Trademark Law Case: Morning Banana Case, Heisei 21 (Wa) No. 657

This is a case featured as number 27 in the 100 Selected Judicial Precedents.

●Overview
The plaintiff (Bunkasha) filed a lawsuit against the defendant (Data House) for an injunction against the sale of a book, destruction of the books, and damages, claiming that the use of the words "Morning Banana" in the title of the defendant's book infringed on the plaintiff's trademark rights and constituted an act of unfair competition.

●Details
This is a case where it was disputed whether a book title constitutes trademark infringement.

The plaintiff (Bunkasha) held the trademark right for "Morning Banana" (No. 5171201) and had published books such as "Morning Banana Diet" and "More Morning Banana Diet".

Meanwhile, the defendant (Data House) published a book titled "40 Tips for Morning Banana Diet Success." The author of this book is someone named "Pochari Jukujo Yukki-na" (Chubby Mature Woman Yukki-na), who does not look chubby at all.

●Conclusion
Not trademark infringement. Also, it does not constitute an act of unfair competition.

Regarding trademark infringement, the court denied the infringement of the plaintiff's trademark right, stating that "the display of the defendant's mark on the cover or front page of the defendant's book is merely displaying the defendant's mark as part of the title indicating the content of the book, and it cannot be recognized as being used in a manner that has a function of identifying goods as one's own or another's, or a function of indicating the source," and thus concluded that it does not infringe on the trademark right in question.

Regarding the act of unfair competition, the court ruled that it does not constitute unfair competition (it does not fall under Article 2, Paragraph 1, Items 1 and 2 of the Unfair Competition Prevention Act), stating that "given that the term 'Morning Banana' is generally known as an abbreviation for the 'Morning Banana Diet,' a diet method based on consuming bananas and water at breakfast, and that both parts are written in a unified design and color tone, it is considered that readers who encounter the defendant's book will understand the 'Morning Banana' part, rather than understanding it as related to the plaintiff's publishing activities, as a part emphasizing that the defendant's book is about the 'Morning Banana Diet.'"

●Thoughts
I thought the reason for filing the lawsuit was to protect their own brand (reputation). Specifically, I think the flow was that they could not stand for their own books, which claim to be 'healing-type,' to be confused with books from another company whose author claims to be 'erotic-type.'

From a critical perspective, there is a possibility that the flow was 'The registered trademark is being used without permission, so it is an infringement! Damages for tort,' but I would not like to think that this was the case.

Furthermore, since the presence or absence of a 'likelihood of confusion' is the key point in Article 2, Paragraph 1, Item 1 of the Unfair Competition Prevention Act, I think it was possible to make arguments from a different perspective than the Trademark Law, which assumes trademark use.

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