[Article] Whether Previously Genuine Goods May Be Parallel-Imported after Assignment of Trademark Rights: The Converse Parallel Import Case (Yoshiyuki Tamura
Updated: 2 days ago
Article information
Article type: Publication review
Category: Trademarks
Topics: Licensing, Exhaustion and parallel imports, Abuse of rights
First published on this website: 2026-11-01
Display and classification checked: November 2, 2026
Originally published on Ameblo: 2025-01-13 (Japan time). Full English translation.
[Article] Whether Previously Genuine Goods May Be Parallel-Imported after Assignment of Trademark Rights: The Converse Parallel Import Case (Yoshiyuki Tamura, Intellectual Property Law and Policy Journal, Vol. 30 (2010))
⇒ IP High Court, 2009 (Ne) 10058 <Appeal>, and Tokyo District Court, 2006 (Wa) 15580: both found trademark infringement (neither the parallel-import defense nor the abuse-of-rights defense was established).
(1) The defendant was parallel-importing genuine goods of Converse, which held the U.S. trademark rights.
(2) Converse assigned its trademark rights to Itochu Corporation, which sued the defendant.
⇒ Because “identity of the parties” and “quality control” were not satisfied, the Fred Perry parallel-import defense failed (as did the abuse-of-rights defense).
(3) Although the defendant had been parallel-importing genuine goods, the change of trademark owner turned this into trademark infringement!!
*In the Tokyo District Court's December 7, 1984 [LACOSTE] case, the court recognized a common source by following a chain consisting of a capital relationship between the trademark owner and the licensor and a licensing relationship between the licensor and the overseas distributor.
⇒ The author's view is that the Converse case, too, should still have been treated as noninfringing parallel imports of genuine goods, because Itochu held 5% of the shares of the new Converse, and the brand was still recognized in Japan as that of the former trademark owner, Converse.
The Tokyo District Court's January 18, 1999 [ellesse] case, by contrast, rejected parallel imports of genuine goods in circumstances where the Japanese and Korean trademark rights had originally belonged to one person, but only the Japanese rights were assigned, there was no capital relationship, and quality differed, making it difficult to regard them as one group.
Translator’s notes (editorial)
The source title is truncated after the author’s name; the body heading is complete.
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