Unfair
Date
Competition Case number

May 30, 2019
Court Intellectual Property
High Court, Second
2018 (Ne) 10081
Division(Principal action)2018 (Ne) 10091(Counterclaim)- A case in which the court held that "マリオカート" and "MARIO KART" arefamous as First Instance Plaintiff's indications of goods or business, and that they are
similar to the word marks used by First Instance Defendant Company ("マリカー","MariCar", "MARICAR", and "maricar"), and that the use of the above marks by First
Instance Defendant Company constitutes use as indications of goods or business,thereby ruling that Article 2, paragraph (1), item (ii) of the Unfair Competition
Prevention Act shall be applicable.
- A case in which the court held that the shapes of Mario, Luigi, Yoshi, and King
Bowser Koopa are famous as First Instance Plaintiff's indications of goods orbusiness, and that the costumes, etc. of Mario, Luigi, Yoshi, and King Bowser Koopa
which are used by First Instance Defendant Company are similar to said shapes, andthat the use of the costumes, etc. by First Instance Defendant Company constitutes use
as indications of goods or business, thereby ruling that Article 2, paragraph (1), item(ii) of the Unfair Competition Prevention Act shall be applicable.
- A case in which the court held that First Instance Defendant Company is using thedomain names ("maricar.jp", "maricar.co.jp", "fuji-maricar.jp", and "maricar.com"),which are similar to "MARIO KART" and "マリカー", for the purpose of wrongful
gain, thereby ruling that Article 2, paragraph (1), item (xiii) of the Unfair Competition
Prevention Act shall be applicable.
Case type: Injunction, etc.
Result: Interlocutory judgment on the merits (The court recognized that there arelegitimate grounds for Plaintiff's claim against Defendants for compensation fordamages based on the unfair competition.)
References: Article 2, paragraph (1), items (ii) and (xiii) of the Unfair Competiti on
Prevention Act; Article 429, paragraph (1) of the Companies Act
Summary of the Judgment
1.

The claims made in the principal action of the present case by First InstancePlaintiff against First Instance Defendant Company include that [i] First Instance
Defendant Company's act of use, in business and as a trade name, of Defendant's
Mark 1 ("マリカー", "MariCar", "MARICAR", and "maricar"), which is similar toFirst Instance Plaintiff's indications of goods or business; namely, Plaintiff's
Character Indications (" マ リ オ カ ー ト ", " マ リ カ ー ") and the indication of"MARIO KART", falls under an act of unfair competition as prescribed in Article
2, paragraph (1), item (i) or (ii) of the Unfair Competition Prevention Act, [ii] aⅰseries of acts involving uploading, on the Internet websites, of photographs andvideos which include parts that are similar to Plaintiff's Representations (Mario,
Luigi, Yoshi, and King Bowser Koopa), which are First Instance Plaintiff's well known or famous indications of goods or business, and the act by employees ofwearing costumes of Mario, Luigi, Yoshi, and King Bowser Koopa, and the act ofplacing Mario's doll at a shop (hereinafter collectively referred to as "Advertising
Activity"), as well as the act of renting out the aforementioned costumes tocustomers (hereinafter referred to as "Rental Activity") all fall under an act of
unfair competition as prescribed in Article 2, paragraph (1), item (i) or (ii) of the
Unfair Competition Prevention Act, [iii] use of domain names ("maricar.jp","maricar.co.jp", "fuji-maricar.jp", and "maricar.com"; hereinafter referred to as"Domain Names"), which are similar to First Instance Plaintiff's specificindications of goods or business; namely, Plaintiff's Character Indications and theindication of "MARIO KART", falls under an act of unfair competition asprescribed in Article 2, paragraph (1), item (xiii) of the Unfair Competition
Prevention Act, and (iv) with regards to negligence of duties, the representative
director of First Instance Defendant Company acted in bad faith or with grossnegligence.

On the grounds of the above claims against First Instance

Defendants, First Instance Plaintiff sought for an injunction and compensation andthe like.
2.

In the prior instance judgment (Tokyo District Court 2017 (Wa) 6293;
judgment rendered on September 27, 2018), the court of prior instance held that
Plaintiff's Character Indication of "マリカー" is well-known in Japan, and that
Plaintiff's Representations are well-known in Japan and overseas; on that premise,the court of prior instance acknowledged that the following acts by First Instance
Defendant Company, either singularly or jointly with Related Groups; namely, theact of using Defendant's Mark 1 in business and as a trade name, the Advertising
Activity, the Rental Activity, and the act of using Domain Names, fall under an actof unfair competition as prescribed in Article 2, paragraph (1), item (i) or (xiii) of
the Unfair Competition Prevention Act.

However, the same court held that theact of using Defendant's Mark 1 in connection with consumers who do notunderstand Japanese does not fall under an act of unfair competition, and that useof Domain Names on websites which are written only in foreign languages does
not infringe on the business interests of First Instance Plaintiff.

Furthermore, thesame court determined that the representative director of First Instance DefendantCompany did not act in bad faith or with gross negligence, and approved theⅱclaims made by First Instance Plaintiff to the extent of an injunction against theuse of Defendant's Mark 1 and deletion of the same (except for such use inconnection with websites and leaflets written only in foreign languages), an
injunction against the use of Defendant's Mark 2, an injunction against the use of
Domain Names (except for such use in connection with websites written only inforeign languages), and to the extent of damages payable to First Instance
Defendant Company in the amount of 10,000,000 yen along with delinquency
charges, and dismissed other claims.
3.

In the judgment of the present case, the court rendered an interlocutory
judgment as follows.

With regards to the following acts by First Instance

Defendant Company, either singularly or jointly with Related Groups; namely, theact of using Defendant's Mark 1 in business and as a trade name, the Advertising
Activity, the Rental Activity, and the act of using Domain Names, the court
approved that said acts, including the parts which were denied in the prior instancejudgment, fall under acts of unfair competition as prescribed in Article 2,paragraph (1), item (ii) or (xiii) of the Unfair Competition Prevention Act and that
there was infringement of business interests as well.

Furthermore, the court

determined, with regards to negligence of duty, that the representative director ofFirst Instance Defendant Company acted in bad faith or with gross negligence andthat the same person is liable for compensation jointly with First Instance
Defendant's Company.
(1)

Evidence shows that the indication of "MARIO KART" is famous in Japanand overseas, and that the Plaintiff's Character Indication of "マリオカート"
is famous in Japan, respectively.
When similarity is determined in light of the actual circumstances oftransactions, which involve use of Defendant's Mark 1 in connection with thebusiness that includes rental of public road go-karts, Defendant's Mark 1-1 ("マリカー") is similar to Plaintiff's Character Indication of "マリオカート",and Defendant's Marks 1-2 to 1-4 ("MariCar", "MARICAR", and "maricar")are similar to the indication of "MARIO KART".

Since it can be said that theact by First Instance Defendant Company, either singularly or jointly withRelated Groups, of using Defendant's Mark 1, constitutes use of Defendant's
Mark 1 as an indication of goods or business, said act falls under an act of
unfair competition as prescribed in Article 2, paragraph (1), item (ii) of the
Unfair Competition Prevention Act and is in infringement of First InstancePlaintiff's business interests.
ⅲ

(2)Evidence shows that Plaintiff's Representations have become famous in
Japan and overseas, and that they are used in connection with the business that
includes rental of public road go-karts.

When similarity is determined in lightof such actual circumstances of specific transactions, it can be said that the
costumes of Mario, Luigi, Yoshi, and King Bowser Koopa, and the indicationsof persons wearing these costumes, and Mario's doll are similar to Plaintiff's
Representations, and it can also be said that use of them constitutes use as
indications of one's own goods or business, so that the act of using them falls
under an act of unfair competition as prescribed in Article 2, paragraph (1),item (ii) of the Unfair Competition Prevention Act, and is in infringement ofFirst Instance Plaintiff's business interests.
(3)

Plaintiff's Character Indication of " マ リ カ ー " and the indication of"MARIO KART" are similar to Domain Names.

Since it is acknowledgedthat First Instance Defendant Company is using Domain Names by taking
advantage of the high level of goodwill of Plaintiff's Character Indications andthe indication of "MARIO KART", which are well-known or famous, for the
purpose of illicitly increasing gain, the act of using Domain Names falls underan act of unfair competition as prescribed in Article 2, paragraph (1), item
(xiii) of the Unfair Competition Prevention Act, and is in infringement of First
Instance Plaintiff's business interests.
(1)

Although a director has the duty to prevent his/her company from engaging
in an act of unfair competition, the representative director of First Instance
Defendant Company violated such duty, and thus said person acted in bad faithor at least with gross negligence in this regard.

ⅳ

Judgment rendered on May 30, 20192018 (Ne) 10081 Case of appeal seeking injunction against act of unfair competition ,etc.
2018 (Ne) 10091 Case of counterclaim seeking confirmation of the non-existence ofthe right to seek an injunction against copyright infringement
Court of prior instance: Tokyo District Court (2017 (Wa) 6293 Case seeking
injunction against act of unfair competition, etc.)
Date of conclusion of oral argument: March 12, 2019
Interlocutory Judgment
Appellant/Appellee/Counter-Defendant (Plaintiff of First Instance)
Nintendo Co., Ltd.
(hereinafter referred to as "First Instance Plaintiff")
Appellee/Appellant/Counter-Defendant (Defendant of First Instance)
MARI Mobility Development Inc.
(hereinafter referred to as "First Instance Defendant")
Appellee (First Instance Defendant)Y(hereinafter referred to as "First Instance Defendant Y")
Main text
1.

The grounds, based on which First Instance Plaintiff seeks compensation fromFirst Instance Defendants due to violation of the Unfair Competition Prevention
Act, by First Instance Defendant Company and the shops indicated in the attached
List of Shops, for the act of using the marks listed in No. 1 in the List of
Defendant's Marks Attached to Prior Instance Judgment and the costumes and thedoll listed in No. 2 in the List of Defendant's Marks Attached to Prior Instance
Judgment, as well as the act of using the domain names indicated in the List of
Domain Names Attached to Prior Instance Judgment, are reasonable (except withregards to monetary amounts).

2.

The filing of a counterclaim is unlawful.
Facts and reasons
1

The abbreviations of terms and their meanings shall conform to the prior instancejudgment except for those added herein.

Exhibits of prior instance judgment shall bereferred to herein as "Attached to Prior Instance Judgment".
No. 1

Lawsuits filed by the parties

1. First Instance Plaintiff
Paragraphs 1, 2, and 5 to 7 in the main text of the prior instance judgment shallbe changed as follows.
(1)

First Instance Defendant Company shall not use the marks listed as 1 to 4 in
No. 1 in the List of Defendant's Marks Attached to Prior Instance Judgment at its
business facilities and for its business activities.

(2)

First Instance Defendant Company shall delete the marks of the preceding
paragraph from its business facilities, advertisement items, and go-karts as
described in the preceding paragraph.

(3)First Instance Defendant Company shall not use the domain names listed as 1
to 4 in the List of Domain Names Attached to Prior Instance Judgment.

(4)First Instance Defendant Company shall delete the registration of domainnames listed as 2 in the List of Domain Names Attached to Prior Instance
Judgment.

(5)

First Instance Defendants shall jointly pay to First Instance Plaintiff
50,000,000 yen as well as the money arising therefrom at the rate of 5% perannum for the period from March 31, 2018 until completion of payment (in the
court of this instance, First Instance Plaintiff expanded the damages, whichamounted to 10,000,000 yen in the prior instance, to 50,000,000 yen, in addition to
postponing the first day for calculation of damages to March 31, 2018).

2. First Instance Defendant Company(1)

In the prior instance judgment, the part in which First Instance DefendantCompany lost shall be revoked.

(2)

With regards to the above part, the claims made by First Instance Plaintiff
shall be dismissed.

(3)

The claims having been expanded by First Instance Plaintiff in the present
court shall be dismissed.

(4)First Instance Plaintiff shall confirm, with regards to the act by First Instance
Defendant Company of publicly transmitting the photographs or videos of persons
wearing the costumes listed as 1 to 4 in the attached List of Costumes, that First2

Instance Plaintiff does not have the right to seek an injunction against said act,
based on the right of reproduction and the right to transmit the public, for the
representations listed as 1 to 4 in the attached List of Counter-Defendant'sRepresentations.
No. 2Outline of the case

1. History of the case(1)

In the present case, First Instance Plaintiff asserted that [i] the act by First
Instance Defendant Company of using, in its business, Defendant's Mark 1, which
is similar to the Plaintiff's Character Indications (Plaintiff's Character Indication of"マリオカート" ["MARIO KART" written in Japanese] and Plaintiff's CharacterIndication of "マリカー" ["MARICAR" or "MARIKAR" written in Japanese]),which are First Instance Plaintiff's well-known or famous indications of goods orbusiness, as well as the act of using the same as its trade name fall under acts of
unfair competition as prescribed in Article 2, paragraph (1), item (i) or (ii) of the
Unfair Competition Prevention Act, [ii] the act by First Instance DefendantCompany of creating the Photographs and Videos (hereinafter referred to as"Creating Activity"), which contain parts that are similar to the Plaintiff's
Representations over which First Instance Plaintiff has copyright, and uploading
the same on the Internet websites (hereinafter referred to as "Uploading Activity")
fall under infringement of First Instance Plaintiff's copyright (right of reproduction
or adaptation right, right of automatic public transmission, and right to makeavailable for transmission), [iii] the advertising activity of the present case(hereinafter referred to as "Advertising Activity"; consisting of the Uploading
Activity, the act by employees of wearing costumes, and the act of placing a dollat the shop) of using Defendant's Mark 2, which is an indication of goods orbusiness that is similar to Plaintiff's Representations or Plaintiff's ThreeDimensional Figure, which are First Instance Plaintiff's well-known or famous
indications of goods or business, falls under an act of unfair competition asprescribed in Article 2, paragraph (1), item (i) or (ii) of the Unfair Competition
Prevention Act, [iv] the use of Domain Names which are similar to the Plaintiff's
Character Indications, which are First Instance Plaintiff's specific indications ofgoods or business, falls under an act of unfair competition as prescribed in Article
2, paragraph (1), item (xiii) of the Unfair Competition Prevention Act, and [v] theact of renting out Costumes, which are reproductions or adaptations of Plaintiff's
Representations, to customers (hereinafter referred to as "Rental Activity") falls
under infringement of First Instance Plaintiff's copyright (right of rental),3

respectively, and made the following claims against First Instance Defendants.
A. Claims against First Instance Defendant Company(A)

Pursuant to Article 3, paragraphs (1) and (2) of the Unfair Competition
Prevention Act, concerning the above [i], an injunction against the use of
Defendant's Mark 1 and the procedures for recording the deletion of the same andthe deletion of trade name registration, and concerning the above [iii], an
injunction against the use of Defendant's Mark 2 as well as deletion of
Photographs and Videos and disposal of data, and concerning the above [iv], an
injunction against the use of Domain Names and deletion of registration of
Domain Names 2 and 4.

(B)

Pursuant to Article 112, paragraphs (1) and (2) of the Copyright Act,
concerning the above [ii], an injunction against the reproduction or adaptation of
Plaintiff's Representations, automatic public transmission of reproductions or
adaptations, and making the same available for transmission, as well as deletion of
Photographs and Videos and disposal of data, and concerning the above [v], an
injunction against the Rental Activity.

B. Claims against First Instance Defendants
Against First Instance Defendant Company, pursuant to Article 4, Article 5,paragraph (3), items (i) and (iv) of the Unfair Competition Prevention Act or
Article 709 of the Civil Code and Article 114, paragraph (3) of the Copyrigh t Act,and against First Instance Defendant Y, pursuant to Article 429, paragraph (1) of
the Companies Act, as partial payment of compensation, joint payment of
10,000,000 yen and the delinquency charges arising therefrom at the rate of 5%
per annum as prescribed in the Civil Code for the period from March 18, 2017,
which is the day after the act of unlawful competition, until completion of
payment.
(2)

In the prior instance judgment, the court held as outlined below in A to G, andapproved the claims of the above (1) within the extent of an injunction against theuse of Defendant's Mark 1 and deletion of the same (except for that which pertains
to websites and leaflets which are written only in foreign languages), an injunction
against the use of Defendant's Mark 2, disposal of data of Videos, an injunction
against the use of Domain Names (except for the cases of use on websites which
are written only in foreign languages), and payment by First Instance DefendantCompany of 10,000,000 yen in damages and the delinquency charges arising
therefrom at the rate of 5% per annum for the period from March 31, 2018, whichis the last day of the act of unlawful competition, until completion of payment, and4

the court dismissed other claims.
A.

Concerning the use of Defendant's Mark 1 by First Instance DefendantCompany, it cannot be acknowledged that Plaintiff's Character Indication of "マリカー" was well-known among those who do not understand Japanese, so that theclaim for an injunction against the use of Defendant's Mark 1 on websites and inleaflets which are written only in foreign languages is groundless, but as for otheracts, they fall under acts of unfair competition as prescribed in Article 2,paragraph (1), item (i) of the Unfair Competition Prevention Act, so that the claim
for an injunction against the use and the claim for deletion are reasonable.

SinceFirst Instance Defendant Company changed its trade name, the claim forprocedures for recording the deletion of trade name registration is groundless.
B.

The Advertising Activity (provided, however, that acts pertaining to
Photograph 1 shall be excluded; when reference is hereinafter made to "Creating
Activity", "Uploading Activity", and "Advertising Activity", acts pertaining to
Photograph 1 shall be excluded therefrom) falls under an act of unfair competition
as prescribed in Article 2, paragraph (1), item (i) of the Unfair Competition
Prevention Act, so that the claim for an injunction against the use of Defendant's
Mark 2 is reasonable.

Since Photographs and Videos have already been deleted,the claim for deletion is groundless, and the data of Photographs can be used inother ways which do not constitute an act of unfair competition, so that the claim
for disposal of the same is groundless, but the claim for disposal of the data ofVideos is reasonable.
C.

The act of using Domain Names falls under an act of unfair competition asprescribed in Article 2, paragraph (1), item (xiii) of the Unfair Competition
Prevention Act, but the act of using Domain Names on websites which are written
only in foreign languages does not infringe on First Instance Plaintiff's businessinterests.

Also, First Instance Defendant Company has deleted registration of

Domain Name 4.

Accordingly, the claim for an injunction against the act ofusing Domain Names on websites which are written only in foreign languages isgroundless, but the other claim for an injunction against the use of Domain Names
is reasonable.

With regards to the claim for deletion of registration of Domain

Name 2, given that there are cases in which injunction may not be approved as
described above, said claim is groundless, and the claim for deletion ofregistration of Domain Name 4 is therefore groundless.
D.

Since there is not sufficient evidence to acknowledge the need for an
injunction, the claims for an injunction against reproduction or adaptation of5

Plaintiff's Representations as well as against automatic public transmission of
reproductions or adaptations and against making the same available fortransmission are groundless.
E.

The costumes bearing Defendant's Marks 2-2, 2-3, 2-5, 2-6, 2-8, and 2-10 are
the same as the Costumes.

Since the injunction against the use of Defendant's

Mark 2 pursuant to the Unfair Competition Prevention Act includes prohibition of
Rental Activity, there is no need to make a decision concerning the claim for an
injunction against Rental Activity based on copyright, which is in the relationshipof selective joinder with the aforementioned claim for an injunction (the costumes
bearing Defendant's Marks 2-1 to 2-10 may hereinafter be collectively referred toas "Costumes Bearing Defendant's Mark 2").
F.

With regards to First Instance Defendant Y, it cannot be acknowledged thatFirst Instance Defendant Y had performed its duties for First Instance DefendantCompany in bad faith or with gross negligence, and thus the claim made against
First Instance Defendant Y pursuant to Article 429, paragraph (1) of theCompanies Act is groundless.

G.

The claim of compensation against First Instance Defendant Company isreasonable with regards to the entire amount (10,000,000 yen).

