Rechtsprechung

Claim for the Revocation of the Decision of the
Patent Office on Trade Mark Application
Judgment of the Supreme Court, Second Petit Bench, 6 July 2001^[1]

Hiroshi Oda

 

Company H applied to register the trade mark “PALM SPRINGS POLO CLUB” for suits, coats, shirts and other apparel products. The Patent Office rejected this application on 2 March 1995. In the adjudication procedure which followed, the Patent Office dismissed the appeal of the Company on the grounds that with the word “POLO” in
the application, there was a possibility of people being misled into believing that the product was somehow associated with Ralph Lauren. Under the circumstances the
trade mark under application was not eligible for registration under Art. 4, para. 1, subpara. 15 of the Trade Mark Law^[2] as a trade mark which may create confusion with products or services of other entities.

The Company brought an action to court for the revocation of this decision by the Patent Office. The first instance court – Tokyo Appellate Court – quashed the decision of the Patent Office.

The Appellate Court acknowledged that “POLO” was a trade mark widely recognised among companies in the trade and the general public as a trade mark representing apparel products designed by Ralph Lauren. On the other hand, the Court also pointed out that polo was a word widely known as the name of a game. Palm Springs is well known as a resort place in the United States. “Club” means an association of those who share a common interest. “Therefore, people in the trade as well as consumers will recognise ‘PALM SPRINGS POLO CLUB’ as a club for the game of polo located in Palm Springs; it is not likely that the word ‘POLO’ will be isolated from the entire trade mark and be associated with Ralph Lauren”.

The Patent Office appealed to the Supreme Court. The Supreme Court accepted the ruling of the Appellate Court in that “POLO” is widely recognised among companies in the trade and the consumers in Japan as a trade mark representing apparel products designed by Ralph Lauren and enjoys a high level of publicity, and that polo is the name of a game and there is a common noun as polo shirts. However, according to the Supreme Court, the trade mark under application is to cover apparel products which are the same or closely related to the products in which the trade mark “POLO” is currently

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