Court: Intellectual Property High Court, Third Division

Case number: 2015 (Gyo-Ke) 10219

Date: April 12, 2016

The Intellectual Property High Court ruled in favor of a watchmaker who produced FRANCK MULLER parody watches. The details are as follows.

Snapshot

Dinks Kabushiki Kaisha (“plaintiff”) registered the Japanese T.M. Reg. No. 5517482 designating “watches; precious stones and their imitations, unwrought and semi-wrought; key rings; Jewelry ornaments” in Class 14 (hereinafter referred to as the ‘subject mark’).

(Sound: frank miura)

Plaintiff used the subject mark on their FRANCK MULLER parody watches.

FMTM DISTRIBUTION LTD (“defendant”) filed an invalidation action against the subject mark by citing their following trademarks.

Citation 1     (Kana letters pronounced as ‘franck muller’)

Citation 2  

Citation 3  

The JPO Appeal Board found that the subject mark should be invalid for the following reasons:

(1) The subject mark and the citations are similar to each other;

(2) The use of the subject mark would cause likelihood of confusion; and

(3) The subject mark is used for unfair purposes.

Plaintiff filed an appeal at the Intellectual Property High Court (“IP High Court”).

Summary

The IP High Court held that the decision of the JPO Appeal Board should be cancelled because the subject mark and the citations were dissimilar to each other and, therefore, the subject mark would not likely cause confusion.

Under the Japanese trademark practice, the similarity of trademarks is examined based on the three elements, i.e., appearance, sound and image. If trademarks are similar in terms of any of the elements, trademarks are basically considered to be similar to each other.  Especially, among the three elements, sound is usually considered having a strong impact on similarity of trademarks.

In the subject case, the IP High Court held that the subject mark and the citations were similar in terms of sound. However, they held that both marks were not similar because images of both marks were very different to each other and, therefore, both marks were easily distinguished.  The IP High Court held that the subject mark had an image of a personal name.  Because, in Japan, “(miura)” is a common family name and “(frank)” is well known as a first name. On the other hand, the citations are well known as a luxury watch brand.  The IP High Court also held that the price difference between the plaintiff’s watch (US$38 to US$57) and the defendant’s watch (over US$10,000) indicated the quality difference and, therefore, customers would be easily able to distinguish both watches.  Due to the distinguishable image and appearance, the IP High Court held that the subject mark and the citations were dissimilar and these marks were not likely to cause confusion.

Comments

The subject case was spotlighted because the Frank Miura watches were “Parody” of the famous watch brand “FRANCK MULLER”. However, the IP High Court focused on the similarity of trademarks and likelihood of confusion, not “Parody”.  In addition, the IP High Court held the following points.

(i) Parody does not affect the judgement of a likelihood of confusion.

(ii) Dilution and Free-Riding can be prevented by prohibiting registration of trademarks which are likely to cause confusion. However, not all acts causing dilution and free-riding cause a likelihood of confusion.  Therefore, even if the plaintiff rides on the defendant’s reputation, such act does not cause a likelihood of confusion.

In comparison with the subject case, the decision of the U.S. case “My Other Bag Case” (Louis Vuitton Malletier SA v. My Other Bag Inc., Case No. 1:14-cv-03419) is different. In such case, the MOB handbags display the mark “MY OTHER BAG” on one side and a drawing of the Louis Vuitton bag on the other side.  The price of the MOB’s bags is $35 to $55.

Louis Vuitton sued MOB for trademark infringement, trademark dilution and copyright infringement. The court accepted the so-called “parody defense” and held that MOB’s bags were protected as fair use.

Under the Japanese Trademark Law and practice, the “parody defense” is not employed and “parody” is not defined. In addition, there are no specific cases which made a judgment about relevance between “parody” and “trademark infringement”.  However, in recent years, trademark parody cases are frequently in question.  Therefore, the court is expected to make a judgment about parody cases and relevance between “parody” and “trademark infringement”.  Finally, the defendant appealed the subject case to the Supreme Court on May 23, 2016.  We are looking forward to next judgment.