1. 1. What is GODZILLA?

GODZILLA is a famous film character (monster or creature) in Japan (and hopefully in other countries). Now, we can see many licensed goods bearing the mark GODZILLA at stores; however, those are limited to general consumer goods such as toys, soft toys, stationery, clothing, foods, etc., like other general licensed goods. The main issue in the following case is whether there is still a likelihood of confusion in the field of industrial machines in Class 7.

2. 2. The JPO Appeal Board's Ruling

The Plaintiff, the trademark owner of GODZILLA, filed an invalidation request against the Defendant's trademark registration No. 5490432:

designating "mining machines; construction machines; loading-unloading machines; agricultural machines; etc." (Class 7) on the grounds that (i) there was a likelihood of confusion with the Plaintiff's famous mark "GODZILA," (ii) the Defendant's mark had been filed and used in bad faith, and (iii) the Defendant free-rode the reputation of the Plaintiff's famous mark and such an act was against ethics of business. The JPO Appeal Board refused the Plaintiff's request and the Plaintiff filed an appeal at the IP High Court.

3. 3. The IP High Court's Ruling

The IP High Court found that:

- the Plaintiff's mark was famous and very creative;

- both marks were visually and phonetically similar;

- there were some correlations between the Plaintiff's licensed goods "toys; soft toys; stationery; clothing; foods; etc." and the goods covered by the Defendant's designated goods, such as "hydraulic jacks; electric jacks; grass cutter; etc.," which were available at home centers or via home shopping, because all of them targeted general consumers; and

- the Defendant filed other applications for marks apparently similar to other famous marks in Japan, e.g., "GARI GARI KUN", "STUDIO GABULLI".

In view of these considerations, the IP High Court overturned the JPO Appeal Board's decision, holding that there would be a likelihood of confusion between the two marks as though the goods bearing the Defendant's mark had been the Plaintiff's licensed goods or those marketed by the Plaintiff's related company.

4. 4. Small Practical Tips

Even in the case of a famous mark, it may be difficult to argue that there is a likelihood of confusion in a very different field; however, this case teaches us that it is a key to find a link (even small) between the two different fields. This is a matter of course, but it is, in practice, very important to keep this in mind.