Date

February 7, 2018

Case number

2016 (Ne) 10104

Court

Intellectual Propert y High
Court, Second Division- A case in which the court determined that the accused act fell under socalled parallel import of genuine goods and lacked substantial illegalit ywith respect to the infringement of the trademark right.
References: Article 36, paragraphs (1 ) and (2) of the Trademark Act

Summary of the Judgment
1 In this case, the appellee having the trademark right allege d that theappellant's act of affixing the appellant's marks to the advertisement s
with respect to the goods and distributing them infringed the trademark
right, and claimed for the appellant's injunction of the sale anddistribution of the goods, and disposal thereof pursuant to Article 36 ,paragraphs (1) and (2) of the Trademark Act.
The judgment in prior instance upheld all of the appellee's demand on
the grounds that it cannot be said that the appellant's act of importingand selling the goods correspond s to a justifiable cause for illegalit y of
the infringement of the trademark right due to the so-called parallel
import and that it cannot be said, either, that the appellee's exercise of
the trademark right against the appellant falls under the abuse of theright.
2 If a person other than the trademark owner imports the goods to whicha trademark identical with the registered trademark is affixed and thegoods are identical with the designated goods of the tr ademark right inour country, the person's act infringes the trademark right unless alicense is obtained (Article 2, paragraph (3) and Article 25 of theTrademark Act ).

However,

it is proper to understand that even theabove import of the goods lacks substantial illegalit y with respect to theinfringement of the trademark right, /1/ if the trademark was l awfull yaffixed by a trademark owner in a foreign country or a person who has
obtained a license from the trademark owner, /2/ if the trademark
indicates a source identical with that of t he registered trademark in ouricountry due to the presence of a relationship in which the trademark
owner in the foreign country is an identical person or can be legall y or
economicall y regarded as a person identical with the trademark ownerin our country (hereinafter referred to as the "second requirement"), /3/
if the goods are assessed as not being substantiall y different from thegoods to which the registered trademark is affixed by the trademark
owner in our country in the qualit y guaranteed by the registeredtrademark on the grounds that the trademark owner in our country is ina position to directly or indirectl y contro l the qualit y of the goods(hereinafter referred to as the "third requirement ")(Supreme Court, First
Pett y Bench, February 27, 2003 ; Minshu Vol. 57, No. 2, page 125).
If a person other than the trademark owner affixes a trademark
identical with the registered trademark to advertisements, for the goods
identical with the designated goods of the trademark right in ourcountry, the person's act infringes the trademark right unless a license
is obtained (Article 2, paragraph (3) and Article 25 of the Tradem ark
Act). However, even the above act may lack substantial illegalit y withrespect to the infringement of the trademark right like the act ofimporting the goods to which the trademark identical with the registeredtrademark is affixed.
read:

In that case the above requirement /1/ should

the use of the trademark for the goods is l awful due to a

relationship with the trademark owner in a foreign country (hereinafterreferred to as the "first requirement").
3(1) The appellant's marks 1 and 2 are similar to the trademark of PVZ.
All the appellant's goods are imported from PVZ and the appellant is
not considered to have made adjustments to them before selling them.
Consequentl y, the appellant's act of affixi ng the appellant's marks 1 and
2 to the appellant's advertisements of the goods does not impair thesource distinguishing function or the qualit y maintenance function of
the trademark right of PVZ. The act can be said to be l awful due to therelationship with PVS .
Accordingl y,theaccusedin fringement

requirement.

ii

act

fulfills

the

first

(2) The appellant concluded a sales agency agreement in Japan for thebrand goods with PVZ and became an exclusive sales agent of PVZ in
Japan.

Therefore, PVZ and the appellant can be said to be in therelationship in which they can be legall y regarded as an identical person,
andthereforetheaccusedinfringementact

fulfills

thesecondrequirement.
(3) The third requirement is directed to the qualit y management
capabilit y of the trademark owner in Japan. If the trademark owner in aforeign country and the trademark owner in our country can be legall yor economicall y regarded as an identical person, in principle, it can besaid that the qualit y management capability of the trademark owner in aforeign country and that of the trademark owner in our country should
be identical.