Delinquency

charges shall arise from March 31, 2018, which is the final da y of the act of
unlawful competition.
(3)

With regards to the prior instance judgment, First Instance Plaintiff, who was
dissatisfied with the court's ruling concerning [i] the part in which the court
dismissed the claim for an injunction against the use of the Defendant's Mark 1 on
websites and leaflets which are written only in foreign languages as well as theclaim for deletion of Defendant's Mark 1 from websites and leaflets which are
written only in foreign languages, [ii] the part in which the court di smissed theclaim for an injunction against the use of Domain Names on websites which are
written only in foreign languages and the claim for deletion of registration of
Domain Name 2, and [iii] the part in which the court dismissed the claim forcompensation by First Instance Defendant Y, filed an appeal, in addition toincreasing the amount of damages from 10,000,000 yen to 50,000,000 yen andpostponing the date of calculation for delinquency charges to March 31, 2018.
Meanwhile, First Instance Defendant Company, who was dissatisfied with thepart in which it had lost, filed an appeal, in addition to filing a count erclaim
seeking confirmation as to First Instance Plaintiff having no right to seek an
injunction, pursuant to the right of reproduction and the right to transmit the6public for the reproductions listed as 1 to 4 in the attached List of CounterDefendant's Representations, against the act by First Instance Defendant Companyof publicly transmitting the photographs or videos of persons wearing thecostumes indicated in the attached List of Costumes, but First Instance Plaintiff
stated that it does not agree with the filing of the counterclaim.
Of the prior instance judgment, the following parts are not subject to theexamination by this court; namely, the part in which the court held that thecreation and uploading of Photograph 1 do not fall under acts of unfair
competition or infringement of copyright (right of reproduction, adaptation right,
right of automatic public transmission, right to make available for transmission),the part in which the court dismissed the claim for deletion of Defendant's Mark 1
from cars other than go-karts and from bicycles and light vehicles, the part inwhich the court dismissed the claim for procedures for recording the deletion ofregistration of First Instance Defendant Company's trade name, the part in which
the court dismissed the claim for deletion of Photographs and Videos and theclaim for disposal of data of Photographs, the part in which the court dismissed
the claim for deletion of registration of Domain Name 4, and the part in which thecourt dismissed the claim for an injunction against reproduction or adaptation of
Plaintiff's Representations, and against the automatic public transmission of
reproductions or adaptations, and against making the same available fortransmission.
2. Basic facts (facts over which the parties are not in dispute, and the facts which canbe acknowledged based on the evidence described later and the entire import ofthe oral argument)(1) Parties
A.

First Instance Plaintiff is a corporation whose business includes the
manufacture and sale of recreational goods, sporting goods, audio equipment, andvehicles, and the creation, manufacture, and sale of contents such as games, videos,
and music, and the planning, manufacture, and sale of character goods, andlicensing of intellectual property rights (Exhibit Ko 1).

B.

First Instance Defendant Company is a corporation whose business includes
purchase and sale, lease, and rental of cars, and it was founded on June 4, 2015
(Exhibit Ko 2).

C.

First Instance Defendant Y is the Representative Director of First Instance
Defendant (Exhibit Ko 2).

(2) Development and release by First Instance Plaintiff of the software games, "Mario
7

Kart" seriesA.

On August 27, 1992, First Instance Plaintiff released "Super Mario Kart" as asoftware game for a game console called Super FAMICOM, and during the period
from the release until April 28, 2017, sold a total of nine titles of software games
for the "Mario Kart" series (Exhibit Ko 7, Exhibits Ko 8-1 to 8-9).
"Mario Kart" is a game series in which characters such as "Mario", "Luigi","Yoshi", and "King Bowser Koopa" ride go-karts and drive various courses,
engaging in car races and the like (Exhibits Ko 8-1 to 8-9).

B.

Plaintiff's Representation of Mario, Plaintiff's Representation of Luigi,
Plaintiff's Representation of Yoshi, and Plaintiff's Representation of King Bowser
Koopa are illustrations of persons or animals, and are works of painting, overwhich First Instance Plaintiff has copyrights.

Plaintiff's Representations appear

in series of games of First Instance Plaintiff, such as the "Mario" series which
includes "Super Mario Brothers", and it can be said that Mario, Luigi, Yoshi, andKing Bowser Koopa, who are characters also appearing as go-kart drivers in the"Mario Kart" series, have been reproduced in their characteristics of expression as
persons or animals (Exhibit Ko 7, Exhibits Ko 8-1 to 8-9, Exhibits Ko 94-1 to 944).
(3) Rental business of public road go-karts, etc. by First Instance Defendant Company,
etc.
A.

First Instance Defendant Company has operated the Rental Business,consisting of rental of public road go-karts which can run public roads, including
the Rental Activity, and other businesses associated with the foregoing, since June4, 2015, which is the date of foundation, until June 23, 2016, if not earlier, whichis the day before the effective date of a partnership contract with Shinagawa
Kumiai, by using the shop name of "MariCAR" (Exhibit Ko 62-1, entire import ofthe oral argument).

B.

As per the attached List of Shops, there were [i] five shops; namely,
Shinagawa Shop 1, Shibuya Shop, Akihabara Shop 1, Osaka Shop, and Okinawa
Shop, which operate under the trade name of "MariCAR" (Exhibits Ko 143-1 to
143-5, hereinafter collectively referred to as "MariCAR Shops"), [ii] five shops;
namely, Shinagawa Shop 2, Akihabara Shop 2, Tokyo Bay BBQ Shop, Yokohama
Shop, and Kyoto Shop, which use the indication, "STREETKART", on theirwebsites and the like (Exhibits Ko 143-6 to 143-8, 143-10, 143-11), and Asakusa
Shop, which uses the indication, "SAMURAI", on its website and the like (Exhibit
Ko 143-9; Shinagawa Shop 2, Akihabara Shop 2, Tokyo Bay BBQ Shop,8

Yokohama Shop, Kyoto Shop, and Asakusa Shop are hereinafter collectively
referred to as "STREET KART Shops"), [iii] Fuji-Kawaguchiko Shop (Exhibit Ko
6-2, Exhibit Otsu 116), and [iv] Roppongi Shop, which number a total of 13 shops(the shops above are hereinafter collectively referred to as "Shops").
C.

The partnerships and corporations and the like which were involved in the
Rental Business pertaining to the claims made by First Instance Defendants are:
Shinagawa Kumiai (partnership agreement effective on June 24, 2016, dissolvedon December 20, 2017); Shinagawa Kanko LLP (partnership agreement effective
on December 20, 2017); Akihabara Kumiai (partnership agreement effective on
June 13, 2017); Okinawa Kumiai (partnership agreement effective on June 26,2017); Shinkiba Kart LLP (partnership agreement effective on June 19, 2017;
hereinafter referred to as "Shinkiba Kumiai"); Kabushiki Kaisha MariCAR Osaka(founded on October 14, 2016, hereinafter referred to as "MariCAR Osaka");
Kabushiki Kaisha PLAN-S (founded on June 8, 2016; hereinafter referred to as"PLAN-S"); Eco Kart LLC (founded on January 22, 2015; hereinafter referred toas "Eco Kart"); STREET KART LLC (hereinafter referred to as "STREET
KART"); and Samurai Kart Asakusa (Exhibits Ko 121-1 to 121-4, Exhibits Otsu
48-1 to 48-5, Exhibit Otsu 112, entire import of oral argument; these partnerships
and companies are hereinafter collectively referred to as "Related Groups").

(4) Use of Defendant's Mark 1, Defendant's Mark 2, and Domain Names by First
Instance Defendant Company, and at MariCAR Shops and Fuji-Kawaguchiko
Shop
A. First Instance Defendant Company(A)

Since its foundation on June 4, 2015 until March 21, 2018, First Instance
Defendant Company used the trade name, "Kabushiki Kaisha MariCAR",
which contains Defendant's Mark 1-1, but changed its trade name to MARI
Mobility Development Inc. on the 22nd of the same month (Exhibit Otsu 84).

(B)

At the time of February 23, 2017, First Instance Defendant Company used
Domain Name 2 to run Defendant Company's Site, and made multiple posts on
the same site of [i] indications which contain Defendant's Mark 1-1 and which
read, "MariCAR Halloween Event being held" [in Japanese], "MariCAR
Amazon store is officially open" [in Japanese], "MariCAR online store is
officially open on Yahoo! Japan" [in Japanese], and "Driving MariCAR onstreets makes you want to smile" [in Japanese], and [ii] the Logo, which is acombination of the letters, "MARICAR", which is the Defendant's Mark 1-3,
and of a person riding a go-kart, and [iii] Defendant's Mark 1-2 along with the9photograph of a public road go-kart with the letters, "MariCar.jp", whichcontain the same mark, indicated in yellow (Exhibit Ko 6-3).
Upon taking into consideration that, in the Logo, the figure part of a gokart and the letter part of Defendant's Mark 1-3 can be recognized in a clearly
distinctive manner, and that the letter part of Defendant's Mark 1-3 is easily
noticeable because of the use of letters, the letter part of Defendant's Mark 1-3
is the essential part in the mark, and since ".jp" in "MariCar.jp" lacks
distinctiveness or is not distinctive, the essential part of "MariCar.jp" is"MariCar".
B. MariCAR Shops(A) Shinagawa Shop 1
a. Use of Defendant's Mark 1 on websites(a)Shinagawa Shop 1 used Domain Name 1 to run Shinagawa Shop 1 Website 1,
and as of February 23, 2017, the same site had indications such as [i] "What's
MariCAR?" [in Japanese], "MariCAR is Japan's largest provider of rental & tour
service by public road go-karts" [in Japanese], and "Let's enjoy Japan's best publicroad go-kart, 'MariCAR'!

Please come and visit Japan's largest-scale MariCAR!"[in Japanese], which contained Defendant's Mark 1-1, and [ii] also indicated theLogo (Exhibit Ko 6-1).
(b)

Shinagawa Shop 1 also runs Shinagawa Shop 1 Website 2 by using Domain
Name 4.
As of August 10, 2017 and November 14 of the same year, Shinagawa Shop 1
Website 2 had indications such as [i] "We at MariCar is providing our service asusual.

MariCar is fully complied through local governing laws in Japan", and"We have all the optional gear to make you private or group karting a tailo redone", which contain Defendant's Mark 1-1, and [ii] indicated the Logo (Exhibit Ko
74, Exhibit Ko 102-1).
(c)After the prior instance judgment, Shinagawa Shop 1 Websites 1 and 2 nolonger have writings in Japanese, and these websites now consist of writings inforeign languages such as English and Chinese, but as of November 12, 2018 andNovember 29 of the same year, the Logo was indicated at the beginning (Exhibit
Ko 143-1, Exhibit Otsu 93-1, entire import of the oral argument).

b. Use of Defendant's Mark 1 in Leaflets
The Leaflets which were distributed at Shinagawa Shop 1 as of November 15,
2016 were available in two versions, Japanese and English, and the Japaneseversion indicated [i] "MariCAR is a provider of one-person public road go-karts
10rental & tour service, and you can drive it with your driver's license" [in Japanese],"MariCAR is an activity that requires a driver's license (AT driver's license OK)!"[in Japanese], and contained Defendant's Mark 1-1, and both the Japanese andEnglish versions had [ii] the Logo indicated in the upper left corner, and [iii] there
was an indication, "maricar.com", in the upper right corner (Exhibits Ko 3, 4).
Since ".com" of "maricar.com" lacks distinctiveness or is not very distinctive,the essential part of "maricar.com" is "maricar".
c. Use of Defendant's Mark 1 in Business Cards
At Shinagawa Shop 1, at the time of November 15, 2016, Business Cards onwhich the Logo was printed were distributed (Exhibits Ko 4, 57).
d. Rental Activity
Shinagawa Shop 1 has carried out Rental Activity since around January 11,
2016, if not earlier, until the present (Exhibits Ko 6-1, 6-4, Exhibit Ko 39, Exhibit
Ko 42-13, Exhibit Ko 43-13, Exhibit Ko 75-1, Exhibit Ko 105-1, Exhibits Ko 1065, 106-8, Exhibit Otsu 92-1, entire import of the oral argument).
e. Act of using Mario Doll (Defendant's Mark 2-11)
At Shinagawa Shop 1, from around June 4, 2016, if not earlier, until aroundFebruary 24, 2017, Mario Doll, which is about 120 cm tall, was placed near the
shop's entrance, with its back facing the entrance (Exhibits Ko 4, 84, Exhibits Ko
108-1, 108-2), but Mario Doll was removed by June 16 of the same year, if notearlier (entire import of the oral argument).
(B) Akihabara Shop 1
a. Use of Defendant's Mark 1 on websites(a)Akihabara Shop 1 used Domain Names 1 and 4 to run two websites, and at
the time of October 2, 2017, Akihabara Shop 1 Website 2 had indications
which are the same as the indications on Shinagawa Shop 1 Website 2, as
described in the above (A) a (b), and at the time of May 7, 2018, Akihabara
Shop 1 Websites 1 and 2 had the same indications (Exhibits Ko 132 -1, 132-2,
Exhibit Otsu 41-6).

(b)After the prior instance judgment, Akihabara Shop 1 Website 2 no longer
had writings in Japanese, as was the case with Shinagawa Shop 1 Website 2 of
the aforementioned (A) a (c), but at the time of October 10, 2018, and at thetime of November 12 and November 29 of the same year, the Logo wasindicated on Akihabara Shop 1 Website 2 (Exhibit Ko 143-2, Exhibit Ko 1441, Exhibit Otsu 93-2, entire import of the oral argument).

b. Rental Activity
11

At Akihabara Shop 1, Rental Activity is still carried out to this day (Exhibit
Ko 137, Exhibit Otsu 92-1, entire import of the oral argument).
(C) Shibuya Shopa. Use of Defendant's Mark 1 on website
Shibuya Shop used Domain Name 4 to run Shibuya Shop Website, and at thetime of October 2, 2017, the website had the same indications as Shinagawa Shop
1 Website 2 as described above in (A) a (b) (Exhibit Otsu 41-7).
After the prior instance judgment, Shibuya Shop Website no longer usedwritings in Japanese, as was the case with Shinagawa Shop 1 Website 2, as
described in the above (A) a (c), but as of November 12, 2018 and November 29of the same year, the Logo was indicated on Shibuya Shop Website (Exhibit Ko
143-3, Exhibit Otsu 41-7, Exhibit Otsu 93-3).
b. Rental Activity
At Shibuya Shop, Rental Activity is still carried out to this day (Exhibit Otsu
92-1, entire import of the oral argument).
(D) Osaka Shopa. Use of Defendant's Mark 1 on website
Osaka Shop used Domain Name 4 to run Osaka Shop Website, and at the timeof October 2, 2017, the website had the same indications as Shinagawa Shop 1
Website 2 as described in the above (A) a (b) (Exhibit Otsu 41-8).
After the prior instance judgment, Osaka Shop Website no longer usedwritings in Japanese, as was the case with Shinagawa Shop 1 Website 2, as
described in the above (A) a (c), but as of October 12, 2018, and as of November
12 and November 29 of the same year, the Logo was indicated on Osaka Shop
Website (Exhibit Ko 143-4, Exhibit Ko 144-3, Exhibit Otsu 93-4).
b. Rental Activity
At Osaka Shop, Rental Activity has been carried out since around May 27,
2017, if not earlier, until the present (Exhibit Ko 105-3, Exhibit Ko 106-7, Exhibit
Otsu 92-2, entire import of the oral argument).
(E) Okinawa Shopa.

Okinawa Shop used Domain Name 4 to run Okinawa Shop Website, and at thetime of October 2, 2017, the website had the same indications as Shinagawa Shop
1 Website 2, as described in the above (A) a (b) (Exhibit Otsu 41-9).
After the prior instance judgment, Okinawa Shop no longer had writings inJapanese, as was the case with Shinagawa Shop 1 Website 2, as described in theabove (A) a (c), but as of October 12, 2018, and as of November 12 and November1229 of the same year, the Logo was indicated on Okinawa Shop Website (Exhibit
Ko 143-5, Exhibit Ko 144-4, Exhibit Otsu 93-5).
b. Rental Activity
At Okinawa Shop, Rental Activity is still carried out to this day (Exhibit Ko145, Exhibit Otsu 92-3, entire import of the oral argument).
C. Fuji-Kawaguchiko Shop(A) Use of Defendant's Mark 1 on website
At the time of February 23, 2017, Fuji-Kawaguchiko Shop used Domain Name
3 to run Kawaguchiko Shop Website, and the website indicated [i] "What's
MariCAR?" [in Japanese], "MariCAR is Japan's largest provider of rental & tour
service by public road go-karts" [in Japanese], "Please come and visit Japan's
largest-scale MariCAR!" [in Japanese], and contained Defendant's Mark 1-1, and[ii] indicated the Logo (Exhibit Ko 6-2).
(B) Rental Activity
At Fuji-Kawaguchiko Shop, Rental Activity was carried out from aroundFebruary 23, 2017, if not earlier, until around November 15 of the same year
(Exhibit Ko 6-2, Exhibit Ko 102-2, Exhibit Ko 105-2, entire import of the oral
argument).
(C) Posting of Photographs 2 and 3
Photographs 2 and 3 were posted on Kawaguchiko Shop Website by February
23, 2017, if not earlier, but were deleted by June 16 of the same year, if not earlier(Exhibit Ko 6-2, entire import of the oral argument).
D. Use of Defendant's Mark 1 on public road go-karts
Some of the public road go-karts which are used at MariCAR Shops and FujiKawaguchiko Shop [i] indicated, in yellow or white letters, "MariCar.com" or"MariCar.jp", containing Defendant's Mark 1-2, or "fuji-maricar.jp", containing
Defendant's Mark 1-4, from around November 15, 2016 until around November 15,
2018, at the front and on the sides, and [ii] indicated the Logo from around November
15, 2016 until November 29, 2018 at the front and on the sides (Exhibit Ko 4,
Exhibits Ko 6-1 to 6-4, Exhibit Ko 74, Exhibit Ko 85-3, Exhibit Ko 102-1, Exhibits
Ko 105-1 to 105-3, Exhibits Ko 106-1, 106-6 to 106-8, Exhibits Ko 132-1, 132-2,
Exhibit Ko 134-2, Exhibits Ko 143-1 to 143-5, Exhibit Otsu 85, Exhibits Otsu 92-1,
92-3, Exhibits Otsu 93-1 to 93-3, entire import of the oral argument).
Since ".com" of "MariCar.com" lacks distinctiveness or is not very distinctive, theessential part of "MariCar.com" is "MariCar", and since ".jp" of "fuji-maricar.jp"
lacks distinctiveness or is not very distinctive, and "fuji" and "maricar" are connected13with "-", and there is no relevance in concept between "fuji" and "maricar", theessential part of "fuji-maricar.jp" is "maricar".
E. Act by employees of wearing costumes
The Rental Business provided a tour in which customers to whom public road gokarts are rented out drive around Tokyo by being led by a tour guide.

From around

June 4, 2015 until around June 16, 2017, employees wearing costumes of "Mario","Luigi", "Yoshi", and "King Bowser Koopa" served as guides and rode public roadgo-karts to lead the customers (Exhibit Ko 4, Exhibits Ko 42-13, 42-16, Exhibits Ko
43-13, 43-16, Exhibit Otsu 63, entire import of the oral argument).
(5) Posting of Videos
A.

The following videos were uploaded on YouTube, a video sharing site, on theInternet on the following dates, respectively: Video 1 on November 2, 2015;
Video 2 on November 3 of the same year; Videos 3 and 4 on November 4 of thesame year; Video 5 on November 22 of the same year; Video 6 on November 23 of
the same year, Video 7 on December 5 of the same year; Video 8 on December 22of the same year; Videos 9 and 10 on December 26 of the same year; Video 11 on
January 6, 2016; Video 12 on January 10 of the same year; Video 13 on January
11 of the same year; Video 14 on January 26 of the same year; Video 15 on
August 15 of the same year, and Video 16 on January 12, 2017 (entire import ofthe oral argument).
Of the Videos, Videos 1 to 12 and 16 were created by filming customers of theRental Business who wear costumes and ride public road go-karts to drive aroundTokyo, and Videos 13 to 15 were created by recording TV programs which werebroadcasted by featuring the Rental Business (Exhibits Ko 42-1 to 42-16, Exhibits
Ko 43-1 to 43-16).

B.

Videos were deleted from YouTube by June 16, 2017, if not earlier (entire
import of the oral argument).

(6) Acquisition, etc. of Domain Names
A.

First Instance Defendant Company was granted registration for Domain Name

2 by a domain name registrar on May 26, 2015, and was using Domain Name 2 on
Defendant Company Website, as described above in (4) (Exhibit Ko 6-3, Exhibit Ko
55-2, Exhibit Ko 209-1).
B.

