23

Extension of the Concept of Confusion
under US Trademark Law（*）

Industrial Property Right Expert Overseas Researcher: Takahiro Kojima（**）
Along with the recent growth in property value attached to trademarks, as well as the advancement inInternet technology, trademarks are now being used in ways never seen before. Due to such changes, thetraditional framework of trademark law—preventing confusion at the time of purchase of goods by protecting
trademarks' function to identify the source of origin of goods—is being shaken. One example of this trend is the
emergence of a view that trademark infringement should be found on the grounds of confusion that is createdamong consumers or the general public before or after the time of purchase of goods. This study first reviews thehistory of the extension of the traditional concept of “likelihood of confusion,” and then analyzes in detail theissue of time-related extension of the concept of confusion, which now includes “post-sale confusion” and“initial interest confusion.” In this analysis, reference is made to the US trademark law, under which this issue
has already been discussed by courts and scholars. In the end, the study concludes that although the extension of
the concept of confusion should be approved in some cases, it is impermissible to extend the concept andultimately extend the scope of protection to a level that cannot be justified in light of the purpose and role oftrademark law.

I

Purpose of Studyof confusion under the Japanese trademark law.
The Trademark Act of Japan does not clearlystipulate confusion as a requirement for finding
infringement of right. Nevertheless, as an
approach for determining whether or not themark in question is used as a trademark, it has
become an established view that, if the mark is
actually used but not in the manner harmful to a
trademark's function to identify the source oforigin of goods, infringement should be denied on
the grounds that such use of the mark does notconstitute the use as a trademark. 1 Whenexamining whether or not the defendant's use of
the mark harms the trademark's function ofidentifying the source of origin of goods, aquestion arises as to the scope of consumers or
potential consumers who are to be taken into
account as the reference targets, or at which point
in time these target consumers should bedemarcated.
In addition, after the Supreme Court
rendered a ruling on the Kozozushi case (March
11, 1997, Minshu Vol. 51, no. 3, p. 1055),2 morecourt rulings have given consideration to thelikelihood of confusion among consumers. Also,

Along with the recent growth in property
value attached to trademarks, as well as theadvancement in Internet technology, trademarks
are now being used in ways never seen before.
Amidst this situation, the traditional framework of
trademark law—preventing confusion at the timeof purchase of goods by protecting trademarks'
function to identify the source of origin ofgoods—is being shaken, and the concept ofconfusion has been extended in terms of points intime, and now covers “post-sale confusion” and“initial interest confusion.” This study reviews
what type of theoretical background was behindthe movements toward extension of trademark
protection that have taken place thus far,
especially the extension of the concept ofconfusion, and also examines to what extent suchextension is permissible in light of the purpose
and role of trademark law. Accordingly, as thetarget of comparative law, this study takes up the
US trademark law under which the above issues
have already been discussed, in an attempt todiscover a desirable interpretation of the concept(*) This is an English translation of the summary of the report published under the Industrial Property Research

Promotion Project FY2011 entrusted by the Japan Patent Office. IIP is entirely responsible for any errors in expression
or description of the translation. When any ambiguity is found in the English translation, the original Japanese text shallbe prevailing.
(**) Assistant professor, Graduate School of Law, Hokkaido University, dispatched to the Indiana University - Bloomington,
Maurer School of Law in U.S.A., from April 26, 2011 through March 14, 2012, as IP Expert Overseas Researcher under
the Program for the FY2011.

IIP Bulletin 2012 Vol.21●

1 ●Ⅲ Establishment of the Concept ofConfusion
under
the
US
Trademark
Law,
and
the
Subsequent Extension of theConcept

irrespective of whether or not to require
confusion as a test for infringement, analysis on
confusion becomes relevant in the standard
process of determining similarity of trademarks,
in respect of which group of consumers should be
the reference targets and whether they aretraders or general consumers.
In the field of trademark law, courts haverecently rendered rulings in which they discussed
post-sale confusion or initial interest confusion.3
Thus far, we have not seen many court rulings
that permitted the time extension of the concept
of confusion in Japan, but looking at the present
situation where Internet trading is carried out asan ordinary activity and Internet advertising has
increasingly diversified, it is anticipated that the
number of court rulings discussing initial interest
confusion will increase in the future. Therefore,making a theoretical study on the time extensionof the concept of confusion is meaningful to somedegree under the Japanese trademark law.
Article 2, paragraph (1), item (i) of the Unfair
Competition Prevention Act directly stipulates
the likelihood of confusion as a requirement forfinding unfair competition. Hence, the discussion
concerning post-sale confusion and initial interest
confusion contemplated here will also provide
helpful insights for interpreting the likelihood ofconfusion requirement.
The reason why this study focuses on the US
law is that US law has a large stock of court
rulings regarding new types of confusion.
Furthermore, academics in the US are carryingout a wide range of meta-level study while
discussing the appropriateness of such new typesof confusion in connection with the rationale fortrademark protection. This point may be
extremely suggestive in the course ofinterpreting the Japanese trademark law that has
a different legal framework.

1

Initial extension of the concept ofconfusion(1) Related goods doctrine7
Until the 1910s, courts considered that inorder to find trademark infringement, the plaintiff
and the defendant must be in direct competition.8
The 1905 Act provided that trademark
infringement may be asserted if (i) the defendant
reproduces, counterfeits, copies or colorably
imitates a registered mark and (ii) the defendant's
mark and the registered trademark are affixed togoods “with substantially the same descriptive
properties” (§16)9. As one background factor forthe judicial tendency to find trademark
infringement only in cases where there was suchcompetitive relationship, it is said that at thattime, the network for distribution andtransportation of goods had not yet been fully
developed in the US and goods were
manufactured and sold only within the respective
regions. 10 Under such circumstances, goodwill
tended to attach to specific individuals or shops
but was less likely to attach to specifictrademarks.11 For this reason, it was thought tobe sufficient to find trademark infringement orapply the unfair competition doctrine only incases where the defendant's goods were in directcompetition with the plaintiff's goods.12
However, the situation changed by aroundthe 1920s. As a result of the growth in demand forgoods boosted by the population increase, coupledwith the development of manufacturing
technology, the supply of goods and the types ofgoods to be supplied substantially increased. The
introduction of new marketing techniques and theconstruction of networks for transportation of
goods enabled firms to sell their goods
nationwide.13
Out of the necessity to respond to suchchanges in markets, courts modified theirconventional stance and started to consider thatcompetition between the goods sold by the
conflicting parties is not a prerequisite for finding
trademark infringement. Thus, as the important
point to be considered from courts' viewpoint, theexistence of a competitive relationship was
replaced by the possibility of deception of the
public.14 Infringement was initially found in cases

