Unfair
Date
Competition Case number

November 9, 2023
2023 (Ne) 10048

CourtIntellectual Property
High Court, Fourth
Division- The entire form of the Appellee's products, which includes all of forms (a) to (h),falls under the indication of well-known goods or business according to Article 2,paragraph (1), item (i) of the Unfair Competition Act.
- It is recognized that the form of each of the Appellant's products is similar to t heform of the Appellee's products, and causes confusion and false recognition.
Case type: Injunction, etc.
Result: Appeal dismissed
References: Article 2, paragraph (1), item (i), Article 3, paragraph (1), paragraph (2)of the Unfair Competition Prevention Act
Judgment of the prior instance: Tokyo District Court 2020 (Wa) 31524
Summary of the Judgment
1 Background
The present case is one, in which the Appellee (the Plaintiff of the first trial), whodevelops footwear products and the like under the brand "Dr. Martens", alleges thatboots (each of the Appellant's products) sold by the Appellant (the Defendant of thefirst trial) violates each of the Appellee's trademark rights and configures unfair
competition causing confusion with boots (the Appellee's products) whose form iswell-known as the indication of goods or business of the Appellee.
2 Regarding applicability of the indication of well-known goods or business of theform of the Appellee's products(1) It is recognized that "1460 8-hole boots" (boots made of leather) sold in Japanas a product of the Appellee's brand "Mr. Martens," in most models, includes
characteristics on the form which are a yellow welt stitch (form (a)), a sole edge (form(b)), a heel loop (form (c)), a sole pattern (form (d)), inclination of an out sole heelpart (form (e)), a rounded shoe front portion (form (f)), a puritan stitch (form (g)), and8-hole (form (h)).
It is recognized that the Appellee's products have a distinguishing feature different
from other products of the same type, especially in three points of the form (a)(yellow welt stitch), the form (b) (sole edge), and the form (c) (heel loop), and show
strong capability to distinguish the source.

Furthermore, it can be said that if

observed as a whole in combination with the forms (d) to (h) which cannot be said t o
be very distinctive when viewed individually, it has a distinguishing feature whichcannot be found in other products of the same type (boots).

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The Appellee's products including all of the forms (a) to (h) above are recognized
to have so-called special distinctiveness.
(2) Considering the history of sales and advertisement in Japan of the Appellee's
products or questionnaire results submitted as evidence, it is obviously recognizedthat the form of the Appellee's products including the features of the forms (a) to (c)is well-known between consumers, and corresponds to the indication of well-known
goods or business.
3 Regarding similarity between the forms of the Appellee's products and each of
the Appellant's products(1) Although the Appellee's products are recognized to have the applicability of
the indication of well-known goods or business as one including all of the features ofthe forms (a) to (h), even if suspected infringing products do not include all of thefeatures, regardless of identity, similarity cannot be denied as a matter of course.

Atthe determination of the similarity, although the form (a) (yellow welt stitch) that is
the most significant feature of the form of the Appellee's products becomes a primarypart and should be given the most importance, it is understood that comprehensive
determination including the other forms is required.
(2) Appellant's Product 1 is recognized to have all of the features of the forms (a)to (h) of the Appellee's products, and it must be said that it is equivalent to a deadcopy of the Appellee's products, so that it is obvious that the forms of the two aresimilar to each other.
(3) Although Appellant's Product 2 is similar to Appellant's Product 1 in parts
other than the heel loop (form (c)) of the Appellee's products, the Appellee's mark is
woven like embroidery on the heel loop of the Appellee's products, whereas a heel
loop of Appellant's Product 2 is made of a plain black material and is about half thelength of the Appellee's products.

The two are different in these points.

However, despite this difference, the two are common in the basic feature that aheel loop rising upward is provided on a heel side of a boot opening, and it isunderstood that among consumers, the difference might be recognized as a difference
in design details of products with different model numbers in the same series.
Then, in addition to the difference above, comprehensively examining whileconsidering the matters that Appellant's Product 2 has all of the features of the forms(a) to (h) of the Appellee's products, especially has the common feature in the yellow
welt stitch (form (a)) that is thought to be the most significant feature of theAppellee's products, it is recognized that the form of Appellant's Product 2 is similar
to the form of the Appellee's product.
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4 Regarding applicability of causing confusion relating to each of the Appellant's
products
In light of publicity of the indication of goods or business relating to the form of
the Appellee's products and the similarity between the form of the Appellee's products
and each of the Appellant's products, it is recognized that if the Appellant sells theAppellant's products, confusion and false recognition with the Appellee's products arecaused.
5 Regarding the necessity of injunction and destruction
Since it can be said that the business interests of the Appellee have been infringed
due to sales of each of the Appellant's products (unfair competition), the Appellee
may make a claim, against the Appellant, for an injunction of sales and displaying forsales on the basis of Article 3, paragraph (1) of the Unfair Competition Prevention
Act, and having each of the Appellant's products destroyed on the basis of Article 3,
paragraph (2) of the Unfair Competition Prevention Act (Claims based on theTrademark Act which is in a selective consolidated relationship do not need to beaddressed.).

