misappropriation of a prominent representation

Unfair Competition Prevention Law Chapter I General Provisions Article 2.1.2

(Definition) Article 2 The term “unfair competition” as used in this Act means any of the following (i) Any person who has made a trade or other representation of goods, etc. (meaning a name, trade name, trademark, emblem, container or package of goods, or any other representation of goods or business pertaining to the business of a person; the same shall apply hereinafter) of another person. The same shall apply hereinafter) (i) an act of causing confusion with another person’s goods or business by using a trade or other representation identical or similar to one that is widely recognized among consumers as a trade or other representation (meaning a name, trade name, trademark, mark, container or package of goods pertaining to a person’s business, or other representation of goods or business; the same shall apply hereinafter), or assigning, delivering, displaying for assignment or delivery, exporting, importing or providing via telecommunication lines, goods using said trade or other representation (ii) the act of using as one’s own trade or other representation identical or similar to a well-known trade or other representation of another person, or assigning, delivering, exhibiting for the purpose of assignment or delivery, exporting, importing, or offering through a telecommunication line, goods using such trade or other representation. (iii) Transferring, leasing, displaying for the purpose of transferring or leasing, exporting, or importing goods that imitate the form of another person’s goods (excluding forms essential for ensuring the function of said goods) (iii) the act of assigning, leasing, exhibiting for the purpose of assignment or lease, exporting, or importing goods that imitate the form of another person’s goods (excluding forms that are essential for ensuring the functionality of said goods) (abbreviated below)

Article 2.1.1 is commonly known as ”[(act of) causing confusion between known and unknown indications.” - Acts that cause confusion = act of confusion Article 2.1.2 is commonly known as the “act of tampering with a well-known indication.”

• In the case of the act of blasphemy of a well-known indication, instead of the requirement of causing confusion, the requirement of being a well-known indication has been added.
  • The term “prominent” here means widely known throughout the country.

If Mr. A imitated the well-known mark used by Company X and put it on his own product and sold it, this would be an act of “misappropriation of a well-known mark”.

• We could argue about whether Company X’s display is prominent, but we won’t do that here.
• Since confusion is not a requirement for the “act of tampering with a well-known trademark,” the objection that “the product is in the style of Company X, but we make sure it will not be confused with Company X’s product” is meaningless.

So, in this situation, if Company X’s legal department is so inclined, what can they ask Mr. A to do? Relief for Damage Caused by Violation of the Unfair Competition Prevention Law (METI/Ministry of Economy, Trade and Industry)

• demand for an injunction

  • (Request for a person who commits an act of infringement to cease and desist from such act)

  • Claim for prevention of infringement against a person who commits an act that may cause infringement

  • Request for the destruction of any object that constitutes the act of infringement (including objects created by the act of infringement) (iii) a request for the disposal of the infringing material (including material created by the act of infringement), the removal of equipment used in the act of infringement, or other measures necessary to stop or prevent the infringement.

  • Simply put, Company X said to Mr. A, “Stop displaying it or selling it. “Stop displaying it, stop selling it, and destroy it. to Mr. A, “Stop displaying or selling it.

  • There is no requirement that the infringer be willful or negligent with respect to the infringement when requesting an injunction.

  • So Company X does not have to prove intentionality.
• damage claim
  • There are clauses that can facilitate the calculation of the amount of damages to facilitate the claim for damages.
  • In a crude way, “Mr. A’s number of units sold x Company X’s profit per unit.”

    • If the infringer sells 1,000 units of the morphologically imitated product and the amount of profit per unit of the infringed product is 10,000 yen, the amount of damages to the infringer is 10 million yen.

  • The final amount may be reduced by the court.
  • Two other calculation methods are available. Like “the amount of the infringer’s profits.” Company X, the requesting party, can use whatever it likes.

Louis Vuitton case study:

• 1,081,490 yen as damages (the amount of profit gained by the infringer from the infringement. The amount of damages is presumed to be the plaintiff’s damages under Article 38(2) of the Trademark Law or Article 5(2) of the Unfair Competition Prevention Law), 1,081,490 yen In addition, the plaintiff sought payment of 2,379,278 yen in total, including 1,081,490 yen (the amount of intangible damages due to damage to reputation, etc., which is separate from the amount of damages mentioned above) and 216,298 yen (attorney’s fees), as well as damages for delay.

• The former claim for 1.08 million in damages was approved as requested, and an additional claim for damages for brand damage was approved for 500,000.

  • The defendant’s act of unfair competition is to take unfair advantage of the fame of the plaintiff’s mark and its ability to attract customers, which the plaintiff has acquired through years of corporate efforts, and to substantially reduce the results of the plaintiff’s corporate efforts. The plaintiff is found to have suffered intangible damages. Although the amount of such damages cannot be uniquely calculated due to the nature of the damage, the amount of damages is determined by taking into consideration the scale and nature of the plaintiff’s business, the mode of advertising and publicity and the expenses spent thereon, the nature of the plaintiff’s business activities in Japan, the efforts of the plaintiff to maintain the plaintiff’s mark, the period of sales of the defendant’s products, the amount of profits obtained and the amount of lost profits of the plaintiff as a result of such efforts, and other factors. Taking into consideration the amount of lost profits, etc. of the plaintiff, it is reasonable to find that the amount of intangible damages such as damage to reputation suffered by the plaintiff is 500,000 yen.

Related Textbook medals are registered trademarks.

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