However, even though the trademark owner in a foreigncountry and the trademark owner in our country can be legall y or
economicall y regarded as an identical person, if it can be said thatimporting the goods relating to the trademark owner's source in aforeign country result ed in impairing the qualit y or goodwill specific to
the goods relating to his source, despite his record of utilizing theexclusive power of the trademark right in our country and making
efforts to maintain the qualit y or goodwill specific to the goods relating
to his source, these interests due to such record can be said to be worthyof protection.
PVZ had been selling and distributing the brand ed goods to theappellant and the appellee in Japan before the registration of the
trademark.

The appellee registered the trademark right to exclusivel yimport and sell the goods of PVZ and the trademark was registe red withthe permission of PVZ. The trademark 1 per se is the brand name andthe trademark 2 is considered to use the mark s that PVZ had been using
for the brand. In this case, the appellee's goods are ornaments and havea function of being worn so that their user can be seen by others , andutilizing their beauty to decorate the user. It is found that the appellee
designates the combination of the parts from PVZ and the chain lengthand attached spring clasps and earring parts, but judging from the mainfunction of the appellee's goods, the spring clasps and earring parts
constitute onl y an incidental part . At the appellee's website , the imagesiii

created by PVZ and the same brand logo as the one used by PVZ areused and the lace -like patterns of the parts from PVZ can be clearl yrecognized.

However, the parts individuall y attached by the appellee

are emphasized nowhere.

In addition, the above website fails todisclose that the design other than that of the lace-like handiwork of theparts from PVZ is excellent and that the spring clasps and earring parts
can be easil y used.

These matters are not considered to have beenrecognized by consumers.

Further, even though the appellee issued awarrant y for the appellee's goods, the warrant y describes onl y an"article number" and "specification " (Ko 23). It is not considered thatfrom the content of the warrant y consumers can recognize that theappellee's original parts are attached.
Comprehensivel y considering thesecircumstances,itcannotbeconsidered the appellee has a record of making efforts to maintain thequalit y or goodwill of the appellee's goods independentl y of PVS.

It

cannot be said that the appellant's importing the goods and the accus edinfringement act result in impairing the qualit y or goodwill of theappellee's goods.

Accordingl y, it cannot be said that the appellee hasinterests worthy of protection .
As described so far, the appellant's goods and the appellee's goods
should be assessed as not being substantiall y different in the qualit yguaranteed by the trademark . The accused infringement act fulfills thethird requirement.
4 As described above, the accused infringement act fulfills each of thefirst to third requirement s and lacks substantial illegalit y.

iv

Judgment rendered on February 7, 20182016 (Ne) 10104 Appeal case seeking injunction of sale(court of prior instance/Tokyo District Court 2016 (Wa) 10643)
Date of conclusion of oral argument