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Judgment rendered on November 9, 2023
2023 (Ne) 10048 Case of appeal for a claim for injunction against sale
(Prior instance: Tokyo District Court 2020 (Wa) 31524)
Date of conclusion of oral argument: September 7, 2023
Judgment
Appellant: (First Instance Defendant)

Kabushiki Kaisha MD Kikaku

Appellee: (First Instance Plaintiff)

Air Wear International Ltd.

Main text
1. The appeal of the present case shall be dismissed.
2. Court costs shall be borne by the Appellant.
3. Paragraph 3 of the main text of the prior instance judgment may be provisionally
executed.
Facts and reasons(Abbreviations shall follow the usage in the prior instance judgment)
No. 1 Outline of the case
The Appellee sells footwear products under the brand of "Dr. Martens".

The

Appellee argues that the boots sold by the Appellant (Appellant's Products) infringeon the trademark rights held by the Appellee, and that the sale constitutes unfair
competition by creating confusion with the boots whose form is well-known as anindication of goods or business of the Appellee (Appellee's Product).
No. 2 Trial sought by the parties
1.

Appellee's claims(1) The Appellant shall not sell Appellant's Product 1, which bears Appellant's mark,or exhibit the same product for sale.
(2) The Appellant shall not sell Appellant's Product 2 or exhibit the same product forsale.
(3) The Appellant shall dispose of the Appellant's Products.
[Legal grounds for claim]
Relevant
Appellant's Product 1
Product
Claim (1)[i] Based on Appellee's Trademark
Right 1
Seeking injunction pursuant to Article
1

Appellant's Product 2

36, paragraph (1) of the Trademark Act[ii] Based on Appellee's Trademark
Right 2
Seeking injunction pursuant to Article
36, paragraph (1) of the Trademark Act[iii] Seeking injunction pursuant to
Article 3, paragraph (1) (Article 2,paragraph (1), item (i)) of the Unfair
Competition Act([i] to [iii] are subject to elective
joinder)
Claim (2)Claim (3)2.

[i] Based on Appellee's Trademark
Right 1
Seeking disposal pursuant to Article 36,
paragraph (2) of the Trademark Act[ii] Based on Appellee's Trademark
Right 2
Seeking disposal pursuant to Article 36,
paragraph (2) of the Trademark Act[iii] Seeking disposal pursuant to
Article 3, paragraph (2) (Article 2,paragraph (1), item (i)) of the Unfair
Competition Act([i] to [iii] are subject to elective
joinder)

Seeking injunction
pursuant to Article 3,
paragraph (1) (Article 2,paragraph (1), item (i)) of
the Unfair Competition
Act
Seeking disposal pursuant
to Article 3, paragraph (2)(Article 2, paragraph (1),item(i)) of the Unfair
Competition Act

Decision made by the court of prior instance, and filing of appeal
The court of prior instance rendered a judgment to the effect of entirely

approving the Appellee's claims (for Appellee's Product 1, approved a claim based onAppellee's Trademark Right 1, and for Appellee's Product 2, acknowledged that theForm (A) of Appellee's Product is a well-known indication of goods or business), and
the Appellant, who was dissatisfied with the court's decision, filed an appeal.
[Object of the appeal](1) The prior instance judgment shall be rescinded.
(2) The Appellee's claims shall be dismissed.
No. 3 Issues, and arguments made by the parties
1.

Issues of the present case are as indicated under No. 2, 3 (page 4) of the prior2

instance judgment.
(omitted)
No. 4 Judgment of this court
The present court determines, on the ground that the overall form of Appellee's
Product, which has the Forms (A) to (H), falls under a well-known indication of
goods or business (Article 2, paragraph (1), item (i) of the Unfair Competition Act),
that the claims for injunction and the claims for disposal pertaining to Appellant's
Products pursuant to Article 3, paragraphs (1) and (2) of the same Act shall beentirely approved.
1.