Ⅱ Outline of US Trademark Law
The US trademark law currently in effect is
the Lanham Act, enacted in 1946.4 Under this Act,
“likelihood of confusion” is the most important
requirement for finding trademark infringement
both in relation to a registered mark 5 and an
unregistered mark.6●

2 ●IIP Bulletin 2012 Vol.21

where the market for the plaintiff's goods and themarket for the defendant's goods were not in
direct competition but were relatively close toeach other.15 Subsequently, trademark infringement
has also been found even when the markets forthe goods traded by the conflicting parties are notrelatively close.
A recent academic view appreciates such
shift in the courts' stance, explaining that courts
have chosen to extend the concept of confusion inorder to extend the scope of protection, with aview to responding to rapid changes in theeconomic situation by adopting an ambiguously
defined criterion.16

3

Backlashes against the extension of theconcept of confusion were seen during the period
between the 1940s and the 1960s.18 Economists,
as well as jurists affected by the former, graduallybecame concerned about the anti-competitiveeffects of monopoly by trademark rights and of
brand loyalty. As a result, courts andcommentators began to show a skeptical attitude
toward misappropriation, a rationale fortrademark protection, and some attempted torestrain the extension of the scope of trademark
rights.19
Judge Learned Hand of the US Court ofAppeals for the Second Circuit, who took an
initiative in this trend, is said to have returned tothe transitional approach of limiting the scope ofprotection of a trademark right to the same goods,
so as to grant protection by a trademark right only
in cases where the trademark owner is likely tosustain any specific economic damage.20

4

sponsorshiporMultifactor
therewith

tests

and

problems

At present, it is now a common practice forall circuit courts to apply multifactor tests when
determining the likelihood of confusion. 25 For
instance, the Second Circuit formulated a test
procedure called the Polaroid Test, in which
determination on the likelihood of confusion
should be made by taking into consideration thefollowing factors: (i) the strength of the plaintiff's
mark; (ii) the degree of similarity between theplaintiff's and the defendant's marks; (iii) the
proximity of the plaintiff's and the defendant's
products; (iv) the likelihood that the priortrademark owner will expand the scope of its
business; (v) actual confusion; (vi) the correlation
with the defendant's good faith in adopting its own
mark; (vii) the quality of the defendant's products;and (viii) the sophistication of the buyers.26
In the academic world, the multifactor tests
have been appreciated for their usefulness in
helping judges of the Second Circuit solve theaforementioned conflict in their determinations,“by focusing judicial attention on the relatively
mechanical application of factors and diverting
attention away from the policy stakes.”27 At thesame time, criticism has been raised, arguing thatthe advent of such tests has reduced the weight of

Stipulation of the concept of confusion
under the Lanham Act

The Congress enacted the Lanham Act in1946.21 As a result of the deletion of the phrase“goods with [substantially] the same descriptive
properties" in §15 of the 1905 Act, the trademark
owner was no longer required to prove theexistence of a competitive relationship between
its goods and the defendant's goods under §32(1)(a) of the 1946 Act.22 Accordingly, the related
goods doctrine, which had been applied by courts,
was introduced in legislation and incorporated
into the likelihood of confusion requirement as atest for finding trademark infringement.

IIP Bulletin 2012 Vol.21

toThe 1962 amendment to the Lanham Act
deleted the phase “purchasers as to the source oforigin of origin of such goods or services” from§32 (1) (A). This made it easier for courts to findtrademark infringement even in cases where thetrademark owner's goods and the defendant's
goods are associated with each other in someform or there is no competitive relationshipbetween the two. The 1988 amendment further
stipulated the concept of confusion concerning“sponsorship” or “approval” in §43(a).
Through these legal amendments, while
grasping the concept of confusion as tosponsorship or approval more broadly, courts now
tend to find infringement even in cases where it is
not exactly obvious that confusion in any specificform has been created among consumers, such as
when the defendant used a parody of the plaintiff's
trademark. 23 However, some scholars haverecently pointed out problems with suchbroadened application of the concept of confusion
as to sponsorship or approval.24(2) Backlashes against the extension of theconcept of confusion at the Section
Circuit (1940-1960)172

Confusion as
partnership●

3 ●the issue of the nature of damage to thetrademark owner or consumers, which had
previously been discussed by courts.28
The recent empirical studies demonstrated
that judicial analysis by multifactor tests lacks
balance in choosing factors.29 Specifically, in theprecedent cases, two out of the abovementioned
factors, namely, (ii) the degree of similarity
between the plaintiff's and the defendant's marksand (vi) the defendant's intent to use, were usedas key factors for determining confusion, andother factors are considered to have only minor
influence on judicial decisions.30

confusion was found in relation to imitation of
expensive goods, such as luxury watches,35 partsof sports car, 36 and brand-name handbags. 37
However, the doctrine of post-sale confusion was
also applied in relation to lower-priced goods,
such as the design of jeans38 and parts of ordinary
automobiles.39
Post-sale confusion was denied in cases
where: the defendant's goods were not inferior in
quality to the trademark owner's goods; 40 thedefendant used a parody of the plaintiff's
trademark;41 and the plaintiff asserted protection
for its trade dress pertaining to technology forwhich the patent had expired.42 There is also a
court ruling that criticized the application of thedoctrine of post-sale confusion, by reason that thesimilarity between the trademark owner's goods
and the defendant's goods was difficult to bevisually recognized by consumers.43

Ⅳ Time extension of the concept ofconfusion
The typical case of likelihood of confusionthat is usually found in trademark infringement
litigation is confusion that may be caused topurchasers at the time of purchase of goods.31 In
reality, courts have found infringement in manycases by reason of “post-sale confusion, ” which
may be suffered by someone who sees thepurchaser using the goods. There is another typeof confusion, referred to as “initial interest
confusion,” although it has not been accepted as
widely as the former. Courts have foundinfringement in some cases based on initialinterest confusion, which may be created at theinitial stage of the purchase process but thendisappear when the purchaser decides topurchase the goods.32
1(2) Cases where the person who takes
charge of purchasing the goods and theperson who actually uses the goods aredifferent
Where a particular organization or household
purchases goods, if the person who directly takes
charge of purchasing the goods is not confused
but the person who actually uses the goods is
confused, likelihood of confusion may possibly befound.44 Courts have found post-sale confusion insuch situations, by reason of confusion among
doctors or nurses at hospitals, 45 or confusion
among students at educational institutions. 46
However, infringement was denied if the person
who is to use the goods has no influence on theprocess of making a decision to purchase thegoods at the organization.47

