Trademark Law Summary of Thoughts: Learning from the Different Judgment Criteria of Examination and Invalidation Trials in the "Herb Yoghurt-on Case" - Yuru-Kawa Trademark Radio #84

1. New Assistant, "Oharu-san"

Starting today, our new assistant, "Oharu-san," joins us. She is from the Hokushin region of Nagano.

Oharu-san is knowledgeable about the patent field, but is just starting with trademarks. She has a beautiful voice!

2. Learning from the Different Judgment Criteria of Examination and Invalidation Trials in the Herb Yoghurt-on Case

Herb Yoghurt-on Case: Heisei 23 (Wa) No. 215323

In the Herb Yoghurt-on case, despite the fact that the defendant was using their own registered trademark, trademark infringement was established, and a claim for damages was granted through the application of the presumption of negligence.

In conclusion, the lenient judgment of the Japan Patent Office cannot be relied upon. In particular, from the perspective of a subsequent applicant, one cannot simply be happy just because it was registered.

Since a patent attorney's expert opinion is not considered to have fulfilled the duty of care, if you have the financial resources, it might be better to use the Japan Patent Office's expert opinion.

2.1. Background of the Herb Yoghurt-on Case

The defendant originally held trademark rights (No. 4920741, No. 5074465). It seems these were invalidated. Since the two defendant marks were registered in 2006, it is thought that the defendant used their own registered trademark with peace of mind. Unfortunately, since they were invalidated by an invalidation trial, it is assumed they ceased use.

The plaintiff's right is the trademark "Yoghurt-on" (Registration No. 4722030) designating pork, etc. as goods.
Defendant mark 1 is the trademark "Herb Yoghurt-on" (Registration No. 4920741) designating pork as goods.
Defendant mark 2 is a combined trademark with a figure (Registration No. 5074465) designating pork as goods.

In the invalidation trial, it was determined that "Herb" contained in the defendant's mark lacked distinctiveness, and the invalidation decision became final on the grounds that the distinctive essential part "Yoghurt-on" was common.

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