Date of
Judgment: February 9, 1968
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):
1. The final appeal shall be
dismissed.
2. Appellant shall bear the
cost of the final appeal.
Reasons:
Regarding
Reason 1 for the final appeal according to Appellant's attorney, ●●●●.
In sum, the gist of the argument is that
the judgment in prior instance is illegal due to the failure to conduct an
examination sua sponte on whether
or not Appellee is an interested party who is able to request for a
trial for cancellation of the Registered Trademark.
However, it was acknowledged in the
judgment in prior instance that Appellee constitutes an interested party under
the former Trademark Act (Act No. 99 of 1921; the same applies hereinafter),
and given that it is clear from records that the parties did not argue over
this point in the trial of the prior instance, it cannot be considered, although
the court of prior instance did not clearly make a judgment regarding the above
point, that the court failed to conduct an examination. The gist of the argument
cannot be accepted.
Regarding
Reason 2 for the final appeal.
The gist of the argument is that,
although the evidence clearly indicates that the Registered Trademark is shown
on Appellant Company's writing paper and envelopes, the use of the Registered
Trademark was not acknowledged as a fact in the trial of the prior instance,
and that this is a result of incorrect interpretation about trademark use and
is against the empirical rule and the rule of making a determination based on
reasonable evaluation of evidence, thereby constituting the illegality of the
failure to exercise the authority to ask for explanation.
However, in order to
constitute trademark use, while it is not always necessary for the trademark to
be used for the designated goods per se by being affixed therewith, it is
reasonable to interpret that the trademark must be used specifically in
relation to those goods. Next, even with regard to a transaction document which
indicates a trademark, there is no empirical rule according to which it is
presumed that the document is always used specifically in relation to
designated goods as per the asserted opinion, and it must be said that this
fact is something with regard to which the relevant party must make an
assertion and submit evidence without waiting for the court's exercising of the
authority to ask for explanation.
According to the facts having been
confirmed in the judgment in prior instance, the writing paper according to the
asserted opinion was used only for notifying Appellant Company's directors
about the calling of board of directors meetings and for notifying shareholders
about extraordinary general meetings, and the envelopes according to the
asserted opinion are unused, and there is no sufficient evidence to otherwise
acknowledge that these documents were used specifically in relation to goods
such as "Sauce", which is among the designated goods for the
Registered Trademark, so that in the end, even with all the evidence shown in
the lawsuit of the present case, it cannot be acknowledged as a fact that
Appellant used the Registered Trademark after 1953.
In that case, the aforementioned
determination made in the prior instance is reasonable and has no illegality in regards to the asserted opinion, so that the gist of the
argument is utterly unacceptable.
Regarding
Reasons 3 and 4 for the final appeal.
In sum, the gist of the argument is that
the judgment in prior instance, which was rendered to the effect that there was
no use of the Registered Trademark, is illegal on the grounds of an omission
involving a determination, inadequacy of reasons, discrepancy in reasons,
breach of the empirical rule, and inexhaustive examination.
However, although the reason for adopting
the Registered Trademark for use lies with characters, "青星",
these characters have been modified and designed so much so that a person
looking at them would agree that there are said characters only after being
explained as such and observing the characters in detail, and this is as per
the confirmation made in the judgment in prior instance, so that it should be
said that the Registered Trademark has particular
distinctiveness as a trademark because of this unique shape.
Accordingly, upon determining whether or not
Registered Trademark was used, the determination should be made based not just
on the pronunciation or concept produced from the trademark, but also on the
use of the aforementioned unique shape or at least a shape which would be
considered the same as the aforementioned unique shape in transactions. In
addition, in the case of an "associated trademark" according to the
proviso of Article 14, paragraph (1) of the former Trademark Act, it is not
enough for the trademark pertaining to the use to be merely similar to the
registered trademark to be examined in the trial, but the trademark must have
been registered as an associated trademark of the registered trademark, and
this is evident in light of the provisions of Article 3 of the same Act.
However, according to the facts confirmed in the judgment in prior instance ,
the trademark pertaining to the use as per the asserted opinion is not the one
which was registered as an associated trademark of the Registered Trademark,
and this is something which Appellant agrees and does not argue against, and
there is no sufficient evidence to acknowledge that the Registered Trademark
was used in the aforementioned unique shape or in a shape which would be
considered the same as the aforementioned unique shape in transactions.
Accordingly, even if the Registered Trademark produces the pronunciation or
concept as per the asserted opinion, and even if the trademark pertaining to
the use as per the asserted opinion is similar to the Registered Trademark,
these factors should not have any influence on the determination made in the
prior instance to the effect that Appellant failed to use the Registered
Trademark for three consecutive years following 1953 without just cause, and it
also cannot be found that there is illegality as per the asserted opinion with
regard to the process of making the determination.
In
that case, the gist of the argument is groundless, and reversal of the judgment
is unavoidable.
Therefore,
the judgment of this court is rendered unanimously by all judges, as per the
main text, by application of Articles 401, 95, and 89 of the Code of Civil
Procedure.
(This translation is
provisional and subject to revision.)