Since June 17, 2015, First Instance Defendant Company had kept Domain

Name 4, but by January 31, 2018, if not earlier, transferred Domain Name 4 to a third
party (Exhibit Ko 55-4, Exhibits Ko 209-2, 209-3, Exhibit Otsu 56, entire import ofthe oral argument).
14

As described above in (4), Domain Name 4 is used on websites run by MariCAR
Shops, and even after Domain Name 4 was transferred to a third party, MariCAR
Shops continue to use Domain Name 4.
C.

Zent Co. was granted registration for Domain Name 1 on April 9, 2015, andfor Domain Name 3 on June 1, 2016, respectively by a domain name registrar(Exhibits Ko 55-1, 55-3, Exhibit Ko 209-1).
As described in above (4), Domain Name 1 was used at Shinagawa Shop 1 andAkihabara Shop 1, and Domain Name 3 was used at Fuji-Kawaguchiko Shop.

(7) Registered trademarks
With regards to the Trademark which consists of the standard characters, "マリカー", for which Zent Co. filed an application for trademark registration on May 13,
2015, First Instance Defendant Company received the right, which generated from thefiling of the trademark application, by transfer from Zent Co. by October 13 of thesame year, if not earlier, and holds the following trademark right for the Trademark tothis day (Exhibits Ko 66-1 to 66-3, Exhibit Otsu 21).
Registration No.: 5860284
Filing date: May 13, 2015
Registration date: June 24, 2016
Registered trademark: マリカー (standard characters)
Designated goods and services, and classification of goods and services:Class 39

Rental of vessels, airplanes, vehicles, automobiles, motorcycles, bicycles,

pushchairs, rickshaws, sleds, hand barrows, wagons, carriages, and carts , andprovision of information concerning the above
3. Points of contention(1)

Whether or not Rental Business is carried out at STREET KART Shops, andwhether or not costumes bearing Defendant's Mark 1 and Costumes Bearing
Defendant's Mark 2 are used (Issue 1).

(2)

Whether or not costumes bearing Defendant's Mark 1 and Costumes Bearing
Defendant's Mark 2 are currently used at Fuji-Kawaguchiko Shop and Roppongi
Shop (Issue 2).

(3)

Whether or not First Instance Company carried out Rental Business at Shopsfrom the time of its foundation on June 4, 2015 until the present, either singularly
or jointly with Related Groups, and engaged in the act of using Defendant's Mark
1, Creating Activity, Advertising Activity, the act of using Domain Names, andRental Activity (Issue 3).

15

(4)

Claims based on Unfair Competition Prevention Act

A. Matters related to Defendant's Mark 1(A)

Whether or not the act of using Defendant's Mark 1 in business and the act ofusing the same as a trade name fall under acts of unfair competition as prescribedin Article 2, paragraph (1), item (i) or (ii) of the Unfair Competition Prevention
Act (Issue 4).

(B)

Whether or not the defense of a registered trademark can be established (Issue
5).

(C)

Whether or not it is possible to file an injunction against the use and to
demand deletion, and if so, to what extent (Issue 6).

B. Matters related to Defendant's Mark 2(A)

Whether or not Advertising Activity and Rental Activity fall under acts of
unfair competition as prescribed in Article 2, paragraph (1), item (i) or (ii) of the
Unfair Competition Prevention Act (Issue 7).

(B)

Whether or not it is possible to file an injunction against the use and to
demand deletion, and if so, to what extent (Issue 8).

C. Matters related to Domain Names(A)

Whether or not the act of using Domain Names falls under an act of unfair
competition as prescribed in Article 2, paragraph (1), item (xiii) of the Unfair
Competition Prevention Act (Issue 9).

(B)

Whether or not it is possible to file an injunction against the use and to
demand deletion, and if so, to what extent (Issue 10).

(5)

Claims based on copyrightA.

Whether or not Photographs 2 and 3 and Videos fall under reproductions or
adaptations of Plaintiff's Representations, and whether or not Creating Activity
and Uploading Activity infringe on First Instance Plaintiff's right of reproduction,
adaptation right, right of automatic public transmission, and the right to makeavailable for transmission (Issue 11).

B.

Whether or not Costumes fall under reproductions or adaptations of Plaintiff's
Representations, and whether or not Rental Activity infringes on First InstancePlaintiff's right of rental (Issue 12).

(6)

Whether or not a claim for compensation may be made against First Instance
Defendant Y (Issue 13).

(7)

The amount of damages suffered by First Instance Plaintiff (Issue 14).

(8)

Whether or not it is possible to file a counterclaim (Issue 15).

16

(omitted)
No. 3

Judgment of this court

1. Issue 1 (Whether or not Rental Business is carried out at STREET KART Shops,
and whether or not costumes bearing Defendant's Mark 1 and Costumes Bearing
Defendant's Mark 2 are used.)(1) Basic facts
According to the evidence described later and the entire import of the oral
argument, the following facts can be acknowledged.
A. Circumstances shared by all STREET KART Shops(A)

On websites of STREET KART Shops, at the time of November 27, 2018,
there is a following indication: "Our each shop provide the original course(different from each other).

If you are the repeater and want to go anothercourse, try to visit another shop".

Each shop provides its original course.

If

you feel like taking a ride on a different course, how about contacting othershops?"

By clicking a button for "Other Shops" on the website, MariCAR

Shops; namely, Shinagawa Shop 1, Akihabara Shop 1, Shibuya Shop, Osaka Shop,and Okinawa Shop, as well as STREET KART Shops; namely, Shinagawa Shop 2,
Akihabara Shop 2, Tokyo Bay BBQ Shop, Yokohama Shop, Kyoto Shop, andAsakusa Shop, were introduced as "Other Shops" without any specific distinction
being made among the shops (Exhibits Ko 143-6 to 143-11, Exhibit Ko 155,
entire import of the oral argument).
(B)

Websites of MariCAR Shops and websites of STREET KART Shops aredifferent, with the former (websites of MariCAR Shops) having writings only inforeign languages and the latter (websites of STREET KART Shops) having
writings in Japanese as well, but basic designs and content of websites are
generally the same and closely resemble one another, and in both the websites of
MariCAR Shops and the websites of STREET KART Shops, there is an indication
concerning provision of a cosplaying service on a rental basis (Exhibits Ko 143 -1
to 143-11, Exhibits Otsu 93-1 to 93-5, Exhibit Otsu 113-1 to 113-6).

(C)

The logo which is mainly used in STREET KART Shops, other than Asakusa
Shop, is a version of the Logo with the part, "MARICAR", changed to"STREETKART" (Exhibits Ko 143-6 to 143-8, 143-10, 143-11, Exhibits Otsu
113-1 to 113-3, 113-5, 113-6; hereinafter referred to as "STREET KART Shop
Logo").

Also, the trademark holder for the figure of a go-kart, which iscommonly used in the Logo and STREET KART Shop Logo, is First Instance
Defendant Company (Exhibit Ko 214).
17

B. Akihabara Shop 2(A)

According to a report based on an on-site investigation carried out on October
17, 2018 (Exhibit Ko 157), towels and the like with the Logo placed thereon weresold at Akihabara Shop 2 on the same day, and the Logo was also placed on the
stickers given to customers, and there was also a rental service for costumes of
Mario, Luigi, Yoshi, and King Bowser Koopa.
Also, at a parking space near Akihabara Shop 2, there were parked go-karts
with the letters, "MariCar.com", indicated in white and yellow at the front and on
wing parts, and the Logo placed at the front.

(B)

On TripAdvisor, on November 20, 2018, a photograph of a customer wearing a
T-shirt and cap with the Logo placed thereon was posted (Exhibit Ko 216-1, entire
import of the oral argument).

(C)

Photographs posted by customers of Akihabara Shop 2 on November 20, 2018
and November 23 of the same year show persons wearing costumes of Mario andLuigi (Exhibits Ko 216-1, 216-2).

C. Shinagawa Shop 2(A)A customer of Shinagawa Shop 2 posted on TripAdvisor, on November 21,
2018, a photograph which shows customers wearing costumes of Luigi and Yoshi
and driving public road go-karts (Exhibit Ko 218-1).

(B)

A photograph posted on TripAdvisor on October 28, 2018 by a customer ofShinagawa Shop 2 shows a person wearing the costume of Mario and riding apublic road go-kart with the Logo placed thereon (Exhibit Ko 218-2).

(C)

A representative of Shinagawa Shop 2 by the name of "MariCARJAPAN"
responded to a question, which was posted on TripAdvisor on September 24, 2018
concerning Shinagawa Shop 2, to the effect that the service requested by theinquirer is available at Okinawa Shop of the same group (Exhibit Ko 210-8,
Exhibit Ko 218-3, entire import of the oral argument).

D. Tokyo Bay BBQ Shop(A)

On November 11, 2018 and December 28 of the same year, a customer ofTokyo Bay BBQ Shop posted a photograph on TripAdvisor showing customers
wearing costumes of Mario, Luigi, and Yoshi and driving public road go-karts(Exhibits Ko 219-1, 219-2).

(B)

In a photograph posted by a customer of Tokyo Bay BBQ Shop on April 19,
2018, one can confirm a public road go-kart with the letters, "maricar.com"
indicated in yellow on the sides and the same letters indicated in yellow at theback of the seat (Exhibit Ko 219-3).
18

(C)

In a photograph posted by a customer of Tokyo Bay BBQ Shop on February
16, 2018, one can confirm customers wearing costumes of Mario, Luigi, andYoshi and driving public road go-karts with the letters, "MariCar.com", indicatedin yellow and white at the front (Exhibit Ko 219-4).

E. Kyoto Shop(A)

A video posted by Kyoto Shop on Facebook for advertisement purposes shows
public road go-karts with the letters, "maricar.com", indicated in yellow on thesides, and the letters, "maricar", indicated in black at the back of the seat, and thevideo also shows public road go-karts with the Logo placed at the front and on thesides as well as persons wearing costumes of Mario and Luigi and driving publicroad go-karts (Exhibits Ko 200-1, 200-2).

(B)

On a website titled "Attractive Japan", the reservation page for Kyoto Shopshows photographs of persons wearing costumes of Luigi and Yoshi (Exhibit Ko
220).

(C)

Some of the public road go-karts used by Kyoto Shop have the letters,"maricar.com", indicated in white on the rear wing, with the Logo placed at thefront (Exhibit Ko 222).

(D)

There is a post on TripAdvisor about a customer of Osaka Shop who was given
a 50% discount for use at Kyoto Shop (Exhibit Ko 221, entire import of the oral
argument).

F. Yokohama Shop(A)

A customer of Yokohama Shop in August 2018 posted a photograph on thefifteenth of the same month on TripAdvisor showing the customer wearing thecostume of Mario and driving a public road go-kart (Exhibit Ko 223-1).

(B)

A representative of Yokohama Shop by the name of "MariCARJAPAN"
responded to a question which was posted on TripAdvisor on September 24, 2018
concerning Yokohama Shop, to the effect that the service requested by the inquirer
is available at Osaka Shop or Okinawa Shop of the same group (Exhibit Ko 21012, Exhibit Ko 223-2, entire import of the oral argument).

G. Asakusa Shop(A)

In a tweet posted by Asakusa Shop on August 27, 2017, there is a photographshowing that costumes of Mario, Luigi, and Yoshi are available for rental in as
many a number as that of other costumes (Exhibit Ko 158-3), and in the tweets
posted by Asakusa Shop on February 18, 2018 and September 27 of the same year,
there are photographs of persons wearing costumes of Mario, Luigi, Yoshi, andKing Bowser Koopa (Exhibits Ko 158-2, 158-4), and a tweet posted by Asakusa
19

Shop on February 3 of the same year shows a customer riding a public road go kart with the letters, "MariCar.com", indicated in yellow on the sides (Exhibit Ko
158-1, entire import of the oral argument).
(B)

In a video posted on YouTube by a customer of Asakusa Shop on March 7,
2018, a person wearing the costume of Mario and driving a public road go -kart isshown along with the indication of the letters, "Mario Kart" (Exhibits Ko 201-1,
201-2).

(C)

A photograph posted on TripAdvisor for introduction of Asakusa Shop showsa person wearing the costume of Mario and driving a public road go-kart (Exhibit
Ko 210-11).

(D)

On January 19, 2019, a question was posted on TripAdvisor by a person
considering the use of Asakusa Shop, asking whether "マリカー" and "侍カート"["SAMURAI KART" written in Japanese] are different companies, and a
representative of Asakusa Shop by the name of "MariCAR JAPAN" responded
that Samurai Kart is a name used for Asakusa Branch of the same group (Exhibit
Ko 210-11, Exhibit Ko 217-1, entire import of the oral argument).
Also, to a question posted on September 24, 2018 on TripAdvisor, theaforementioned representative of Asakusa Shop by the name of "MariCARJAPAN" responded that the service requested by the inquirer is available at Osaka
Shop and Okinawa Shop of the same group (Exhibit Ko 217-2).

(2) Judgment
A.

In light of the findings of the above (1) A (A) to (C), B (B), C (C), D (B) (C),E (A) (C) (D), F (B), and G (A) (D), it can be said that externally, STREET KART
Shops and MariCAR Shops use indications which suggest that both groups
constitute a single group as a whole, and in fact, First Instance Defendants
acknowledge that some of STREET KART Shops and MariCAR Shops(Shinagawa Shop 1, Shinagawa Shop 2, and Shibuya Shop, as well as Akihabara
Shop 1 and Akihabara Shop 2) have the same operators.

Given thesecircumstances, it can be presumed that STREET KART Shops operate Rental
Business in the same manner as MariCAR Shops.
In addition to the above, as per the finding of No. 2, 2 (4) B above, Rental
Activity is carried out at MariCAR Shops, and as per the findings of the above (1)B (A), C (A) (B), D (A) (C), E (A), F (A), and G (A) to (C), there are facts which
support that a rental service of Costumes was provided at all of STREET KART
Shops.

In light of these circumstances, it is acknowledged that Rental Activity

was carried out by STREET KART Shops as was the case with MariCAR Shops.
20

B.

From the finding of the above (1) B (A), it is acknowledged that the Logo wasplaced on the towels and the like which were sold at Akihabara Shop 2 as well ason the stickers which were distributed to customers.

Also, given the findings ofthe above (1) B (A), D (B) (C), E (A) (C), and G (A), it is acknowledged that [i]some of the public road go-karts used at Akihabara Shop 2 have the Logo and theletters, "MariCar.com", placed on the body, [ii] some of the public road go-karts
used at Asakusa Shop have the letters, "MariCar.com", placed on the body, [iii]some of the public road go-karts used at Tokyo Bay BBQ Shop have the letters,"maricar.com" and "MariCar.com", placed on the body, and [iv] some of the
public road go-karts used at Kyoto Shop have the Logo and the letters,"maricar.com", placed on the body.
In light of these facts, it is acknowledged that Defendant's Marks 1-2 to 1-4
were used at STREET KART Shops, except for Shinagawa Shop 2 and Yokohama
Shop, and considering the unified nature of STREET KART Shops and MariCAR
Shops as per the finding of the above A, it can be presumed that these marks wereused at Shinagawa Shop 2 and Yokohama Shop as well.
C.

First Instance Defendants assert that [i] Kyoto Shop has not carried out Rental
Activity since the start of its operation (Exhibit Otsu 118), [ii] the percentage ofuse of the Costumes at STREET KART Shops is neither asserted nor supported byevidence, [iii] it is unclear whether or not the public road go-karts parked at aparking space near Akihabara Shop 2 are the ones used at Akihabara Shop 2, [iv]the indication of the letters, "MariCar.com", on public road go-karts at Asakusa
Shop is small, so that it does not constitute use as an indication of goods orbusiness, and [v] sale and the like of goods do not constitute use as an indicationof goods or business.
However, in regards to the above [i], the statement of Exhibit Otsu 118 is notreliable in light of the circumstances; namely, as per the finding of the above (1) E(A), Kyoto Shop posted videos showing persons wearing costumes of Mario andLuigi, and as per the finding of the above (1) E (B), the photograph on thereservation page for Kyoto Shop shows persons wearing costumes of Mario, Luigi,
and Yoshi.
With regards to the above [ii], what is described below in 6 (2) D shall apply.
With regards to the above [iii], evidence (Exhibit Ko 157) shows that the
parking space where the public road go-karts were kept was near Akihabara Shop
2, and that the public road go-karts parked in the same parking space had theletters, "Street Kart Tour", which remind one of Akihabara Shop 2, which is a
21

STREET KART Shop, placed thereon.

Given the fact that First Instance

Defendants have not actively asserted or provided evidence to support that the
parking space used by Akihabara Shop 2 is located in a place different from thatshown in Exhibit Ko 157, it can be presumed that the public road go-karts whichwere kept at the parking space of Exhibit Ko 157 were those which were used at
Akihabara Shop 2.
With regards to the above [iv], evidence (Exhibit Ko 158-1) shows that it isacknowledged that the indication of the letters, "MariCar.com", on public road gokarts at Asakusa Shop are large enough to be clearly recognizable by customers
and other persons nearby when the go-karts are parked, so that First Instance
Defendants cannot assert that said indication, because of its size, does not fallunder an indication of goods or business.
With regard to the above [v], it can be acknowledged that the sale of towels
and the like and the distribution of stickers at Akihabara Shop 2 constitute part ofRental Business, so that it is acknowledged that the use of the indication therein
falls under the use as an indication of goods or business for said business.
Accordingly, the claims made by First Instance Defendants in the above [i] to[v] cannot be accepted.
2. Issue 2 (Whether or not costumes bearing Defendant's Mark 1 and Costumes
Bearing Defendant's Mark 2 are currently used at Fuji-Kawaguchiko Shop andRoppongi Shop)(1) Fuji-Kawaguchiko ShopA.

Evidence (Exhibit Ko 212-1) shows it is acknowledged that a photographtaken on August 31, 2018 of customers of Fuji-Kawaguchiko Shop wearing
costumes of Yoshi and King Bowser Koopa was posted on a tweet, so that it isacknowledged that at Fuji-Kawaguchiko Shop, the Rental Activity has continued
even after November 2017, as per the finding of No. 2, 2, C (B) above.

B.

Evidence (Exhibit Ko 102-2, Exhibits Ko 212-1, 212-2) shows that it isrespectively acknowledged, at the time of November 2017 and August 31, 2018,that some of the public road go-karts used at Fuji-Kawaguchiko Shop indicated"fuji-maricar.jp" and " 富 士 MARICAR" ["Fuji MARICAR" written using
Japanese] in white and black letters, at the front and on the sides, and that the
Facebook pages run by Fuji-Kawaguchiko Shop contained the indication of "富士MARICAR".

Also, as described in No. 2, 2 (4) D above, it is possible to extractthe "maricar" part, which is Defendant's Mark 1-4, from "fuji-maricar.jp" as theessential part, and since "富士 MARICAR" is written using kanji characters and22alphabet letters and there is no relevance in concept between " 富 士 " and"MARICAR", it is possible to extract the "MARICAR" part, which is Defendant's
Mark 1-3, as the essential part.

Accordingly, it is acknowledged that Fuji-

Kawaguchiko Shop uses Defendant's Marks 1-3 and 1-4.
C.

Exhibits Otsu 94 and 116 do not influence the findings of the above A and B.

(2) Roppongi Shop
A.

First Instance Defendants admits, in the Third Brief dated October 6, 2017 andsubmitted in the first instance, that Roppongi Shop was carrying out Rental
Business of public road go-karts by using the trade name of "MariCAR" as was thecase with "MariCAR Shop", and it can be presumed that the Rental Business,
which has the same business format as MariCAR Shops as per the finding of No. 2,
2 (4) B above, was carried out at Roppongi Shop as well.

Furthermore, evidence(Exhibits Ko 213-1 to 213-3, Exhibit Otsu 117) shows that it is acknowledged that
Rental Activity was carried out at Roppongi Shop even afterwards.
B.

Also, as shown below, Roppongi Shop Website (Exhibit Otsu 117) indicatedthe mark, which shows the letters, "maricar" and "Garage", in two tiers next to the"R" that is designed and written in a large size on the homepage.

Given suchconfigurations, it is possible to extract the letters, "maricar", which is Defendant's
Mark 1-4, from said mark as the essential part thereof, so that it can be said that
Roppongi Shop uses Defendant's Mark 1-4.

C.

First Instance Defendants assert that Roppongi Shop is currently closed.
Exhibit Otsu 92-1 indicates that when a notary public visited Roppongi Shop on
November 15, 2018, the shop was not in operation, but according to evidence(Exhibit Ko 165) and the entire import of the oral argument, it is acknowledgedthat Roppongi Shop was in operation from January 1, 2019 until January 3 of thesame year, so that it cannot be acknowledged that Roppongi Shop is closed.

