Date of
Judgment:
February 22, 2002
Issuing
Authority:
Supreme Court
Level of
the Issuing Authority: Final Instance
Type of
Procedure:
Judicial(Administrative)
Subject
Matter: Trademarks
Main
text of the judgment (decision):
The
judgment of the original instance court shall be quashed and the case shall be
remanded to the Tokyo High Court
Reasons:
On the
grounds of request for certiorari by representatives of the jokoku appellant,
SM, HW, CS, II, and YS:
1. Facts
lawfully established by the original instance court are as follows:
P Co., Ltd
(hereinafter, 'the Company') applied for trademark registration for the
trademark "ENTIES" in horizontal roman letters with clothes in the
attached list of the Implementation Rules of the Trademark Law Category 25 as
designated products on December 17, 1992. The trademark was registered on
January 31, 1996 (Registration No.3116038. Hereinafter, 'the Registered
Trademark'). The right to the Registered Trademark was partly assigned to the
jokoku appellant by the Company and registration was made to this effect on
January 21, 1999. Since then, the jokoku appellant and the Company have jointly
held the above trademark right.
On August
20, 1999, the jokoku appellee initiated a proceeding at the Patent Office vis a
vis the jokoku appellant and the Company claiming that the registration of the
Registered Trademark should be nullified.
The Patent
Office rendered a decision on October 26, 2000 on this case and on the ground
of Article 4, para.1, subpara.19, ruled that the registration of the Trademark
was null and void.
2. The
present case involves a claim by the jokoku appellant who, on his own, requests
that the above decision should be revoked. The original instance court ruled as
follows and dismissed the claim.
An action
which is aimed at the revocation of a decision of the Patent Office which
annulled a registration (hereinafter, 'the Decision to Nullify Registration')
of a trademark which is held jointly has to be determined uniformly since it is
aimed at determining the right of the joint holders of the same right, and
therefore, this action should be regarded as an inherently mandatory joint
action. The Trademark Law provides that it will become impossible for the
trademark as a whole to be acquired or to subsist, if one of the joint holders
of the right to have a trademark registered or the trademark itself loses the
interest in acquiring or holding the right (Art.132, para.3 of the Patent Law
as applied with modification by Art.56, para.1 of the Trademark Law).
Therefore, it is not unreasonable to acknowledge the same regarding an action
for revocation of the Decision to Nullify Registration.
It is
assumed that a copy of the decision has been sent to the Company at the same
time as a copy was sent to the jokoku appellant, but the Company did not initiate
an action, and the period for taking action has expired. Therefore, the present
action which has been initiated by the jokoku appellant alone is not lawful.
3.
However, the above ruling of the original instance court is not justifiable.
The reasons are as follows:
(1) In
cases where the right which emerged as a result of the application for
trademark registration is in question and an action for a proceeding is brought
on this right, it has to be done jointly by all rightholders (Art.132, para.3
of the Patent Law as applied with modification by Art.56, para.1 of the
Trademark Law). This is intended to require the conformity of the will of all
joint rightholders for the acquisition of one and the same trademark. In
contrast, once the trademark has been registered, a joint holder of the
trademark right may use the registered trademark without the consent of other
joint rightholders, although such consent is required for the assignment of a
share in the right or the creation of an exclusive right to use the trademark
etc. (Article 73 of the Patent Law as applied with modification by Article 35
of the Trademark Law).
If a
decision was made to nullify the registration of the registered trademark and
the period for an action has expired without an action having been made against
this decision, the trademark is deemed not to have existed from the beginning,
and the right to use the registered trademark extinguishes retrospectively
(Art.46-2 of the Trademark Law). Thus, initiating the above action to revoke
the decision of the Patent Office is an act of preservation, i.e. an act to
prevent the extinction of the trademark, and therefore, it can be effected by
one of the joint holders of the trademark right on his own. Even if one of the
joint holders of the trademark right is allowed to initiate an action to revoke
the above decision, it does not harm the right of the joint holders who did not
take action.
(2)
Adjudication to nullify a trademark can be initiated even after the extinction
of the trademark right (Art.46, para.2 of the Trademark Law). It is conceivable
that a long time after the registration of the trademark right, the whereabouts
of other joint rightholders could become unknown, or, since the interest and
the circumstances of the each rightholder concerning the trademark vary, other
rightholders may not cooperate in initiating an action. In such cases, if, upon
the understanding that the action to revoke the Decision to Nullify
Registration is an inherently mandatory joint action and that it is unlawful for
one of the rightholders to initiate an action on his own, once the period for
taking an action expires, the Decision to Nullify Registration comes into
effect and the trademark is deemed not to have existed from the beginning, and
thus, unfairness will result.
(3) Even
if one of the joint holders of the trademark right is allowed to initiate an
action to revoke the Decision to Nullify Registration on his own, if the
judgment which acknowledges the claim comes into effect, the effect of
revocation extends to the joint holders of the right (Law on Administrative
Litigation, Art.32, para.1), and there is to be an adjudication procedure by
the Patent Office in relation to all joint rightholders (Art.181, para.2 of the
Patent Law as applied with modification by Article 63, para.2 of the Trademark
Law). On the other hand, if the judgment which dismissed the claim comes into
effect, by the expiration of the period for an action in relation to other
rightholders, the Decision to Nullify the Registration will come into effect
and the trademark right is deemed not to have had an effect from the beginning
(Art.46-2 of the Trademark Law). In either case, there is no circumstance where
the requirement of the uniform determination of rights is not met. Furthermore,
if all joint rightholders jointly initiate an action, or separately initiate an
action to revoke the decision, these actions are quasi-mandatory joint actions
and thus will be consolidated, and the requirement of uniform determination
will be met.
(4) Thus,
it is appropriate to conclude that if there is a decision to nullify the
registration of the trademark which is jointly held, one of the joint holders
is entitled to initiate an action to have the Decision to Nullify the
registration on his own.
4.
Therefore, there is an evident breach of law which affects the judgment in the
judgment of the original instance court which found the present action to be
unlawful. Incidentally, judgments such as the Supreme Court 1960 (o) No.684,
judgment of the Supreme Court, the First Petty Bench, August 31, 1961, Minshu
15-7-2040, Supreme Court, 1977 (Gyo-tsu) No.28, judgment of the Supreme Court,
the Second Petty Bench, January 18, 1980, Saibanshu, civil cases, 129-43, and
the Supreme Court, 1994 (Gyo-tsu) No.83, Judgment of the Supreme Court, the
Third Petty Bench, March 7, 1995, Minshu 49-3-944 are different from the
present case and their citation is not appropriate. Therefore, the judgment of
the original instance court shall be quashed, and in order to have the case considered
on its merit, the case shall be remanded to the original instance court.
Thus, the
justices unanimously rule as the main text of judgment.
(Translated by Sir Ernest Satow Chair of Japanese Law, University
College, University of London)