Post-sale confusion33

Even if there is no confusion among
consumers at the time of purchase of goods,
someone who happens to see the goods after thattime may mistakenly recognize the goods as
originating from the trademark owner. A notion tofind trademark infringement in such situation iscalled “post-sale confusion.”34(3) Academic views
Courts sometimes rationalize the applicationof the doctrine of post-sale confusion by statingthat the trademark owner's reputation for thequality of its goods might be damaged if the
defendant's goods are inferior in quality or containdefects. There is an academic view that if the
trademark owner's reputation for the quality of its
goods is actually damaged due to the defendant's
goods, finding infringement based on the doctrineof post-sale confusion is in line with the purposeof trademark law, i.e. protecting the informationtransmission function of marks.48 However, somecriticize this view, arguing that in actual cases,
courts do not clearly determine whether damage
has really been caused but make a finding of
damage based on suppositions 49 Hence, it is(1) Cases where confusion may be caused
to a person who does not use the goods
him/herself
In the past cases where the defendant soldcounterfeits of the trademark owner's goods,
courts found infringement by applying thedoctrine of post-sale confusion on the grounds
that although the direct purchaser of thecounterfeit was not confused, someone(bystander) who saw the purchaser wearing thecounterfeit might have been confused. Post-sale●

4 ●IIP Bulletin 2012 Vol.21

pointed out that if courts are to apply the doctrineof post-sale confusion from the above standpoint,
they must specifically demonstrate the likelihoodthat such confusion would have an influence on
the decision to purchase to be made by actual or
potential consumers.50
In some cases, courts approved theapplication of the doctrine of post-sale confusionon the grounds that if consumers are able topurchase counterfeits of the trademark owner's
goods at low prices, this would undermine thebrand image that has attached to the trademark
owner's goods, represented by prestige andscarcity. There is an opinion that such factors asprestige and scarcity of goods are different innature from the information transmission functionof marks that has traditionally been protected bytrademark law, and protecting these values might
result in protecting the value of marks
themselves.51 Another opinion is that consumers
send signals of their wealth to others bypurchasing brand-name products; protecting thevalue of marks as a tool of such communication
between individuals is not the traditional
objective of trademark law, but permitting thesale of copies is instead fit for the objective oftrademark law because this would give thetrademark owner a greater incentive to provide
information on its goods and invest in the qualityof the goods 52 It is also pointed out that
restricting consumers from using marks todemonstrate their own status might be prejudicial
to their freedom of expression, so carefulconsideration is required for such restriction.53
2

that confusion was created at the initial stage ofpurchase, although it was dispelled at the final
stage of purchase.56 Infringement was also foundunder this doctrine in cases where the trademark
owner or consumers sustained any specificdamage, such as where there is the possibility
that consumers would mistakenly believe that thetrademark owner sponsors or approves thedefendant, which could result in the trademark
owner's goodwill being transferred to thedefendant, 57 or where consumers paid thepurchase price at the initial stage when they were
confused.58 If such circumstances cannot be found,the application of this doctrine was denied even
where confusion was created at the initial stage ofpurchase.59(2) On-line cases
There was a case in which the court foundtrademark infringement on the grounds that thedefendant's act of using the plaintiff's trademark
in its description metatag could create initialinterest confusion.60 In this case, the court heldthat the defendant's act of guiding consumers to
its website with the use of such metatags
constituted misappropriation of the goodwill that
had been developed in the plaintiff's trademark,even if confusion was not created. 61 However,infringement was denied if the defendant's use of
the plaintiff's trademark was justified for somereasons, such as where the defendant used theterms that explained his career or its product line
in metatags.62 There was also a case in which thecourt denied infringement because of thedeclining significance of description metatags on
recent search engines.63
Infringement was also denied on the grounds
that the defendant's act of providing a software
application for displaying popup ads that match
websites that users access does not amount to“use” as required under the Lanham Act.64
Recently, the liability of search engines thatprovide search advertising services, as well as theliability of the trademark owner's competitors
who purchase the trademark from search engine
companies as a keyword, have been questioned
more frequently. In an earlier case, the court
found the search engine company to be liable forthe failure to clearly distinguish web links andbanner ads on search result pages.65 However, as
most recent search engines display the website
ranking list separately from sponsor ads, thecourt denied both the liability of the search engine
company and of the keyword purchaser in a recent
case. 66 There was a case in which the court

Initial interest confusion54

In cases where consumers are confused
when they first come across the defendant's markbut their confusion disappears when they finallypurchase goods, trademark infringement issometimes found, taking note of the fact that such“confusion” at the initial stage has an effect of
misleading consumers into an initial interest in
the defendant's goods. This is called initial interest
confusion.55 The doctrine of initial interest confusion
was first recognized while supposing an off-line
environment, but recently its applicability toInternet sales becomes an issue more often.
(1) Off-line cases
In one of the off-line cases where thedefendant used a product name identical orsimilar to that of the plaintiff's product, the court
found initial interest confusion on the grounds

IIP Bulletin 2012 Vol.21●

5 ●denied infringement on the grounds that thedefendant's act does not constitute “use incommerce.” 67 However, since the Rescuecom
case,68 it has become the judicial mainstream tofirst recognize the defendant's act as constituting“use in commerce” and then deny infringementon the grounds of absence of likelihood ofconfusion,69 with the exception that infringement
may be found if the plaintiff's trademark is
displayed in sponsor ads in such manner that
could create confusion.70

interest confusion is not an appropriate tool
because, if a finding of infringement is madedependent on the likelihood of confusion test, thecriterion for determining likelihood of confusion
would be replaced by other factors such as freeriding and misappropriation.77
There is an influential opinion against theapproach of exempting search engines fromliability categorically with the use of therequirement of “use as a trademark.” 78 Those
who criticize this approach argue that trademark
law should govern the situation where there is alikelihood of confusion among users; exempting
search engines from liability categorically would
lead to allowing them to abuse their rights, andultimately causing damage to the trademark
owner and consumers.79 Another opinion is thatsince the requirement of “use as a trademark”
does not formally take into consideration thecontent of the information to be transmitted by
way of advertisement, it does not effectivelyfunction as a tool to strike balance between the
merit of search advertising in providing
consumers with useful information on goods orservices, and its demerit in causing confusion
among consumers.80
As above, consensus has not yet beenreached in the academic world concerning theissue of whether or not search engines should be
exempted from liability categorically with the useof the requirement of “use as a trademark.”
Academic views are divided regarding (i) to what
extent we should evaluate the external effectarising from search advertising, and (ii) how
seriously we should consider the risk that searchengines will change their existing operations andstart to use trademarks in a manner that could
create confusion. At least based on the current
practice of search advertising, both academic
positions will arrive at a conclusion that
trademark infringement should in principle bedenied.