November 2, 2017
Judgment

Appellant (defendant in the first instance) JEWELRY MIURA
Appellee (plaintiff in the first instance) MITSUMURA CO., LTD.
Main text
1 The judgment in prior instance shall be revoked.
2 The appellee's claims shall be dismissed.
3 The appellee shall bear the court costs of both the first and second instances.
Facts and reasons
I Object of the appeal
The same effect as the main text
II Outline of the caseIn this case, the appellee having trademark rights (hereinafter respectively referred
to as "trademark right 1" and "trademark right 2" and collectively referred to as the"trademark rights") with respect to first and second trademarks (hereinafter
respectively referred to as "trademark 1" and the "trademark 2" and collectively
referred to as the "trademarks") shown in an attached list of trademark rights allegedthat the appellant's act of affixing first and second marks (hereinafter respectively
referred to as "appellant's mark 1" and "appellant's mark 2" and collectively referred toas the "appellant's marks") shown in an attached list of appellant's marks to theadvertisements relating to the goods and distributing them infringed the trademark
rights, and claimed for an injunction against the appellant's sale and distribution of theappellant's goods, and disposal thereof pursuant to Article 36, paragraphs (1) and (2) of
the Trademark Act.
The judgment in prior instance upheld all of the appellee's demand on the grounds
that it could not be said that the appellant's act of importing and selling the goods
corresponded to a justifiable cause for non-compliance with the law with respect to the1infringement of the trademark rights due to the so-called parallel import and that it
could not be said, either, that the appellee's exercise of the trademark rights against theappellant fell under the abuse of the right.
The appellant filed an appeal.
1 Basic facts (the facts that are not disputed between the parties and the facts that canbe admitted based on the evidence listed in the text and the entire import of the oral
argument)(1) Parties
The appellee is a company engaged in the manufacture and wholesale of precious
metal products and the appellant is a company engaged in the import, processing, andsale of jewelry/precious metals.
(2) Appellee's trademark rights
The appellee has the trademark rights and sells personal ornaments marked withthe trademarks (hereinafter referred to as the appellee's goods") (Exhibit Ko 25, 26).
(3) P.V.Z. srl of Italy (hereinafter referred to as "PVZ") was an owner of a trademark(hereinafter referred to as the "PVZ trademark") shown in an attached PVZ trademark
list in Europe from May 1, 2008 to May 17, 2017 (Exhibit Otsu 52). PVZ sells the
personal ornaments manufactured by PVZ under a brand name "NEONERO"(hereinafter referred to as the "brand") using the same mark as the trademark 2.
(4) The appellant published the appellant's marks in the flyers (hereinafter referred toas the "flyers") for an exhibition and spot sale fair (hereinafter referred to as the"event") held at "Bell Jew Adachi" from December 11 to December 13, 2015 anddistributed them so as to advertise the appellant's personal ornaments (hereinafterreferred to as the "appellant's goods") to be shown at the event (Exhibit Ko 10, 11).
2 Points at issue(1) Whether or not the infringement of the trademark rights due to the parallel import
falls under the justifiable cause for non-compliance with the law(2) Whether or not the exercise of the trademark rights falls under the abuse of therights(omitted)
III Court decision
The court determines that the demand made by the appellee shall be dismissed2since the appellant's act of alleged infringement (to be defined later) lacks substantial
noncompliance with the law with respect to the infringement of the trademarks. The
reasons for this determination are as follows.
1 Facts foundAccording to the evidence shown below and the entire import of the oral argument,
the following facts are found.
(1) PVZ uses the same mark as the trademark 2 under the "NEONERO" brand (thebrand) to sell personal ornaments such as pendants, necklaces, clip-on earrings,
earrings, rings, and bracelets. The goods brochure of PVZ explains the concept of thecompany products in Italian and English as follows:"The originality of young

designers who were fascinated by a long tradition of lace production, which was very
well known in Toscana, led to the creation of the Pizzod'oro Collection under the
NEONERO brand, and this wonderful design is manufactured in a factory in Alezzo.
Our idea is transformed into very interesting pieces of work which look like pieces oflace work in consequence of the production by skilled goldsmiths who bore fine holes
in marvelous gold leaves, although traditional cotton laces are not used." (Exhibits
Ko 33, Ko 35, Ko 36, Otsu 45)(2) The appellee started to handle the brand goods in March 2013. (Exhibit Ko 6)(3) The appellant started dealing with PVZ in February 2014 and received posters from
PVZ around July of the same year and obtained permission to create price cards withthe mark "NEONERO." (Exhibits Otsu 2-2, 2-3 Otsu 4, Otsu 23)(4) The appellant directly imported the goods from PVZ around June 18, 2014
(Exhibits Otsu 37-1, 37-2, Otsu 38-1, 38-2, representative of the appellant).
(5) The appellant sold the goods of PVZ in Japan from August 20, 2014 throughAugust 28, 2015. (Exhibits Ko 6, Ko 7, Exhibits Otsu 7, Otsu 8-1, 8-2), Otsu 9, Otsu
10-1, 10-2).
(6) On August 20, 2014, the appellee requested PVZ to appoint the appellee as its
exclusive sales agent in Japan, stating that apart from the appellee, the appellant is also
selling the goods of PVZ in Japan. Subsequently in Hong Kong the appellee and
PVZ discussed the content of a sales agency agreement and agreed that no later thanSeptember 22, 2014, [ⅰ] the wage paid by the appellee to PVZ would be increased
from the previous wage, 5 Euros per gram, to 6 Euros per gram from the next order,and [ⅱ] PVZ would sell the goods to nobody in Japan other than the appellee(hereinafter referred to as the "sales agency agreement").

