TRADEMARK CASES
Here are real-life cases and hypothetical scenarios of disputes that arose from failing to register trademarks. This page is especially for those who think "it doesn't apply to me."
In Fukuoka, "Nagahama Ramen" is famous, with multiple shops operating under similar names in the area where it originated. This case involved former employees of Ganso Nagahamaya who independently opened their own shops and then clashed over the shop name.
Former employee A opened a shop under the name "Nagahamaya" and obtained trademark registration for "Nagahamaya." Another former employee B then opened a shop with a very similar name. A filed a lawsuit claiming trademark infringement.
Ultimately, A's claims were dismissed because B had a prior licensing agreement with A. However, the key point is that A, who had registered the trademark first, was in the legally advantageous position to drive the litigation.
Japan's trademark system follows the "first-to-file" principle — the first person to file the application gets priority. No matter how long you've been using a name, the person who files first holds the rights.
Even Apple, one of the world's leading companies, suffered enormous losses due to a trademark research failure.
Proview Technology (a Chinese company) registered the "iPad" trademark in China years before Apple launched its iPad.
Apple believed it had acquired the "iPad" trademark from Proview's Taiwan subsidiary, but the mainland China rights were not included.
iPad sales began in China, but Proview, holding the trademark rights, sought an injunction on sales.
Apple ultimately paid USD 60 million (approx. 4.8 billion yen) to settle.
Settlement amount paid by Apple to acquire the iPad trademark in China
SIMULATION
This hypothetical case study, used in our seminars, simulates a realistic trademark dispute for SMEs in Saga and Northern Kyushu.
Hizen Foods Co., Ltd. (Saga City): Operates a sushi delivery chain. President Hideshima launched a new takeout sushi brand "Kappo Sushi Hide."
Yamahide Trading: Operates counter sushi restaurants "Sushi Hide" in the Tokyo metropolitan area. "Sushi Hide" is a registered trademark.
Hizen Foods developed and began selling "Kappo Sushi Hide" branded takeout sushi. Without conducting a trademark search, they launched the product, which became a hit in Northern Kyushu with annual sales of 80 million yen.
A registered mail warning letter arrived from Yamahide Trading's attorney: "Your 'Kappo Sushi Hide' is similar to our registered trademark 'Sushi Hide.' Cease use immediately and pay damages."
Negotiations failed, and Yamahide Trading filed suit. Damages claimed: 26.4 million yen, calculated based on 80 million yen in annual sales and the profit equivalent for the infringement period.
Calculated from 80 million yen in sales x profit rate x infringement period
Article 38 of the Trademark Act sets forth methods for calculating damages. Amounts are generally based on the infringer's sales and profits.
| Annual Sales | Estimated Damages | Notes |
|---|---|---|
| 10 million yen | 2-3.3 million yen | Small shop |
| 30 million yen | 6-10 million yen | Popular local shop |
| 80 million yen | 16-26.4 million yen | Chain operation |
| Over 100 million yen | 20 million yen+ | Large-scale business |
* These are rough estimates only. Actual amounts vary by individual circumstances, including severity of infringement, duration, profit margins, etc.
"What if my shop's name is infringing someone else's trademark..." — If you have such concerns, start with just a prior search.
Book a Consultation →IF WARNED
A warning letter from the other party's attorney may arrive one day without notice. Stay calm and follow these steps.
When a warning letter arrives, you don't need to comply with the demands right away. The deadline stated is simply the other party's request. However, ignoring it entirely is also inadvisable.
Have an attorney with trademark expertise review the warning letter's contents. A professional can assess whether the claims are legitimate.
Verify whether the other party actually holds a valid trademark registration using J-PlatPat (the patent information platform). The registration may have lapsed, or the designated goods/services may differ from yours.
Determine whether your usage actually infringes their trademark rights. Similarity is assessed from three perspectives: pronunciation, appearance, and meaning.
Explore potential defenses: prior use rights, generic name, descriptive use, etc. There may also be grounds for filing an invalidation trial against their registration.
Decide on a strategy with your attorney and respond in writing. Depending on the situation, explore the best resolution — whether cessation of use, licensing agreement, or settlement negotiation.
If you've received a warning letter and need help, please consult with us promptly. As both attorney and patent attorney, we'll provide appropriate guidance.
Book a Consultation →"Crayon Shin-chan," an enormously popular anime in Japan, had its character name and designs registered as trademarks in China by an unrelated third party.
A Chinese company registered the Chinese name of "Crayon Shin-chan" without authorization from the Japanese rights holders. The registration covered broad product categories including clothing and toys, impeding legitimate product distribution.
The Japanese side was forced into protracted legal battles to cancel the registration, spending enormous time and resources.
"Trademark squatting" refers to filing trademark applications for another party's well-known brands or names without the legitimate rights holder's authorization. This is a particular problem in China and other overseas markets.
SEARCH EXAMPLE
When you come up with a new product name, the first thing to do is a "prior trademark search." Here's a real search example.
"Mon Petit" is a French phrase meaning "my little..." — its cute sound makes it a popular choice for product and brand names.
A search for "mon petit" on J-PlatPat reveals the following companies have already registered the trademark:
If you tried to launch a new product using the name "mon petit," you would almost certainly conflict with existing trademark rights. Starting to use the name without prior research could lead to being forced to change the name or, in the worst case, facing damages claims.
QUIZ
Trademark similarity is assessed from three perspectives: pronunciation, appearance, and meaning. Let's test your judgment.
Click each item to see the result.
Explanation: Even when additional words like "Kappo" are added, if the "Sushi Hide" portion can be independently recognized (separable observation of combined marks), similarity may be found. Changing the script (katakana, English) doesn't help if the pronunciation remains the same. However, "Hide Sushi" has a different word order and pronunciation, making it unlikely to be found similar.
* Actual similarity determinations are made through comprehensive consideration of individual circumstances. The above represents general tendencies.
DEFENSE STRATEGY
What you can do to prevent trademark disputes differs by business phase. Let's identify the right measures for your current situation.
Conduct a prior search before deciding on a name. This is the lowest-cost, most effective measure. A search costing tens of thousands of yen can prevent tens of millions in risk.
Even for names already in use, it's not too late. Check for prior trademarks and consider filing. Stay alert to competitor activity.
Even after receiving a warning letter, there are options: asserting prior use rights, filing an invalidation trial, settlement negotiations. However, costs increase dramatically compared to earlier-stage measures.
SEMINAR
Many of the case studies on this page are based on seminar materials prepared by Attorney & Patent Attorney Takanori Aoyama.
Every dispute in our case studies happened to someone who thought exactly that. Take a moment to consult with us now.
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