(3) Academic views
Most scholars were critical about the judicial
approach of finding initial interest confusion byreason of the fact that consumers were attracted
to websites of the trademark owner's competitors,
even when confusion was not actually created.
The grounds for their criticism are as follows.
First, even if users who initially intended toaccess the trademark owner's website havearrived at the defendant's website by mistake,they can make a search again easily just by one
click, so damage that might be inflicted on users
or consumers is trivial. 71 Secondly, even if the
defendant's website is ranked high in the search
result list, it is not very likely that users would
mistake the link to the defendant's website for thelink to the plaintiff's website. 72 Thirdly, even
where users use the plaintiff's trademark as asearch keyword, they often use the keyword inorder to search for the goods or service in general,
rather than searching for the plaintiff's website.73
Lastly, if the doctrine of initial interest purchaseis applied broadly even in cases where confusion
has not actually been created, this doctrine might
be misused by the trademark owner as a tool toclose websites that are unfavorable to thetrademark owner, such as those publishingcriticisms or presenting a parody related to thetrademark owner.74
In order to put a brake on courts in applying
the doctrine of initial interest confusion any more
broadly, some argue that search engines should be
exempt from liability for search advertisingcategorically, with the use of the concept of “useas a trademark.” 75 According to their view,providing consumers with information on
substitute products or product compatibility is an
act of expression that trademark law explicitly
encourages, so search engines should be exempt
from liability categorically so that their freedom of
expression would not be harmed by thetrademark owner's enforcement of its exclusive
right.76 They also state that the doctrine of initial

Ⅴ Analysis of Japanese Law
1Time expansion of the concept ofconfusion

Similarity of trademarks is determined on
the basis of the degree of attention ordinarily paidby traders and consumers of the goods or services
for which the trademark is used. 81 In practice,consumers within a more specific range arereferred to on such basis, while taking into
account how the goods or services are sold or●

6 ●IIP Bulletin 2012 Vol.21

provided.82

general (unless they are informed of the true factby the person who purchased the goods), andafterwards, they might have some prejudgments
when deciding whether or not to purchase theplaintiff's goods at home or workplaces.87 Even if
the defendant's goods are not inferior in quality,
since the plaintiff has no control over the qualityof the defendant's goods, the plaintiff's trademark
would no longer be able to function to assure
quality. Thus, in cases where confusion is createdamong users who have or will have an influence
on decisions to purchase the plaintiff's goods, therisk of harm on the trademark owner's interest
has materialized as in cases where confusion iscreated among purchasers at the time of purchase,
so in such cases, trademark infringement should
be found.
In type (II) cases, someone who just sees thepurchaser using the defendant's goods does not
him/herself use the goods, so it is less likely thatsuch third party is confused as to the quality ofthe defendant's goods. Therefore, even if any
third party, who can be referred to as an “ordinary
passerby,” mistakenly believes the defendant's
goods worn by the direct purchaser to be thegenuine goods, it is usually unlikely that thetrademark's function to identify the source oforigin of goods and the function to assure quality
derived from the former would be undermined.
Infringement should be denied unless thetrademark owner sustains any specific damage
due to some influence that the defendant's goods
would have on potential consumers in theirprocess of making decisions on purchase in the
future. However, there is the possibility of harmto the trademark's function to assure quality inrelation to a third party who does not actually use
the defendant's goods. Supposing the situation
where a replica of a luxury car, such as Ferrari,burst into flames on the road, one can say that the
Ferrari trademark's function to assure quality islikely to be harmed, even though the public does
not use the replica car. In such case, trademark
infringement should be found because it is likelythat the accident would have an influence on
consumers in their process of making decisions
on whether or not to purchase Ferrari in the
future. 88 Furthermore, there may be room forfinding post-sale confusion if the defendant's
goods are likely to go into the secondary market.
This is because consumers who wish to purchasegenuine goods would be concerned that what they
have purchased are not genuine goods, possibly
resulting in a decline in the sale of genuine goods.
In cases where the defendant sells copies of(1) Post-sale confusion(i) Court rulings
Court rulings on post-sale confusion
rendered in the past cases can be roughly divided
into two types: (I) cases where the point in
dispute was confusion among people who actually
use the goods with the defendant's mark; and (II)cases where the point in dispute was confusion
among those who do not actually use such goods.
In one type (I) case, in which the defendant
was sued for having sold the bottles of ink refills
to which the plaintiff's trademark was affixed, thecourt found trademark infringement based on thedoctrine of post-sale confusion. 83 On the other
hand, in cases where the person who takes chargeof purchasing the product and the person who
actually uses the product are completely
separated (e.g. the doctor and the patient) such aswhere the trademark is affixed to a drugprescription, the application of the doctrine ofpost-sale confusion was sometimes denied,84 but
there is a conflict in the past court rulings on theapplicability of this doctrine.85
2006 (Wa) No. 4029, the Tokyo District Court
judgment, May 16, 2007 [ELLEGARDEN, first
instance], is a type (II) court ruling that expressly
approved the application of the doctrine ofpost-sale confusion for the first time. In this case,the plaintiff, who issues a women's magazine
named “ELLE”, alleged that the defendant's act ofselling T-shirts and other items with a decorative
mark of “ELLEGARDEN,” which represents thename of a rock band affiliated to the defendant,
constitutes infringement of the plaintiff's
trademark. The Tokyo District Court foundsimilarity between “ELLE” and “ELLEGARDEN”
on the basis of general consumers, holding thateven if the person who purchased the defendant's
goods is not confused, someone who sees thepurchaser wearing said goods is likely to
mistakenly believe that the plaintiff is the sourceof origin of said goods. However, this ruling waslater reversed by the Intellectual Property High
Court, which denied the application of thedoctrine of post-sale confusion.86(ii) Author's view
In type (I) cases, users can ascertain thequality of the defendant's goods by actually using
the goods. If the defendant's goods are inferior in
quality, those users who mistakenly believe thatthe plaintiff is the source of origin of those goods
would be concerned about the plaintiff's goods in

