Trademark Law Case Study: Roller Sticker Case, 2021 (Ne) No. 2608
1. Conventional Theories, etc.
Conventionally, there have been theories suggesting that there are cases that can be evaluated as trademark infringement even outside the modes of trademark infringement for which express provisions are provided in the Trademark Act.
Specifically, there was a theory (at least the majority view in the patent attorney examination industry) that the act of peeling off or erasing a registered trademark affixed to a product can be evaluated as an act that harms the source-identifying function of the trademark (the basic function of a trademark), and therefore should be evaluated as an act of trademark infringement.A judgment following this theory is the Magamp K case in the Osaka District Court (1992 (Wa) No. 11250).
2. Overview of this case (Osaka High Court 2021 (Ne) No. 2608)
In this case (Roller Sticker Case (2021 (Ne) No. 2608)), unlike the aforementioned "majority view in the patent attorney examination industry," a judgment is presented stating that "it cannot be recognized that the act of peeling off or erasing a registered trademark, etc., constitutes trademark infringement in itself.".
If a manufacturer that manufactures and sells products wishes to prohibit the act of peeling off or erasing by product retailers, etc., it seems necessary to conclude a contract in advance prohibiting the act of peeling off or erasing the trademark.
3. Overview of the Judgment
Appellant P1 is an individual who develops, commercializes, and sells exercise equipment, etc., for the purpose of maintaining health. Since around 1998, the appellant has been selling a self-invented cane with wheels (product name "Roller Sticker," hereinafter referred to as the "Product in Question") directly or through wholesalers. The appellant holds a trademark right related to Trademark Registration No. 6203564 (hereinafter referred to as the "Trademark Right in Question") for the trademark "Roller Sticker" (standard characters) and designated goods "Class 18: Canes."
The appellee (Fuji Home Co., Ltd.) is a company that aims to wholesale health equipment, etc. The appellee purchased and sold the Product in Question.
According to the appellant's claims, the appellee (i) affixed a sticker printed with "Handrail Stec Sales Distributor Fuji Home Co., Ltd." over the appellant's trade name written on the packaging box of the Product in Question, and (ii) replaced the "Roller Sticker Instruction Manual" (hereinafter "Appellant's Manual") enclosed by the appellant in the product itself with a "Handrail Stec Instruction Manual" (hereinafter "Appellee's Manual") created by the appellee for sale. For this reason, the appellant claimed that the appellee's actions infringed on the appellant's Trademark Right in Question.
In the first instance, the appellant's claims and arguments were dismissed, so the appellant appealed. One of the issues in this lawsuit is the presence or absence of an infringing act against the Trademark Right in Question.
The parts of the judgment considered important are as follows.
(2) The purpose of the Trademark Act is to exclusively grant the trademark holder the right to use a registered trademark when a trademark that is the subject of credit embodiment is registered, and to suppress misidentification or confusion of the source of goods or services. Trademark infringement is fundamentally established when a person other than the trademark holder uses a trademark that is identical or similar to the registered trademark within the scope of identical or similar designated goods or designated services (Articles 25 and 37 of the Trademark Act). In other words, it can be said that the Trademark Act seeks to protect the trademark by establishing a relationship in which the source of the goods or services to which the registered trademark is affixed can be identified as the trademark holder. The act of a wholesaler, etc., who has purchased from the trademark holder, peeling off or erasing the registered trademark affixed by the trademark holder to the designated goods during the distribution process, and further affixing and distributing their own different mark, does not cause traders or consumers who come into contact with the goods to which the registered trademark is affixed to misidentify or confuse the source of the goods, and it must be said that suppressing the above act is different from the mode of protection intended by the Trademark Act. Therefore, it should be said that the act of peeling off or erasing a registered trademark, etc., as described above, cannot be recognized as constituting trademark infringement in itself.(3) Furthermore, even setting that point aside, the actions of the appellees during the latter period (regarding the appellees' actions (ii) and (iii)) are interpreted as not constituting an act that can be evaluated as an act of peeling off or erasing the appellant's mark, as follows. A. According to the premise facts cited after correction in 2-2 above, the appellant's mark is not displayed on the outside of the packaging box of the Product in Question delivered by the appellant to the appellees in the first place, so there is no fact that the appellant's mark was covered up by the appellees' sticker affixed by the appellees after purchase. What the appellant is taking issue with as being covered up by the appellees' sticker (i) is the appellant's trade name, not the appellant's mark. Also, there is no fact that any change was made to the mark "Roller Sticker" (which is identical to the appellant's mark in terms of pronunciation and concept) printed in English on the Product in Question itself by the appellees' actions (there is also no change in the quality of the Product in Question). B. If so, the only act that can be a problem as an act of peeling off or erasing the appellant's mark is the act of the appellee Fuji Home replacing the Appellant's Manual enclosed in the packaging box when purchasing the Product in Question from the appellant with the Appellee's Manual (regarding the appellees' action (ii)), but the Appellant's Manual was merely enclosed in the packaging box of the Product in Question delivered through the transaction as a document explaining how to use the Product in Question, without being affixed to the Product in Question, so it cannot be said that a mark was affixed to the Product in Question (Article 2, Paragraph 3, Item 1 of the Trademark Act), and there are no circumstances sufficient to recognize that the Appellant's Manual corresponds to a transaction document (Item 8 of the same paragraph). Therefore, the statement "Roller Sticker Instruction Manual" in the Appellant's Manual is not recognized as using the appellant's mark as a trademark, and replacing the Appellant's Manual is not recognized as an act that should be evaluated as an act of peeling off or erasing the appellant's mark. C. As described above, the actions of the appellees during the latter period do not constitute an act that is evaluated as an act of peeling off or erasing the appellant's mark in the first place, so without needing to judge other points, the appellant's claim of trademark infringement based on the peeling off or erasing of the trademark cannot be adopted. Note that even if the mark affixed by the appellant to the Product in Question itself (which is identical to the appellant's mark in terms of pronunciation and concept) and the appellees' mark affixed by the appellees to the packaging box coexist regarding the Product in Question in the appellees' actions (ii) and (iii), there is no reason why the appellees, who legally purchased the Product in Question from the appellant, should be generally prohibited from affixing their own mark to the Product in Question to clarify the source as a reseller. (4) Therefore, regarding the actions of the appellees during the latter period, trademark infringement of the Trademark Right in Question is not established, so the tort of trademark infringement is not established.
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