Date of Judgment: July 19, 1988
Issuing Authority: Supreme Court
Level of the Issuing
Authority: Final Instance
Type of Procedure: Judicial (Civil)
Subject Matter: Unfair Competition Prevention
Main text of the
judgment (decision):
1. For Case No.
1986 (O) 30, from among the judgment in prior instance which was rendered on
March 16, 1984, the part in which Appellant Company A1 Koeki lost, and for Case
No. 1986 (O) 31, the additional judgment in prior instance which was rendered
on September 30, 1985 shall be reversed.
2. The
present case shall be remanded to the Sendai High Court in regards to the parts
of the preceding paragraph.
3. For Case
No. 1986 (O) 30, the final appeal made by Appellant A2 shall be dismissed.
4. Appellant
A2 shall bear the cost of the final appeal pertaining to the part of the
preceding paragraph.
Reasons:
No. 1 Case
No. 1986 (O) 30
1. Regarding
Reason 1 for the final appeal according to Appellants' attorneys, ●●●●, ●●●●, ●●●●, and
●●●●.
Appellants' First Claim, which is made
under the Unfair Competition Prevention Act, is as follows. Since June 1978, a
ground belt for a car, as indicated in the Attachment, "First List",
attached to the judgment in prior instance(hereinafter referred to as
"Plaintiff's Product"), has been manufactured and sold by Appellant
Company A1 Koeki (hereinafter referred to as "Appellant Company"),
which was established by Appellant A2, by use of the trademark, "アースベルト"
(hereinafter referred to as "Plaintiff's Trademark"). The product
generated massive sales, and approximately 150,000 straps had been sold by
March 1979, and the number of the product being manufactured and sold kept
increasing, and, together with the advertisement in newspapers, magazines,
radio, and TV and the like, the shape per se of Plaintiff's Product as well as
Plaintiff's Trademark came to be known nationwide, mostly in Sendai-shi, as an indication
showing that the product belongs to Appellant Company, thereby becoming an
indication of goods which "became widely recognized in the area where the
Unfair Competition Prevention Act is enforced" (hereinafter referred to as
"well-known" or "well-knownness"), as stipulated in Article
1, paragraph (1), item (i) of the same Act, by March 1979. Around August 1978,
Appellee B1 Shoko Kabushiki Kaisha (hereinafter referred to as "Appellee
B1 Shoko"), proposed to Appellant Company to be granted the exclusive
right to sell Plaintiff's Product; however, Appellee B1 Shoko was only able to
purchase stocks of approximately 4,600 straps, and continued transaction was
refused thereafter. As such, around March 1979, Appellee B1 Shoko asked
Appellee Kabushiki Kaisha B2 (former trade name being "Kabushiki Kaisha B3
Kogyo Seisakusho") to manufacture ground belts for cars, as indicated in
Attachments, "Second List" through "Fifth List", attached
to the judgment in prior instance (hereinafter collectively referred to as "Defendant's
Product"), and used the trademark, "エンドレスアースベルト" (hereinafter referred to as
"Defendant's Trademark"), to start the sale of the same.
However, the
shape of Defendant's Product closely resembled the shape of Plaintiff's
Product, and Defendant's Trademark which was used on Defendant's Product was
similar to Plaintiff's Trademark which is used for Plaintiff's Product, so that
Appellants asserted that the sale per se of Defendant's Product, as well as the
use of Defendant's Trademark and the sale of Defendant's Product by using the
same (hereinafter the act of "using an indication of goods, or of selling
goods by using an indication of goods", as stipulated in Article 1,
paragraph (1), item (i) of the same Act shall be referred to as "Use,
etc.") are misleading or create confusion as to Defendant's Product being
Plaintiff's Product, and demanded against Appellees for injunctions against the
manufacture and sale of Defendant's Product, and against Use, etc. of the name
of "アースベルト", as well as for compensation
for damages in the amount of 80,000,000 yen, which was incurred as a result of
Appellees manufacturing and selling 198,610 straps of Defendant's Product by
using Defendant's Trademark from April 1979 until January 1981, and for posting
of an apology ad in newspapers.