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7 ●brand-name goods, there is the possibility that thebrand value developed in the plaintiff's trademark,such as scarcity and prestige, would decrease,leading to a decline in the ability of the plaintiff's
trademark to attract customers.89 However, suchvalue is considerably different from the value of
information on goods that is usually covered byprotection under trademark law (the function to
identify the source of origin of goods and thefunction to assure quality derived from theformer). Protecting trademarks incurs social costin that it impedes the trademark owner's
competitors or the general public from displaying
their expressions with the use of trademarks.
Therefore, if the trademark owner is to assert
protection of said brand value, there must be an
additional rationale for such assertion. Amongfactors questioned in terms of the value of
scarcity and prestige, dilution is provided under
Article 2, paragraph (1), item (ii) of the Unfair
Competition Prevention Act and slavish imitationof the configuration of goods is provided underitem (iii) of said paragraph, respectively, so cases
arising in relation to these matters should begoverned according to these provisions.90 91

finding that the defendant's act does notconstitute the “use” of a trademark as set forth in
Article 2, paragraph (3) of the Trademark Act.
Lastly, there was a case in which the court, inthe course of finding similarity, stated that whenusers search for the plaintiff's goods on a searchengine, the defendant's website and the plaintiff's
website are displayed in a line on search result
pages, so there is the possibility that users would
arrive at the defendant's website.96 This is thefirst court ruling that approved the application of
the doctrine of initial interest confusion. However,the court of second instance 97 ruled out theapplicability of this doctrine, holding that thedefendant's website displays many indications
that would make viewers aware that it is a
website for the fans of a rock band, so it is lesslikely that confusion would be created among
consumers.
(ii) Author's view
As for metatags, viewability should not be
used as the basis for determining trademark
infringement. 98 What the Trademark Act isdesigned to regulate is the situation where thedefendant's mark is recognized as an identifier ofthe source of origin of goods and this creates
confusion among consumers. Even when users
see a description metatag, it is extremely unlikelythat they would recognize the metatag as an
identifier of the source of origin.
Consideration should also be given to the factthat on many search engines, the importance ofdescription metatags in the process of ranking
websites
hasrecently
been
declining.
Furthermore, even if description metatags haveinfluence on search ranking, such influence may
not create a serious level of confusion amongusers. When users arrive by mistake at thedefendant's website, they can easily make asearch again, so search costs would not increasethat much.
Thus, the act of using another person's
trademark in a description metatag does notconstitute the use as a trademark, so
infringement should be denied for such act.
However, infringement should be found if a
description metatag indicates another person's
trademark in a manner that could create confusion
among users.
In the case of search advertising, confusion isunlikely to be created among users as long as
search results are displayed in a manner that they
can be distinguished from sponsors' web links. At
the same time, it is inappropriate to approve the(2) Initial interest confusion(i) Court rulings
In some cases brought to Japanese courts,
whether or not the act of purchasing metatags or
keywords in search advertising constitutes
trademark infringement was disputed. With
regard to metatags, there was a case in which thecourt found trademark infringement by reason of
the defendant's act of using a mark that is similar
to the plaintiff's trademark in a description
metatag.92 In this case, when finding infringement,
the court attached importance to the facts that thedefendant's mark was displayed in the written
description of the defendant's website thatappeared on search result pages, and that thewritten description of the defendant's website has
relevance with the actual content of the
defendant's website. Thus, the ruling of this casecan be understood as finding likelihood ofconfusion by paying attention to the confusion at
the final stage of purchase, rather than finding
initial interest confusion.93 In addition, this rulingdoes not seem to be applicable to cases of
keyword metatags94
Next, there was a case in which the court
denied trademark infringement with respect tothe defendant's act of purchasing the plaintiff's
trademark as a keyword.95 In this case, the court
dismissed the plaintiff's claim on the basis of the●

8 ●IIP Bulletin 2012 Vol.21

application of the doctrine of initial interest
confusion just because of free riding on anotherperson's trademark when confusion has not beencreated among consumers. Consideration should
be given to the fact that search advertising has aneffect of reducing search costs and promoting
competition by providing users with information
on substitute goods. Therefore, in principle, theliability of both search engines and keyword
purchasers should be denied. However,infringement should be found if the plaintiff's
trademark is displayed in the sponsor ads in amanner that could create confusion.

6

15 U.S.C. §1125(a).
For precedent studies on this issue in Japan, Tatsuki
Shibuya, Shōhyōhō no riron (Theory of trademark law), at
231-236 (University of Tokyo Press, 1973); Ryo
Shimanami, “Tōroku shōhyōken no butteki hogo han'i(1)” (Scope of physical protection of registered trademark(1)), Hokyo (Journal of the Jurisprudence Association) Vol.
114, No. 5, at 547 (1997).
8
4 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION§ 24:14 (4th ed.)[hereinafter MCCARTHY].
9
Trademark Act of 1905, Pub. L. No.58-84, 33 Stat. 724(1905), §16.
10
Robert G. Bone, Hunting Goodwill: A History of theConcept of Goodwill in Trademark Law, 86 B.U. L. REV.
547, 575 (2006).
11
Id.
12
Id.
13
Id. at 576-79.
14
HARRY D. NIMS, UNFAIR COMPETITION AND TRADEMARKS
iii (3rd ed. 1929).
15
Courts found trademark infringement in the following
cases where the market for the plaintiff's goods and themarket for the defendant's goods were not in directcompetition but relatively close to each other: Waltke &Co. v. Schafer & Co., 263 Fed. 650 (C. of A., D. C., 1920)(beauty soap vs. shaving soap); Wilcox & White Co. v.
Leiser, 276 Fed. 650 (C. of A., D. C., 1920) (automatic
player piano vs. gramophone); Willys-Overland Co. v.
Akron-Overland Tire Co., 268 Fed. 151 (D. C., 1920);
Aluminum Cooking Utensil Co. v. Sargoy Bros. Co., 276
Fed. 447 (D. C., 1921) (aluminum cooking utensil vs. tin
wash boiler); 273 Fed. 674 (C. C. A., 1921) (automobile
vs. tyre); Anheuser-Busch, Inc. v. Budweiser Malt
Products Corp., 295 F. 306 (2d Cir. 1923) (beer vs. malt
syrup).
16
Mark A. Lemley & Mark McKenna, Irrelevant Confusion,
62 STAN. L. REV. 413, 424 (2010).
17
Shimanami, supra note 7, at 569-571.
18
MCCARTHY§24:66.
19
Bone, supra note 10, at 599.
20
Id. at 601 (Bone points out that these backlash
movements were only limitative, but affected byarguments that arose from them, “judges became moresensitive to the potential costs of expansion and usedgreater caution in extending protection to distant productmarkets.”) For analysis on the court rulings in which
Judge Hand was involved, see Richard L. Kirkpatrick,Learned Hand's Trademark Cases: An Appreciation, 82
TRADEMARK REP. 426 (1992); Kenneth L. Port, Learned
Hand's Trademark Jurisprudence: Legal Positivism andthe Myth of the Prophet, 27 PAC. L.J. 221, 259 (1996).
21
Pub. L. No. 79-489, 60 Stat. 427 (1946) (codified as
amended at 15 U.S.C.§1051-1029 (2000).
22
15 U.S.C. §1114.
23
E.g., Mutual of Omaha Ins. Co. v. Novak, 836 F.2d 397(8th Cir. 1987), cert. denied, 488 U.S. 933 (1988);
Anheuser-Busch, Inc. v. Balducci Publ'ns, 28 F.3d 769(8th Cir. 1994); American Dairy Queen Corp. v. New
Line Prods., 35 F. Supp. 2d 727 (D. Minn. 1998).
24
Jessica Litman, Breakfast with Batman: The Public
Interest in the Advertising Age, 108 YALE L.J. 1717,
1722-1723 (1999); James Gibson, Risk Aversion andRights Accretion in Intellectual Property Law, 116 YALE
L.J. 882, 913 (2007); Lemley & McKenna, supra note 16,
7

