Japan jurisdiction report: Picking the right article

15-02-2018

Ryo Maruyama

Japan jurisdiction report: Picking the right article

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In the past, Chinese entities often copied brands owned by Japanese companies, but recently Chinese companies have had to take legal action in response to the illegal use of their brands by Japanese entities.

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

Accordingly, in 2016, our firm filed on behalf of Ctrip an action to invalidate the registered trademark. We submitted evidence that demonstrated both (1) the well-known status of Ctrip’s registered trademark ‘Ctrip’; and (2) the unfair intention of Chukaikouun in applying to register the ‘Ctrip japan/
赳넋휑굶’ mark in Japan.

We argued that the registration should be invalidated under Trademark Law article 4(1)(xix) (Table 1). As a result, in 2017 the JPO invalidated the registration of the ‘Ctrip japan/赳넋휑굶’ mark. 

table1-3.jpg

Ctrip succeeded in the invalidation appeal because we could demonstrate the unfair purpose of Chukaikouun. Although it is very difficult to demonstrate an unfair purpose as referred to in article 4(1)(xix), we collected evidence and demonstrated that (1) before Chukaikouun applied to register the ‘Ctrip japan/赳넋휑굶’ mark in Japan, that company had contacted Ctrip and proposed a business partnership with Ctrip in Japan; (2) Ctrip had rejected that proposal because the mark ‘赳넋휑굶’ infringed Ctrip’s IP rights; and (3) Chukaikouun had filed an application to register the ‘Ctrip japan/赳넋휑굶’ mark in Japan about 30 days after Ctrip had rejected Chukaikouun’s business-partnership proposal.

Because of this, Ctrip succeeded in the invalidation appeal based on article 4(1)(xix), which is usually difficult to use to win an appeal.

This shows how important it is to select the Trademark Law article being relied on in a legal action and to submit proper evidence to the JPO and/or the court.

Ryo Maruyama is a Japanese patent attorney and vice-president and chief patent attorney of Kyosei International Patent Office. He can be contacted at: info@kyosei.or.jp

Japan IP, trademarks in Asia, Japan jurisdiction report, Ryo Maruyama, Kyosei International Patent Office, trademark infringement

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