Background
Toto Living Cooperative Union, a consumer cooperative with approximately 260,000 members, is the registered owner of the trademark “たべるん” (Taberun) in Class 35, covering retail and wholesale services for a broad range of goods including textiles, apparel, foodstuffs, beverages, household items, and numerous other product categories. Eatwell Co., Ltd., a competitor, filed a cancellation request under Japan’s Trademark Act Section 50, which allows cancellation of registered trademarks that have not been used for three consecutive years. The request was registered on December 17, 2024, establishing the “proof period” of December 17, 2021 to December 16, 2024. The Patent Office’s Trademark Trial and Appeal Board initially rejected the cancellation request as baseless on December 18, 2025. Eatwell appealed to the Intellectual Property High Court.
The central dispute concerned whether the trademark had been “used” during the proof period. Eatwell argued that “Taberun” appeared on the defendant’s website and promotional materials only as the name of a cartoon character—one of three characters in a mascot group called “Runrun Z’s”—and therefore did not function as a trademark identifying the source of retail services. The defendant contended that even if not used as a source identifier, the mark was used in connection with the specified services, which is sufficient under Trademark Act Section 50.
The Court’s Holding
The court unanimously dismissed Eatwell’s cancellation request and upheld the Patent Office’s decision. The Intellectual Property High Court held that Trademark Act Section 50 does not require that a mark be used as a source identifier (商標的使用). Unlike other trademark provisions that explicitly limit protection to marks used in a manner that identifies source, Section 50 uses broader language requiring only that the registered trademark be “used” in some manner in connection with the specified goods or services. The court reasoned that this linguistic distinction reflects the statutory design to provide a more expansive standard for determining non-use.
Applying this standard, the court found that the defendant had demonstrated sufficient use. Evidence showed that on December 15, 2023, the defendant published a website describing its private brand “わたしのこだわり” (My Particular Style) in question-and-answer format. The “Runrun Z’s” mascot characters—including “Taberun”—were displayed prominently as guides answering consumer questions about the brand’s food and beverage products. The characters’ names appeared in a structured layout: the red header text “わたしのこだわり調査隊” (“My Particular Style Investigation Team”) and “みんなの疑問に答えます！” (“We Answer Everyone’s Questions!”), followed by images of the three characters with their names below, and finally the text “さんぼんすぎキャラクター「るんるんズ」” (Sanbonsugi Characters “Runrun Z’s”). This display constituted use of the trademark in connection with advertising for food and beverage retail services, meeting the definition of trademark use under Trademark Act Section 2(3)(8): “providing information containing an advertisement for services by electronic means with a mark attached.” Because the defendant proved use during the proof period, the registration could not be cancelled.
Key Takeaways
- Japanese Trademark Act Section 50 does not limit “use” to use as a source identifier; use in any manner in connection with specified goods or services is sufficient to avoid cancellation for non-use.
- Trademark use can occur through character or mascot display in promotional contexts, even where the mark appears primarily as a character name alongside other identifying information.
- Evidence of use may include website publication, promotional literature, and other materials distributed by the trademark owner demonstrating connection between the mark and the specified services.
- The distinction between trademark protection standards (which require source-identifying use) and non-use cancellation standards reflects statutory design and affects the burden of proof on parties challenging registrations.
Why It Matters
This decision clarifies an important boundary in Japanese trademark law. Under the standard for initial trademark validity and infringement, marks must be used in a manner that identifies source—a requirement that prevents monopolization of decorative, descriptive, or merely ornamental uses. However, the court determined that non-use cancellation under Section 50 applies a different, broader standard. This asymmetry means trademark owners have greater leeway in demonstrating use to defend against cancellation than they would in asserting infringement against a third party’s similar use. The ruling protects trademark registrations where the mark appears in branded promotional or advertising contexts, even if consumers may primarily perceive it as a character name rather than a source indicator.
For trademark owners, the decision reduces the risk of losing registrations through cancellation proceedings where marks are integrated into advertising, packaging, or promotional campaigns associated with the specified goods or services. For potential competitors seeking to challenge unused or abandoned marks, the ruling sets a higher bar: a challenger must prove absence of use across three years, knowing that the trademark owner can satisfy the requirement through a broad range of uses, not only those functioning as primary source identifiers. The decision reflects the Japanese courts’ approach to balancing IP protection with the public interest in removing truly abandoned marks from the register.