Ⅵ Closing
Along with the growth in property value
attached to trademarks and the development ofmarketing strategies, the scope of subjects to beprotected by trademark rights as well as thescope of trademark protection have been
gradually extended. As this study has clarified
through the review of trends relating to post-saleconfusion and initial interest confusion, somemovements toward extension of protection under
trademark law are compatible with the traditionalrationale of trademarks, while others areincompatible with it.
Such movements toward extension of
trademark protection are expected to continue inthe future. With this in mind, we should note that
there is the risk that the extension of the scope oftrademark protection might excessively deter
trademark owners' competitors and the generalpublic from carrying out business activities orother activities to display expressions using
trademarks. In order to permit the extension of
the scope of trademark protection, it is necessary
to ensure compatibility with the purpose or
objective of trademark law, while taking into
account the high property value of trademarks.
1

Yoshiyuki Tamura, Shōhyōhō gaisetsu, dai 2 han(Overview of the Trademark Act, 2nd edition), at 143 etseq. (Kobundo, 2000)
2
For the judicial research officer's commentary on thisSupreme Court ruling, see Ryoichi Mimura, [Hankai]
Saikōsaibansho hanei kaisetsu minjihen heisei 9 nendo(Jō) (Commentaries of the Supreme Court decisions oncivil cases in FY1997, 1st volume), at 403 (2000).
32006 (Wa) No. 4029, Tokyo District Court judgment, May
16, 2007 [ELLEGARDEN, first instance]. This judgment
was later reversed by the Intellectual Property High Court
judgment, March 19, 2008, Hanrei Times No. 1629, at
288 [ELLEGARDEN, second instance].
4
Pub. L. No. 79-489, 60 Stat. 427 (1946) (codified as
amended at 15 U.S.C.§1051-1029 (2000).
515 U.S.C. §1114.

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at 424.
See, GRAEME B. DINWOODIE & MARK D. JANIS,TRADEMARKS AND UNFAIR COMPETITION: LAW AND
POLICY 505-558 (3rd. ed., 2010). As a reference in theJapanese language, see Ryo Shimanami, “Tōroku
shōhyōken no butteki hogo han'i (2, kan)” (Scope ofphysical protection of registered trademark (2)), Hokyo(Journal of the Jurisprudence Association) Vol. 114, No.
8, at 936, and 938-940 (1997).
26
Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492(2d Cir. 1961), cert. denied, 368 U.S. 820 (1961).
27
Bone, supra note 10, at 607.
28
Id.
29
Barton Beebe, An Empirical Study of the Multifactor
Tests for Trademark Infringement, 94 CAL. L. REV. 1581
(2006). See also, Kevin Blum et al., Consistency ofConfusion?: A Fifteen-Year Revisiting of Barton Beebe'sEmpirical Analysis of Multifactor Tests for Trademark
Infringement, 2010 STAN. TECH. L. REV. 3 (2010).
30
Id.
31
MCCARTHY §23:5.
32
As a result of the deletion of the term “purchaser” from§32 of the Lanham Act through the amendment in 1962,
the use of a mark “that is likely to cause confusion” hasbeen prohibited. It is said that whether the Congress, uponthis amendment, had the intention of allowing a newconcept of confusion is not certain (S. Rep. No. 82-2107,
at 2847, 2850-51 (1962); H.R. Rep. No. 87-1108, at 4(1961)).
33
For prior studies on US court rulings and academic views
on post-sale confusion, see Yuriko Inoue, “Kōbaigo nokondō (post-purchase confusion) to Fuseikyōsōbōshihō jō
no kondō gainen—Amerika deno giron wo tegakarini”(Post-purchase confusion and the concept of confusion
under the unfair competition prevention law: Based onarguments in the United States), Hidetaka Aizawa, eds.,
Chitekizaisanhō no riron to gendaiteki kadai [Nakayama
Nobuhiro sensei kanreki kinen] (Theory and present
issues on intellectual property law [In memory of the 60thbirthday of Professor Nobuhiro Nakayama]), at 417(Kobundo, 2005), Yoshiyuki Tamura and Takahiro
Kojima, “Shōhyōhō jō no kondō gainen no jiteki kakuchō
to sono genkai” (Time extension of the concept ofconfusion under the trademark law and limit thereof),
Daini Tokyo Bar Association, Study Group of Intellectual
Properties, ed., Burando to hō (Brand and law), at 235(Shojihomu, 2010).
34
4 CALLMANN ON UNFAIR COMP., TR. & MONO. §22:16 (4thEd.)
35
Mastercrafters Clock & Radio Co. v. Vacheron &Constantin–Le Coultre Watches, Inc., 221 F.2d 464 (2dCir. 1955); Rolex Watch U.S.A., Inc. v. Canner, 645 F.
Supp. 484 (S.D. Fla. 1986).
36
Ferrari S.P.A. Esercizio Fabriche Automobili E Corse v.
Roberts, 944 F.2d 1235 (6th Cir. 1991).
37
Hermes Int'l v. Lederer de Paris Fifth Avenue, Inc., 50
F.Supp.2d 212 (S.D.N.Y. 1999).
38
Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799
F.2d 867 (2d Cir. 1986).
39
General Motors Corp. v. Keystone Automotive Industries,
Inc. 453 F.3d 351 (6th Cir. 2006).
40
Gibson Guitar Corp. v. Paul Reed Smith Guitars, Inc.,
423 F.3d 539 (6th Cir. 2005), cert. denied, 547 U.S. 1179
(2006).