3. Issue 3 (Whether or not First Instance Company carried out Rental Business at
Shops from the time of its foundation on June 4, 2015 until the present, either
singularly or jointly with Related Groups, and engaged in the act of using
Defendant's Mark 1, Creating Activity, Advertising Activity, the act of using
Domain Names, and Rental Activity)23

(1) Basic facts
According to the evidence described later and the entire import of the oral
argument, the following facts can be acknowledged in addition to the facts of No.
2, 2 above.
A.

First Instance Defendant Y, who is the representative of First Instance
Defendant Company, drove a public road go-kart wearing the costume of Mario topromote Rental Business when he was interviewed in an NHK TV program as theowner of Shinagawa Shop 1 around January 2016 (Exhibit Ko 42-13, Exhibit Ko
43-13, entire import of the oral argument).

B.

On February 1, 2016, First Instance Defendant Company prepared "Terms of
Use for MariCAR" ("Terms"; Exhibit Ko 5), which are written in Japanese and areapplied to the rental of public road go-karts.

The Terms of Use indicate that

customers renting public road go-karts borrow vehicles and accessories from First
Instance Defendant Company, which is defined as the business operator, and theTerms of Use were posted on the glass of the entrance of Shinagawa Shop 1 as ofNovember 15, 2016 (Exhibit Ko 4).
C.

On June 24, 2016, the effect of a partnership agreement for Shinagawa Kumiai
came into effect, and the partners of the partnership consisted of two companies;
namely, First Instance Defendant Company and X-Kart Kabushiki Kaisha(Exhibits Ko 62-1, 62-5).
First Instance Defendant Company opted out of Shinagawa Kumiai on October23, 2017, and later, Shinagawa Kumiai changed its name to Tokyo Kanko LLP on
December 6 of the same year, which was then dissolved on the 20th of the samemonth.

On the same day, the partnership of Shinagawa Kanko LLP came into

effect (Exhibit Ko 121-1, Exhibit Ko 122).
D.

On September 28, 2016, First Instance Defendant Company filed an
application for trademark registration for the Logo (Exhibit Otsu 29).

E.

On September 28, 2016, a website on travel information titled "Find Travel"
run by DeNA Co., Ltd. posted an article titled, "Did you know that you can rent a
Mario Kart and drive on a public road?

It's actually a casual and fun

experience!" [in Japanese], and in the article, introduced Shinagawa Shop 1 as"Shinagawa shop of MariCar Inc. (authorized dealer of X-Kart) as a shop where
one can rent real life Mario Karts" (Exhibit Ko 39, entire import of the oral
argument).
F.

Around October 4, 2016, First Instance Defendant Company advertised a job
opening for managers and the like for shops which carry out Rental Business.
24

Inthe advertisement, First Instance Defendant Company described the company's
operation as "Rental of one-person public road go-karts which can be driven witha driver's license" [in Japanese] and the like, and wrote "MariCar Inc., which
attracts attention in Japan and overseas as Japan's largest-scale rental & tour
service of public road go-karts, will open more shops in Tokyo in addition to
opening new shops in Osaka, Yamanashi, and Okinawa, and seeks 'managers' and'maintenance staff'" [in Japanese] and "Our company has established our businessduring the past year and has achieved significant results, and we are planning on
explosive expansion of business scale" [in Japanese], indicating the places of work
as "MariCar Inc. shops in Toyo, Okinawa, etc.; global working environment; OJTin Tokyo after employment" (Exhibit Ko 59-1, entire import of the oral argument).
G.

At Shinagawa Shop 1, as of November 15, 2016, the Terms of Use prepared byFirst Instance Defendant Company, as described in the above B, were posted, andBusiness Cards with First Instance Defendant Company's company name (MariCarInc.) indicated thereon were distributed, and the Business Cards indicated "Rentalof vehicles, sale of vehicles, customized maintenance, advertisi ng and planning"(Exhibits Ko 4, 57).
Also, at Shinagawa Shop 1, as of November 15, 2016, a receipt was issued in
First Instance Defendant Company's name for payment of rental fees pertaining toRental Business (Exhibits Ko 4, 57, 58).

H.

As of February 23, 2017, First Instance Defendant Company introduced its
company on its website as "MariCar Inc. provides integrated services of publicroad go-karts" [in Japanese], "Japan's largest-scale public road go-karts!
Rental/sale/maintenance and customization/advertising and promotion"[inJapanese], and listed "rental business/advertising and promotion business" and"sales business, and maintenance and land transportation business" as its
businesses.

Concerning "rental business", First Instance Defendant Company

wrote that it "has rental partners all across Japan" [in Japanese] and "provides
maintenance services for the rental business by using our strength of the ability to
manufacture and sell public road go-karts", and concerning "sales business", wrotethat it "sells public road go-karts at minimum guarantee prices by raisingawareness about public road go-karts through our rental business" [in Japanese](Exhibit Ko 6-3).
I.

On June 13, 2017, the effect of a partnership agreement for Akihabara Kumiai
came into effect, and the initial partners of Akihabara Kumiai consisted of the twocompanies, First Instance Defendant Company and X-Kart Kabushiki Kaisha, but
25

First Instance Defendant Company opted out of Akihabara Kumiai on October 24of the same year (Exhibit Ko 121-3, Exhibit Otsu 48-1).
J.

On June 19, 2017, a partnership agreement for Shinkiba Kumiai came into
effect, and the initial partners of Shinkiba Kumiai consisted of the two companies,
First Instance Defendant Company and X-Kart Kabushiki Kaisha, but First
Instance Defendant Company opted out of Shinkiba Kumiai on November 1 of thesame year (Exhibit Otsu 112).

K.

On June 26, 2017, a partnership agreement for Okinawa Kumiai came into
effect, and the initial partners of Okinawa Kumiai consisted of First Instance
Defendant Company and X-Kart Kabushiki Kaisha, but First Instance DefendantCompany opted out of Okinawa Kumiai on November 6 of the same year (Exhibit
Ko 121-4, Exhibit Otsu 48-4).

L.

Concerning MariCAR Shops and Fuji-Kawaguchiko Shop, as of February 23,
2017, Shinagawa Shop 1 Website 1 and Fuji-Kawaguchiko Shop Website had
generally the same design and descriptions, including the explanation about theRental Business (Exhibits Ko 6-1, 6-2).

Likewise, as of October 2, 2017,

Shinagawa Shop 1 Website 2, Akihabara Shop 1 Website 2, Shibuya Shop Website,
Osaka Shop Website, and Okinawa Shop Website were run by using Domain
Name 4, and they had generally the same descriptions (Exhibits Otsu 41-1 to 41-9).
Even after the prior instance judgment, websites of MariCAR Shops whichwere run by using Domain Name 4 have had generally the same designs anddescriptions (Exhibits Ko 143-1 to 143-5, Exhibits Otsu 93-1 to 93-5).
M.

On December 5, 2018, EcoKART, which First Instance Defendants claim to be
the business operator of Roppongi Shop, advertised a job opening by explaining
the company as a "group of companies providing the service of Japan's largest scale public road rental go-karts, operating in four shops in Tokyo alone, withother shops located in Osaka, Okinawa, and Fuji" [in Japanese] (Exhibit Ko 198).

N.

At the time of February 2019, Fuji-Kawaguchiko Shop wrote "Fuji
MARICAR" and "富士マリカー" ["FUJI MARICAR" written in Japanese] on its
Facebook, and posted previous posts indicating letters such as "Street Kart Tourthru Tokyo, mt.fuji. Osaka, Okinawa.", "#maricar", and "#マリカー" (Exhibits Ko
212-2, 212-3).

O.

As of December 26, 2018, the official website of Shibuya-Maruyama-chokai
indicated that First Instance Defendant Company is the business operator of
Shibuya Shop (Exhibit Ko 197).

(2)

On the premise of the above, the implementation of Rental Business by First
26

Instance Defendant Company from the time of its foundation until the present, andthe accompanying use of Defendant's Marks 1 and 2 shall be considered below.
A. From the time of foundation of First Instance Defendant Company until June 23,
2016
As described above in No. 2, 2 (3), First Instance Defendant Company
operated its Rental Business by using the trade name of "MariCAR" from June 4,2015 until June 23, 2016.
In addition to the above, in light of the circumstances such as that, as
described in the above (1) A, First Instance Defendant Y wore the costume of
Mario when he was interviewed in an NHK TV program as the owner ofShinagawa Shop 1 around January 2016, and Related Groups were founded aroundthe time indicated in No. 2, 2 (3) above, and the entire import of the oral argument,
it is acknowledged that First Instance Defendant Company, from the time of its
foundation until June 23 of the same year, operated the Shops which existed at thetime and engaged, in connection with the operation, in the act of using Defendant's
Mark 1, acts of creating and uploading Videos 1 to 14, and the act of using
Defendant's Mark 2, including Rental Activity.
B. After June 24, 2016
(A)

As described in No. 2, 2 (4) A above, even after June 24, 2016, First Instance
Defendant Company continued using the trade name, "MariCar Inc.", and used
Defendant's Mark 1-1, and indicated Defendant's Marks 1-1 and 1-2 on DefendantCompany Website which was run using Domain Name 2, and used Defendant's
Mark 1-3 by posting the Logo on Defendant Company Website.

(B)

Next, whether or not First Instance Defendant Company, either personally or
jointly with Related Groups, carried out Rental Business through Shops after June24, 2016, and by doing so, engaged in acts which First Instance Plaintiff claims
fall under an act of unfair competition and an act of copyright infringement shallbe considered further.

a.

As per the findings of No. 2, 2 (4) B and C above, and in No. 3, 1 and 2 above,
all Shops carry out the Rental Business consisting of Rental Activity and the like,which is similar to what was carried out by First Instance Defendant Company up
to June 23, 2016.

b.

At MariCAR Shop, the trade name of "MariCAR" used by First Instance
Defendant Company is still used as-is today, and even at other STREET KART
Shops, Fuji-Kawaguchiko Shop, and Roppongi Shop, as per the findings of theabove 1 and 2, there is a representative who calls him/herself "MariCARJAPAN",
27

and indications which contain the letters, "MariCar", "MARICAR", and "maricar"
are used, so that it can be said that the very trademark used by First Instance
Defendant Company or other similar indications are used in a unified manner at
the Shops.
c.

As per the finding of the above (1) L, the websites of MariCAR Shops are runwith generally the same content and by using Domain Name 4, and as per thefinding of the above 1, the design of and the descriptions on websites of MariCAR
Shops and STREET KART Shops are very similar.

As such, the websites use

indications which externally give the impression that MariCAR Shops and
STREET KART Shops collectively comprise a single group, and in fact, some of
MariCAR Shops and STREET KART Shops (Shinagawa Shop 1 and Shinagawa
Shop 2, and Shibuya Shop, Akihabara Shop 1, and Akihabara Shop 2) are operated
by the same operator, also as asserted by First Instance Defendants.
Also, in regards to Fuji-Kawaguchiko Shop and Roppongi Shop as well, as per
the findings of the above (1) M and N, the shops used indications as if they belong
to the same group as MariCAR Shops, and the content of websites of MariCAR
Shops and Fuji-Kawaguchiko Shop were generally the same as per the finding of
the above (1) L.
d.

As per the finding of the above (1), there were following circumstances evenafter June 24, 2016; namely, [i] First Instance Defendant Company described itself
by indicating on Defendant Company Website "MariCar Inc. provides integrated
services of public road go-karts" [in Japanese], and wrote that its operation
includes Rental Business which involves rental partners nationwide, and described
Rental Business as something which can be operated by "using our strength of theability to manufacture and sell public road go-karts" [in Japanese] (above (1) H),[ii] First Instance Defendant Company wrote in a job advertisement that it isplanning on explosively expanding the business scale, and indicated as if it is theemployer looking for managers and other employees to engage in the samebusiness at the shops to be newly opened, such as Osaka Shop, Fuji-Kawaguchiko
Shop, and Okinawa Shop (above (1) F), [iii] First Instance Defendant Company
launched four limited liability partnerships, which operate Rental Business, andbecame a partner of each partnership (above (1) C, I to K), [iv] Shinagawa Shop 1
posted the Terms of Use, under which First Instance Defendant Company is theoperating company, and there were Business Cards and receipts indicating First
Instance Defendant Company's company name (above (1) G), and [v] it wasrecognized that the business operator of Shinagawa Shop 1 and Shibuya Shop is28

First Instance Defendant Company (above (1) E and O).

Furthermore, as shownby evidence (Exhibit Ko 214, Exhibit Otsu 29) and the entire import of the oral
argument, it is acknowledged that First Instance Defendant Company filed
applications for trademark registration of the Logo (filing date: September 28,2016) and of a figure commonly found in the Logo and STREET KART Shop
Logo (filing date: March 4, 2017), and the same trademarks were used at
MariCAR Shops and STREET KART Shops, but it can be said that thesecircumstances strongly lead to the presumption that First Instance DefendantCompany was actively involved in the operation of Rental Business and was
deeply involved in the operation of the Shops even after said date.
e.

When what is described in the above a to d are considered together, it isacknowledged that First Instance Defendant Company carried out the Rental
Business, either personally or at least jointly with Related Groups, and engaged inan act of unfair competition, as per the finding below, either personally or jointlywith Related Groups even after June 24, 2016.

(3)

First Instance Defendants submit statements (Exhibits Otsu 106, 107) by First
Instance Defendant Y and the representative of MariCAR Osaka in connection
with the following claim to the effect that [i] that First Instance DefendantCompany has not carried out Rental Business since June 24, 2016, based on
factors such as that the sales by First Instance Defendant Company for the period
after January 1, 2017 do not include the sales pertaining to Rental Business,whereas most of the sales by Shinagawa Kumiai for the same period derive from
Rental Business (Exhibits Otsu 2, 6), and that Shinagawa Kumiai owns publicroad go-karts for use in Rental Business and hired part-time employees to engage
in the business (Exhibits Otsu 4-1 to 4-3, Exhibits Otsu 5-1 to 5-3), or that [ii]First Instance Defendant Company has not carried out Rental Business at least
since November 6, 2017, which is when First Instance Defendant Company opted
out from all partnerships and cut all ties with Related Groups.
However, facts such as the above sales and the hiring of part-time employees,
as claimed by First Instance Defendants, may also apply to the case where First
Instance Defendant Company operates Rental Business jointly with RelatedGroups, so that it cannot be said that these facts are incongruous with the findingof the above (2).
Also, even after November 6, 2017, which is when First Instance DefendantCompany opted out from all partnerships, it cannot be acknowledged that there
was any meaningful change to the circumstances on which the finding of the29

above (2) is based, so that the mere fact of having opted out from all partnerships
as a matter of form shall not overturn the finding of the above (2).
As for the aforementioned statements, they are not reliable given thecircumstances considered in the above (2), such as that First Instance DefendantCompany described itself as if it is the employer and looked for employees towork at a new shop which was to open in Osaka, so that the statements shall not
influence the finding of the above (2).
Accordingly, the above claim made by First Instance Defendants is groundless.
4. Issue 4 (Whether or not the act of using Defendant's Mark 1 in business and theact of using the same as a trade name fall under an act of unfair competition asprescribed in Article 2, paragraph (1), item (i) or (ii) of the Unfair Competition
Prevention Act)
(1) Consumers
First, Consumers shall be the subject of consideration.
A. Circumstances surrounding Rental Business, which was carried out by First
Instance Defendant Company, either singularly or jointly with Related Groups,
prior to the conclusion of oral argument of the prior instance judgment(A)

MariCAR Shops and Fuji-Kawaguchiko Shop have websites which are written
in Japanese, English, Chinese, French, and Korean, and all websites provide
description of the Rental Business and its fees, and explain the reservation process
involved in the use of public road go-karts, including confirmation of vacancy,
and the specific method of use.

The maps of the shops (all of which are locatedin Japan) were shown along with the direction to each shop from the nearest
station, among other information.

The website in Japanese indicated,"Unforgettable experience on public road go-karts", "MariCAR provides a rental
service of one-person public road go-karts, which can be driven with a driver's
license, and sightseeing tour on the go-karts", and "MariCAR offers a sightseeing
tour on one-person public road go-karts, which can be driven with an international
driver's license, to visitors to Japan. (omitted) Enjoy riding public road go -karts,"MariCAR", and create the greatest fun memory which is only available here!",among other writings, aimed at soliciting customers (Exhibits Ko 6-1 to 6-4,
Exhibits Otsu 41-1 to 41-9).
(B)

The Leaflets which were distributed at Shinagawa Shop 1 were printed inJapanese and English on both sides, and the parts written in Japanese indicatedfees and shops' locations and the like as well as the indication, "MariCAR is aprovider of one-person public road go-karts rental & tour service, and you can30

drive it with your driver's license" [in Japanese]", among other information(Exhibit Ko 3).
(C)

The questionnaire which customers of Rental Business were asked to fill out
was printed in Japanese and English on both sides, and contained items such aswhere the customer came from, how many times the customer has ridden
MariCAR, and how the customer learned about MariCAR (Exhibit Ko 4, Exhibits
Otsu 14-1 and 14-2, entire import of the oral argument).
According to the above questionnaire survey, many of the customers weretourists from foreign countries, and most of them were in the age range of 20 to 49
years old, and many of them were in the demographic of relatively young adults,
and there were more than a few Japanese customers as well (Exhibit Otsu 14-1).

(D)

Find Travel introduces, in Japanese, as an experience of "Sightseeing inTokyo", the description of Rental Business by Defendant Company, location of
Shinagawa Shop 1, business hours, and the map, along with indications such as"You may think that driving this go-kart requires a special skill, but here is good
news!

B.

Anyone with a driver's license can ride these go-karts!" (Exhibit Ko 39).

According to the finding of the above A, the Consumers consist of ordinary
people who want to drive public road go-karts as a sightseeing experience or the
like in Japan, and in particular, persons in the demographic of relatively young
adults, and as of the time prior to the conclusion of oral argument of the priorinstance judgment, it is acknowledged that consumers were not restricted toforeign tourists visiting Japan (foreign travelers, US military personnel in Japan,
embassy personnel, etc.), as claimed by First Instance Defendants, but that they
included Japanese as well.

C.

First Instance Defendants assert that after the prior instance judgment, all of
the Consumers consisted of foreign tourists visiting Japan who do not understandJapanese.
However, [i] evidence (Exhibits Ko 140 to 142) and the entire import of theoral argument show that, of the foreign tourists visiting Japan, as referred to byFirst Instance Defendants, it is acknowledged that a considerable number of those
who live in Japan are able to understand Japanese to a certain degree, and as for
those who do not live in Japan, since they are visiting Japan because they areinterested in Japan in some way, it is believed that, naturally, some of themunderstand Japanese.

Also, [ii] as described in the above 1 (1) A (B), STREETKART Shops have websites written in Japanese, and Shinagawa Shop 1, Shibuya
Shop, Akihabara Shop 1, Osaka Shop, and Fuji-Kawaguchiko Shop have websites
31

on which plans available at the shops are explained in Japanese (Exhibits Ko 1731 to 173-4, Exhibit Otsu 116).

Furthermore, [iii] by also taking into

consideration the result of the survey by First Instance Plaintiff (Exhibits Ko 145,
157, 222), it is acknowledged that the circumstances in which Japanese can use theShops still continue to exist even after the prior instance judgment.
Accordingly, based on the facts above, the aforementioned claim by First
Instance Defendants cannot be accepted, and it is acknowledged that, even after
the prior instance judgment, Consumers include persons other than the foreign
tourists visiting Japan who do not understand Japanese at all.
D.

Also, First Instance Defendants assert that the Consumers and consumers ofgames are different.
However, [i] "2017 CESA Ippan Seikatsusya Chosa Hokokusho" ["2017
Report on CESA Survey of Ordinary Citizens"] (Exhibit Ko 76) issued in March2017 by Computer Entertainment Supplier's Association (CESA) shows thatduring 2014 and 2016, the number of active users of home-use game consoles inJapan (persons who play with the target home-use game consoles) has hoveredaround 30,000,000 of which about 80% of the males are 20 years old or older, andabout 85% of the females are 20 years old or older, so that those in the range of 20
to 49 years old constitute a large percentage, [ii] in "2015 ESSENTIAL FACTSABOUT THE COMPUTER AND VIDEO GAME INDUSTRY" (Exhibit Ko 77)
published by the Entertainment Software Association, game users in the US
numbered 155,000,000 in 2014, with the average age being 35, and those aged 18
and older comprising 74%.

