istock-502787871_brianajackson
15 February 2018Jurisdiction reportsRyo Maruyama

Japan jurisdiction report: Picking the right article

In one such recent case, our firm acted on behalf of Ctrip.com International, a China-based company, to invalidate the trademark ‘Ctrip japan/赳넋휑굶’, registered in Japan by a Japanese company unrelated to our client (Trial for Invalidation No. 2016-890068).

Ctrip was established in 1999, is headquartered in Shanghai, and is now one of the largest travel service companies in China, including an online operation that arranges hotel reservations and airline ticket bookings, and provides a wide range of other travel-related services.

In January 2015, 瓏駕삔櫓베봄運 (Chukaikouun), a Japanese company with no connection to Ctrip, applied to register the trademark ‘Ctrip japan/赳넋휑굶’ in Japan, and in May 2015 the Japan Patent Office (JPO) approved the registration of that trademark (Japan Trademark Registration No. 5763706). Following that registration, in August 2015, Ctrip filed an opposition to cancel the registration (Opposition No. 2015-900265).

The JPO upheld the registration because Ctrip filed the opposition on the inadequate grounds that the registration should have been refused under the following two provisions of the Japan Trademark Law: (1) article 4(1)(vii), which provides that a trademark shall not be registered if it is likely to cause damage to public policy; and/or (2) article 4(1)(xv), which provides that a trademark shall not be registered if it is likely to cause confusion in connection with the goods or services pertaining to another person’s business.

Ctrip was thus faced with a crisis in that the Ctrip brand name, which was well-known worldwide, was being freely used in Japan by a company that had no connection with Ctrip.

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at atapping@newtonmedia.co.uk