Nike, Inc. v. Just Did It Enters., 6 F.3d 1225 (7th Cir.
1993).
42
Dorr-Oliver, Inc. v. Fluid-Quip, Inc., 94 F.3d 376 (7th Cir.
1996).
43
Reebok Intern. Ltd. v. K-Mart Corp., 849 F.Supp. 252(S.D.N.Y. 1994).
44
MCCARTHY §23:7; Shashank Upadhye, Trademark
Surveys: Identifying the Relevant Universe of Confused
Consumers, 8 FORDHAM INTELL. PROP. MEDIA & ENT. L.J.
549, 580 (1998).
45
Karl Storz Endoscopy-America, Inc. v. Surgical Tech.,Inc., 285 F.3d 848 (9th Cir. 2002).
46
Educational Testing Service v. Touchstone Applied
Science Assoc., Inc., 739 F. Supp. 847 (S.D.N.Y. 1990).
47
United States Surgical Corp. v. Orris, Inc., 5 F. Supp. 2d1201 (D. Kan. 1998).
48
Bone, supra note 10, at 608; Stacey L. Dogan & Mark A.
Lemley, The Merchandising Right: Fragile Theory or
Fait Accompli?, 54 EMORY L.J. 461, 491 (2005).
49
Id.
50
Jeremy N. Sheff, Veblen Brands, 96 MINN. L. REV. 760(2012).
51
Graeme W. Austin, Trademarks and the Burdened
Imagination, 69 BROOK. L. REV. 827, 902-04 (2004).
52
Katya Assaf, Brand Fetishism, 43 CONN. L. REV. 83(2010).
53
Sheff, supra note 50, at 804-828.
54
For the references in the Japanese language which
present arguments in Europe and the United States withregard to the issues of the Internet-related trademark
infringement and initial interest confusion, see Hiromichi
Aoki, “Intānetto to shōhyōken no shingai” (Internet andtrademark infringement), Daini Tokyo Bar Association,
Study Group of Intellectual Properties, ed., Shin
Shōhyōhō no ronten (Points at issue of the new
Trademark Act), at 344-351 (Shojihomu, 2007), Aoki,
Chitekizaisanken toshite no burando to dezain (Brand
and design as intellectual property), at 180-192(Yuhikaku, 2007), Kazuo Iwasaki, “Kokusai denshi
shōtorihikihō no kihon mondai (3): Intānetto kōkoku”(Basic issues on international law of electroniccommence: Internet advertising), Kokusai Shoji Homu
Vol. 36, No. 8, at 1043 (2008), Masaharu Miyawaki,“Metatagu to shōhyō to shiteno shiyō” (Metatags and use
as a trademark), Japan Patent Attorneys Association(JPAA), Central Research Institute of Intellectual
Property, Shōhyō no shiyō nit suite (Use of trademark),
Bessatsu Patent Vol. 62, No. 4, at 179 (2009), Tamura
and Kojima, supra note 33, at 271-276.
55
CALLMANN §22:15; Charles E. Bruzga, SophisticatedPurchaser Defense Avoided Where Pre-Sale Confusion Is
Harmful-A Brief Note, 78 TRADEMARK REP. 659 (1988).
“Initial interest confusion” is also termed as “pre-saleconfusion.”
56
Grotrian, Helfferich, Schulz, Th. Steinwag Nachf v.
Steinway & Sons, 523 F.2d 1331 (2d Cir. 1975); Mobile
Oil Corp v. Pegasus Petroleum Corp., 818 F.2d 254 (2dCir. 1987).
57
Id.
58
Elvis Presley Enterprises v. Capece, 141 F.3d 188 (5th Cir.
1998).
59
Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP, 423
F.3d 539 (6th Cir. 2005), cert. denied, 126 S. Ct. 2355
(2006).

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60

Brookfield Communications, Inc. v. West CoastEntertainment Corp., 174 F.3d 1036 (9th Cir. 1999).
61
Id.
62
Playboy Enters. v. Welles, 279 F.3d 796 (9th Cir. 2002);
Bijur Lubricating Corp. v. Devco Corp., 332 F. Supp. 2d722 (D.N.J. 2004).
63
Standard Process, Inc. v. Banks, 554 F.Supp.2d 866(E.D.Wis. 2008).
64
1-800 CONTACTS, Inc. v. WhenU.com, Inc., 414 F.3d
400 (2d Cir. 2005), cert. denied, 546 U.S. 1033 (2005)(The defendant only described the URL of the plaintiff's
website in the directory for the defendant's software. The
defendant did not sell any specific keywords to its
advertisingclientsbut
soldcategory-related
advertisement spaces. The court took these facts into
account as the grounds for denying infringement.).
65
Playboy Enters. v. Netscape Communs. Corp., 354 F.3d
1020 (9th Cir. 2004);.
66
Govt Emples. Ins. Co. v. Google, Inc., 330 F.Supp.2d 700(E.D. Va. 2004), 77 U.S.P.Q.2D 1841 (E.D. Va. 2005)(infringement partially found).
67
Merck & Co., Inc. v. Mediplan Health Consulting,Inc.,425 F.Supp.2d 402 (S.D.N.Y. 2006).
68
Rescuecom Corp. v. Google, Inc., 562 F.3d 123 (2d Cir.
2009).
69
J.G. Wentworth, S.S.C. Ltd. P'ship v. Settlement Funding
LLC, 85 U.S.P.Q.2d 1780 (E.D. Pa. 2007); 1-800
Contacts, Inc. v. Lens.com, Inc., 755 F. Supp. 2d 1151 (D.
Utah 2010); Network Automation, Inc. v. Advanced Sys.
Concepts, 638 F.3d 1137 (9th Cir. 2011).
70
CJ Prods. LLC v. Snuggly Plushez LLC, 809 F. Supp. 2d127 (E.D.N.Y. 2011).
71
James Grimmelmann, The Structure of Search Engine
Law, 93 IOWA. L. REV. 3, 61 (2007).
72
Greg Lastowka, Google's Law, 73 BROOK. L. REV. 1327,
1375 (2008); Margreth Barrett, Internet Trademark Suitsand the Demise of “Trademark Use”, 39 U.C. DAVIS L.
REV. 371 (2006).
73
Eric Goldman, Deregulating Relevancy in Internet
Trademark Law, 54 EMORY L.J. 507, 538 (2005).
74
Id. at 574.
75
Stacey L. Dogan & Mark A. Lemley, Trademarks andConsumer Search Costs on the Internet, 41 HOUS. L. REV.
777 (2004); Stacey L. Dogan & Mark A. Lemley,
Grounding Trademark Law through Trademark Use, 92
IOWA L. REV. (2006); Goldman, supra note 73, at 507:
Margreth Barrett, Finding Trademark Use: The
Historical Foundation for Limiting Infringement Liability
to Uses “n the Manner of the Mark”, 43 WAKE FOREST. L.
REV. 893 (2008); Uli Widmaier, Use, Liability and theStructure of Trademark Law, 33 HOFSTRA L. REV. 603(2004). See also, Dan L. Burk, Cybermarks, 94 MINN. L.
REV. 1375 (2010) (advocating the use of the functionality
requirement).
76
Dogan & Lemley, supra note 75.
77
Id.
78
For a study on the academic views on this issue, see
Kazufumi Dohi, “Shōhyōteki shiyō to shōhyōken no
kōryoku” (Use as trademark and effect of trademark
right), Japan Patent Attorneys Association (JPAA),
Central Research Institute of Intellectual Property,
Shōhyō no shiyō ni tsuite (Use of trademark), Bessatsu
Patent Vol. 62, No. 4, at 215 and 217-218 (2009).
79
Graeme B. Dinwoodie & Mark D. Janis, Confusion