Given the foregoing, it is acknowledged that today,

the consumers who are interested in games are not limited to those who preferindoor activities, as claimed by First Instance Defendants, but that they are
considerably extensive, with the demographic of relatively young adults
comprising the majority.
Furthermore, given that the Consumers are ordinary people who want to ride
public road go-karts as a sight-seeing experience or the like, as per the finding of
the above B, and the age group of the actual customers is almost identical to theage group of the majority of consumers for games, and that, as per the rulingbelow in 6 (2) D, Rental Business was advertised through February 2017 byhighlighting the Rental Activity of renting costumes of Mario and other characters,
and that it is acknowledged that even today, Rental Activity holds an important
position in Rental Business, it is clear that the Consumers and the consumers
interested in games overlap to a considerable extent, and by also taking into
32

consideration the circumstance in which the parent population of the consumers
interested in games is significantly greater than the parent population of theConsumers, it can be said that the consumers interested in games should be
regarded as being the same as the Consumers.
E.

To sum up the above consideration, as asserted by First Instance Defendants, itis acknowledged that Consumers certainly consist of a large number of foreign
tourists visiting Japan, but that the Consumers also include Japanese nationals,
and that there is also a certain number of foreign nationals who understandJapanese.

Also, the Consumers and the consumers who are interested in games

can be regarded as the same.
(2) Well-knownness and fame of the Plaintiff's Character Indication and the indicationof "MARIO KART"
A. Basic facts(A)

On August 27, 1992, First Instance Plaintiff released "Super Mario Kart",
software for a game console called Super FAMICOM, as the first of the "Mario
Kart" series, followed by "Mario Kart 64", software for a game console called
Nintendo 64, on December 14, 1996, and "Mario Kart Advance", software for agame console called Game Boy Advance, on July 21, 2001, and "Mario Kart
Double Dash!!", software for a game console called Nintendo Game Cube, on
November 7, 2003, and "Mario Kart DS", software for a game console called
Nintendo DS, on December 8, 2005, and "Mario Kart Wii", software for a game
console called Wii, on April 10, 2008, and "Mario Kart 7", software for a game
console called Nintendo 3DS, on December 1, 2011, and "Mario Kart 8", software
for a game console called Wii U, on May 29, 2014, and "Mario Kart 8 Deluxe",
software for a game console called Nintendo Switch, on April 28, 2017 (Exhibit
Ko 7, Exhibits Ko 8-1 to 8-9).

(B)

The numbers of shipment titles for the above software games were generally as
follows as of December 31, 2016 (Exhibits Ko 7, 9, 10).
Title
Domestic
Domesticandaccumulated
international
total
accumulated total
Numberof Number of shipment
shipment titles titles
Super Mario Kart
3,820,000 copies 8,760,000 copies
Mario Kart 64

2,240,000 copies 9,870,000 copies

Mario Kart Advance●●● copies

33

5,910,000 copies

(C)Mario Kart Double Dash!!

●●● copies

Mario Kart DS

4,020,000 copies 23,540,000 copies

Mario Kart Wii

3,830,000 copies 35,260,000 copies

Mario Kart 7

2,720,000 copies 13,030,000 copies

Mario Kart 8

1,260,000 copies 8,260,000 copies(Total)●●●●● copies

6,870,000 copies

111,500,000 copies

Of the aforementioned software games, "Mario Kart DS" ranked 18th in the
Past Domestic Million Shipment Titles in "2016 CESA Games White Paper"
published by Computer Entertainment Supplier's Association (CESA) in July 2016,
and "Mario Kart Wii" and "Super Mario Kart" ranked 22nd and 23rd, and "Mario
Kart 7" ranked 44th.

Likewise, in the Past International Million Shipment Titles(a ranking of the accumulated total of the number of shipment titles in Japan andoverseas), "Mario Kart Wii" ranked 3rd, "Mario Kart DS" ranked 11th, "Mario
Kart 7" ranked 23rd, "Mario Kart 64" ranked 37th, and "Super Mario Kart" ranked
43rd (Exhibit Ko 9).
(D)"Super Mario Kart", which is the first game of the aforementioned software
games, ranked 1st in the popularity ranking of a magazine featuring games, for theperiod from September 1992, which is right after its release, until October of thesame year, and "Mario Kart 8", which is the eighth game, also ranked 1st in the
popularity ranking for the period from June 2014, which is right after its release,
until July of the same year, and was also introduced in an article on games in a
general magazine as "eighth game of the ‘Mario Kart’ series, which everyone has
played at least once" [in Japanese] (Exhibits Ko 11-2 to 11-5, Exhibits Ko 12-4,
12-6, Exhibit Ko 13-2).

(E)

For the period from May 2014, which is around the time of release of "Mario
Kart 8", which is the eighth game of the aforementioned software games, until
August of the same year, First Instance Plaintiff broadcasted TV commercials atleast 84 times through major terrestrial TV broadcasters, and the total number of
TV commercials broadcasted in Japan by First Insurance Plaintiff in connection
with the "Mario Kart" series was 583 times as of July 2015 (Exhibits Ko 14, 15).

(F)

When games of "Mario Kart" series were sold overseas, all titles used thewriting of "MARIOKART", and sometimes TV commercials were broadcasted
34

overseas (Exhibits Ko 8-1 to 8-5, Exhibit Ko 95-4, entire import of the oral
argument).
"SUPER MARIO KART" ranked 1st in the category of Software for HomeUse Game Consoles in the "Guinness World Records 2009 GAMER'S EDITION"
published in February 2009 (Exhibit Ko 147).

In the "Guinness World Records

2018 GAMER'S EDITION" published in July 2017, "MARIO KART" wasintroduced as the longest-lasting go-kart series and as a "legend" (Exhibit Ko 148).
(G)

Between 2007 and 2016, First Instance Plaintiff concluded license agreementsfor "Mario Kart" series with Tomy Company, Ltd., Bandai Namco Entertainment
Inc., Sun Art Corporation, McDonald's Company (Japan), Ltd., Mercedes-Benz
Japan Co., Ltd., Chubu Branch of Japan Highway Public Corporation, and Nagoya
Expressway Public Corporation, and these companies sold licensed products
related to "Mario Kart", such as toys, stationery, and arcade games, and used
Mario and other characters, who appear in the "Mario Kart" series, in TV
commercials for sales promotion activities and for announcing road closures onnational roads (Exhibits Ko 16-1-1 to 16-1-6, Exhibits Ko 16-2-1 to 16-2-3,
Exhibit Ko 16-3, Exhibits Ko 16-4-1, 16-4-2, Exhibit Ko 16-5, Exhibits Ko 16-6-1
to 16-6-7, entire import of the oral argument).

(H)

By December 13, 1996, if not earlier, which is when a magazine featuring
games and titled "Family Computer Magazine 64" was published, "マリカー" wasused as an abbreviation for "Mario Kart" in ways such as "A complete guide forfans waiting impatiently and standing ready for 'マリカー'" [in Japanese] and"Here is an exposit for all you need to know about 'マリカー' to play the game"[in Japanese].

Also, in a magazine featuring games and published on October 1,

2001 under the title, "Dengeki GB Advance", the abbreviation was used by way of"Considering the manner in which the games of 'マリカー' series have been soldso far, by gradually increasing the number of copies sold ..." [in Japanese], and ina magazine featuring games and published on November 1, 2003 under the title,"Dengeki Game Cube", the abbreviation was used by way of "The one-person
vehicle underwent a significant change in 'マリカーDD' by turning into a twoperson vehicle" [in Japanese] (Exhibits Ko 17 to 19).
(I)

Of the three cartoon works published between 2010 and 2016, "マリカー" wasused as an abbreviation for "Mario Kart" without any explanatory note being
required, and was used in dialogues such as "Training for マリカー ...", "I get ahigh score on マリカー each time I receive the house rent from those two ...","Unbelievably, I ended up doing 10 rounds of race on マリカー ...", and "That's
35

like playing the killer on マリカー!!" [all in Japanese] (Exhibits Ko 21-1, 21-2,
Exhibit Ko 22, Exhibits Ko 23-1, 23-2).
(J)

On Twitter, on June 3, 2015, which is the day before the foundation of First
Instance Defendant Company, at least 600 tweets were posted using "マリカー"
as an abbreviation for "Mario Kart" (Exhibit Ko 24).
In addition, on January 13, 2017, which is when the release of "Mario Kart 8
Deluxe" was announced, similar tweets increased to approximately 3,000 posts(Exhibit Ko 25).

(K)

In a TV program in which First Instance Defendant Y was interviewed andwhich was broadcasted on June 4, 2016, a talent who appeared on the program
said, "We all used to play with Mario Kart games and asked each other, 'Did you
play with マリカー?', 'Did you play with マリカー?'" [in Japanese] (Exhibits Ko
108-1 and 108-2).

(L)

Between February 23, 2017 and February 26 of the same year, during whichtime reports on the filing of the present lawsuit were broadcasted, multiple
unknown ordinary people posted tweets concerning First Instance DefendantCompany as follows: "The very name of the company is just a pure copy"; "Eventhe company name is 'マリカー', so I thought they had some kind of permission";"In any case, the company name in itself is an infringement, (omitted) and theymust obtain permission from Nintendo"; "Unbelievably, they call themselves 'マリ
カー' and they haven't obtained permission from Nintendo"; "I thought they wereoperating with the permission of Nintendo.

They weren't?

In that case, thecompany name itself is unacceptable"; "In a way it's incredible how they used 'マ
リカー' in their company name and still got away with various other things
without any permission"; and "They called themselves 'マリカー', rented out
Mario costumes to customers and let them drive around in go-karts on public roads
without the permission of Nintendo... That's simply out of question" [all inJapanese] (Exhibits Ko 81-1, 81-3 to 81-7, 81-9).
B.

First of all, upon considering about well-knownness and fame of Plaintiff's
Character Indication of " マ リ オ カ ー ト ", the following must be taken into
consideration; namely, [i] the accumulated total of domestic shipment titles forsoftware of "Mario Kart" series is approximately ●●●●●, and multiple games
from the same series appeared in the ranking of past domestic shipment titles andwere featured multiple times in magazines as popular games, [ii] a considerable
number of TV commercials about "Mario Kart" series have been broadcasted
multiple times, and [iii] concerning "Mario Kart" series, multiple licensed
36

products are sold and used in promotional sales activities and the like, including
products which have little relevance to games and which are related to automobile
sales and roads.

Given the foregoing, it is acknowledged that, as of May 13,

2015, which is when the application for registration of Trademark was filed,
Plaintiff's Character Indication of " マ リ オ カ ー ト " had become a "famous
indication of goods or business" (Article 2, paragraph (1), item (ii) of Unfair
Competition Prevention Act) in Japan as an indication of First Instance Plaintiff's
popular series of go-kart racing games, in which Mario and other characters
appear, and that this trend has continued to this day.
C. (A)

As for the indication of "MARIO KART", given the circumstances inwhich First Instance Plaintiff's indication of "マリオカート" was famous in Japanas described in the above B, and there being many cases of Plaintiff's CharacterIndication of "マリオカート" being shown together with indications of "MARIO
KART" and "MARIOKART" in Japan (Exhibits Ko 8-1 to 8-9, Exhibit Ko 11-4,
Exhibits Ko 16-1-2 to 16-1-5, Exhibit Ko 16-2-2, Exhibits Ko 16-4-1, 16-4-2,
Exhibits Ko 16-6-1 to 16-6-7), and "MARIO KART" being simple English words
which can be easily understood by anyone as an English translation of "マリオカー ト ", it is acknowledged that, by the aforementioned May 13, 2015, theindication of "MARIO KART" had become a "famous indication of goods orbusiness" in Japan as an indication of a popular series of go-kart racing games byFirst Instance Plaintiff, and that this trend has continued to this day.
(B)

Also, in light of the circumstances; namely, [i] the accumulated total ofdomestic and international shipment titles for the " マ リ オ カ ー ト (MARIO
KART)" series has numbered 111,500,000 copies as described above in A (B), [ii]the accumulated total of domestic and international shipment titles for "MARIOKART Wii", which became the greatest hit among the "マリオカート (MARIO
KART)" series and, with its 35,260,000 copies sold, ranked third in the Past
International Million Shipment Titles, [iii] " スーパーマリオカート (SUPERMARIO KART)" ranked 1st in the category of Software for Home-Use Game
Consoles in the Guinness World Records, and the "マリオカート (MARIO
KART)" series was introduced as a legendary game, and [iv] TV commercials of "マリオカート (MARIO KART)" series were sometimes broadcasted overseas, itis acknowledged that, as of the aforementioned May 13, 2015, the indic ation of"MARIO KART" had become a "famous indication of goods or business" evenamong consumers overseas who are interested in games, or in other words, theConsumers overseas (including foreign tourists visiting Japan as claimed by First
37

Instance Defendants; the same applies hereinafter), as an indication of First
Instance Plaintiff's popular series of go-kart racing games, and that this trend has
continued to this day.
(C)First Instance Defendants assert that the "number of shipment titles" andthe "number of copies sold" are different, and that even the number of shipment
titles constitutes a very small percentage from the perspective of ratio in terms of
the world population, which exceeds 7,000,000,000 so that the indication of"MARIO KART" is neither well-known nor famous.
However, it is unlikely that a very large quantity of products would be
supplied to the market without the demand for such products, and thus it isacknowledged that the number of shipment titles and the number of copies sold arecorrelative.

Also, since it is believed that consumers of home-use games are few

in number compared to the world population, and even the largest number of
shipment titles for individual software games totals approximately 80,000,000
copies (Exhibit Ko 9), the above claim by Defendant shall not influence thefinding of the above (B).
D.

The well-knownness of Plaintiff's Character Indication of "マリカー" shall beconsidered below.

Plaintiff's Character Indication of " マ リ カ ー " is not

something that was personally used by First Instance Plaintiff to refer to the"Mario Kart" series.

However, the following facts are acknowledged; namely,that [i] Plaintiff's Character Indication of " マ リ カ ー " came to be used inmagazines featuring games as an abbreviation for the software game, "Mario Kart"by around 1996, if not earlier, [ii] by around 2010, it was sometimes used in
cartoon works which have little relevance to games without any explanatory notebeing required, and [iii] on June 3, 2015, which is the day before the foundation ofFirst Instance Defendant Company, it is acknowledged that at least 600 tweets
were posted on that day alone, referring to "Mario Kart" by the abbreviation of " マ
リカー".

Even after the foundation of First Instance Defendant Company, atalent made a comment in a TV program about using " マ リ カ ー " as anabbreviation for "Mario Kart", which is First Instance Plaintiff's game series, andafter reports on the present lawsuit were broadcasted, multiple ordinary people
made posts showing surprise about the use of "マリカー", which is the company
name of First Instance Defendant Company and which refers to the "Mario Kart"
game series of First Instance Plaintiff, by First Instance Defendant Company
without obtaining permission from First Instance Plaintiff.
In light of the above facts, it is acknowledged that Plaintiff's Character38

Indication of "マリカー" was widely known among consumers who are interested
in games in Japan, or in other words, the Consumers in Japan, by around 2010, if
not earlier, as an indication of the "Mario Kart" series, which is a series of go-kart
racing games by First Instance Plaintiff.
E.

As described above, it is acknowledged that the indication of "MARIO KART"
was famous among Consumers in Japan and overseas, and the Plaintiff's CharacterIndication of "マリオカート" was famous among Consumers in Japan.

(3) Similarity between Plaintiff's Character Indication of "マリオカート" and theindication of "MARIO KART"A.

As described in the above (2), Plaintiff's Character Indication of "マリオカー
ト" and the indication of "MARIO KART" have become famous as an indicationof First Instance Plaintiff's popular series of go-kart racing games, in which Marioand other characters appear.
On the other hand, as per the findings of the above No. 2, 2 (4), and of No. 3, 1
and 2, Defendant's Mark 1 is used in the Rental Business, which consists of rental
and the like of public road go-karts.
Accordingly, upon determining similarity in the present case, it is reasonable
to take into consideration the actual circumstances of transactions as describedabove.

B. Plaintiff's Character Indication of "マリオカート" and Defendant's Mark 1-1 (マリカー)(A) Appearance
Plaintiff's Character Indication of "マリオカート" consists of six characters,
whereas Defendant's Mark 1-1 (マリカー) consists of four characters.
However, all of the four constituent characters of Defendant's Mark 1-1 arealso found in Plaintiff's Character Indication of "マリオカート", and the order ofthe characters is also the same.
Also, it can be understood that Plaintiff's Character Indication of "マリオカート" is a combination of "マリオ" ["Mario" written in Japanese] and "カート"["Cart" or "Kart" written in Japanese].

Defendant's Mark 1-1 is also a coined

word and is used in connection with public road go-karts, which are a type of
automobile, so that it can be understood that the word is a combination of "マリ"["Mari" written in Japanese] and "カー" ["Car" written in Japanese], which is an
English word for automobile.

As such, in regards to Plaintiff's CharacterIndication of "マリオカート" and Defendant's Mark 1-1, as described above, it isunderstood that the first half and the second half are respectively similar in the39

two marks, with the first half being "マリオ" and "マリ", and the second halfbeing "カート" and "カー".
Accordingly, it can be said that Plaintiff's Character Indication of "マリオカート" and Defendant's Mark 1-1 have a certain degree of similarity in appearance.
(B) Pronunciation
As for pronunciation, Plaintiff's Character Indication of "マリオカート" hasthe pronunciation consisting of six sounds of "ma-ri-o-ka-r-t", and Defendant's
Mark 1-1 produces the pronunciation consisting of four sounds of "ma-ri-ka-r".
The two marks share the sounds of "ma-ri", which tend to make an impression, atthe beginning of each word, in addition to sharing the sounds of "ka-r", so that it
can be said that the two marks have a certain degree of similarity in pronunciation.
(C) Concept
Plaintiff's Character Indication of "マリオカート" generates the concept of"Mario's kart" and the concept of First Instance Plaintiff's popular series of gokart racing games, as considered above in (2).

On the other hand, Defendant's

Mark 1-1 is well-known as an indication of the aforementioned game series,"Mario Kart", so that among the Consumers in Japan, Defendant's Mark 1-1
generates the impression of "Mario's car" and the same concept as Plaintiff's
Character Indication of "マ リ オ カ ー ト ", which is First Instance Plaintiff's
popular series of go-kart racing games.
(D)

Upon consideration as described above, Plaintiff's Character Indication of "マリオカート" and Defendant's Letter Indication 1-1 (マリカー) are similar interms of their relationship with the Consumers in Japan.

C. Similarity between the indication of "MARIO KART" and Defendant's Mark 1(A) Appearance
The indication of "MARIO KART" consists of nine alphabet letters and aspace, and Defendant's Marks 1-2 to 1-4 (MariCar, MARICAR, maricar) all
consist of seven alphabet letters.
Naturally, given the circumstances in which the indication of "MARIO
KART" may be shown successively as "MARIOKART", and may be shown incapital and small letters as "Mario Kart" and the like (Exhibits Ko 8-1 to 8-9,
Exhibit Ko 9), it cannot be said that there would be significant difference in terms
of presence or lack of a space and the use of capital or small letters.

Rather, theindication of "MARIO KART" and Defendant's Marks 1-2 to 1-4 share the six
letters of "MARI" and "AR", and the order of letters is also the same.
Also, as is the case with the above B (A), it is understood that the indication40

of "MARIO KART" and Defendant's Marks 1-2 to 1-4 (MariCar, MARICAR,
maricar) are combinations of "MARIO" and "KART", "Mari" and "Car", "MARI"and "CAR", and "mari" and "car", respectively, so that the two marks have
similarity in appearance with regards to the first half and the second half,
respectively.
Accordingly, it can be said that the indication of "MARIO KART" andDefendant's Marks 1-2 to 1-4 (MariCar, MARICAR, maricar) have a certain
degree of similarity in appearance.
(B) Pronunciation
As per the consideration that the indication of "MARIO KART" produces thepronunciation consisting of sounds of "ma-ri-o-ka-r-t", and Defendant's Marks 12 to 1-4 produce the pronunciation consisting of sounds of "ma-ri-ka-r", it can besaid that the two marks have a certain degree of similarity in pronunciation, as
considered above in B(B).
(C) Concepta.

The indication of "MARIO KART" generates the concept of "Mario's kart" andthe concept of First Instance Plaintiff's popular series of go-kart racing games.
On the other hand, with regards to Defendant's Marks 1-2 to 1-4, as is
described above in B (C), "マリカー" is well-known as an indication of theaforementioned game series "マリオカート" in terms of its relationship with theConsumers in Japan.

