Cases re:well-known/famous marks 2003 AIPLA Meeting Ken Nakayama Japan Trademark Association Matsubara, Muraki & Associates

Palm Springs Polo Club JPO rejected this mark under Tokyo High Court reversed the JPO rejection –No likelihood of confusion w/Polo marks Supreme Ct. reversed the High Ct. decision in 2000 –Prominent part of the above mark resides in the “Polo” –Need to prevent free-ride or dilution of the Polo marks

CAMBRIDGE Univ. POLO CLUB The Polo/Ralph Lauren filed opposition JPO supported such opposition and rejected the mark under Cambridge Univ. filed appeal to Tokyo High Ct. Tokyo High Ct. recognized registrability in 2002 –Prominent part of the mark resides in CAMBRIDGE UNIVERSITY –No likelihood of confusion

Levi’s Unfair Competition Tokyo High Ct. in 2001 Pattern of stitch on back-pocket of jeans can work to identify source of products Peculiar stitch of Levi’s jeans has been well-known △ ‘S stitch confusingly similar to Levi’s and likelihood of confusion

ILANCELI Tokyo High Ct G of the above mark: clothings, shoes, belts G of LANCEL: bags, belts, etc. Likelihood of confusion

ETNIES Tokyo High Ct JPO, via invalidation trial, invalidated reg. for the mark ETNIES cl 25 under Registrant filed appeal Tokyo High Ct. supported JPO’s decision

ETNIES (2) Tokyo High Ct’s decision in 2002 – prevents dilution, no requirement of likelihood of confusion – only requires the prior mark has been well known; not require highly well known –If the mark has been well known in foreign country, that is enough to apply – requires bad faith(intention to gaining unfair interests, to inflict damage on another person or other unlawful objects

ETNIES (3) Here, there was business contact b/w the registrant and the owner of ETNIES mark prior to the filing of the application The registrant seems to obtain a trademark registration to obtain leverage for setting up business relation

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