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Over Use: Contextualism in Trademark Law, 92 IOWA L.
REV. 1597 (2007); Graeme B. Dinwoodie & Mark D.
Janis, Lessons from the Trademark Use Debate, 92 IOWA
L. REV. 1703 (2007); Lastowka, supra note 72, at
1396-1410.
80
Glynn S. Lunney, Trademarks and the Internet: theUnited States' Experience, 97 TRADEMARK REP. 931(2007).
81
See the Tokyo High Court judgment, November 7, 1983,
Kokeishu (High court decision in criminal cases) Vol. 36,
No. 3, at 289 [Seiko]. For the party who is to determine
the “"likelihood of confusion” set forth in Article 4,paragraph (1), item (xv), see the Supreme Court
judgment, July 11, 2000, Minshu Vol. 54, No. 6, at 1848
[L'air du tamps].
82
Intellectual Property Court Practice Study Group,
Chitekizai soshō no jitsumu (Practice in intellectual
property litigation), at 58 (Hosokai, 2010).
83
Tokyo High Court judgment, August 31, 2004, Hanrei
Jiho No. 1883, at 87 [Lithograph, second instance].
84
For the party who is to be confused in the registration
examination (Article 4, paragraph (1), item (xv) of theTrademark Act), see the Tokyo High Court judgment,
March 30, 1993, Chizaishu (Intellectual property-related
court decisions in civil and administrative cases) Vol. 25,
No. 1, at 125 [Masuchimaishin, first instance].
85
With respect to Article 4, paragraph (1), item (xv), see2004 (Gyo-Ke) No. 256, the Tokyo High Court judgment,
February 24, 2005 [MEVASROLIN]; 2004 (Gyo-Ke) No.
129, the Tokyo High Court judgment, November 25,
2004 [Mebarokatto]; and 1999 (Gyo-Ke) No. 309, theTokyo High Court judgment, September 4, 2000
[CAPTORON]. With respect to Article 2, paragraph (1),item (i) of the Unfair Competition Prevention Act, see2006 (Ne) No. 10011, the Intellectual Property High
Court judgment, September 27, 2006 [gastric capsule];
and 2006 (Ne) No. 10012, the Intellectual Property High
Court judgment, September 28, 2006 [the same].
86Intellectual Property High Court judgment, March 19,
2008, Hanrei Times No. 1629, at 288 [ELLEGARDEN,
second instance]. The court of second instance denied theapplication of the doctrine of post-sale confusion, on the
grounds that the impression created by the method ofusing the defendant's mark is apart from the impression
created by the plaintiff's brand. This high court rulingdoes not clearly demonstrate whether or not this doctrine
is applicable if the impression created by the plaintiff's
trademark and that created by the defendant's mark aresimilar to each other.
87
Yoshiyuki Tamura, [Hanrei Hihyo], ChitekizaisanhōSeisakugaku Kenkyū (Study on intellectual property law
policy) No. 4, at 181 (2004), criticized by Shigeki Chaen,[Hanrei Hihyo], Shōhyō, ishō, fusei kyōsō hanrei
hyakusen (100 collected court decisions on trademark,design, and unfair competition), at 55 (Yuhikaku, 2007).
88
However, it may be possible to think that in such case,even if the trademark's function to assure quality ofluxury goods such as Ferrari has been harmed, the scopeof consumers who can afford to purchase such goods islimited, so the influence that the replica would have on
the process of making decisions to purchase the plaintiff's
goods is insignificant.
89
Inoue, supra note 33, at 432-434.
90
Id., at 435.

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However, it is considered that due consideration isrequired for protecting the design pattern or configurationof goods under Article 2, paragraph (1), item (ii) of the
Unfair Competition Prevention Act, because this could
result in constraining competition without good causeeven where there is no likelihood of confusion.
(Specifically, there is an argument that consumers'
tendency to find value in an indication should beincorporated into the requirement of famousness(Masaharu Miyawaki, “Burando ekuitei to fusei kyōsō”(Brand equity and unfair competition), Kokusai Kōkyō
Seisaku Kenkyū (International public policy study) No. 4
and No. 2, at 199-200 and 202-204 (2000). Anotherargument narrows down the applicability of said
provision by requiring special distinctiveness orinfringement of business interest (Yoshiyuki Tamura,Fuseikyōsōhō gaisetsu [dai 2 han] (Overview of theunfair competition law, 2nd edition), at 240-243 and248-250 (Yuhikaku, 2006)).
92
Osaka District Court judgment, December 8, 2005,
Hanrei Jiho No. 1934, at 109 [Chūkosha (kuruma) no 110ban]Ryos93
Ryo Shimanami, “html fairu no metatagu he no kijutsu toshōhyō toshite no shiyō” (Description of html files inmetatags and their use as trademarks), Saishin Chizaihō[Komatsu Yoichiro sensei kanreki] (Latest intellectual
properly law [In memory of the 60th birthday ofProfessor Yoichiro Komatsu]), at 372 (Seirin Shoin,2008).
94
Keita Sato [Hanrei Hihyo], Chuo Law Journal Vol. 4, No.
1, at 114-116 (2007).
95
2006 (Wa) No. 7458, Osaka District Court judgment,
September 13, 2007 [PS501].
96
2006 (Wa) No. 4029, Tokyo District Court judgment,
May 16, 2007 [ELLEGARDEN, first instance].
97
Intellectual Property High Court, March 19, 2008, Hanrei
Times No. 1629, at 288 [ELLEGARDEN, second
instance].
98
In Japan, there was a conflict in academic views on
metatags in terms of how to consider viewabiltiy ofmetatags, between those supporting the use of metatags
as a trademark (Kazufumi Dohi, “Nettowāku shakai toshōhyō” (Network society and trademark), Jurist No.
1227, at 30 (2002), Shigeki Chaen, “Intānetto jō nohyōshiki no aratana shiyō keitai he no taiō” (Response to
the new way of using marks on the Internet), Institute ofIntellectual Property (IIP), Study on the Desirable Formof the Unfair Competition Prevention Law for ProtectingIntellectual Property in a New Era, at 18 (IIP, 2002), andthose denying such use (Shuichi Itakura, [Hanrei Hihyo],
Hanrei Jiho No. 1953, at 213 and 216 (2006)).

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