Accordingly, in addition to the concept of "Mario's car",the marks also generate the concept of First Instance Plaintiff's popular series of
go-kart racing games, and they generate the same concept as the indication of"MARIO KART".
b.

Next, how the marks are related to the Consumers overseas shall be consideredbelow.

Given the circumstances in which, [i] as described in the above A,

considering that Defendant's Marks 1-2 to 1-4 are all used for the Rental Business,
which is a rental business of public road go-karts, it is interpreted that they are
combinations of "Mari" and "Car", "MARI" and "CAR", and "mari" and "car",
respectively, and [ii] the indication of "MARIO KART" is famous in Japan andoverseas as indications of a go-kart racing game in which Mario and othercharacters appear, and [iii] the orders of the letters in "Mari", "MARI", and "mari"
are the same as the order of the letters in "MARIO", and the only difference is thepresence or lack of "O" at the end, it is acknowledged that Consumers overseas
coming into contact with Defendant's Marks 1-2 to 1-4, which are used for Rental
Business, conjure the concept of "MARIO" from "Mari", "MARI", and "mari", and41

that Defendant's Marks 1-2 to 1-4 generate the concept of "Mario's car".
Furthermore, considering that the indication of "MARIO KART" generates theconcept of "Mario's kart", and the word, "car", is a broader concept that includes
the word, "kart", it can be said that the indication of "MARIO KART" andDefendant's Marks 1-2 to 1-4 (MariCar, MARICAR, maricar) are similar inconcept in terms of how they are related to Consumers overseas as well.
(D)

From what is considered above, the indication of "MARIO KART" andDefendant's Marks 1-2 to 1-4 are similar in terms of how they are related to all
Consumers in Japan and overseas.

D.

In the questionnaire of Exhibit Otsu 54, First Instance Defendants assert thatthe number of persons who conjured First Instance Plaintiff's video games from
Defendant's Mark 1 remained small, but the questionnaire is premised on theactual circumstances of transactions, which include Defendant's Mark 1 being
used in connection with Rental Business, and the questionnaire does not address
whether or not Plaintiff's Character Indication of " マ リ オ カ ー ト " and theindication of "MARIO KART" are similar to Defendant's Mark 1, so that the resultof the questionnaire shall not influence the determination of the above B and C.

(4) Summary
As per the consideration above, Plaintiff's Character Indication of "マリオカート" is famous and is similar to Defendant's Mark 1-1 in terms of how it is related to theConsumers in Japan, who are consumers of Defendant's Mark 1-1, and the indicationof "MARIO KART" is famous and is similar to Defendant's Marks 1-2 to 1-4 in termsof how it is related to the Consumers in Japan and overseas, who are consumers of
Defendant's Marks 1-2 to 1-4.
Also, it can be said that the act of using Defendant's Mark 1, which is carried out
by First Instance Defendant Company, either singularly or jointly with RelatedGroups, as per the findings of No. 2, 2 (4) and No. 3, 1 to 3 above, constitutes the useof Defendant's Mark 1 as an indication for the service of its Rental Business.
Article 2, paragraph (1), item (ii) of the Unfair Competition Prevention Act wasestablished for the protection of famous indications from free riding and dilution, andthe risk of confusion is not a requirement under this Article.

Accordingly, thecircumstances in which the presence of the fine print as asserted by First Instance
Defendants and the small percentage as to the use of Costumes (provided, however,that the decision as to not being able to accept the claim by First Instance Defendants
regarding this point is as described later in 6 (2) D) shall not in any way prevent the
court from determining that there is an act of unfair competition.
42

Accordingly, without having to consider other points, the act by First Instance
Defendant Company of using Defendant's Mark 1, as per the findings of theaforementioned No. 2, 2 (4) and No. 3, 1 to 3, either personally or jointly with RelatedGroups, falls under an act of unfair competition, including the use of the mark on
websites and the like which are written only in foreign languages.
5. Issue 5 (Whether or not the defense of a registered trademark can be establishe d)First Instance Defendants assert that First Instance Defendant Company owns theTrademark which consists of the standard characters, "マリカー", and that it is duly
authorized to use the mark of "マリカー", so that even if the act of using Defendant's
Mark 1 falls under an act of unfair competition, the demand for an injunction against
such use or the demand for compensation due to such use should not be approved.
However, the application for registration of the Trademark was filed on May 13,
2015, and as described above in 4 (2), Plaintiff's Character Indication of "マリオカー
ト" and the indication of "MARIO KART" had become famous in Japan by that time,and Plaintiff's Character Indication of "マリカー" had also become well-known
among Consumers in Japan as an indication of "Mario Kart", so that, as describedlater in 8, it is acknowledged that First Instance Defendant Y, who is therepresentative of First Instance Defendant Company, was aware of this fact.
In addition, when the following circumstances are taken into consideration;
namely, [i] First Instance Defendant Company had purposefully used "MariCar Inc."
as its first trade name at the time of its foundation, [ii] the Leaflets which were
distributed at Shinagawa Shop 1 at the time of November 15, 2016 indicated, "WearMario's costume to ride the go-kart, and enjoy real life MariKarting!" [in Japanese](Exhibits Ko 3, 4), [iii] at the time of August 12, 2016, Shinagawa Shop 1 Website 1
indicated "Ride with everyone in cosplay costumes, and it will be twice as fun in reallife MariKarting" [in Japanese] along with a photograph of a person wearing Mario's
costume, and at the time of February 23, 2017, Shinagawa Shop 1 Website 1 indicated,"Ride with everyone in cosplay costumes, and it will be twice as fun in real life
MariKarting" [in Japanese] (Exhibit Ko 6-1, Exhibit Ko 35), [iv] at the time of
February 23, 2017, Kawaguchiko Shop Website indicated, "Ride in the cosplay
costume of Super Mario, and it will really be like real life Mario Karting!!" [inJapanese] (Exhibit Ko 6-2), and [v] as per the finding of 6 below, there wasAdvertising Activity, in which the costume of Defendant's Mark 2 resembling thePlaintiff's Indication, which is First Instance Plaintiff's famous indication of goods orbusiness, was used, and there was Rental Activity, in which the Costumes were used,
and in particular, in Video 1 (Exhibit Ko 42-1, Exhibit Ko 43-1) which was uploaded43

on November 2, 2015, at the time point of 0:05, there was a voice recording of"MARIOKART" in English, and the sound of the voice was accompanied with aJapanese subtitle of "マリオカート", it is presumed that First Instance DefendantCompany acquired from Zent Co. the right for the Trademark with the intention ofillicitly using the goodwill of the well-known or famous Plaintiff's CharacterIndication and the indication of "MARIO KART".
Accordingly, it should be said that First Instance Defendant Company shall not beallowed to assert against First Instance Plaintiff that First Instance DefendantCompany has the right for the Trademark, because such claim constitutes abuse ofright, and thus the above claim by First Instance Defendants is groundless.
First Instance Defendants assert that Plaintiff's Character Indication of "マリカー" is not well-known among foreign tourists visiting Japan, who are the Consumers, butaccording to what has been considered so far, the Consumers are not limited toforeign tourists visiting Japan, so that the claim by First Instance Defendants lacks its
premise and cannot be accepted.
6. Issue 7 (Whether or not Advertising Activity and Rental Activity fall under acts of
unfair competition as prescribed in Article 2, paragraph (1), item (i) or (ii) of the
Unfair Competition Prevention Act)
(1) Whether Plaintiff's Representations are famous
A. Basic facts(A)

Plaintiff's Representations (Plaintiff's Representation of Mario, Plaintiff's
Representation of Luigi, Plaintiff's Representation of Yoshi, and Plaintiff's
Representation of King Bowser Koopa) are illustrations of persons or animals.

It

can be said that Plaintiff's Representations represent the characteristics ofexpression, as persons or animals, of "Mario", "Luigi", "Yoshi", and "King
Bowser Koopa", who are characters appearing in the "Mario" series and the like,which constitute a series of games created by First Instance Plaintiff, including"Super Mario Brothers".
(B)

Mario is the main character in "Mario Brothers", which is the software gamereleased by First Instance Plaintiff on September 9, 1983.

Starting with "DonkyKong", which is an arcade game released in 1981, First Instance Plaintiff
introduced many games of the "Mario" series, including "Super Mario Brothers"
which became a big hit worldwide, as well as other games in which "Mario"
appears, and the accumulated total worldwide numbered at least 320,000,000
copies at the time of August 2016 (Exhibits Ko 9, 45, 46, 48, Exhibits Ko 94 -1 to
94-10, Exhibit Otsu 35).
44

In addition, in the "2016 CESA Games White Paper" published by ComputerEntertainment Supplier's Association (CESA) in July 2016, the following games
from the aforementioned "Mario" series appeared in the ranking.

In the categoryof Past Domestic Million Shipment Titles, "Super Mario Brothers" ranked 1st(6,810,000 copies), "New Super Mario Brothers" ranked 2nd (6,490,000 copies),"New Super Mario Brothers Wii" ranked 11th (4,670,000 copies), "Super MarioLand" ranked 15th (4,190,000 copies), "Super Mario Brothers 3" ranked 21st
(3,840,000 copies), "Super Mario World" ranked 30th (3,550,000 copies), "Super
Mario Land 2: 6 Golden Coins" ranked 45th (2,700,000 copies), and "Super MarioBrothers 2 [rewritten on DiskWriter]" ranked 48th (2,650,000 copies) (Exhibit Ko
9).
Similarly, in the Past International Million Shipment Titles, "Super MarioBrothers" ranked 2nd (40,240,000 copies), "New Super Mario Brothers" ranked
5th (30,720,000 copies), "New Super Mario Brothers Wii" ranked 7th (28,460,000
copies), "Super Mario World" ranked 14th (20,610,000 copies), "Super MarioLand" ranked 16th (18,140,000 copies), "Super Mario Brothers 3" ranked 18th
(17,280,000 copies), "Super Mario Galaxy" ranked 25th (12,130,000 copies),"Super Mario 64" ranked 27th (11,910,000 copies), and "Super Mario Land 2: 6
Golden Coins", "Super Mario 64 DS", "Super Mario 3D Land", "Super Mario
Collection", and "New Super Mario Brothers 2" ranked 31st to 35th (11,180,000
copies, 11,010,000 copies, 10,630,000 copies, 10,550,000 copies, and 10,040,000
copies, respectively), "Mario Party DS" ranked 39th (9,310,000 copies), and"Mario Party 8" ranked 42nd (8,850,000 copies) (Exhibit Ko 9).
(C)

Mario ranked 1st in the "Top 50 Video Game Characters of All Time" in the"Guinness World Records" published around February 2011 (Exhibit Ko 48).

(D)

In the "Mario" series, "Luigi" began appearing since "Mario Brothers", which
was released on September 9, 1983, "King Bowser Koopa" began appearing since"Super Mario Brothers", which was released on September 13, 1985, and "Yoshi"
began appearing since "Super Mario World", which was released on November 21,
1990 (Exhibit Ko 45).
Also, as a game in which "Luigi" plays the main character, "Luigi's Mansion"
was released on September 14, 2001, and "Luigi's Mansion 2" was released on
March 20, 2013.

Of the two games, "Luigi's Mansion 2" ranked 173rd in the

aforementioned Past Domestic Million Shipment Titles (1,180,000 copies), andranked 96th in the Past International Shipment Titles (4,750,000 copies) (Exhibits
Ko 9, 45)45

As a game in which "Yoshi" plays the main character, "Super Mario Yoshi's
Island" was released on August 5, 1995, and the game ranked 90th in the
aforementioned Past Domestic Million Shipment Titles (1,770,000 copies), andranked 108th in the Past International Shipment Titles (4,120,000 copies)(Exhibits Ko 9, 45).
(E)

At the closing ceremony of the Rio Olympics held in August 2016, Prime
Minister Shinzo Abe made an appearance wearing Mario's costume to promote theTokyo Olympics (Exhibits Ko 46, 47).
Also, in the "Japan Merchandising Rights Association Award for 2018", which
took place in December 2018, "Super Mario" won the award in "Global Category",
which the association gives in honorable recognition of "organizations andindividuals who carried out policy measures to promote attractive forces forcustomers in Japan and overseas by use of Japan-made characters" (Exhibits Ko
184, 205).

(F)"Yoshi" ranked 21st in the aforementioned "Top 50 Video Game Characters of
All Time", which was announced by "Guinness World Records" (Exhibit Ko 48).
Also, "King Bowser Koopa" ranked 1st in the "Top 50 Video Game Villains of
All Time", which was announced by "Guinness World Records" around January
2013 (Exhibit Ko 49).

(G)

The shapes of "Mario", "Luigi", and "King Bowser Koopa" have somewhatchanged from the time of their first appearances until the present, and dependingon the games in which they appear, their shapes may be different from the shapesof the Plaintiff's Representation of Mario, Plaintiff's Representation of Luigi, andPlaintiff's Representation of King Bowser Koopa of the present suit.

However,with regards to the Plaintiff's Representation of Mario, Plaintiff's Representationof Luigi, and Plaintiff's Representation of King Bowser Koopa, the shapes having
completely the same or almost the same characteristics as the persons or animals
described in (2) A (A), (B), and (D) below have been continuously used over theyears as the representative shapes of the characters, "Mario", "Luigi", and "King
Bowser Koopa", in game screens and packages of the games, including the
aforementioned "Super Mario Kart", which was released on August 27, 1992 as
described above, as well as in books and magazine articles featuring said games,
and in TV commercials featuring said games and having been broadcasted inJapan and overseas.
As for "Yoshi", its shape has not changed significantly since its first
appearance in "Super Mario World", which was released on November 21, 1990 as
46

described above, and the shape which has the same or almost the samecharacteristics as those of Plaintiff's Representation of Yoshi, as an animal, as
described later in (2) A (C), has been used repeatedly over the years in games andthe like as the shape of the character, "Yoshi", in the same way as "Mario" andother characters.
(For "Mario", Exhibits Ko 8-1 to 8-9, Exhibit Ko 10, Exhibits Ko 11-1, 11-3 to
11-6, Exhibits Ko 16-1-1 to 16-1-3, 16-1-5, 16-1-6, Exhibits Ko 16-2-2, 16-2-3,
Exhibit Ko 16-3, Exhibit Ko 16-4-2, Exhibit Ko 16-5, Exhibits 16-6-1 to 16-6-7,
Exhibits Ko 17, 19, 20, 45, Exhibit Ko 69-2, Exhibit Ko 78, Exhibits Ko 94-1 to
94-10, Exhibits Ko 95-1 to 95-4, Exhibits Ko 110, 112, 181, Exhibits Otsu 35, 98
to 100, and the entire import of the oral argument; for "Luigi", Exhibits Ko 8-2, 86, 8-7, Exhibits Ko 11-3, 11-4, Exhibits Ko 16-1-1 to 16-1-3, Exhibit Ko 16-1-6,
Exhibit Ko 16-3, Exhibits Ko 16-4-1, 16-4-2, Exhibit Ko 16-5, Exhibits Ko 16-6-3,
16-6-7, Exhibits Ko 18, 19, Exhibits Ko 69-4, 69-5, Exhibits Ko 94-1 to 94-8, 9410, Exhibit Ko 95-2, Exhibits Ko 110, 113, 181, Exhibit Otsu 99, and the entire
import of the oral argument; for "Yoshi", Exhibits Ko 8-2, 8-7, Exhibit Ko 11-4,
Exhibits Ko 16-1-1, 16-1-3, 16-1-6, Exhibit Ko 16-3, Exhibit Ko 17, Exhibits Ko
94-1 to 94-6, Exhibits Ko 95-1 to 95-3, Exhibits Ko 110,114, 181, and the entire
import of the oral argument; for "King Bowser Koopa", Exhibits Ko 8-2, 8-7,
Exhibit Ko 11-4, Exhibits Ko 16-1-1 to 16-1-3, Exhibit Ko 16-3, Exhibit 16-6-3,
Exhibit Ko 17, Exhibits Ko 94-1 to 94-9, ,Exhibit Ko 95-3, Exhibits Ko 110, 115,
181, Exhibits Otsu 35, 100, and the entire import of the oral argument)
B.

According to the basic facts described in the above A, Plaintiff's
Representation of Mario became an indication of goods or business, whichindicates the source of First Instance Plaintiff's products, through long years ofsale of First Instance Plaintiff's software games in which "Mario", who has thesame basic characteristics of expression as those of the same person, whenillustrated, appears, and through the popularity as well as the accompanying
advertisement and the like, and it is acknowledged that by May 2006, if not earlier,which is when "New Super Mario Brothers", which ranked 2nd in the ranking o fpast domestic shipment titles and ranked 5th in the ranking of shipment titles inJapan and overseas, Mario became famous as First Instance Plaintiff's indicationof goods or business in Japan, and that this trend has continued to this day.

Also,

it is acknowledged that, by around February 2011, if not earlier, which is when
"Mario" ranked 1st in the "Top 50 Video Game Characters of All Time" in the"Guinness World Records", Plaintiff's Representation of Mario became famous
47

among consumers who are interested in games overseas, and that this trend has
continued to this day.
As for Plaintiff's Representation of Luigi, Plaintiff's Representation of Yoshi,
and Plaintiff's Representation of King Bowser Koopa, it should be said that theyalso became indications of goods or business, which indicate the source of First
Instance Plaintiff's products, through long years of sale of First Instance Plaintiff's
software games in which these characters having the same basic characteristics ofexpression as those of the same persons or animals, when illustrated, appears, andthrough the popularity as well as the accompanying advertisement and the like,and it is acknowledged that by December 2009, if not earlier, which is when "NewSuper Mario Brothers Wii" was released, these characters became famous as First
Instance Plaintiff's indication of goods or business in Japan, and that this trend has
continued to this day.

Also, in light of the following circumstances; namely, [i]"Super Mario Kart" and other games of the "Mario" series and "Mario Kart" series,in which "Luigi", "Yoshi", and "King Bowser Koopa" appear with "Mario",
recorded large sales not only in Japan but also overseas, [ii] games in which"Luigi" or "Yoshi" plays the main role have ranked 96th and 108th in the Past
International Million Shipment Titles as well, and [iii] "Yoshi" ranked 21st in the"Top 50 Video Game Characters of All Time" announced by "Guinness World
Records" around February 2011, and similarly, "King Bowser Koopa" ranked 1stin the "Top 50 Video Game Villains of All Time" announced by "Guinness World
Records" around January 2013, respectively, it is acknowledged that Plaintiff's
Representation of Luigi, Plaintiff's Representation of Yoshi, and Plaintiff's
Representation of King Bowser Koopa also became famous by January 2013, if
not earlier, which is when the aforementioned Guinness World Records made theannouncement, among the consumers who are interested in games in Japan andoverseas, and that this trend has continued to this day.
C.

Regarding this point, First Instance Defendants assert that Plaintiff's
Representations, as a whole, cannot be acknowledged as well-known or famous
because [i] in order for characters to be considered as indications of goods orbusiness, they need to have an especially distinctive element and be well -known,
but Plaintiff's Representation of Mario has distinctive characteristics only in the"face" part, and [ii] a lot of evidence shows that Plaintiff's Representations havechanged shapes depending on the time and the game.

(A)

Regarding the above [i], it should be said that, unlike the configurations ofgoods which do not, by nature, have the function of indicating the source of goods,48

in order for characters to be considered as indications of goods or business, they
do not necessarily have to have an especially distinctive element because of theirnature, so that the claim by First Instance Defendants lacks its premise.
Also, Plaintiff's Representation of Mario, which has the characteristics
described below in (2) A, is also characterized by a combination of multiple
factors; namely, a red cap, a long-sleeved shirt, the mark of the letter, "M", drawn
on the cap, blue overalls, white gloves, and brown shoes, other than the "face", sothat it can be said that Plaintiff's Representation of Mario is characterized in its
entirety, which includes the "face", and it cannot be said, as claimed by First
Instance Defendants, that the parts other than the "face" are common and do nothave any characteristics.

Accordingly, the claim by First Instance Defendants

cannot be accepted regarding this point as well.
(B)

Regarding the above [ii], even if there are different shapes of Plaintiff's
Representations depending on the time and the game, in light of the circumstance,
as per the finding of the above A, in which "Mario", "Luigi", "Yoshi", and "King
Bowser Koopa", having the same or almost the same characteristics as those of
Plaintiff's Representations, have been used repeatedly in First Instance Plaintiff's
games and the like over the years, it is acknowledged that Plaintiff's
Representations have become famous, and that the trend has continued to this day.