No written contract on thesales agency agreement was prepared. (Exhibits Ko 6, Ko 14 (1 and 2), Ko 29 (1 to 5),3

Ko 38 (1 and 2), representative of the appellee)
After October 2, 2014, PVZ and the appellee discussed how the orders received
by PVZ from the appellant before the conclusion of the sales agency agreement would
be treated. On October 9, the appellee agreed that PVZ would directly deal with theabove orders from the appellant, and in response the parties agreed that the wage of thegoods sent from PVZ to the appellant on the end of the same month would be left
unchanged at 5 Euros per gram. (Exhibits Ko 29 (6 to 11), Ko 38 (1 and 2),
representative of the appellee)(7) On October 10, 2014 the appellee made a proposal to PVZ that the appellee and
PVZ should file a joint application for the registration of the trademark "NEONERO"in Japan, and the appellee requested PVZ to send the appellee a logo used by PVZ.
PVZ agreed that by October 14, 2014, the appellee would independently file anapplication for the registration of the "NEONERO" trademark in Japan. (Exhibits Ko
14 (2), Ko 39 (1 and 2))(8) On October 15, 2014 the appellee filed an application for the registration of the
trademark. (Exhibits Ko 25 (1 to 4), Ko 26 (1 to 4))(9) Around October 28, 2014, the appellant directly imported the goods from PVZ, but
after that, the appellant became unable to directly import the goods of PVZ from PVZ.
The appellant decided to import the goods by directly placing an order with PVZ bymail and having PVZ send the goods to M.C.E in Hong Kong (hereinafter referred toas "MCE") and then having MCE send the unopened goods to the appellant. (Exhibits
Otsu 31-1, Otsu 31-2, Otsu 32-1, Otsu 32-2, Otsu 33-1, Otsu 33-2, Otsu 34-1, Otsu 342, Otsu 35, Otsu 39-1, 39-2, Otsu 43, representative of the appellant)(10) Around May 11, 2015, the appellant imported the goods from PVZ through MCE.
(Exhibits Otsu 31-1, Otsu 31-2, Otsu 32-1, Otsu 32-2, Otsu 40-1, Otsu 40-2, Otsu 41-1,
Otsu 41-2, Otsu 43, representative of the appellant)(11) The trademark was registered on October 16, 2015. (Exhibits Ko 1 and Ko 2)(12) On November 10, 2015 the appellee notified the appellant that the appellee had
the trademark rights and the use of a trademark identical or similar to the trademarks
with no permission from the appellee constitutes infringement of the trademark rights.
(Exhibit Ko 3 (1 and 2))(13) On December 8, 2015 the appellee alleged to the appellant that the act of sellingthe appellant's goods at the event constituted the infringement of the trademark rights,
and demanded that the appellant should stop the sale. (Exhibit Ko 4 (1 and 2))(14) From December 11 to 13, 2015, at an event, the appellant showed and sold thepersonal ornaments (appellant's goods) specified in an attached list of shown goods.
4The respective shown goods were imported directly from PVZ, or through MCE.
(Exhibits Ko 10, Ko 11, Otsu 47).
(15) Around December 24, 2015 the appellant notified the appellee that the appellant
saw no problem in the handling of parallel imports and the appellant's parallel
importing could be suspended by the appellee's purchase of the stock of the appellant's
goods. (Exhibit Ko 5)(16) The appellee places an order of goods with PVZ as explained below:
The appellee uses the design collections received from PVZ and the shown
goods brought by PVZ to the fair to place an order of the goods; about 15% of such anorder is unchanged from the design collections and the shown goods and about 85% of
the order is changed.

