Introduction
Background
Facts
Patent Office decision
IP High Court decision
Comment


Introduction

On June 27 2012 the IP High Court reversed a Japan Patent Office (JPO) trial decision that refused to invalidate the trademark registration for the mark TARZAN (in Japanese Katakana) for "plastic processing machines and apparatus, automatic extruding robot for plastic extruding machines and chuck (machine elements)" in Class 7.

The court determined that the mark TARZAN, registered by KK Star Seiki, fell under Article 4(1)(7) of the Trademark Law (127/1959, as amended). The court then invalidated the mark under Article 46(1) of the Trademark Law.

Background

Article 4(1)(7) of the law provides that registration cannot be obtained "in the case of trademarks liable to contravene public order or morals".

Article 46(1) of the law provides that:

"where a trademark registration falls under any of the following items, a trial for invalidation of trademark registration may be demanded for the invalidation of the trademark registration. In such a case, if two or more designated goods or designated services are covered by the trademark registration, a trial may be demanded with respect to each of such designated goods or designated services:

(1) where the registration has been effected contrary to Articles 3, 4 (1)… of the Law."

Facts

KK Star Seiki filed its trademark application for the mark TARZAN (in Japanese Katakana) for the designated goods in Class 7 on January 20 2010. The mark was registered on July 16 2010 (Trademark Registration 5338568).

Edgar Rice Burroughs, Inc was founded by Edgar Rice Burroughs on March 24 1923. Pursuant to an agreement of April 2 1923 the company received from Burroughs the rights to all the books in the Tarzan series, and has managed these rights since then. On February 4 2011 the company demanded a trial for invalidation of the subject trademark under Article 46(1) of the Trademark Law.

Patent Office decision

On July 26 2011 the JPO issued a trial decision refusing to invalidate the subject trademark.

The JPO's reasoning was as follows:

  • Although the name 'Tarzan' is, to a certain extent, remembered as the king of the jungle among Japanese consumers, at the time of examining the subject trademark it was not widely admitted that it was understood to be the title of or a character in novels of US author Burroughs or the trademark managed by the plaintiff.
  • The United States and US public organisations have not been closely connected with the management of the trademark beyond the fact that 'Tarzan' is the title of or a character in Burroughs' works or the trademark managed by the plaintiff.
  • The plaintiff owns 44 trademarks covering TARZAN and TARZAN in Japanese Katakana or including them as a part thereof, but has no trademark for the designated goods in Class 7 applied for by KK Star Seiki. This shows that the plaintiff had failed to file such trademark application in Class 7, although it had sufficient time to do so. In this particular situation the question of who should hold the trademark right should be a private issue to be settled between the parties. It was not proper to consider such situation as an exceptional case with special circumstances that contravened public order or morals.
  • Thus, the subject trademark was not considered to be insulting to the United States or US nationals, or to contravene international morals generally. Further, it was not admitted that the subject trademark had any socially improper or unreasonable filing history, and thus granting the registration would be against the expected good order of the Trademark Law.
  • Therefore, the subject trademark did not fall under Article 4(1)(7) of the Trademark Law.

IP High Court decision

Edgar Rice Burroughs, Inc appealed to the IP High Court. The court reversed the JPO trial decision on June 27 2012.

According to the evidence, the IP High Court found the basic facts to be as follows:

  • Tarzan series – 'Tarzan' is the name of the character appearing in the Tarzan series (26 books) produced by US author Burroughs and published from 1912. The Tarzan series is about a hero character, Tarzan, who is raised by an ape in the African jungle and becomes the king of the jungle. Thus, Tarzan is not a real person, but a fictitious one created by Burroughs. The word 'Tarzan' is a word created from a combination of 'tar' (meaning 'white' in the fictional monkey language of the novel) and 'zan' (meaning 'skin' in that language). Each of the Tarzan works was translated into around 30 languages by the 1950s and has been read in more than 50 countries.
  • Effective period of copyright – the copyright in Japan of the Tarzan series was in effect up to May 22 2011.
  • Plaintiff and its activities – Burroughs founded the plaintiff company on March 24 1923 and assigned to the plaintiff the rights to all the books in the Tarzan series, pursuant to the agreement of April 2 1923. The plaintiff has managed such rights thereafter. As of January 31 2011 it owned 44 trademark rights covering TARZAN and TARZAN in Japanese Katakana, or including them as a part thereof in Japan, and also several hundred trademark rights in 80 other countries and areas, including the United States (as of January 2012).
  • Derivative works – there are many derivative works from Tarzan, such as comics, stage dramas, radio dramas, films and various animation works, all performed in Japan.
  • Licensing agreements – Disney has been provided various products and services under a licence from the plantiff, which from April 2000 to the present has received more than $4 million. The plaintiff concluded a licence agreement with Magazine House KK for Tarzan magazine and a licence agreement with Sumikin Bussan KK for products including underwear and casual shoes. Thus, the plaintiff has granted 21 licences to 12 companies since 1984.

Judgment on famousness of Tarzan
The popularity of Tarzan has been gradually fading in Japan since the 1970s; at the time of examination of the subject trademark (July 6 2010), more than 10 years after the Disney animated film, the novel and its derivative works or tie-in products have had little prominence.