(2) Whether or not Advertising Activity and Rental Activity fall under acts of unfair
competition
A. Characteristics of Plaintiff's Representations(A)

Plaintiff's Representation of Mario is listed as 1 in the List of Plaintiff's
Representations Attached to Prior Instance Judgment.

As the person's

illustration, characteristics of expression are as follows; namely, (A) a person
wearing a red cap, a red long-sleeved shirt, and blue overalls, (B) whose face issuch that eyes are shown as vertically long ovals, with pupils as smaller ovals of
blue and black, and eyebrows are arched in the shape of the hiragana character, "ヘ", and a big nose is shaped like a horizontally long oval, below which a
mustache, with the ends looking upward and the lower part having a wavy look , isgrown, (C) and whose cap has a big bulge at the front and a small bulge at theback, and a dent in-between the two bulges, and has a semi-circular brim at thefront, and at the front, in the center, there is a horizontally long white oval along
the edge of the brim with the lower end of the circle cut out, and the letter "M"(the shape is such that the letter looks as if it is crushed from above and widened
horizontally, with the dent at the center drawn shallowly, and the sides on both49

ends being made narrower in width toward the top, and wider towards the bottom )written therein in the same color of red as the cap and the long-sleeved shirt, (D)and whose red long-sleeved shirt shows, on the surface, the parts of both arms andthe part that is below the neckline and that is not covered by overalls, (E) andwhose overall consists of the trousers part, the front part, which is the bibbed partat the front, the back part, and suspenders connecting said front part with the backpart (the part in which thick straps worn over the shoulders hold up trousers),
covering the body from ankles to the shoulders, except for the parts showing the
red long-sleeved shirt, with the belly bulging leisurely and protruding forward,
and the bibbed part and the lower part of suspenders being drawn in such a waythat they overlap each other, and circular yellow buttons whose diameters areabout the same size as the width of suspenders are placed on said overlapp ed part,(F) and who wears white gloves and (G) wears brown shoes (Exhibit Ko 112;
hereinafter these characteristics are referred to as "Characteristics (A) of
Plaintiff's Representation of Mario", and the like, and other characteristics ofPlaintiff's Representations may also be referred to in the same manner).
(B)

Plaintiff's Representation of Luigi is listed as 2 in the List of Plaintiff's
Representations Attached to Prior Instance Judgment.

As the person's

illustration, characteristics of expression are as follows, namely, (A) it is a person
wearing a green cap, a green long-sleeved shirt, and overalls whose blue color ismore like dark blue, (B) whose face is such that eyes are shown as vertically longovals, with pupils as smaller ovals, and eyebrows are arched in the shape of the
hiragana character, "ヘ", and a big nose is shaped like a horizontally long oval,
below which a mustache, with the ends looking upward and the lower part curled
at the edge, is grown, (C) and whose cap has a big bulge at the front and a small
bulge at the back, and a dent in-between the two bulges, with a semi-circular brimat the front in the center, having a horizontally long white oval along the edge ofthe brim with the lower end of the circle cut out, and the letter "L" (the shape issuch that the vertical side and the horizontal side gradually get rather narrower
towards the part at which the two join together, and gradually get rather wider inthe opposite direction of the joint part) written therein in the same color of green
as the cap and the long-sleeved shirt, (D) and whose green long-sleeved shirt
shows, on the surface, the parts of both arms and the parts that is below theneckline and that is not covered by overalls, (E) and whose overall consists of thetrousers part, the front part, which is the bibbed part at the front, the back part,and suspenders connecting said front part with the back part, covering the body50

from ankles to the shoulders, except for the part showing the green long-sleeved
shirt, with the belly bulging leisurely and protruding forward, and the bibbed partand the lower part of suspenders being drawn in such way that they overlap eachother, and circular yellow buttons whose diameters are about the same size as thewidth of suspenders are placed on said overlapped part, (F) and who wears white
gloves and (G) wears brown shoes (Exhibit Ko 113).
(C)

Plaintiff's Representation of Yoshi is listed as 3 in the List of Plaintiff's
Representations Attached to Prior Instance Judgment.

As the animal's

illustration, characteristics of expression are as follows, namely, (A) it is an
animal that looks like a humorous version of a bipedal dinosaur drawn basicallyin green (more like greenish yellow) and white, (B) and when illustrated by being
seen from the front, the head part has a nose part that is shaped like a big greenball, behind which two white vertically long circles are positioned in a way thatthey cover most of head part, with black eyes placed thereon, respectively, andthe head part is formed in such a way as to rim said white circles in green, withthe part that reaches the cheeks being colored in white and being round, looking
rather plump, and the parts of the four legs and the sides being colored in green,and other parts, such as the front belly, being colored in white, and the white partof the front belly being drawn so as to broadly cover from the neck to the chest,
through the belly, to the part between the legs, and (C) according to theillustrations drawn of the animal from behind and from the side, the animal has
three semi-circular vermillion spines, which resemble back fins, attached to theback of the head, and on the back, it has a large red circle and a shell-likeprojection rimmed in white, and its tail is thick at the base and is short, having ashape like a cone, and the tail looks upward until the tip is almost level with theshell-like part on the back, and (D) the animal wears brown boots (Exhibit Ko
114).
(D)

Plaintiff's Representation of King Bowser Koopa is listed as 4 in the List of
Plaintiff's Representations Attached to Prior Instance Judgment.

As the animal's

illustration, characteristics of expression are as follows, namely, (A) it is an
animal that resembles a bipedal monster with the face and the shell drawn
basically in green, and that has a yellow body, and (B) according to an illustration
drawn of the animal from front, (a) it has two horns (the entire horns are in beige
and rimmed in brown at the base), like a cow, on the green head, and its nose isunified with lips, being thick and colored in beige, and inside the mouth are whitefangs, and its eyes (the iris parts are in red which is closer to orange, and the pupil
51parts are in black) are sharply tilted upward at sides, and there are red and thickeyebrows and a red and thick mane growing from the top of the head to the backof the head, and (b) in the center of the body, there is a large beige pattern of avertically long circle drawn from the belly to the chest with multiple horizontal
lines inside, and other parts; namely, the four legs and sides, are yellow, andaround the neck as well as around both wrists and upper parts of the arm, there
are a black collar and arm rings which are decorated with multiple silver thorn like shapes, and (C) according to the illustrations drawn of the animal from theback and from the side, the animal has multiple thick thorns (like the head part,the thorns are all in beige and rimmed in brown at the base), and the animal
carries on its back a green shell rimmed in white, has a tail that is thick at the baseand is short and is shaped like a cone, and on the upper side, it has two shortthorns of the same color as the tail (Exhibit Ko 115).
B. Photographs 2 and 3(A) Content of Photographs 2 and 3
Photograph 2 shows two persons riding public road go-karts, and the person at thefront is wearing a costume that at least has Characteristics (C) to (E) of Plaintiff's
Representation of Mario (the costume having the same characteristics shall hereinafter
be referred to as "Mario Costume").

Photograph 3 shows two persons riding publicroad go-karts, and the person at the front is wearing a costume that has Characteristics(A) and (B) of Plaintiff's Representation of Yoshi (the costume having the samecharacteristics shall hereinafter be referred to as "Yoshi Costume").
(B)

Even when an indication of business consists of a character as is the case with
Plaintiff's Representations, it is reasonable to determine whether or not a certain
indication of business falls under a similar indication of another person's business,
as prescribed in Article 2, paragraph (1), item (ii) of the Unfair Competition
Prevention Act, by taking into consideration the actual circumstances of specifictransactions.
Regarding this point, indications of persons wearing Mario Costume andYoshi Costume in Photographs 2 and 3 have some of the aforementioned
characteristics of Plaintiff's Representations of Mario and Yoshi, respectively, andthese indications are similar to Plaintiff's Representations of Mario and Yoshi inappearance.

Also, according to what is described in the above 4 (2), it can besaid that the "Mario Kart" series is famous in Japan and overseas as public roadgo-kart racing games by "Mario" and "Yoshi" and the like, so that it can be said
that the Consumers who see indications of persons riding public road go-karts by52

wearing Mario Costumes and Yoshi Costumes will

conjure Plaintiff's

Representations of Mario and Yoshi.
Accordingly, it can be said that the Plaintiff's Representation of Mario andMario Costume, and Plaintiff's Representation of Yoshi and Yoshi Costume, arerespectively similar to the indications of persons wearing these costumes.
(C)

Given that Photographs 2 and 3 were posted on Kawaguchiko Shop Website
by February 23, 2017, and that Fuji-Kawaguchiko Shop operates the Rental
Business, which consists of rental of public road go-karts and Rental Activity andthe like, it is acknowledged that the content of Photographs 2 and 3 is not thatwhich merely explains the content of Rental Business, but that these photographs
were used by First Instance Defendant Company as indications of its goods orbusiness.

(D)

Accordingly, it should be said that the posting of Photographs 2 and 3 on
Kawaguchiko Shop Website falls under an act of unfair competition as prescribedin Article 2, paragraph (1), item (ii) of the Unfair Competition Prevention Act.

C. Videos(A) Content of Videos
The Videos indicate, at least, persons wearing costumes which have at least someof the characteristics of Plaintiff's Representations as described below.
a. Video 1
Video 1 starts with the screen indicating the Logo, which contains the indication,"MARICAR", and the indications, "PUBLIC ROAD GO-KARTING TOKYO TOUR","Public Road Go-Karting Tokyo Tour by MariCAR" [in Japanese].

Between thetime points of 0:09 and 0:13 in Video 1, there is shown a person wearing a costume
which has the characteristics of Plaintiff's Representation of King Bowser Koopa (A)to (C) (hereinafter the costume having similar characteristics shall be referred to as"King Bowser Koopa Costume") and getting on a public road go-kart.

The above

person is shown as a customer of a "go-kart" tour by "マリカー" (Exhibit Ko 42-1,
Exhibit Ko 43-1).
b. Video 2
Video 2 starts with the screen showing the Logo and the indication, "Marikar
Public Road Go-Karting Tokyo Tour" [in Japanese].

At the time point of 0:07 inVideo 2, a person wearing the Mario Costume and getting on a public road go-kart isshown.

The above person is shown as a customer of a "go-kart" tour by "マリカー"(Exhibit Ko 42-2, Exhibit Ko 43-2).
c. Video 3
53

Video 3 starts with the screen showing the Logo and the indication, "PUBLIC
ROAD GO-KARTING TOKYO TOUR".

Between the time points of 0:59 and 1:09

in Video 3, there is shown a person wearing the King Bowser Koopa Costume andgetting on a public road go-kart.

The above person is shown as a customer of a

"KARTING" tour by "MARICAR" (Exhibit Ko 42-3, Exhibit Ko 43-3).
d. Video 4
At the time point of 3:09 in Video 4, a person wearing the Mario Costume andgetting on a public road go-kart is shown.

In Video 4, there is a comment, "I drove

across Shibuya in "マリカー" on Halloween, and it was more than what I had
expected" [in Japanese].

The above person is shown as a customer of a public go-

kart tour by "マリカー" (Exhibit Ko 42-4, Exhibit Ko 43-4).
e. Video 5
Video 5 starts with the screen showing the Logo and the indication, "PUBLIC
ROAD GO-KARTING TOKYO TOUR".

At the time point of 12:57 in Video 5, aperson wearing the Mario Costume and getting on a public go-kart is shown.

The

above person is shown as a customer of a "KARTING" tour by "MARICAR" (Exhibit
Ko 42-5, Exhibit Ko 43-5).
f. Video 6
Video 6 starts with the screen showing the Logo and the indication, "PUBLIC
ROAD GO-KARTING TOKYO TOUR".

At the time point of 1:50 in Video 6, aperson wearing the Mario Costume and getting on a public road go-kart is shown.
The above person is shown as a customer of a "KARTING" tour by "MARICAR"(Exhibit Ko 42-6, Exhibit Ko 43-6).
g. Video 7
Video 7 starts with the screen showing the Logo and the indication, "PUBLIC
ROAD GO-KARTING TOKYO TOUR".

At the time point of 0:09 in Video 7, aperson wearing Yoshi Costume and getting on a public road go-kart is shown.

The

above person is shown as a customer of a "KARTING" tour by "MARICAR" (Exhibit
Ko 42-7, Exhibit Ko 43-7).
h. Video 8
Video 8 starts with the screen showing the Logo and the indication, "PUBLIC
ROAD GO-KARTING TOKYO TOUR".

Between the time points of 0:19 and 0:20

in Video 8, a person wearing the King Bowser Koopa Costume and getting on a publicroad go-kart is shown.

The above person is shown as a customer of a "KARTING"

tour by "MARICAR" (Exhibit Ko 42-8, Exhibit Ko 43-8).
i. Video 954Video 9 starts with the screen showing the Logo and the indication, "PUBLIC
ROAD GO-KARTING TOKYO TOUR".

At the time point of 0:17 in Video 9, thereis shown a person wearing a costume which has at least some of the characteristics(C) to (E) of Plaintiff's Representation of Luigi (hereinafter the costume having
similar characteristics shall be referred to as "Luigi Costume") and getting on a publi croad go-kart.

The above person is shown as a customer of a "KARTING" tour by"MARICAR" (Exhibit Ko 42-9, Exhibit Ko 43-9).
j. Video 10
Video 10 starts with the screen showing the Logo and the indication, "PUBLIC
ROAD GO-KARTING TOKYO TOUR".

At the time point of 0:16 in Video 10, a

person wearing the Luigi Costume and getting on a public road go-kart is shown.
The above person is shown as a customer of a "KARTING" tour by "MARICAR"(Exhibit Ko 42-10, Exhibit Ko 43-10).
k. Video 11
Video 11 starts with the screen showing the Logo and the indication, "PUBLIC
ROAD GO-KARTING TOKYO TOUR".

At the time point of 0:03 in Video 11, aperson wearing the Mario Costume and getting on a public road go-kart is shown.
The above person is shown as a customer of a "KARTING" tour by "MARICAR"(Exhibit Ko 42-11, Exhibit Ko 43-11).
l. Video 12
Video 12 starts with the screen showing the Logo and the indication, "PUBLIC
ROAD GO-KARTING TOKYO TOUR".

At the time point of 0:03 in Video 12, aperson wearing the Mario Costume and getting on a public road go-kart is shown.
The above person is shown as a customer of a "KARTING" tour by "MARICAR"(Exhibit Ko 42-12, Exhibit Ko 43-12).
m. Video 13
Between the time points of 0:27 and 0:32, there is shown a person wearing the
Yoshi Costume and is about to get on a public road go-kart.

Video 13 was taken

based on an interview about the Rental Business at Shinagawa Shop No. 1, and theabove person is shown as a demonstrator of the go-kart rental service offered by thesame business (Exhibit Ko 42-13, Exhibit Ko 43-13).
n. Video 14
At the time point of 1:22 in Video 14, a person wearing the King Bowser Koopa
Costume and getting on a public road go-kart is shown.

In Video 14, the above

person is shown as a customer of the go-kart tour by "MariCAR", and an explanationof the outline of the Rental Business is provided (Exhibit Ko 42-14, Exhibit Ko 4355

14).
o. Video 15
Between the time points of 0:33 and 0:36 in Video 15, there is shown a person
wearing the Yoshi Costume and getting on a public road go-kart with the Logo
indicated thereon along with the explanation, "Mario Kart driver" (Exhibit Ko 4215, Exhibit Ko 43-15).
p. Video 16
Video 16 starts with the screen showing the Logo and the indication, "Street
Go-Karting Tour".

At the time point of 0:14 in Video 16, a person wearing the

Luigi Costume and getting on a public road go-kart is shown.

The above person

is shown as a customer of a "Karting" tour by "MARICAR" (Exhibit Ko 42-16,
Exhibit Ko 43-16).
(B)

The Videos were uploaded on YouTube, and with regards to Videos 1 to 3, 5
to 12, and 16, the Logo is indicated at the beginning, among other things,
indicating that the video concerns the Rental Business carried out by First
Instance Defendant Company.

Also, Video 4 is a video of a customer of theRental Business wearing a costume and driving a public road go-kart, and Videos
13 and 14 were created based on a TV program which introduces the Rental
Business by taking out the part of introduction of the business from the program,
and Video 15 was created based on a TV program in which a customer of Rental
Business driving a public road go-kart, with the Logo and the like indicatedthereon, appears, by taking out said part from the program, and thus it isacknowledged that these videos were uploaded on YouTube with the aim of
widely introducing the Rental Business, either singularly by First Instance
Defendant Company or jointly with Related Groups.
(C)

As is the same with the above B, in light of the circumstances that, in theVideos, the indications of Mario Costume, Luigi Costume, Yoshi Costume, andKing Bowser Koopa Costume, and the persons wearing these costumes all havesome of the characteristics of Plaintiff's Representations, that they are similar to
Plaintiff's Representations in appearance, and that the "Mario Kart" series isfamous among Consumers in Japan and overseas as a go-kart racing game by"Mario" and "Yoshi" and the like, it can be said that the above indications in theVideos and the Plaintiff's Representations are similar.

(D)

As is the case with the above B, in light of the circumstances; namely thatFirst Instance Defendant Company operates the Rental Business, which consistsof rental of public road go-karts and the Rental Activity, and the aforementioned
56

content of Videos, it is acknowledged that the Videos were used not merely to
explain the content of Rental Business, but that they were used as the company's
indication of goods or business.
(E)

Accordingly, it should be said that the act of uploading Videos on YouTube
falls under an act of unfair competition as prescribed in Article 2, paragraph (1),item (ii) of the Unfair Competition Prevention Act.

(F)

First Instance Defendants assert that since most of the Videos indicate theLogo at the beginning and there is no indication from which viewers would
conjure First Instance Plaintiff, the Videos do not constitute use as an indicationof goods or business, but since the Logo contains Defendant's Mark 1-3(MARICAR), which is similar to Plaintiff's Character Indication of "マリオカー
ト " and the indication of "MARIO KART", the claim by First Instance
Defendants lacks its premise, and cannot be accepted.

D. Rental Activity(A)

According to the above No. 2-2 (4) B, Nos. 3-1 and 3-2, it is acknowledgedthat the Rental Activity is carried out at the Shops, and evidence (Exhibits Ko 110
to 115) and the entire import of the oral argument show that the Costumes which
are used in Rental Activity were made under First Instance Plaintiff's licensing andsupervision, having all or most of the characteristics of Plaintiff's Representations
as per the finding of the above A, so that they are similar to Plaintiff's
Representations.

(B)

Next, as per the finding of the above 5, Rental Business was advertised until
February 2017 by emphasizing and highlighting the Rental Activity using captions
such as "Ride in the cosplay costume of Super Mario, and it will be like real life
Mario Karting!!" [in Japanese].
Also, given that, even after it was determined in the prior instance judgmentthat the Rental Activity falls under an act of unfair competition, and that theRental Activity is still carried out at the Shops, and that, as per the finding of theabove 1 (1) E (B), as of February 17, 2019, which is after the prior instancejudgment, Kyoto Shop was using, on the reservation page of its website, aphotograph of persons wearing costumes of Luigi and Yoshi (Exhibit Ko 220), it
can be presumed that even now, the Rental Activity holds a similarly important
position as before as something that characterizes the Rental Business conductedby First Instance Defendant Company.
Accordingly, it is acknowledged that the use of Costumes by First Instance
Defendant Company constitutes use as indications of goods or business.
57

(C)

From what is described above, it should be said that Rental Activity falls underthe "use" as prescribed in Article 2, paragraph (1), item (ii) of the Unfair
Competition Prevention Act, and that it falls under an act of unfair competition asprescribed in the same item.

(D)

Regarding this point, First Instance Defendants assert that [i] based on the
result of Empirical Testing of Fact and the posts on Instagram (Exhibit Otsu 120),
the Costumes comprise only a small part of a group of costumes, and are not used
as indications of goods or business, [ii] "use" as prescribed in Article 2, paragraph(1), items (i) and (ii) of the Unfair Competition Prevention Act does not include
rental, and [iii] based on factors such as the small percentage of Costumes and thepresence of the fine print, there is no risk of confusion in the present case.

a.

However, concerning the above [i], the result of Empirical Testing of Fact
(Exhibits Otsu 92-1 to 92-3) does not conform with the advertisement having been
provided so far or with the reality of Rental Business as per the finding of theabove (B).

