American Intellectual Property Law Association IP Practice in Japan Committee October 1718, 2006 Rec

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American Intellectual Property Law AssociationIP
Practice in Japan CommitteeOctober 17-18,
2006Recent Cases Re Post-Sales Trademark
Infringement

• Yoshikazu Iwase
• Anderson Mori Tomotsune, Tokyo Japan
• Japan Trademark Association
• yoshikazu.iwase_at_amt-law.com

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Topics/Issues

• Risograph Case (The Tokyo High Court, August 31,
  2004)
• Recycling
• Cartie Case (The Tokyo District Court, December
  20, 2005)
• Modification

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Risograph Case(Tokyo High Ct. Aug. 31, 2004)

• Facts
• Plaintiff (Riso Kagaku K.K.) sold bottles filled
  with ink.
• The ink-bottles were recycled.
• After all the ink was used, the ink-bottles were
  collected and refilled with ink by Plaintiff.
• Plaintiffs trademark

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Risograph Case, Contd

• Facts (Contd)
• Defendant collected the used ink-bottles, filled
  them with ink, and
• (a) returned them to the original customers and
• (b) sold them to new customers

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Risograph Case, Contd

• Conclusion
• The Tokyo High Court found trademark
  infringement.
• Cf. the Tokyo District Court did not find
  infringement.
• The Supreme Court refused to hear the appeal by
  the defendant.

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Risograph Case, Contd

• Reasons
• The fact-finding of the district court was
  corrected.
• The district court found that
• (a) Defendant collected used bottles from the
  customers of Plaintiffs products and
• (b) returned the refilled bottles to the same
  customers.
• The district court found that there was a
  one-on-one relationship between Plaintiffs
  original products and the recycled products
  provided by Defendant.
• A one-on-one relationship the customer who
  first used Plaintiffs ink-bottle receives the
  same ink-bottle refilled by Defendant.

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Risograph Case, Contd

• Reasons (Contd)
• The Tokyo High Court found that
• based on the fact that there was no such
  one-on-one relationship,
• the Plaintiffs trademark printed on the products
  functions as a source identifier
• the trademark created a likelihood of confusion
  among customers (i.e., it is likely that
  customers may mistakenly believe that the ink
  provided by the Defendant was the Plaintiffs.)
• Cf. District Court no likelihood of confusion
  where there is a one-on-one relationship.

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Cartie Case(The Tokyo District Court, Dec. 20,
2005)

• Facts
• Plaintiff (Cartie) sold watches (e.g., Pasha),
  etc. without diamonds.
• Plaintiff also sold watches and other products
  with diamonds, which were more expensive than
  those without diamonds.
• Defendant purchased Plaintiffs products and
  added diamonds to them.

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Cartie Case, Contd

• Facts (Contd)
• Defendant indicated After Diamond on its
  advertisement of the products.

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Cartie Case, Contd

• Conclusion
• The Tokyo District Court found trademark
  infringement.

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Cartie Case, Contd

• Reasons
• (A) Defendant damaged the quality guarantee
  function of Plaintiffs trademark.
• Plaintiff conducted its own quality control.
• Plaintiff also sold watches with diamonds, which
  were more expensive than those without diamonds.
• Diamonds put on the Plaintiffs genuine products
  were larger than those added to Defendants
  products.
• The quality of the diamonds used by Defendant
  were not good.
• There was a scratch on the face of the diamonds
  of Ds products.

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Cartie Case, Contd

• Reasons
• (B) Defendant damaged the source-identification
  function of Plaintiffs trademark.
• Defendant put indication of After Diamond on
  the advertisement of its products.
• This indication was not sufficient to eliminate
  the damage to the source-identification function
  and quality guarantee function of Plaintiffs
  trademark.

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Considerations

• Recycle case
• The one-on-one relationship is the key fact.
• whether there is a likelihood of confusion
• whether Plaintiffs trademark affixed on the
  products functions as a source identifier
• A trademark cause of action should be considered
  where sales of recycled goods are at issue.

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Considerations, Contd

• After modification case
• The quality guarantee function is emphasized to a
  greater extent than the source-identification
  function.
• Whether there is a competing/equivalent product
  to the plaintiffs genuine product is important.
• The quality of the defendant products is also
  relevant.

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American Intellectual Property Law AssociationIP
Practice in Japan CommitteeOctober 17-18,
2006Recent Cases Re Post-Sales Trademark
Infringement

• Yoshikazu Iwase
• Anderson Mori Tomotsune, Tokyo Japan
• Japan Trademark Association
• yoshikazu.iwase_at_amt-law.com