Background
A.I.C. owned a registered trademark for “ゴミサー” (“Gomisaa”) and sued Eskey Koki over its use of that mark on commercial food-waste processors. A.I.C. sought an injunction against use, sale, advertising, export, and online provision of marked products, destruction of the products and related materials, and ¥417,422,688 in damages plus interest.
Eskey Koki had originally devised “Gomisaa” as the name of the food-waste processor it developed and continued using it, while A.I.C. had used the name as Eskey Koki’s sales distributor. After learning that Eskey Koki’s former trademark right had expired, A.I.C. applied for and obtained the trademark registration without Eskey Koki’s consent. The Tokyo District Court dismissed all claims, holding that enforcement against Eskey Koki would constitute an abuse of rights, and A.I.C. appealed.
The Court’s Holding
The Intellectual Property High Court affirmed and dismissed the appeal. Given the parties’ history, A.I.C. remained obliged, as between these parties, to respect Eskey Koki’s continued use of the product name even after the former trademark expired and A.I.C.’s registration took effect. Eskey Koki had a legitimate interest in continuing that use without interference from A.I.C.; accordingly, enforcing A.I.C.’s trademark against Eskey Koki was impermissible.
The court rejected A.I.C.’s argument that Eskey Koki had consented to the application, finding no such consent. It also held that the registration’s validity—including the final rejection of Eskey Koki’s invalidation challenge—did not determine whether enforcement against this particular defendant was an abuse of rights. Although Eskey Koki’s inadequate intellectual-property management caused the former right to lapse and prevented it from monopolizing the name, that lapse did not permit A.I.C. to stop Eskey Koki from using the name.
Key Takeaways
- A valid trademark registration may be unenforceable against a particular defendant when enforcement would constitute an abuse of rights.
- A distributor that registers, without the manufacturer’s consent, a product name devised and historically used by the manufacturer may not use that registration to block the manufacturer’s continued use.
- The failure of a trademark-invalidation challenge does not foreclose a separate defense based on the circumstances of enforcement between the parties.
Why It Matters
The decision distinguishes trademark validity from enforceability. Even where registration remains legally valid, Japanese courts may examine the parties’ commercial relationship, the origin and history of the mark, and the registrant’s conduct before allowing enforcement against a specific user.
Manufacturers and distributors should document ownership and registration authority for product names. A lapsed registration may eliminate exclusivity, but it does not necessarily allow a former business partner to appropriate the name and prevent its originator from continuing to use it.