At the time of examination of the subject trademark, 'Tarzan' recalls the image of a young man yelling and leaping from tree to tree in the jungle; different generations of the public may have different recollections. Thus, the name 'Tarzan' has no general definite character, feature or personality. Although Japanese consumers have vague memories of Tarzan, at the time of examination it was not widely known that 'Tarzan' was the title of or a character in works by Burroughs or the trademark managed by the plaintiff. Therefore, it could not be said that the trial court erred in its judgment.

Judgment on Article 4(1)(7)
The products subject to the TARZAN licence agreements in Japan include a magazine, casual shoes, apparel goods such as underwear, television broadcasting, books and soft-cover books for children. In view of the fact that the licensee, Disney, is a global, influential enterprise, it is difficult to admit that the word 'Tarzan' has, to any extent, the economic power to attract consumers in the field of the designated goods ("plastic processing machines and apparatus, automatic extruding robot for plastic extruding machines and chuck (machine elements)"), which are not products for general consumers.

Even if the defendant's intention in filing the application for the subject trademark was to utilise the image of Tarzan (ie, a young man yelling and jumping from tree to tree in the jungle) for an extruding robot for plastic-forming machines, this does not support the plaintiff's contention that its trademark has been plagiarised with the purpose of taking advantage of the Tarzan image or its power to attract customers.

However, the made-up word 'Tarzan' is understood around the world, including in the United States, to be the name of a fictitious character with a concrete concept – although it is not well known in Japan. Thus, to maintain the registration of the subject trademark which consists only of the word 'Tarzan' should be considered as contravening international morals, even if the word 'Tarzan' itself has no power to attract customers in respect of the designated goods involved.

Further, the word 'Tarzan' is the name of the character appearing in the Tarzan series created by Burroughs. The Japanese copyright in that name was still in effect at the time of examination of the subject trademark (July 6 2010), as were the copyrights in various derivative works. The plaintiff has maintained and preserved the value of the original Tarzan novel and its various derivative works by producing an online archive covering all works of the Tarzan series. The plaintiff has also maintained trademark registrations for the TARZAN mark throughout the world, including in the United States, and has maintained and managed the commercial value of the mark by concluding and controlling licence agreements.

In a situation where the copyrights in the original novels still exist and an organisation maintains and manages the cultural and economic value thereof, it is improper – from the viewpoint of maintaining fair trade – to allow circumstances where:

  • an unrelated third party has filed the first trademark application and thus can monopolise such trademark registration obtained for certain products and prevent use by the organisation that maintains such copyrights; and
  • once obtained, such trademark right can be continued semi-permanently due to the ease of renewal in Japan.

On the other hand, the defendant was not involved in the maintenance of the cultural and commercial value of the word 'Tarzan', and thus it was improper to allow the defendant to monopolise the use of the word 'Tarzan', even if limited to the designated goods.

Thus, the registration of the subject trademark was an act harmful to fair trade and therefore liable to contravene public order or morals. The judgment held that the subject trademark fell under Article 4(1)(7) of the Trademark Law.

Conclusion
The court held that the plaintiff's claim was well grounded and thus should be admitted.

By the same ruling, the IP High Court also invalidated the TARZAN trademark in English (Trademark Registration 5338569).

Comment

In connection with Article 4(1)(7) of the Trademark Law, it is generally considered that the following types of mark fall under the category of trademarks liable to contravene public order or morals:

  • where the trademark itself is structured in a violent, indecent or discriminative manner, or in a way as to give displeasure to others, including where it is used on the designated goods or services in a way that is contrary to social public interests or general social moral norms;
  • a trademark prohibited by other laws or that is misleading with regard to national qualifications (eg, attorney at law);
  • a trademark used by a gang or a trademark that insults a specific nation or its nationals;
  • a trademark that contravenes international morals;
  • a trademark that is harmful to fair competition; or
  • a trademark that plagiarises another's trademarks.

Although many previous court cases have involved issues under Article 4(1)(7) of the Trademark Law, in connection with the issue of a trademark that contravenes international morals it should be noted that on July 31 2002 the Tokyo High Court issued a judgment in favour of the owner of the mark SALVADOR DALI against the owner of the mark DARI and invalidated the DARI mark, because such mark is considered to be a trademark harmful to fair competition and in contravention of international morals. Another case of the IP High Court (September 20 2006) resulted in a judgment in favour of the provincial government against an Ontario corporation that owned the trademark ANNE OF GREEN GABLES and upheld the invalidation of such trademark, as it was considered to be a trademark in contravention of international morals.

There has been much discussion of who should qualify as the trademark owner of the title of a literary work or a character appearing in such literary work where the copyright itself cannot be protected. After the effective copyright period, the copyright itself should be in the public domain and anyone can use it. It would be odd if only the organisation which succeeded the copyright could file a trademark application for such title or character name and could obtain the trademark even after the effective period of the copyright.

In the TARZAN case the IP High Court carefully examined the various circumstances involved as to the positions and activities of the parties, and rendered a fair judgment after carefully weighing the interests of the plaintiff and the defendant.

For further information on this topic please contact Eiichi Fukushima at Nishimura & Asahi by telephone (+81 3 5562 8500), fax (+81 3 5561 9711) or email ([email protected]).