The reasons are described below.

Findings
The findings are as described under No. 2, 2 (from page 3) and No. 3, 1 (frompage 29), and are cited herein.
2.

Whether or not Appellee's Product falls under a well-known indication of

goods or business Part 1 (whether or not there is so-called distinctiveness)(1) As per the above findings, it is acknowledged that most models of the productcalled "1460 8-Eye Boots" (leather boots) sold in Japan under the Appellee's brand"Dr. Martens" have the features of yellow welt stitches (Form (A)), sole edge (Form(B)), heel loop (Form (C)), sole pattern (Form (D)), slope in the heel area of theoutsole (Form (E)), the rounded front part of the shoe (Form (F)), Puritan stitching(Form (G)), and eight holes (Form (H)).
It is acknowledged that the individual features are as described in No. 3, 3 (2)A to H (from page 41) of the prior instance judgment (however, [i] excludes the partsof subitems under "(C) Recognizability" and "(D) Summary" in each of the items of A
to H; [ii] the subtitle of "(B) Distinctiveness" in each of the items of A to H shall becorrected to "(B) Distinctive features as individual factors"; [iii] the part "it isacknowledged/it can be acknowledged that there were distinctive features that are
different from other products of the same type" in each (B) under A to C shall becorrected to "it is acknowledged that there were distinctive features as individual
factors that provide basis for the distinctiveness of the Appellee's Product as a whole";[iv] both of the part "not even all the evidence of the present case can provide basis
for the distinctiveness to be considered a fact" in each (B) under D, and F to H, andthe part "it should be said that the Form (E) of Plaintiff's Product cannot be
acknowledged as having distinctive features that are different from other products ofthe same type, and there is no evidence to sufficiently acknowledge any fact that3

provides basis for distinctiveness" in E (B) shall be corrected to "if the part alone isregarded independently, it cannot be said that the part has a form that is so distinctive,
but it is understood that the combination of the part with other distinctive forms canbe one of the factors that lead to the distinctiveness of the entire product").
(2) As described above, it is acknowledged that the Appellee's Product has prominent
features that are different from other products of the same type, especially in the threerespects of the Form (A) (yellow welt stitches), Form (B) (sole edge), and Form (C)(heel loop), and is strongly distinctive as an indicator of source.

Furthermore, whenthese features are combined with the Forms (D) to (H), which cannot be considered as
being so distinctive in form if regarded individually, and are observed as a whole, it
can be said that Appellee's Product has prominent features that cannot be found at allin other products of the same type (boots).
In other words, it is acknowledged that the Appellee's Product, which has all of
the above Forms (A) to (H), has so-called distinctiveness.
(3) On the other hand, the Appellant argues that there is nothing particularly
individualistic or distinctive about a footwear product that produces the contrast oflight and dark by the combination of dark welt, which includes black, with stitches ofa light tone.

Indeed, when only the form of "black welt, combined with stitches bylight yellow yarn" is considered on its own, one can assume that such usage iscommon for parts of footwear products (welt, stitching yarn), and is merely arbitrary
combination of ordinary colors.

As such, granting distinctiveness based only onsuch factor is not reasonable, because it would mean granting excessive monopoly.
Even if the contrast of black and light yellow has the effect of making welt stitches
clearly visible, there are other footwear products that employ similar contrasts of lightand dark, and such footwear products are common as claimed by the Appellant(Exhibits Otsu 32 and 33).
However, in the present case, the Appellee defines the Appellee's Product as"having all of the above Forms (A) through (H) that are claimed by the Appellee"("List of Plaintiff's Products attached to the prior instance judgment"), and by arguingthat the "overall form of the Appellee's Product which has all of these features is awell-known indication of goods or business" of the Appellee, builds on the claim
pertaining to unfair competition as stipulated in Article 2, paragraph (1), item (i) of
the Unfair Competition Act (lines 23 and 24 on page 15 of the prior instancejudgment).
On the premise of this argument made by the Appellee, the present court
considered whether or not the overall form of Appellee's Product, which has the4Forms (A) to (H), instead of just the yellow welt stitches (Form (A)), falls under anindication of goods or business, and, from this perspective, approved that theAppellee's Product has distinctiveness.

