APAA e-Newsletter (Issue No. 29, June 2022)

Trademark Issues on the Internet

Nami Togawa, Seiwa Patent &Law (Japan)

1. Issues concerning trademark rights

With the spread of EC transactions in recent years, the question of whether the use of trademarks on the Internet constitutes infringement of trademark rights of third parties has arisen. Unauthorized use of trademarks on Internet webpages (homepage contents) would possibly constitute trademark infringement, similar to unauthorized use thereof on real shop signboards and advertisements.

Some Court precedents that touch on this topic are introduced, below.

(1) Metatag

With regard to metatags, a court case recognizing trademark infringement in Japan is IKEA case, Tokyo District Court, January 29, 2015, Hanrei-Jiho, vol. 2249, page 86.

In that case, Inter IKEA Systems B.V. (Plaintiff), the owner of registered trademarks such as “IKEA” in Japan, sued an operator of a website providing mail-order services of IKEA products (Defendant), alleging that the Defendant’s act of using marks such as “IKEA Tsuhan” (Defendant’s Mark) as a metatag amount to infringement of the Plaintiff’s trademark rights. The Court acknowledged that there was trademark infringement, and granted injunctive relief, damages, etc. against the use of the Defendant’s Mark.

The Court held that the use of the Defendant’s Mark amounted to use as a trademark and acknowledged trademark infringement, stating that the Defendant’s Mark was displayed in the search results by a search engine as an explanation, summary or home page title of the Defendant’s website due to the descriptions thereof in html files as metatags. Further, the Court concluded that the use as a metatag or title tag should be recognized as trademark use, because it invites customers to access the defendant’s site by displaying the source of the retail business and making it visible to Internet users. It should be noted, however, that the above court case relates to description metatags, which are directly displayed on a search site (visible on a search site), not to key-word metatags (invisible on a search site). In other words, the above case did not hold that trademark infringement can be acknowledged with respect to metatags, in general.

(2) Search Advertising

There has been no clear cut judgment in Court precedents regarding whether the input of a trademark as a keyword on a search site constitutes trademark infringement or not.

In the “Sekken Hyakka” case (Osaka High Court, April 20, 2017, Case No. H28(ne)1737) the Court raised the possibility that if the related designated goods are displayed on a website in search results after the insertion of a keyword which is identical or similar to a registered trademark, such use of a trademark as a keyword might be recognized as trademark infringement. However, in that case, the Court finally held that there was no trademark infringement, taking various conditions into consideration.

(3) Hashtag (#)

Recently, an interesting Court decision was rendered on the issue of whether use of a trademark with “#” (Hashtag) constitutes trademark infringement or not (Osaka District Court, September 27, 2021, Case No. R2(wa) 8061).

In that case, the Defendant manufactured and sold bags in an online free market mall named “MERCARI” using “#charmantsac in katakana”. When customers conducted searches using “#charmantsac in katakana”, they would reach the Defendant’s website and have a chance to purchase the products displayed on the website. Therefore, the Plaintiff, who owned the trademark right for “charmantsac in katakana” (Reg. No. 6232133) in connection with “Class 18 Bags pouched”, filed a lawsuit and sought an injunction.

Even though the Defendant refuted that the combination of “#”and a word indicates its location on the Internet or SNS, the Court found that using a “#”together with a trademark would infringe the trademark right since it would function as a source identifier. As a consequence, the Court concluded that using “#” on the website in combination with a trademark constituted trademark infringement.

2. Concluding Remarks

From the above no. (3) hashtag case, even if a trademark is not directly affixed to goods/services, if a party is successful in putting forward evidence to demonstrate the fact that there is some connection between the used trademark and the related goods/services on the Internet, it is possible to allege trademark infringement. Therefore, where a client discovers counterfeits sold on the Internet in addition to shopping malls, it is recommended that the following points be considered and if checked and confirmed, proper legal action can be taken in Japan.

i) Whether a trademark in question is used in a metatag, keyword or hashtag.
(If it is used as a domain name, it would be worthwhile considering taking domain name dispute resolution procedures.)
ii) Whether general consumers can easily reach websites where counterfeits are displayed and sold as a result of conducting searches by using such a metatag, keyword or hashtag.
iii) Whether the trademark clearly functions as a source identifier on the website. In other words, by using the trademark in a metatag, keyword or hashtag, whether or not general consumers are invited and/or attracted to the website where counterfeits are sold.