In the judgment in prior instance, the
following facts were confirmed: (1) Appellant A2 devised Plaintiff's Product
around February 1978, and turned it into a product around the end of April of
the same year, and established Appellant Company on June 1 of the same year,
and began selling Plaintiff's Product through Appellant Company; (2) Appellant
Company sold Plaintiff's Product via mail order by posting ads in two magazines
that specialize in automobiles and that are sold nationwide, and at the same time,
advertised Plaintiff's Product in local newspapers and on radio, and around
August of the same year, started transactions with non-party Kabushiki Kaisha D
Shokai, and Plaintiff's Product which was sold wholesale to said company was
retailed mostly to E-related gas stations in the six Tohoku prefectures. Around
December of the same year, Appellant Company also started transactions with a
non-party manufacturer of automobile parts and goods called "Kabushiki
Kaisha F" in Tokyo, and other company, and also started transactions with
several other companies through the aforementioned D Shokai; (3) Plaintiff's
Product is mostly retailed in gas stations, shops specializing in car parts and
goods, and supermarkets and the like, and by around March 1979, Plaintiff's
Product was also sold in gas stations in Tokyo, and the number of sales between
June 1978 and March 1979 totaled approximately 150,000 straps, including the
number of the product sold via mail order and at exhibitions and spot sales;
(4) Around September 1978, Appellee B1 Shoko purchased stocks of Plaintiff's
Product from Appellant Company, but thereafter Appellant Company refused to
sell any more of Plaintiff's Product to Appellee B1 Shoko, and thus, around the
end of March 1979, Appellee B1 Shoko began manufacturing and selling a ground
belt for a car, as indicated in "Second List", from among Defendant's
Product, and later, began likewise manufacturing and selling ground belts for
cars as indicated in "Third List" through "Fifth List".
Based on these facts and in light of the purport of the provision of Article 1,
paragraph (1), item (i) of the Unfair Competition Prevention Act, the court
concluded that in order for First Party, who asserts that its indication of
goods constitutes a well-known indication of goods as stipulated in the same
item, to demand against Second Party, who engages in Use, etc. of an identical
or similar (hereinafter simply referred to as "similar") indication
of goods, for an injunction against the Use, etc. of the indication of goods
and for compensation on the basis of the Use, etc. (including the posting of an
apology ad; the same applies hereinafter), it is necessary for First Party's
indication of goods to have acquired well-knownness before Second Party starts
selling its product, if not earlier, and that, in the present case, it is
necessary for the shape per se of Plaintiff's Product and Plaintiff's Trademark
to have obtained well-knownness as an indication of goods for Plaintiff's
Product by the end of March of 1979, which is when the sale of Defendant's
Product began, but that it cannot be acknowledged that the shape per se of
Plaintiff's Product and Plaintiff's Trademark had yet obtained well-knownness
as of the above timing, so that the claims made by Appellants should be
dismissed.
However, the judgment of the court of
prior instance as to the timing at which the above well-knownness should be
obtained cannot be approved.
In order for First Party, who asserts
that its indication of goods constitutes a well-known indication of goods as
stipulated in Article 1, paragraph (1), item (i) of the Unfair Competition
Prevention Act, to demand against Second Party, who engages in Use, etc. of a
similar indication of goods, for an injunction or the like of such indication
of goods, it is necessary for First Party's indication of goods to have
obtained well-knownness at the time when Second Party's act, which is regarded
as an act of unfair competition, becomes a problem in relation to the claim
made by First Party, or in other words, the present (at the time of conclusion
of oral arguments for fact-finding proceedings) in the case of a claim for an
injunction, and the time of Use, etc. by Second Party of the similar indication
of goods, which is the intended subject of a claim for compensation, in the
case of a claim for compensation, and furthermore, the foregoing is sufficient
as a requirement. This is because the very provision of the same item is not
one which restricts the timing at which well-knownness should be obtained, as per
the explanation of the judgment in prior instance, but in order to be
consistent with the purport of the provision of the same item, which is to
prohibit any act of unfair competition conducted against the agent of a
well-known indication of goods and to maintain a system of fair competition,
once the situation is such that it is sufficient to provide protection as a
well-known indication of goods, any act which creates confusion between the
agents of goods as a result of Use, etc. of an indication of goods that is
similar to the above well-known indication of goods should be prevented,
starting from that point in time. Even based on thisinterpretation, a person
engaged in Use, etc. of a similar indication of goods in good faith, from
before the above well-known indication of goods obtained well knownness, will
be permitted to continuously engage in Use, etc. of the indication (Article 2,
paragraph (1), item (iv) of the same Act; the so-called defense of "use of
an old indication in good faith") and the indication will be sufficiently
protected, and furthermore, in the case of a claim for compensation, intention
or negligence on the part of the doer is a requirement (Article 1-2 of the same
Act), and thus the result will not be unjust.