As an argument that focuses only on theyellow welt stitches (Form (A)), the court can affirm Appellant's claim, but theAppellant's claim does not affect the aforementioned decision made by the present
court.
(4) On that note, the court makes a remark on the decision made in the prior instance.
From among the forms which the Appellee's Product has, the court of priorinstance addresses the yellow welt stitches (Form (A)) alone and determines that thisfeature falls under a well-known indication of goods or business.

However, it mustbe said that this decision is against the adversary system, as criticized by theAppellant in the grounds of appeal.

Of course, the Appellee states during theexamination of the present court that the decision of prior instance is not different
from the Appellee's claim, so that it is understood that such fault with the court ofprior instance has been rectified, but as described above, the decision of the priorinstance cannot be accepted as a substantive decision.
3.

Whether or not Appellee's Product falls under a well-known indication of

goods or business Part 2 (whether or not there is so-called distinctiveness)(1) As described above in 1 "Findings", it is acknowledged that the "1460 8-Eye
Boots", including the Appellee's Product, have been sold in Japan through Dr.
Martens Japan, a Japanese subsidiary of the Appellee, since 1985 until the present,
and that the sales channel includes 72 actual stores and an official online store
operated by the company, as well as shoe retail chain, specialty boutiques, and otherofficial stores, and that, in 2021 alone, almost 100,000 pairs of the "1460" series weresold and the sales amounted to over 1.4 billion yen, and that Dr. Martens Japan has
continuously posted ads of "Dr. Martens" mostly in fashion magazines, including ads
with photos of the Appellee's Product, and that the Appellee's Product has been
repeatedly featured in magazines and other media, many of which contain comments
such as "one look at the product tells you that the product is made by Dr. Martens
because of the yellow welt stitches and the heel loop that has the company lo go ...
among other features" and "yellow stitches that can be called a signature design of Dr.
Martens", which specifically refer to the Form (A), suggesting that this is the mostprominent feature of Dr. Martens' boots.
Furthermore, a survey conducted at the request of the Appellee (Appellee's
Survey) showed that, when "men and women who are aged 15 to 59 and living inJapan and who looked at leather shoes or boots at stores, on online shopping sites, and5

in magazines, etc. or purchased leather shoes or boots during the past year" (response
obtained from 1,019 individuals) were presented with the photograph of Appellee's
Product and were asked which brand comes to their mind when they see products,
which are leather shoes or boots having yellow stitches along the outer periphery of
the shoes, as shown in the photograph, 30.7% (freestyle writing) to 37.6% (multiplechoice) of them responded that they recalled "Dr. Martens" (a finding pertaining to
the citation mentioned earlier).
As such, the form of Appellee's Product, which has the Forms (A) to (C), h as
become widely recognized among consumers, and it is easily acknowledged that theform falls under a well-known indication of goods or business.
(2) On the other hand, in the Appellant's Survey, which targeted "men and women
who are aged 15 to 69 and living in Japan", 5.47% of the respondents were able torecall "Dr. Martens" from the photograph that was presented in the survey (Exhibits
Otsu 15 to 18).

The Appellant argues that the result denies that the form ofAppellee's Product is well-known, and that the result of the Appellant's Survey, which
covered a wider range of general consumers of Appellant's Products and Appellee's
Product as the target of the survey, should be adopted.
However, the Appellant's Survey did not present the overall form of App ellee's
Product, but instead, asked questions by presenting a photograph showing a cutout of
only a part that shows the welt, yellow welt stitches, and outsole (Exhibit Otsu 15 -2(page 2)).

As such, it cannot be said that this is an appropriate method ofquestioning for the present case, in which the overall form of the Appellee's Productis at issue.

As for the range of consumers, it should be said that it is appropriate toseek the affiliation of consumers as that of people who are interested in leather shoes
or boots.

In this regard, the Appellee's Survey seems to have narrowed down thetarget a little excessively (in particular, the requirement of "during the past year"), but
it can be evaluated that the Appellee's Survey targeted people who are truer to theactual consumers compared to the Appellant's Survey.
Accordingly, the Appellant's claim that the court should adopt the result of theAppellant's Survey is groundless.
4.

Similarity in form between Appellee's Product and Appellant's Products(1) Appellee's Product is acknowledged as falling under a well-known indication of
goods or business by having all the features of Forms (A) to (H).

However, even if

the suspected infringing product does not have all the aforementioned features, thisdoes not mean that, leaving integrity aside, similarity is naturally denied.

Upon

determining similarity, the Form (A) (yellow welt stitches), which should be6

considered the biggest feature of Appellee's Product, is a so-called "important part"and should be regarded with most emphasis.