When changes are made, the appellee specifies the kind, color,size, and number of parts which are designed and produced by PVZ (hereinafterreferred to as the "parts of PVZ") and which are in such shapes as a lozenge and an
ellipse and on which lace-like workmanship is added. The appellee also specifies thelength between the respective parts of PVZ and orders the production of necklaces,
pendant tops, clip-on earrings, and bracelets etc. The appellee attaches necklaces
separately obtained by the appellee to pendant tops imported from PVZ and attaches
clip-on earring parts with Japanese silicon parts to the clip-on earrings imported from
PVZ. The appellee obtains finished products by attaching to the necklaces imported
from PVZ pico-pull rings (pull rings developed by the appellee and each having alarger pull projection and a decorative ball) and joint jumping rings. (Exhibits Ko 16 toKo 19, Ko 27, Ko 28 (1 to 8), Ko 44, Ko 45 (1 and 2), Ko 47, representative of theappellee)
The appellee produced fancy boxes, paper bags, catalogues, and forms ofguarantee with the trademarks. (Exhibits Ko 21 to 23)
The appellee's website uses the images of the goods produced by PVZ, all ofwhich are images created by PVZ. (Exhibits Otsu 45, Otsu 56, representative of theappellee).
(17) The appellant places orders with PVZ as explained below.
The appellant uses the catalogs received from PVZ and the samples brought by
PVZ to the Hong Kong Fair and places an order for the goods shown in the catalogs
and the samples without making any change to them or making changes to them.

Ifchanges are made, either the color or a combination of colors is specified. (Exhibits
Otsu 19-11, 19-2, Otsu 33-11, 33-2, Otsu 34-11, 34-2, representative of the appellant)
2 Points at issue (1) (whether or not the infringement of the trademark rights due toparallel importing falls under the justifiable cause for non-compliance with the law)5

(1)A As described above in 1(14), around December 11, 2015 after the registration of
the trademarks, the appellant printed the appellant's mark on flyers for selling theappellant's goods which are personal ornaments imported directly from PVZ or
through MCE and distributed the flyers (hereinafter referred to as the "act of thealleged infringement").
Appellant's mark 1 is simply the trademark 1 of a different color and issubstantially identical with the trademark 1.

Appellant's mark 2 is the trademark 2 ofa different color and is substantially identical with the trademark 2.

All theappellant's goods shown at the event are personal ornaments and are included in thedesignated goods of the trademarks.
B The appellee contends that of the goods that the appellant asserts were imported
from PVZ, some of the goods do not match those shown in the catalogs of PVZ and
therefore, the appellant's goods include goods that are not from PVZ.

However, as

described above in 1 (17), the appellant may place an order based on not only thecatalogs of PVZ but also the samples brought by PVZ to the Hong Kong Fair and maychange the color or a combination of colors of the goods from the catalogs and thesamples.

In addition, all of the appellant's goods (Exhibit Ko 52) pointed out by theappellee use the parts of PVZ having a lace pattern which is a characteristic of thegoods of PVZ (Exhibit Otsu 48).

Accordingly, all the appellant's goods are

considered to be goods imported from PVZ.
(2)A If a person other than the trademark owner imports the goods to which a
trademark identical with the registered trademark is affixed and the goods are identicalwith the designated goods of the trademark right in our country, the person's act
infringes the trademark right unless a license is obtained (Article 2, paragraph (3) and
Article 25 of the Trademark Act).

However, it is proper to understand that even theabove import of the goods lacks substantial non-compliance with respect to theinfringement of the trademark right, [ⅰ] if the trademark was lawfully affixed by atrademark owner in a foreign country or a person who has obtained a license from thetrademark owner, [ⅱ] if the trademark indicates a source identical with that of theregistered trademark in our country due to the presence of a relationship in which thetrademark owner in the foreign country is an identical person or can be legally or
economically regarded as a person identical with the trademark owner in our country(hereinafter referred to as the "second requirement"), [ⅲ] if the goods are assessed as
not being substantially different from the goods to which the registered trademark is
affixed by the trademark owner in our country in the quality guaranteed by theregistered trademark on the grounds that the trademark owner in our country is in a6

position to be able to directly or indirectly control the quality of the goods (hereinafterreferred to as the "third requirement")(Judgment of the Supreme Court, First Petty
Bench, February 27, 2003; Minshu Vol. 57, No. 2, at 125).
If a person other than the trademark owner affixes a trademark identical withthe registered trademark to advertisements, for goods identical with the designatedgoods of the trademark right in our country, the person's act infringes the trademark
right unless a license is obtained (Article 2, paragraph (3) and Article 25 of theTrademark Act). However, even the above act may lack substantial non-compliancewith respect to the infringement of the trademark right like the act of importing thegoods to which the trademark identical with the registered trademark is affixed.
that case the above requirement [ⅰ] should read:In