Next, while the facts, which provide the
basis for the argument that the sale and advertising activities and the like of
goods bearing First Party's indication of goods came to obtain well-knownness,
should be specifically asserted by First Party with supporting evidence, records
show that in the present case, it is clear that Appellants specifically
asserted as to the number of Plaintiff's Product sold, not only up to the end
of March 1979, which is when Appellees began manufacturing and selling
Defendant's Product, but also the number of Plaintiff's Product sold thereafter
by Appellant Company to Kabushiki Kaisha D Shokai, Kabushiki Kaisha F Jidosha
Yohin Seisakusho, and the like, and that supporting evidence was submitted as
well.
Accordingly, even though the shape per se
of Plaintiff's Product and Plaintiff's Trademark had not obtained
well-knownness as of the end of March 1979, which is when the ruling was made
by the court of prior instance, depending on the result of the trial, it may be
acknowledged that well-knownness came to be obtained thereafter when the act by
Appellees became an issue as described above. As such, the judgment in prior
instance, which took the perspective that is different from the one explained
above, and which was rendered to the effect that the claims made by Appellant
Company pursuant to the same Act should be dismissed, has the illegality of
incorrectly interpreting the same Act, and it is clear that this illegality
would have influence on the conclusion made by the judgment, and by extension,
it must be said that there is illegality in terms of inexhaustive examination
and inadequacy of reason. The gist of Appellant Company's argument, whose
purport is the same as above, is reasonable.
However, it is clear from Appellant A2's
assertion per se that Appellant A2 is not a person who is personally engaged in
the business of sale and the like of Plaintiff's Product by using Plaintiff's
Trademark, and it should be said that Appellees' manufacture and sale of
Defendant's Product and Use, etc. of Defendant's Trademark do not harm the
business interests and credibility of Appellant A2. Accordingly, the judgment
of the court of prior instance to the effect that the claims made by Appellant
A2 pursuant to the same Act should be dismissed, can be approved in regards to
the conclusion, and the above gist of the argument by Appellant cannot be
accepted.
Next, Appellant Company's claims for
compensation pertaining to the lawsuit of the present case, and a claim for
payment of compensation on the basis of the publication of an application for
utility model registration for a device pertaining to Case No. 1986 (O) 31,
were jointed preliminarily in a sequence of First Claim through Third Claim,
which were entirely dismissed in the judgment in prior instance and the
additional judgment in prior instance, and a final appeal was made against the
judgments. Meantime, there are grounds for reversal, as described above, for
First Claim, which is a claim for compensation pursuant to the Unfair
Competition Prevention Act, so that the judgment in prior instance and the
additional judgment in prior instance should be reversed in regards to Second
Claim and Third Claim as well. Accordingly, determination shall be added onlyin
relation to Appellant A2, including Case No. 1986 (O) 31, hereinafter.
2. Regarding
other reasons for the final appeal.
In light of the evidence listed in the
judgment in prior instance, the finding and judgment of the court of prior
instance concerning the points of the asserted opinion can be approved as
justifiable, and there is no illegality with the process as per the asserted
opinion. The gist of the argument cannot be accepted.
No. 2 Case
No. 1986 (O) 31
Regarding the
reasons for the final appeal according to Appellants' attorneys, ●●●●,
●●●●, ●●●●, and ●●●●.
From among the Third Claim made by
Appellant A2, a claim for payment of compensation pursuant to Article 13-3 of
the Utility Model Act is as follows. Appellant A2 has the utility model right
(an application for utility model registration filed on May 23, 1978;
publication of unexamined application on December 1, 1979; publication of
examined application on June 19, 1981) for a device pertaining to Plaintiff's
Product (hereinafter referred to as "Device"). From around the end of
March 1979, Appellees have manufactured and sold Defendant's Product, which
belongs to the technical scope of the Device, and continued to manufacture and
sell Defendant's Product, even after the publication of application on December
1 of the same year, until January 1981, with the knowledge that it is a device
pertaining to the published application for utility model registration.
