IP High Court of Japan, Decision of 27 June 2012

The IP High Court found that the registration of the trademark "Tarzan" by a third party was against public order or morality and had to be declared invalid.

An U.S. company established by the author of the novel "Tarzan", Edgar Rice Burroughs (ERB), claimed nullity of the trademark "Tarzan", registerd by the defendant for goods in class 7, such as "robots for plastic molding machines". ERB argued that the mark was registered in violation of Article 4.1.7 of the Japanese Trademark Law which prohibits the registration of trademarks against public order or morality.

The Japanese Patent Office (JPO) dismissed the claim, stating that, although the public in general would recognize "Tarzan" as the "King of Jungle", many people would not recognize it as the title or the main character of Burroughs' novel. The JPO mentioned that ERB owned 44 registered trademarks relating to "Tarzan" in Japan but no trademark in class 7. ERB had the possibility to register a trademark in class 7 but chose not to do so. In such a case, the interests of the parties should be solved as a private issue and there was no room to apply Article 4.1.7.

ERB appealed to the IP High Court, arguing that because of various comics, TV shows and movies which feature "Tarzan", e.g. the Disney movie "Tarzan", consumers would recognize "Tarzan" as the title of Burroughs' novel and also as his mark. ERB claimed further that the defendant had a bad intent to "steal" and use as well as to get a free-ride on the name and image of "Tarzan" which damaged not only this well-known product of American culture but also the feelings and the pride of the American people which would be against international fidelity.

The IP High Court rejected the well-known status of "Tarzan", stating that very few people knew that Tarzan was the character featured in the novel by Burroughs.

The court also dismissed the ERB's claim that the defendant had a bad intent to "steal" the trademark.

However, the court said that "where a copyright of a novel which created a certain character is still valid and there is a company managing and maintaining the cultural and economic value of this character, it is not appropriate, from the viewpoint of fair trade, for a third party to have exclusivity on that mark for certain goods or services and to exclude the company from exploiting the mark just because the third party applied first. This is also true when taking into account that trademarks are renewable and can exist almost perpetually".

The IP High Court concluded that the defendant's "Tarzan" trademark was registered against public order or morality and thus should be declared void.