the use of the trademark for the

goods is lawful due to a relationship with the trademark owner in a foreign country(hereinafter referred to as the "first requirement").
B First requirement(A) As described in (1) above, PVZ uses the same mark as trademark 2 to sell its goods.
As shown in the attached PVZ trademark list, the PVZ trademark comprises a gradualcurve that goes down from left to right under the graphically represented alphabetic
characters "NEONERO" and under the curve, the alphabetical characters "FORMEPREZIOSE" in small font are arranged. Given that the characters "NEONERO" aresignificantly larger than the characters "FORME PREZIOSE," and that as described in
1 (1) above, PVZ has been manufacturing and selling the personal ornaments under thebrand name "NEONERO," the essential part of the PVZ trademark is considered to be
the graphically represented character portion, "NEONERO."As shown in the attached list of the appellant's marks, in appellant's mark 2, thealphabetic characters "PIZZO D'ORO" in small font are arranged in the upper portionand the alphabetic characters "NEONERO" in large font are disposed in the lower
portion. Since they are significantly different in size of the characters, the essential
portion of the mark is considered to be the portion of "NEONERO." Accordingly, theessential portion of the appellant's mark 2 is similar in appearance and identical insound to the essential portion of the PVZ trademark. As explained so far, the PVZ
trademark and appellant's mark 2 are similar.
As shown in the attached list of appellant's marks, appellant's mark 1 comprises
the alphabetic characters "NEONERO."

Accordingly, the essential portion ofappellant's mark 1 is similar in appearance and identical in sound to the essential
portion of the PVZ trademark. The PVZ trademark and appellant's mark 1 are similar.
Thus appellant's marks 1 and 2 are not considered to be usable lawfully in7Europe without the permission of PVZ.
(B) As described above, appellant's marks 1 and 2 are similar to the PVZ
trademark.

All the appellant's goods are imported from PVZ and the appellant is notconsidered to have made adjustments to them before selling them. Consequently, theappellant's act of affixing appellant's marks 1 and 2 to the appellant's advertisements ofthe goods does not impair the source distinguishing function or the quality
maintenance function of the trademark right of PVZ. The act can be said to be lawful
due to the relationship with PVZ.
(C) Accordingly, the alleged infringement act fulfills the first requirement.
C

Second requirement
The second requirement relates to the substantial identicality of domestic andforeign right holders. The "case in which the domestic and foreign right holders havea relationship that allows them to be legally regarded as an identical person" refers to
the case in which a trademark owner in a foreign country and a trademark owner inJapan have parent-subsidiary relations or are sole sales agents.

The "case in which

the domestic and foreign right holders have a relationship that allows them to beeconomically regarded as an identical person" refers to the case in which a trademark
owner in a foreign country and a trademark owner in Japan have a close relationship,for example, in which they constitute the same corporate group.
As described in 1(6) above, the appellee concluded a sales agency agreement inJapan for the brand goods with PVZ and became an exclusive sales agent of PVZ in
Japan. Therefore, PVZ and the appellee can be said to be in the relationship in which
they can be legally regarded as an identical person, and therefore the alleged
infringement act fulfills the second requirement.
D

Third requirement(A) The third requirement is directed to the quality management capability of the
trademark owner in Japan.

If the trademark owner in a foreign country and thetrademark owner in our country can be legally or economically regarded as an identicalperson, in principle, it can be said that the quality management capability of the
trademark owner in a foreign country and that of the trademark owner in our country
should be identical.

However, even though the trademark owner in a foreign country

and the trademark owner in our country can be legally or economically regarded as an
identical person, if it can be said that importing the goods relating to the trademark
owner's source in a foreign country resulted in impairing the quality or goodwill
specific to the goods relating to his source, despite his record of utilizing the exclusive
power of the trademark right in our country and making efforts to maintain the quality
8

or goodwill specific to the goods relating to his source, these interests due to suchrecord can be said to be worthy of protection.
(B) According to the found facts in 1, PVZ had been selling and distributing thebranded goods to the appellant and the appellee in Japan before the registration of the
trademarks. The appellee registered the trademark rights to exclusively import andsell the goods of PVZ and the trademarks were registered with the permission of PVZ.
Trademark 1 per se is the brand name and trademark 2 is considered to use the marksthat PVZ had been using for the brand.