However, it is understood that thedetermination should be made holistically by giving consideration to other forms aswell.
(2) Upon considering the matter from such point of view, it must be said that, inregard to Appellant's Product 1, it is acknowledged that evidence (Exhibit Ko 44) andthe entire import of oral argument show that Appellant's Product 1 has all the featuresof Forms (A) to (H) of the Appellee's Product as identified above (under No. 3, 1 (1)B (from page 30) of the prior instance judgment pertaining to the citation) (refer to"Product Comparison Table 1" attached to the prior instance judgment).

It must be

said that Appellant's Product 1 is almost a dead copy of the Appellee's Product, and it
is clear that the Appellant's Products and the Appellee's Product are similar in form.
Appellant makes various arguments as to the difference in the details in form
between the Appellant's Product 1 and the Appellee's Product (such as the actual colorof welt stitches being more like orange, and a part of the letters on a heel loop being
unreadable due to being sewn), but what attracts the attention of consumers concerns
the features of the Forms (A) to (H), as claimed by Appellee, and in particular, Form
(A), so that it cannot be said that minor differences, on top of having all these features,
affect the determination as to the similarity of the Appellant's Products and theAppellee's Product.
(3) Next, in regard to Appellant's Product 2, the parts other than the heel loop (Form(C)) are the same as Appellant's Product 1, but, whereas the heel loop of Appellee's
Product has Appellee's mark sewn in like an embroidery, the heel loop of Appellant's
Product 2 is different in that it uses a plain, blackish fabric, and that the length isapproximately half of that of Appellee's Product.
However, in spite of such differences, the products have the basic form incommon, with both products having a heel loop attached to the heel side of the an kle
opening of the boots, with the heel loop standing upright, and the above differences
are understood as being of a degree which is recognized as difference in minor
designs found in products of the same series with different model numbers.
In addition to the above differences, upon comprehensively considering thematter in light of the fact that the Appellant's Product 2 has all of the features of Form
(A), (B), and (D) to (H) of Appellee's Product, and that the Appellant's Product 2 andAppellee's Product have the common feature of yellow welt stitches (Form (A)),
which is the most prominent feature of Appellee's Product in particular, it isacknowledged that the form of Appellant's Product 2 is also similar to the form of7

Appellee's Product.
5.

Whether or not confusion is caused in relation to Appellant's Products
Given that the indication of goods or business pertaining to the form ofAppellee's Product, as identified above, is well-known, and that the form of suchproduct is similar to the form of Appellant's Products, it is acknowledged that if theAppellant sells Appellant's Products, it would cause misunderstanding and confusion
with the products of Appellee.
In response, the Appellant argues that [i] due to the difference in the prices ofAppellant's Products and the Appellee's Product, there is a great difference in terms ofbuyers, and [ii] due to the difference between the Appellee's Product, which isseemingly made of good quality and good grade, and the Appellant's Products, which
are made of cheap material and rough sewing, no confusion would be caused.
However, since it must be said that not all consumers are aware of the difference inprice as claimed by Appellant (the fact that authentic products of Appellee cannot bebought for around 5,000 yen per pair), and that consumers may not be able toaccurately determine that the product (boots) which they intend to buy has the qualitythat is intrinsic to the Appellee's Product, the above argument made by the Appellant
cannot be adopted.
6.

Need for injunction and disposal
Based on what is described above, the sale of Appellant's Products byAppellant falls under unfair competition as stipulated in Article 2, paragraph (1),item(i) of the Unfair Competition Act, and it can be said that the sale resulted in theinfringement of the Appellee's business interests.

Accordingly, the Appellee may

demand against the Appellant for an injunction against the sale, and an injunction
against the exhibition for sale pursuant to Article 3, paragraph (1) of the same Act, as
well as for disposal of the Appellant's Products pursuant to paragraph (2) of the same
Article, respectively (the claims that are made pursuant to the Trademark Act, which
are subject to elective joinder, do not require the court to make a decision).
No. 5 Conclusion
Based on the above, all claims made by the Appellee are reasonable, and theappeal of the present case, having no grounds, shall be dismissed.
renders a judgement as per the main text.

As such, the court

Concerning the order for disposal of theAppellant's Products, the court determines that, since the case is not in the stage of thefirst instance, it is reasonable to issue a declaration for provisional execution atpresent.

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Intellectual Property High Court, Fourth Division
Presiding Judge: MIYASAKA Masatoshi
Judge: IWAI Naoyuki
Judge: RAI Shinichi

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