Invalidation No. 2024-890022
Result:
The trial board held that the trademark application for “Poirot in Japanese Katakana” was filed with the intent of taking advantage of the reputation and customer attraction of the cited mark to obtain unfair profits and decided to invalidate the trademark registration.
Summary:
The mark “Poirot in Japanese Katakana” was filed on March 1, 2023 in terms of “toys, dolls” in Class 28, “coffee beans, coffee, cocoa, tea, sweets, confectionery and snacks…” in Class 30 and “providing foods and beverages” in Class 43 and registered on August 18, 2023.
The Agatha Christie Limited (the demandant) was established in 1955 in the UK to maintain and protect copyrights, trademark rights and any other legal rights in relation to the works written by the famous mystery writer, Agatha Christie. On May 9, 2024, the demandant filed the invalidation trial against the registered mark “Poirot in Japanese Katakana” owned by a Japanese individual.
The cited mark "Poirot" is the name of one of the famous characters who appeared in the mystery novels written by Agatha Christie. The "Poirot series” has been published in Japan and adaptations from the novels, such as films, dramas, animations and game software, have been produced for so long since 1920. The trial board admitted that the cited mark “Poirot” has become well-known in Japan.
The trial board held that the demandee filed the trademark registration in question with the aim of taking advantage of the notoriety and customer attraction of the cited mark to obtain wrongful benefits. Further, the trial board held that it would be inappropriate from the perspective of maintaining fair trade order that the demandee, a third party with no connection to the demandant, filed the trademark application and obtained exclusive right to use the trademark, thereby excluding the demandant from using the trademark, taking into consideration that the trademark right can be renewed semi-permanently. Therefore, the trial board decided the trademark in question, which consists of the word "Poirot (in Japanese Katakana)", falls under Article 4(1)(vii) of the Trademark Act.