A recent addition to the drink offerings in Japanese shops and vending machines has been “Wonda TEA COFFEE,” produced and of course trademarked by major drink company Asahi Soft Drinks Co., Ltd (Tokyo). Drinks in this line combine cafe latte with Japanese teas. The name sparked a conflict, however, when Kyoto tea-and-coffee company Agelle Corporation filed a trademark infringement case against Asahi over its logo including “TeaCoffee” in it [1].
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| Agelle’s Japan Trademark No. 5963932 [2] | Asahi’s Japan Trademark No. 6071970 [3] |
The case was cast in social media as a sort of David-versus-Goliath (Agelle being David against big, brutish Asahi) battle [4], but the Osaka District Court denied Agelle’s claims (demanding about US$300,000) on March 15, 2019. Chief Justice Takamatsu pronounced that the only similarities between the trademarks were the words “Tea” and “Coffee,” which merely speak of the qualities or ingredients of the products. He deemed that Agelle’s trademark is not properly distinctive based on those words alone [1]. Both companies’ trademarks are comprised of images with the same words “Tea” and “Coffee.”
The images do not resemble each other, but are the key elements of the trademarks. Thus the court’s decision focuses on the inadequacy of the words in Agelle’s trademark to be distinctive, hence the similar wording of Asahi’s related product fails to infringe upon it.
In this case, Agelle may have failed to account for the essential elements of its trademark. It is important for other trademark filers to recognize the boundaries of trademark viability in Japanese (and other countries’) practice.
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Taro Yaguchi
Sources
[1] Nikkei Shimbun, “ティーコーヒー類似認めず 大阪地裁、商標権訴訟 [Osaka District Court dismisses similarity of “TeaCoffee”],” March 15, 2019.
[2] Japan Patent Office, published Trademark No. 5963932 (i.e. Agelle’s registered trademark), J-Plat Pat, accessed March 26, 2019.
[3] Japan Patent Office, published Trademark No. 6071970 (i.e. Asahi’s registered trademark), J-Plat Pat, accessed March 26, 2019.
[4] Also: Tatsuya YAMADA, “「TEA COFFEE（ティーコーヒー）」は商標権侵害。エーゲルがアサヒ飲料を提訴 ～文字商標と図形商標の違い～,” updated March 8, 2019, accessed March 26, 2019.
