This January, a tiramisu takeaway shop called "HERO'S" opened in TOKYO. This opening had a lot of attention among consumers.
 
Story…
 
 In 2012, the tiramisu shop "THE TIRAMISU HERO" selling tiramisu in a bottle opened in Singapore. THE TIRAMISU HERO had a cat character motif named "Antonio" and became popular in Singapore. THE TIRAMISU HERO has sold their tiramisu through mail order or events since 2013 in Japan.
 
          THE TIRAMISU HERO           HERO's

 THE TIRAMISU HERO posted their comments on their Japanese website - "Our brand log was imitated. We cannot use the brand name 'THE TIRAMISU HERO' in Japan". This post triggered a trouble and consumers flamed HERO's on websites. This is because the term "THE TIRAMISU HERO" was included in HERO's registered trademark and they used a cat character. In addition, HERO's sold tiramisu in a bottle like THE TIRAMISU HERO. Consumers considered the registered trademark as just an imitation and suspected that HERO's filed the application for their trademark in bad faith.
 
 HERO's initially posted their comments on their website - "Our tiramisu has nothing to do with other companies".  Then, under criticisms from consumers, HERO's posted the second comments - "HERO's intends to assign a right to use."  But, consumers thought such comments were not enough and paid attention to the fact that HERO's did not intend to assign their trademark right.  Consequently, HERO's second comments caused more trouble.
 
Lesson to be learnt
 
 This case attracted much attention. Among many opinions, some people suggested that the Japan Trademark Law had a defect.
 
 As you may know, the Japan Trademark system adopts the first-to-file rule, not first-to-use system. Under such system, as a rule, a party who files for registration first obtains a trademark right.  If a party registers a trademark which has been used by a third party, the third party has to prove the fame of their trademark, the registrant's bad faith, etc. in order to cancel the registration, It is generally difficult to prove these facts and, therefore, the prior registration is hardly cancelled.
 
 In the subject case, THE TIRAMISU HERO may seem to be a victim. However, we should also look to the fact that the trademark "THE TIRAMISU HERO" had not been registered despite the mark had been used since 2012 in Japan. While, from the point of view of business manner, HERO's conduct would be a problem, we can also say THE TIRAMISU HERO should have filed an application for their trademark in Japan earlier. Nevertheless, do you think it necessary to have a system to protect unregistered trademarks easily?
 
 Finally, there is another story. Due to this case, THE TIRAMISU HERO was also suspected to copy a cat character created by an individual illustrator and THE TIRAMIS HERO admitted they had referred to the character. We cannot see the light at the end of tunnel with this trouble.