Toyo Enterprise Company, Inc. (hereafter "Toyo") filed an Appeal with Tokyo High Court against the JPO's trial decision of cancelling the registered Japanese trademark No. 4,145,016 under section 50 of the Japanese Trademark Law. On March 26, 2003, Tokyo High Court reversed the JPO's trial decision of cancelling the registration of the trademark.

The background and more details of the case are presented as follows.

Toyo is the owner of the registered trademark and has the exclusive right to use it in association with the goods designated thereby, i.e. clothing belonging to Class 25, such as T-shirts. The trademark consists of a left-sided profile of a male Native American illustration with two feathers on his hair and a silhouette background. (As shown below.)

On April 17, 2002, Indian Motorcycle Company, Inc. (hereafter "IMC") filed a non-use cancellation request with the JPO against the registration of the trademark according to section 50 of the Japanese Trademark Law. Since Toyo was not present at the trial, the JPO issued a decision to cancel the registration of the trademark.

Toyo then filed an appeal with Tokyo High Court to revoke the trial decision by the JPO, insisting that the JPO's decision was incorrect. Toyo alleged that the registered trademark has been used within the past three years, and submitted physical and documentary evidences, i.e. T-shirts and sweat shirts that are printed with a design that incorporates the trademark and catalogues showing the same.

In response, IMC stated that Toyo was using the trademark as a part of a design pattern printed on its products, and argued that the way Toyo used the trademark does not conform to the law since it cannot be considered as "a use of a registered trademark" stated in section 50 of the Japanese Trademark Law.

IMC alleged that, for a trademark to be regarded as being "used", it must be used in association with goods to allow consumers to recognize the goods as being connected to the business of a company. Therefore, using a trademark as a part of a design pattern shall not be considered as a "use of a registered trademark".

However, in regard to IMC's arguments, the court asserted that the design marks used on Toyo's products are identical to the registered trademark in view of the social custom. Further, the court commented that the mark's distinctiveness shall not immediately be denied even though the mark may function as a design as well.

Thus, the court judged that the use of the trademark in such form does fall under the "use of a registered trademark" in the meaning of section 50 of the Japanese Trademark Law, and dismissed IMC's arguments accordingly.

This case established clearly that, even though a trademark may function as a design, it would still maintain its distinctiveness to be recognized among consumers as an independent trademark.

Case No. H14(行ケ)500

Further references:
Approved judgment (in Japanese)
Annexed reference of the approved judgment