Accordingly, Appellant demands for payment of compensation as prescribed in the
same Article.
In the additional judgment in prior
instance, the court confirmed that while the scope of claims for utility model
registration at the time of the publication of application for Device
(hereinafter referred to as "Scope of Claims for Registration") is as
per Attachment (1) attached to the additional judgment in prior instance, a
notice of reasons for rejection dated May 14, 1980 was received from an
examiner, and Appellant A2 amended the Scope of Claims for Registration as of
July 17 of the same year as per Attachment (2) attached to the additional
judgment in prior instance. In relation to the requirements for the occurrence
of the right to claim for compensation, it was determined that in the case
where amendment is made after the publication of application, it is reasonable
to interpret that a new application was filed as of the time of the above
amendment, and in the present case, it was determined that there is no evidence
to sufficiently acknowledge that, after the above amendment dated July 17,
1980, Appellant A2 sent a warning, as prescribed in the same Article, to
Appellees, or that Appellees had the bad faith as stipulated in the same
Article, and thus Appellant A2's claim for payment of compensation pursuant to
the same Article was dismissed.
However, the above judgment of the court
of prior instance cannot be approved. In the case where, after the publication
of an application, the applicant for utility model registration warns a third
party by presenting a document describing the content of the device pertaining
to the application for utility model registration, and the third party, after
learning of the content of the device pertaining to the above published
application for utility model registration, makes amendment by amending the
Scope of Claims for Registration, if the amendment is one which enlarges or
alters the original Scope of Claims for Registration, and if the article worked
by the third party, which did not belong to the technical scope of the device
according to the Scope of Claims for Registration prior to the amendment, came
to belong to the technical scope of the device according to the description of
the Scope of Claims for Registration after the amendment, in order for the
applicant to make a claim for payment of compensation against the third party
pursuant to Article 13-3 of the Utility Model Act, it is necessary for the
third party to learn of the content of the Scope of Claims for Registration
after the amendment by means such as the applicant sending anew warning, as
prescribed in the same Article, to the third party after the above amendment,
but if the amendment is one which restricts the Scope of Claims for
Registration prior to the amendment, within the scope of the information
indicated in the specifications or drawings that are attached to the
application form at the beginning, and if the article worked by the third party
belongs to the technical scope of the device throughout the period before and
after the amendment, the reasonable interpretation in such case would be that
it is not required that a third party learns of the content of the Scope of
Claims for Registration after the amendment, by way of receiving a new warning
or the like, after the above amendment. In light of the legislative purport of
the same Article, which is to provide for the above warning or bad faith as a
requirement so as to prevent a surprise attack of a sudden claim for
compensation against a third party, it would be sufficient if a new warning or
bad faith is required only for the former case, and even if a new warning or
bad faith is not required for the latter case, it would not constitute the
making of a surprise attack against a third party.
When the above is considered in the
present case, the Scope of Claims for Registration for Device at the time of
the publication of application, according to Exhibit Ko 44 listed in the
additional judgment in prior instance (Unexamined Utility Model Application
Publication for Device), is not as per Attachment (1) attached to the additional
judgment in prior instance, but has been amended by the amendment dated June
29, 1979 prior to the publication of application, and upon comparing this with
the Scope of Claims for Registration after the amendment dated July 17, 1980,
the substantial differences exist with regard to the Device pertaining to a
ground belt for a car consisting of a conductive rubber belt, which is hung
with a metal fitting from the frame at the rear part of a car, in order to
ground the build-up of static electricity in a car, and which has a reflector
plate attached to it. In the former case, there is no reference as to
particularly limiting the method of attaching a reflector plate to the above
belt. In the latter case, it is added as a requirement that the above reflector
plate is attached to "enable adjustment of the position of attachment and
relative displacement". In other words, the above amendment dated July 17,
1980 can be interpreted as restricting the Scope of Claims for Registration by
limiting the device, within the scope of information indicated in the
specifications or drawings attached to the application form at the beginning
(Exhibit Ko 1-3 listed in the additional judgment in prior instance), from a
device that includes a type in which a reflector plate "enables adjustment
of the position of attachment and relative displacement" as well as a type
in which a reflector plate does not have such feature, to a device in which a
reflector plate "enables adjustment of the position of attachment and
relative displacement". According to this interpretation, Defendant's
Product, in which a reflector plate is attached to a belt to "enable
adjustment of the position of attachment and relative displacement",
belongs to the technical scope of Device throughout the period before and after
the amendment (the point that Defendant's Product belongs to the technical
scope of the registered Device is as per the ruling made in the judgment in
prior instance, so that the above determination can be approved), and in light
of the aforementioned explanation, in order for an applicant to demand for
payment of compensation prescribed in the same Article, it is not necessary for
Appellees to learn of the content of the Scope of Claims for Registration after
the amendment, by way of the sending of a new warning or the like to Appellees
after the amendment.
