Background
The plaintiff registered the standard-character mark “Alphacool” for computer peripherals and cooling equipment, including devices for cooling computer components. The defendant, Alphacool International GmbH, had used several ALPHACOOL-formative marks for computer peripherals since its establishment in 2010 and had sold its computer-cooling products in Japan over the internet since approximately 2016.
The defendant petitioned the Japan Patent Office to invalidate the registration. The JPO found the mark contrary to public order or morality under Article 4(1)(vii) of the Trademark Act and invalidated it. The plaintiff then sought cancellation of that administrative decision in the Intellectual Property High Court.
The record showed that the plaintiff had filed 80 trademark applications between October 2019 and August 2024. Many concerned coined marks identical or similar to marks already used by others, including well-known marks such as “xiaomi,” “dyson,” and “roomba.” Shortly after obtaining the Alphacool registration, the plaintiff also warned the defendant’s Japanese distributor that its use of “Alphacool” infringed the registration and demanded that the use cease.
The Court’s Holding
The court dismissed the plaintiff’s action and upheld the JPO’s invalidation decision. It found that, when the plaintiff applied for and obtained registration, the defendant’s cited marks were at least known to some degree among relevant consumers as identifying the defendant’s computer peripherals. The plaintiff’s mark and the cited marks were similar because they shared the pronunciation “Alphacool” and had closely resembling appearances, although none conveyed a particular concept.
Considering the defendant’s prior use, the plaintiff’s rapid enforcement demand after registration, and the plaintiff’s broader filing pattern, the court inferred that the plaintiff knowingly applied for the mark to obstruct the defendant’s use or exploit the goodwill associated with the defendant’s marks. That filing history lacked social legitimacy, and allowing the registration would be fundamentally incompatible with the order contemplated by trademark law. The mark therefore fell within Article 4(1)(vii) as one liable to harm public order or morality.
The court rejected the plaintiff’s claim that it had independently used “Alphacool” since approximately 2012. The plaintiff’s early-examination submission had instead stated that use began in May 2021, and the court found the contrary evidence unreliable. It also rejected the argument that later applications could not inform the plaintiff’s intent, holding that the overall filing circumstances did not alter its conclusion.
Key Takeaways
- A trademark registration may be invalidated under Article 4(1)(vii) when the applicant knowingly files another party’s mark to obstruct that party or exploit its goodwill.
- The prior mark need not be proved widely famous where the evidence, taken together, establishes awareness, improper purpose, and a filing history lacking social legitimacy.
- An applicant’s broader pattern of seeking marks already used by others, together with post-registration enforcement conduct, may support an inference of bad-faith intent.
Why It Matters
The decision illustrates how Japan’s public-order-and-morality provision can reach abusive trademark acquisition even when the dispute concerns the applicant’s purpose and filing conduct rather than an inherently offensive mark. Courts may assess the full factual context, including other applications and conduct immediately after registration.
Foreign brand owners operating in Japan may therefore challenge a locally registered copy of their mark by presenting evidence of Japanese sales, market recognition, the registrant’s filing pattern, and attempts to use the registration against the legitimate brand owner or its distributors.