Date of
Judgment: February 28,
2002
Issuing
Authority:
Supreme Court
Level of
the Issuing Authority: Final Instance
Type of
Procedure: Judicial（Administrative）
Subject
Matter: Trademarks
Main
text of the judgment (decision):
Judgment
in prior instance shall be reversed, and this case shall be remanded to Tokyo
High Court
Reasons:
Reasons
for the petition for acceptance of final appeal by attorney of the final
appeal, ●●●●
1. Outline of factual
relationships and the like finalized in the court of prior instance is as
follows.
Appellants of final appeal as well
as D and E jointly owned the trademark right according to the registered
trademark (establishment registered on August 31, 1993, Registration No.
2564665, hereinafter, referred to as the "present registered
trademark") for the trademark in which vertically written characters of
"水沢うどん(Mizusawa
Udon)" with designated goods of "Udon noodles, instant Udon
noodles" in Class 32 in the Appended Table of the enforcement ordinance of
the Trademark Act (before revision by the 1991 Ordinance No. 299). Appellees made a request for an
invalidation trial of the trademark registration according to the present
registered trademark with Appellants as well as D and E as demandants on
October 27, 1997.
The Japan Patent Office made a
decision on the aforementioned trial case on April 6, 2000 to the effect that
the trademark registration according to the present registered trademark was to
be invalidated for the reason of applicability to Article 3, paragraph (1),
item (iii) of the Trademark Act.
The certified copy of the aforementioned decision was delivered to
Appellants as well as D and E on the 26th day of the same month, and Appellants
instituted a lawsuit against the aforementioned JPO decision on May 25 of the
same year. However, D and E
prepared the statement on abandonment of the share that the trademark right
according to the present registered trademark shall be abandoned as of April 30
of the same year and did not institute a lawsuit against the aforementioned JPO
decision by the time limit of action against the decision.
Appellants as well as D and E
filed a petition of share transfer registration that the shares of D and E
shall be transferred to each of Appellants with the cause of the aforementioned
share abandonment on July 17 of the same year.
2. In the present lawsuit, only
Appellants sought rescission of the JPO decision, but the court of prior
instance judged as follows and dismissed the present lawsuit.
The lawsuit that seeks rescission
of the JPO decision to the effect that the trademark registration is to be
invalidated (hereinafter, referred to as the "invalidation JPO
decision") for the jointly owned trademark right needs to be final and
binding in a unified manner since it determines presence/absence of one right
owned by all the joint holders and is a compulsory joinder.
Since the time limit of action
against the decision has elapsed without institution of a lawsuit by D and E,
the present lawsuit according to the institution only by Appellants is
unlawful.
3. However, the aforementioned
judgment of the court of prior instance cannot be accepted. The reasons therefor are as follows.
(1) In the case of the jointly
owned right generated by the filing of the trademark registration, when a trial
is to be requested for the right, all the joint holders should do that jointly
(Article 132, paragraph (3) of the Patent Act applied mutatis mutandis to
Article 56, paragraph (1) of the Trademark Act). This is exactly because coincidence of
intentions of all the joint holders is required for obtainment of one trademark
right which is to be held by the joint holders. On the other hand, once the
establishment of the trademark right is registered, the joint holders of the
trademark right can use the registered trademark without consent of the other
joint holders, although consent of the other joint holders is required for
procedures such as transfer of the share, establishment of exclusive use right,
or the like (Article 73 of the Patent Act applied mutatis mutandis to Article
35 of the Trademark Act).
Incidentally, in the case
where the invalidation decision of the trademark registration was made for the
once registered trademark right, if the time limit of action against the
decision has elapsed without institution of a lawsuit seeking rescission
thereof, the trademark right is deemed never to have existed, and the right to
exclusively use the registered trademark retrospectively lapses (Article 46-2
of the Trademark Act). Therefore,
since the institution of the aforementioned lawsuit of rescission falls under a
preservation act preventing lapse of the trademark right, it is understood that
it can be made singularly by each of the joint holders of the trademark
right. And even with such
understanding, the right of the joint holder who did not institute a lawsuit is
not ruined.
(2) Regarding the jointly owned
trademark right, since the situations of respective profits and interests of
the joint holders can be different, if cooperation by the other joint holders
cannot be gained for the institution of a lawsuit or if the registration is not
completed within the time limit of action against the decision even though the
share was disposed of after the invalidation decision, the invalidation
decision might be made even after extinction of the trademark right (see
Article 46, paragraph (2) of the same Act), and such a case is assumed that a
long time has elapsed since the establishment of the trademark right was
registered and whereabouts of the other joint holders become unknown. If the rescission lawsuit against the
invalidation decision of the jointly held trademark registration is understood
to be the compulsory joinder in such a case, and it is supposed that the
lawsuit instituted only by some of the joint holders to be unlawful, the
invalidation decision is final and binding at the same time as expiration of
the time limit of the action against the decision, and the trademark right is
deemed never to have existed, which can be an unreasonable result.
(3) Even if it is understood that
each of the joint holders of the trademark right can singularly institute a
lawsuit to rescind the invalidation decision, if the judgment approving the
claim is final and binding in the lawsuit, the effect of the rescission reaches
to the other joint holders (Article 32, paragraph (1) of the Administrative
Case Litigation Act) and the trial proceeding is performed in relation with all
the joint holders at the Patent Office again (Article 181, paragraph (2) of the
Patent Act applied mutatis mutandis to Article 63, paragraph (2) of the
Trademark Act). On the other hand,
if the judgment to dismiss the claim is final and binding in the lawsuit, the
invalidation decision is final and binding by expiration of the time limit of
the action against the decision in relation with the other joint holders, and
the right is deemed never to have existed (Article 46-2 of the Trademark
Act). In any case, such a situation
that contradicts the request of unified final and binding is not
generated. Moreover, if each of the
joint holders instituted a rescission lawsuit jointly or individually, the
lawsuits should be understood to fall under the quasi-mandatory joinder, and
they are combined and then, examined/judged, whereby the request for unified
final and binding is fulfilled.
(4) As held as above, [summary] it
is reasonable to understand that when the invalidation decision of the jointly
held trademark registration is made, each of the joint holders of the trademark
right can singularly institute the rescission lawsuit of the invalidation
decision.
4. Then, the judgment of the court
of prior instance that the present lawsuit is unlawful has violation of the
laws and orders which obviously affects the judgment. The gist has grounds. The Supreme Court 1960 (O) 684, First
Petty Bench judgment on August 31, 1961/Minshu vol. 15, No. 7, page 2040,
Supreme Court 1977 (Gyo-Tsu) 28, Second Petty Bench judgment on January 18,
1980/Court Collection Civil No. 129, page 43, and Supreme Court 1994 (Gyo-Tsu)
83, Third Petty Bench judgment on March 7, 1995/Minshu vol. 49, No. 3, page 944
are cases different from the present case, which is not appropriate. Therefore, the judgment in prior
instance shall be reversed, and the present case shall be remanded to the court
of prior instance so that this case is to be examined.
Therefore, the judgment shall be
rendered as in the main text unanimously by all the judges.
(This translation is provisional and
subject to revision.)