In this case, the appellee's goods are personal

ornaments and have a function of being worn so that their user can be seen by others,
and utilizing their beauty to decorate the user.

It is found that the appellee designatedthe combination of the parts from PVZ and the chain length, and attached pull ringsand earring parts, but judging from the main function of the appellee's goods, the pullrings and earring parts constitute only an incidental part. On the appellee's website,
the images created by PVZ and the same brand logo as the one used by PVZ are used
and the lace-like patterns of the parts from PVZ can be clearly recognized.

However,the parts individually attached by the appellee are emphasized nowhere.

In addition,

the above website fails to disclose that the design other than that of the lace-likeworkmanship of the parts from PVZ is excellent and that the pull rings and earringparts can be easily used.

These matters are not considered to have been recognizedby consumers. Further, even though the appellee issued a warranty for the appellee's
goods, the warranty describes only an "article number" and "specification" (Exhibit Ko23).

It is not considered that from the content of the warranty consumers canrecognize that the appellee's original parts are attached.
Comprehensively considering these circumstances, it cannot be considered thatthe appellee has a record of making efforts to maintain the quality or goodwill of theappellee's goods independently of PVZ.

It cannot be said that the appellant's

importing the goods and the alleged infringement act result in impairing the quality or
goodwill of the appellee's goods. Accordingly, it cannot be said that the appellee hasinterests worthy of protection.
The appellee asserts that it has established its own inspection system to keep thequality of the goods and make efforts to maintain the reliability of the goods byaccepting a free part exchange request for its sold goods. However, there is noevidence sufficient to enable the court to find that the appellee conducts these actsbeyond the acts generally conducted by the import sales agents of personal ornaments
for maintaining the quality and reliability. The appellee's assertion does not affect theabove determination.
9

(C) As described so far, the appellant's goods and the appellee's goods should beassessed as not being substantially different in the quality guaranteed by thetrademarks. The alleged infringement act fulfills the third requirement.
(3) As described above, the alleged infringement act fulfills each of the first to third
requirements and lacks substantial non-compliance.
3 Accordingly, needless to determine the other matters, the appellee's demand isgroundless.
IV Conclusion
Hence, the judgment in prior instance is revoked and the appellee's claims are
dismissed. The judgment is made as described in the main text.

Intellectual Property High Court, Second Division
Presiding judge

MORI Yoshiyuki

Judge

NAGATA Sanae

Judge

FURUSHO Ken

10

(Annex)
List of the trademarks
1 Registration Number
TrademarkNo. 5799743

NEONERO (standard characters)

Designated goods or designated service and the class of goods and service
Class14
Unwrought and semi-wrought precious stones and their imitations, keyrings [trinkets
or fobs], jewelry cases, trophies [prize cups], commemorative shields, personal
ornaments, shoe ornaments of precious metal, clocks and watches
Filing date
October 15, 2014 (Trademark Application No. 2014-086695)
Registration date
October 16, 2015
2 Registration Number

No. 5799744

TrademarkDesignated goods or designated service and the class of goods and service
Class 14
Unwrought and semi-wrought precious stones and their imitations, keyrings [trinkets
or fobs], jewelry cases, trophies [prize cups], commemorative shields, personal
ornaments, shoe ornaments of precious metal, clocks and watches
Filing date
October 15, 2014 (Trademark Application No. 2014-086696)
Registration date
October 16, 2015

11

(Annex)
PVZ trademark list
European Union
Registration Number 5914387
TrademarkDesignated goods or designated service and the class of goods and service
Class 14 precious metals and their alloys and goods in precious metals or coatedtherewith (not included in other classes), jewelry, precious stones, and tools for clocks
and watches
Filing date May 17, 2007
Registration date May 15, 2008

12

(Annex)
List of the appellant's marks
1213