goods: Clothing in Class 25
Defendant’s Registered Mark:
Reg. No. 5225111 “KENT BROS./ KENT BROS in Katakana” 【】
Goods：Non-Japanese style outer clothing; coats; etc. in Class 25
Defendant’s Marks used for clothing
Mark 1: “KENT/MARINE SPIRIT/ BROS.” 【】
Mark 2: “KENT/ BROS.” 【】
Issue 1: Similarity between the Plaintiff’s registered marks and the Defendant’s marks in use – whether it is permitted to divide elements of composite marks and observe each element separately.
Issue 2: Defense – would the Defendant’s marks in use “KENT/MARINE SPIRIT/ BROS.” and “KENT/ BROS.” be deemed use of its registered mark “KENT BROS./ KENT BROS in Katakana”?
Tokyo District Court Decision
The Court concluded that the Defendant’s Marks in use are similar to Plaintiff’s registered marks.
“Each of the marks used by the Defendant is similar to each of the Plaintiff’s registered trademarks. Also, Defendant’s products are covered by the designated goods of the Plaintiff’s registered trademarks. Thus, use of the Defendant’s marks shall be deemed to infringe the Plaintiff’s trademark rights.”
Whether the Defendant’s Mark 1 can be observed separately
“Regarding the Defendant’s Mark 1 in use, the word ‘KENT’ and the word ‘BROS.’ are placed in different lines and can be independent words. Because of that, both words are united considerably weaker than that if both words appeared in one line. Also, both words are separated by the word ‘MARINE SPIRIT’ in the middle line.
Furthermore, ‘KENT’ is fairly well-known, and can give traders and consumers fairly strong impressions as a sign to identify the source of goods of the Plaintiff’s licensee.
Therefore, it is reasonable to recognize that only ‘KENT’ in the Defendant’s Mark 1 can be observed separately.
Consequently, it is recognized that Defendant’s Mark 1 has ‘Kent’ in sound and has the concept of ‘KENT’ brand products.”
Whether the Defendant’s Mark 2 can be observed separately
“Although there is no element ‘MARINE SPIRIT’ in the middle line unlike the Defendant’s Mark 1, it is reasonable to recognize that ‘KENT’ can be observed separately given that words ‘KENT’ and ‘BROS.’ are not well united and ‘KENT’ can give fairly strong impressions as a sign to identify the source of goods.
Consequently, it is recognized that Defendant Mark 2, like Defendant Mark 1, has ‘Kent’ in sound and has the concept of ‘KENT’ brand products.”
“BROS.” in the Defendant’s Marks 1 & 2
The Defendant argued that the “BROS.” portion in the Defendant’s Mark 1 and 2 has the function of identifying the source by citing other’s registered mark “BROS/ BROS in Katakana”.
Tokyo District Court denied the Defendant’s arguments.
“Although there is other’s registered mark ‘BROS/ BROS in Katakana’ for clothing in Class 25, it is not certain how well-known this mark is from all the evidence.
Therefore, it cannot be recognized that ‘BROS.’ in the Defendant’ Marks has sound and concept as a mark identifying the source based on the above other’s registered mark.”
“On the other hand, ‘Kent’ gives a strong impression on traders and consumers as a mark identifying the source of goods, and when the ‘Kent’ mark is used on clothing, it is recognized that traders and consumers are associated with the ‘Kent’ brand”.
Tokyo District Court ruled that each of the Defendant’s marks in use were different in appearance from the Defendant’s registered trademark.
“In light of the differences in appearance, the Defendant’s marks in use and the Defendant’s registered trademark cannot be deemed as identical from common sense considering the actual state of transaction. Therefore, even if the defense of use of the registered trademark asserted by the Defendant could be applied in this case, the use of the Defendant’s marks on its products is not deemed to be use within the scope of the Defendant’s registered trademark. Consequently, the above defense is groundless.”
As to use of a registered trademark, there is no need to be completely the same as the registered trademark. That is, the scope regarded as use of a registered trademark includes “a trademark deemed identical from common sense perspective with the registered trademark” and the following are listed as case examples:
(i) a trademark consisting of characters identical with the registered trademark but in different fonts;
(ii) a trademark that is written in different characters, Hiragana characters, Katakana characters, or Latin alphabetic characters, from the registered trademark but identical with the registered trademark in terms of pronunciation and concept; and
(iii) a trademark consisting of figures that are considered identical in terms of appearance as those of the registered trademark.
This case demonstrates that trademark right holders must use caution when using variants of registered trademarks.