In fact, in regards to Okinawa Shop, the conditions inside the shop at

the time of the Empirical Testing of Fact and the conditions inside the shop at thetime of an investigation by First Instance Plaintiff, which was carried out about
three weeks before, are different, and the notarial deed which describes the
Empirical Testing of Fact does not mention the costume of Yoshi which was foundat the time of the above investigation by First Instance Plaintiff (Exhibit Ko 145 ,Exhibit Otsu 92-3).

Also, it is acknowledged that, concerning the Empirical

Testing of Fact, First Instance Defendant Company had been contacted regarding
the matter in the morning of the day on which the testing was to be carried out, sothat the testing was not a completely surprise inspection, and furthermore, theinspection of costumes worn by customers during the Empirical Testing of Fact
targeted only a limited number of customers whom the notary public met during
the two to three hours of his/her stay at the shop, and the percentage of the
Costumes being worn by customers varies significantly according to each shop,
shifting in the range of 8% to 66.7%.

In light of the foregoing, it must be said

that the credibility of the Empirical Testing of Fact, in its entirety, is poor.
As for Instagram (Exhibit Otsu 120), it is unclear on what standards and fromwhat parent population the selection was made, and thus it cannot provide a basis
for the presumption concerning the percentage of Costumes which are actuallyused.
Accordingly, the claim of the above [i] by First Instance Defendants cannot be
accepted.
58

b.

Regarding the above [ii], First Instance Defendants assert that since Article 2,paragraph (1), items (i) and (ii) of the Unfair Competition Prevention Act
distinguish "use" from "assignment" and the like, and items (iv) to (x) of the same
paragraph as well as Article 10, paragraph (1) treat "use" and "disclosure"separately, and Article 2, paragraph (1), item (iii) of the same Act clearly indicates"leasing", the "use" as prescribed in Article 2, paragraph (1), items (i) and (ii) of
the Unfair Competition does not include the "rental" which involves the transfer ofpossession or dominance relationship over goods.
However, Article 2, items (i) and (ii) of the Unfair Competition Prevention Act
use the word, "use", in connection with the "indication of goods or business", andthe word, "assignment", and the like in connection with "goods using an indicationof goods or business", so that what is pointed out by First Instance Defendants
concerns merely the difference in expression originating from the difference intargets, and this does not provide a basis for the above interpretation as claimed byFirst Instance Defendants.
As for Article 2, paragraph (1), items (iv) to (x), and Article 10, paragraph (1)of the Unfair Competition Prevention Act, they provide for trade secrets, which
are not the subject of the present case, and they do not provide any basis for theinterpretation as claimed by First Instance Defendants.
As for Article 2, paragraph (1), item (iii) of the Unfair Competition Prevention
Act, as is the case with what is described above, it is interpreted that the word,"leasing", is used because the target concerns "goods", and it cannot immediately
lead to the interpretation that "use" includes the cases in which possession or
dominance is transferred.
Accordingly, the claim of the above [ii] by First Instance Defendants cannot be
accepted.

c.

Concerning the above [iii], Article 2, paragraph (1), item (ii) of the Unfair
Competition Prevention Act does not stipulate that there has to be a risk ofconfusion, so that the claim by First Instance Defendants as to there being no riskof confusion because of the fine print and the like shall not influence the de cisionof applicability of an act of unfair competition.

E. Act of using Mario Doll(A)

It can be said that the act of placing Mario Doll near the entrance of the shop,
as per the finding of the above No. 2-2 (4), at Shinagawa Shop 1 where the Rental
Business, which includes rental of public road go-karts and the Rental Activity,
was conducted, falls under use of Mario Doll as its indication of goods or59

business, as is described above in B to D.
Next, it is clear that Mario Doll has the characteristics of Plaintiff's
Representation of Mario, as per the finding of the above A, and that Mario Doll issimilar to Plaintiff's Representation of Mario, so that the act of placement of
Mario Doll falls under an act of unfair competition as prescribed in Article 2,paragraph (1), item (ii) of the Unfair Competition Prevention Act.
(B)

First Instance Defendants assert that since Mario Doll was placed for a sales
purpose, such use does not fall under the use as an indication of goods or business.
However, there is not sufficient evidence to acknowledge that the use was for asales purpose, and that, in light of the manner of use and the relevance to theservice provided by First Instance Defendant (Rental Business) and the like, even
if Mario Doll was placed with a sales purpose, it can be said that the placement
and the use as an indication of goods or business can co-exist, so that the above
claim by First Instance Defendants cannot be accepted.

F. Act by employees of wearing costumes
Evidence (Exhibit Ko 4, Exhibits Ko 42-13, 42-16, Exhibits Ko 43-13, 43-16,
Exhibit Otsu 63) and the entire import of the oral argument show that it isacknowledged that employees were wearing the Costumes Bearing Defendant's
Mark 2, and it can be said that the Costumes Bearing Defendant's Mark 2 havesome of the characteristics of Plaintiff's Representations, as per the finding of theabove A, and that the act of wearing these costumes, riding public road go-karts,and leading the go-kart tour causes Consumers to conjure "Mario", "Luigi","Yoshi", and "King Bowser Koopa" who appear in the game series, "Mario Kart",so that it can be said that Plaintiff's Representations, the aforementioned costumes,
and the indications by employees of wearing the costumes and leading the tour are
all similar.
In addition, it can be said that the act of having employees wear Costumes
Bearing Defendant's Mark 2 as described above constitutes use of the same as
one's indication of goods or business, so that the act of having employees wear
Costumes Bearing Defendant's Mark 2 and guiding go-kart tours constitutes an actof unfair competition as prescribed in Article 2, paragraph (1), item (ii) of the
Unfair Competition Prevention Act.
G.

First Instance Plaintiff asserts that [i] in terms of its relationship with thePlaintiff's Three-Dimensional Figure, the Advertising Activity and Rental Activity
fall under acts of unfair competition, [ii] the Creating Activity and Uploading
Activity infringe on the right of reproduction, adaptation right, right of automatic
60

public transmission, and the right to make available for transmission, and [iii] theRental Activity infringes on the right of rental of Plaintiff's Representations.
However, the claims of the above [i] to [iii] are premised on the relationship ofselective joinder with the claim that the Advertising Activity and Rental Activity
fall under acts of unfair competition in terms of how they are related to Plaintiff's
Representations, so that no judgment shall be made in regards to the claims of theabove [i] to [iii].
First Instance Defendants assert that the requirements under Unfair
Competition Prevention Act and the requirements under the Copyright Act are
different, but whether or not selective joinder applies is determined on the objectof the demand (main text), so that as long as there is overlap in the object of thedemand (main text), application of selective joinder cannot be prevented.
7. Issue 9 (Whether or not the act of using Domain Names falls under an act of unfair
competition as prescribed in Article 2, paragraph (1), item (xiii) of the Unfair
Competition Prevention Act)
(1) Similarity between Domain Names and Plaintiff's Character IndicationA.

Of the Domain Names, it is acknowledged that the parts of ".jp", ".co.jp", and".com" are commonly used in many domain names, so that the part having thefunction of indicating the source concerns "maricar" or "fuji-maricar", whichconstitutes the essential part of Domain Names.

Of the foregoing, the part of"maricar" in Domain Names 1, 2, and 4 are, as described above in 4 (3), similar to
the indication of "MARIO KART", which is First Instance Plaintiff's specificindication of goods or business.
Also, "maricar" of Domain Names 1, 2, and 4 produces the pronunciationconsisting of sounds of "ma-ri-ka-r", which are the same as the pronunciation
produced by Plaintiff's Character Indication of "マリカー", which is First InstancePlaintiff's specific indication of goods or business.

Also, "maricar" generates theconcept of "Mario's car" as described in the above 4 (3), and since said concept is
the same as the concept generating from Plaintiff's Character Indication of "マリカー", the "maricar" of Domain Names 1, 2, and 4 is also similar to Plaintiff's
Character Indication of "マリカー".
B.

As for Domain Name 3 "fuji-maricar", "fuji" and "maricar" are joined together
by "-" as described above in No. 2-2 (4) D, and there is no relevance in concept
between "fuji" and "maricar", so that it is possible to extract the "maricar" part asan essential part, and as described above in A, it can be said that Domain Name 3,
or "fuji-maricar", is also similar to Plaintiff's Character Indication of "マリカー"
61and the indication of "MARIO KART".
(2) Whether or not there is a profit-making or damage-causing purpose
As per the finding of the above 5 and the consideration of the above 6,
considering that First Instance Defendant Company still continues, up to this day,the act of rental of the Costumes, which are similar to Plaintiff's Representations,or First Instance Plaintiff's famous indications of goods or business which appear
in the "Mario Kart" series, it is acknowledged, as described above in 5, that First
Instance Defendant Company is using Domain Names for the "purpose of illicitly
increasing gain", as prescribed in Article 2, paragraph (1), item (xiii) of the Unfair
Competition Prevention Act, by taking advantage of the high level of goodwill of
the well-known or famous Plaintiff's Character Indication of "マリオカート",
Plaintiff's Character Indication of "マリカー", and the indication of "MARIO
KART", so that it can be acknowledged that First Instance Defendant Company
had the "purpose of wrongful gain", as prescribed in Article 2, paragraph (1), item
(xiii) of the Unfair Competition Prevention Act.
(3) Claims by First Instance Defendants
First Instance Defendants assert that since Consumers are foreign tourists
visiting Japan who do not understand Japanese, and writings in Japanese weredeleted from the website after the prior instance judgment, and the indications on
the website, which the prior instance judgment used in connection withrecognizing the "purpose of wrongful gain", as per Exhibits Ko 6-1 to 6-3, as wellas the photographs on the website, the deletion of the Videos, and the presence ofthe fine print, Plaintiff's Character Indication, and the indication of "MARIO
KART", and the Domain Names are not similar, so that the "purpose of wrongful
gain" cannot be acknowledged.
However, as per the ruling already given, since Consumers include those who
understand Japanese, and as described in the above (1), the Domain Names are
similar to the indication of "MARIO KART" which is famous in Japan andoverseas, the above claim by First Instance Defendants, which is premised on theConsumers being foreign tourists visiting Japan who do not understand Japanese,lacks its premise.

Also, the fact that the indications and photographs, which wereused as grounds for the finding of the prior instance judgment, no longer exist,
does not lead to the acknowledgment that there is no longer the above intention byFirst Instance Defendant Company of taking advantage of the high goodwill of
Plaintiff's Character Indication and the indication of "MARIO KART".
Furthermore, it is clear that the presence of the fine print shall not influence the62determination as to the findings of the above (1) and (2).
Accordingly, the above claims by First Instance Defendants cannot be
accepted.
(4) Summary
As described above, it is acknowledged that First Instance DefendantCompany used the Domain Names, which are similar to Plaintiff's CharacterIndication and the indication of "MARIO KART", which are First InstancePlaintiff's specific indication of goods or business, for the purpose of wrongful
gain, so that it can be said that the act falls under an act of unfair competition asprescribed in Article 2, paragraph (1), item (xiii) of the Unfair Competition
Prevention Act, which is harmful to First Instance Plaintiff's business interests.
The claim by First Instance Defendants as to there being no infringement ofbusiness interests cannot be accepted.
8. Issue 13 (Whether or not a claim for compensation may be made against First
Instance Defendant Y)(1)

As per the findings of the above 5 and 7, First Instance Defendant Company
purposefully used the trade name, "マリカー", with the intention of illicitly
increasing profit by taking advantage of the high goodwill of the well-known or
famous Plaintiff's Character Indication and the indication of "MARIO KART"
since the time of foundation of First Instance Defendant Company, followed byacquisition of the right for the Trademark and use of the Domain Names.

Also,

as described above in 6, First Instance Defendant Company carried out a cts of
unfair competition, including rental of Costumes, which are similar to First
Instance Plaintiff's famous Plaintiff's Representations, to customers of Rental
Business.
As shown by evidence (Exhibit Ko 6-3) and the entire import of the oral
argument, it is acknowledged that First Instance Defendant Company was
originally a small-scale company, and First Instance Defendant Y was the only
director and representative director of First Instance Defendant Company since thefoundation of First Instance Defendant Company until the present.

Given theforegoing, it can be acknowledged that First Instance Defendant Y was involved
the decision-making concerning important matters, including the decision
concerning First Instance Defendant Company's trade name, acquisition of theright for the Trademark, and use of Defendant's Marks 1 and 2 as well as Domain
Names in the performance of Rental Business, as described above.
In addition, in light of circumstances; namely, that First Instance Defendant Y63

is a relatively young adult who fits the demographic of consumers who areinterested in games as described above in 4 (1), and in a TV program he admitted
to playing the "Mario Kart" series in the past (Exhibit Ko 6-3, Exhibit Ko 42-13,
Exhibit Ko 43-13, Exhibits Ko 108-1 and 108-2), it is acknowledged that First
Instance Defendant Y was fully aware of the fact that Plaintiff's CharacterIndication of "マリオカート", the indication of "MARIO KART", and Plaintiff's
Representations are famous, and that Plaintiff's Character Indication of "マリカー" refers to "Mario Kart".

In addition, as per the finding of the above 3 (1), First

Instance Defendant Y personally wore the "Mario" costume and advertised theRental Business.
A director has the duty to prevent the company from engaging in an act of
unfair competition.

However, the above consideration shows that First Instance

Defendant Y had at least acted in bad faith or with gross negligence in regards tothe violation of such duty, so that it should be said that First Instance Defendant Y
shall be held liable pursuant to Article 429, paragraph (1) of the Companies Act.
(2)First Instance Defendants assert that the [i] the case concerning Defendant's
Mark 1 involved unclear decisions, such as the Japan Patent Office (JPO) rejecting
the opposition filed by First Instance Plaintiff against the Trademark and the courtof prior instance denying the applicability to an act of unfair competition, and thatsince there was no similar precedent concerning the act of using Defendant's Mark2, it was difficult for First Instance Defendant Y to be aware of the illegal nature,[ii] First Instance Defendant Y was no longer involved in the operation of Shops
by November 6, 2017, which is when he opted out of all partnerships, and even if
there was any involvement, it does not immediately mean that he had acted in bad
faith or with gross negligence, and [iii] after the filing of the present lawsuit, First
Instance Defendant Y changed the trade name and deleted the Videos, among
other actions taken in order to avoid unnecessary dispute, so that it cannot be
acknowledged that there was bad faith or gross negligence on the part of First
Instance Defendant Y.
However, it is acknowledged that First Instance Defendant Y's awarenessabout Plaintiff's Character Indication, the indication of "MARIO KART", andPlaintiff's Representations were as described in the above (1), and even before theprior instance judgment, it should be said that First Instance Defendant Y was able
to be sufficiently aware of the possibility of legal issues concerning the use of
Defendant's Marks 1 and 2 as well as the Domain Names for the Rental Businesswithout asking First Instance Plaintiff.
64Furthermore, in addition to the points which were held as illegal in the priorinstance judgment, it is as per the ruling already given that the act of unfair
competition still continues to this day at the Shops.
As for the decision by the JPO (Exhibit Otsu 90) as per the claim made byFirst Instance Defendants, said decision only determines as to the effectiveness ofTrademark in February 2017, and the decision is not such that it provides a basis
for the finding that the Rental Business, in general, will be lawfully carried out.
Also, even after November 6, 2017, which is when First Instance DefendantCompany opted out of all partnerships, First Instance Defendant Company carriedout the Rental Business at the Shops, either personally or jointly with RelatedGroups, as per the finding of the above 3.
In light of the above, the claim made by First Instance Defendants cannot be
accepted.
9. Issue 14 (The amount of damages suffered by First Instance Plaintiff)(1) Liability of First Instance Defendants
As per the consideration in the above 1 to 7, it can be acknowledged that First
Instance Defendant Company engaged in an act of unfair competition, among
which the use of Defendant's Marks 1 and 2 falls under an act of unfair
competition as prescribed in Article 2, paragraph (1), item (ii) of the Unfair
Competition Prevention Act, and the use of Domain Names falls under an act of
unfair competition as prescribed in item (xiii) of the same paragraph, and that First
Instance Plaintiff's business interests were infringed on dues to these acts.

Also,

there was at least negligence on the part of First Instance Defendant Company.
As such, First Instance Defendant Company is liable to First Instance Plaintiff,
pursuant to Article 4 of the Unfair Competition Prevention Act, for compensation
for the damage suffered by First Instance Plaintiff during the period from June 4,2015, which is when the First Instance Defendant Company was founded, until
October 31, 2018, as per the claim by First Instance Plaintiff.
Also, as for First Instance Defendant Y, it is acknowledged that there wasnegligence of duties due to bad faith or gross negligence, so that First Instance
Defendant Y is liable for compensation of the above damage jointly with First
Instance Defendant Company.
(2) Defense based on Article 15 of Limited Liability Partnership Act
First Instance Defendants assert that even if First Instance Defendant Company
is liable for compensation for the act of unfair competition which was carried out
by the partnerships, the scope of liability should be limited to the amount65

(●●●●●● yen) of contribution made by First Instance Defendant Company when it
became a partner of each partnership, pursuant to Article 15 of the Limited
Liability Partnership Act (LLP Act).
Regarding this point, Article 15 of the LLP Act stipulates that "a partner isable for the Partnership's obligations only to the extent of its capital contribution
amount", thereby providing that, concerning the debts incurred by the partnershipas a result of business activities by the limited partnership, a partner should beheld liable for payment up to the amount of its contribution.

However, as

grounds for its claim, First Instance Plaintiff refers only to the acts by First
Instance Defendant Company and does not make any claim as to each partnership
being held liable for compensation due to an act by such partnership, and as toFirst Instance Defendant Company, which is a partner in each partnership, being
held liable for payment of the partnership's debts, so that the above claim by First
Instance Defendant Company cannot be asserted as a defense against theoccurrence of some of the debts incurred by the company.
Accordingly, the above claim by First Instance Defendants is unreasonable
without the need to determine other points, such as whether or not the claim falls
under an allegation or evidence advanced outside the appropriate time.
10. Issue 15 (Whether or not it is possible to file a counterclaim)
On December 26, 2018, First Instance Defendant Company filed acounterclaim to this court, which is the court of second instance, but First InstancePlaintiff, who is the opponent, does not give its consent to the filing of the above
counterclaim (Article 300, paragraph (1) of the Code of Civil Procedure).
Concerning the issue of whether or not the costumes indicated in the List of
Costumes attached to the above counterclaim are reproductions of therepresentations

indicatedintheattached

ListofCounter-Defendant'sRepresentations, it is interpreted that said issue is substantively the same as theissue of whether or not the Costumes, over which the parties contested in the first
instance, are reproductions of Plaintiff's Representation.

However, concerning

the issues of [i] whether or not there are legal interests for confirmation
concerning the counterclaim described above, and [ii] what kind of photographs orvideos are included among those intended by First Instance Defendant Company
for use in public transmission, and, if the above costumes can be called
reproductions, what kind of photographs and videos, when posted, can constituteinfringement of the right of reproduction and the right of public transmission, bothparties have failed to make claims or provide evidence in the first instance, and it66

cannot be acknowledged that the filing of the above counterclaim is harmless tothe interests of appeal by First Instance Plaintiff, who is the opponent, so that it
cannot be acknowledged that the consent of First Instance Plaintiff is not required.
Accordingly, the filing of the above counterclaim by First Instance DefendantCompany is unlawful without the need to determine other points.
11. Conclusion
Therefore, the court rendered an interlocutory judgment in the form of themain text.
Intellectual Property High Court, Second Division
Presiding judge: MORI Yoshiyuki

67

Judge:SANO Shin

Judge:KUMAGAI Daisuke

(Attachment)
List of Shops
No. 1

MariCAR Shops

1. Shinagawa Shop 1
2. Shibuya Shop
3. Akihabara Shop 1
4. Osaka Shop
5. Okinawa Shop
No. 2

STREET KART Shops

1. Shinagawa Shop 2
2. Akihabara Shop 2
3. Tokyo Bay BBQ Shop
4. Yokohama Shop
5. Kyoto Shop
6. Asakusa Shop
No. 3

Other Shops

1. Fuji-Kawaguchiko Shop
2. Roppongi Shop

68

(Attachment)
List of Counter-Defendant's Representations
Numbers
Character
names

Representations

1
Mario

2
Luigi

69

Numbers
Character
names

Representations

3
Yoshi

4
King Bowser
Koopa

70

(Attachment)
List of Costumes

Numbers

Costumes[Front][Back][Front][Back]

1

2

71

Numbers

Costumes[Front][Back][Front][Back]

3

4

72