The following can be said about the above
requirement of warning or bad faith. An application for utility model
registration is automatically published one and a half years after the filing of
application (Article 13-2 of the same Act), excluding some exceptions. In the
present case, records show that Appellees learned that an application for
Device was filed as well as other information such as the content and
application number when Appellee received copies of Complaint on May 7, 1979,
together with Exhibits Ko 1-1 to Ko 1-5 (documents related to Device, namely;
application for utility model registration, written request for examination,
specifications, power of attorney, and notice of application number). Even
thereafter, it seems that a search was conducted on whether or not any
application for a device that is similar to Device has been filed, and on
matters such as the content of such application (Exhibits Otsu 1 through Otsu
3, Otsu 4-1, Otsu 4-2, Otsu 5-1 through Otsu 5-7, and Otsu 6), and that the
examination process for Device was watched (Exhibits Otsu 7-1 through Otsu
7-7), and furthermore, at an examination of Appellant A2 during the trial of
the first instance, on the date for oral arguments on February 20, 1980,
Appellant A2 responded to a question asked by an attorney representing
Appellees that the Device was published only recently. In light of these
circumstances, it is highly likely that Appellees learned of the fact that an application
for Device was published, either immediately after the publication of
application, or on the above date for oral arguments, if not earlier.
Accordingly, the additional judgment in
prior instance, which was rendered to the effect of dismissing Appellant A2's
claim for payment of compensation which was made on the basis of the
publication of application, has the illegality of incorrectly interpreting
Article 13-3 of the Utility Model Act, which provides for the requirement for
making a claim, and it is clear that this illegality would have influence on
the conclusion of the judgment, so that resultingly, it must be said that there
is illegality in terms of inexhaustive examination and inadequacy of reason.
The gist of Appellant A2's argument whose purport can be interpreted as same as
the above is reasonable (since Appellant Company is, as also stated in its
assertion, only manufacturing and selling Plaintiff's Product since June 1978
under the exclusive licensing for Device, and it is clear that Appellant
Company is not the applicant for Device, there is no room for acknowledging the
claim for payment of compensation as prescribed in the same Article unless
there are other special circumstances).
No. 3
Conclusion
Based on the above, for Case No. 1986 (O)
30, from among the judgment in prior instance which was rendered on March 16,
1984, the part in which Appellant Company lost shall be dismissed, and, in
particular, for further examination to be conducted for Appellant Company's
claim for injunction and claim for compensation for damage pursuant to the
Unfair Competition Prevention Act, on matters such as whether or not the shape
per se of Appellant's Product and Plaintiff's Trademark had btained well-knownness at each of the
timings explained above in No. 1-1 (as for the shape of Plaintiff's Product,
including whether or not the above shape had obtained the property as an
indication of goods, as a premise for the above determination), the case shall
be remanded to the court of prior instance. As for Appellant A2, the final
appeal made by Appellant A2 shall be dismissed. For Case No. 1986 (O) 31, the
additional judgment in prior instance which was rendered on September 30, 1985
shall be reversed, and in particular, in relation to Appellant A2, for further
examination to be conducted on whether or not there was bad faith after the
publication of application for Device, from the perspective explained above in
No. 2 concerning the relationship between the amendment of Scope of Claims for
Registration in the specifications and the warning or bad faith prescribed in
Article 13-3 of the Utility Model Act, the case shall be remanded to the court
of prior instance.
Therefore,
the judgment of this court is rendered unanimously by all judges, as per the
main text, by application of Articles 407, paragraph (1), Article 396, Article
384, Article 95, and Article 89 of the Code of Civil Procedure.
(This translation is provisional and
subject to revision.)