[Trademarks / Article 4(1)(vii)] IP High Court, Reiwa 5 (Gyo-Ke) No. 10128 — “MARK GONZALES” (Judge Honda)
更新日：3 日前
Article information
Type: Case note
Category: Trademarks
Topics: Public order and morality
First published on this site: 2026-10-09
Case / source information: IP High Court, Reiwa 5 (Gyo-Ke) No. 10128
Display and classification checked: 2026-10-09
[Trademarks / Article 4(1)(vii)] IP High Court, Reiwa 5 (Gyo-Ke) No. 10128 — “MARK GONZALES” (Judge Honda)
From 2020, as termination of the license approached, the plaintiff filed numerous applications in Japan, South Korea, China, Taiwan and elsewhere for marks containing the angel design, the defendant’s name and “(what it isNt).” After the license ended, it continued developing its own brand while sending warnings that obstructed the defendant’s new licensing business.
The court found that the plaintiff intended to exclude the defendant from doing business in the Japanese market and control that market through its own trademark rights. It assessed the applications as having an improper purpose that disrupted the fair trademark order.
→ Trademark Act Article 4(1)(vii) applied.
(Excerpt from the judgment, translated)
Around 2014, the defendant sought termination of the license agreement with the Sakura Group. By around 2020, the defendant had made clear that it did not intend to continue the licensing business with that group after termination and requested return of all trademark rights. In response, the plaintiff obtained transfers of the rights to Marks D–G from the Sakura Group and, from around 2020, the final stage of the license agreement, filed numerous applications in Japan, South Korea, China, Taiwan and elsewhere for marks including “Mark Gonzales,” “(what it isNt)” and the angel design. Even after January 1, 2022, when the license agreement had clearly ended, the plaintiff continued selling products bearing “Mark Gonzales” and the angel design through licensees. However,…the plaintiff cannot be said to have acquired copyright in Angel Designs 1 and 2 or the signature under the MPSA agreement, and the license agreement effectively included a novation of the MPSA agreement’s terms. Even assuming that the MPSA agreement remains valid, it permits only reproduction of the cover art on T-shirts and similar items and use of the defendant’s and others’ names for promotion of the album. The plaintiff’s current “(what it isNt)” brand development exceeds both the album-promotion purpose and the scope of reproducing the cover art. Moreover, after termination of the license agreement, the plaintiff attempted to block the defendant’s brand development by sending warning letters to the defendant’s own Japanese sublicensees and retailers.
These actions since 2020 establish that, when applying for Marks A–C…, the plaintiff fully knew that the dispute had become overt and that it would lose the ability to use Angel Designs 1 and 2 and the defendant’s name after the license ended. Nevertheless, it had the improper purpose and intent of using the resulting trademark rights to obstruct and prevent sales by persons other than the plaintiff and its associates, including by seeking injunctions against the defendant’s own sales in Japan of goods bearing the angel designs or “Mark Gonzales.”
Accordingly, even under Japan’s first-to-file trademark system, these applications for Marks A–C contradict the purpose of the Trademark Act: to protect trademarks, maintain the business reputation of those using them, contribute to industrial development and protect consumers’ interests (Article 1). They disrupt the fair trademark order and are also impermissible as a matter of reason in light of sound legal sentiment. Marks A–C therefore fall within Article 4(1)(vii) as trademarks likely to harm public policy or accepted principles of morality.
Original article (2025-09-29):
Originally posted on LinkedIn:
Part 1: https://www.linkedin.com/feed/update/urn:li:activity:7513753852769316864/
Part 2: https://www.linkedin.com/feed/update/urn:li:activity:7513753959652794368/
2026-10-09: Added a topic tag based on the article text and updated the topic display in Article information.
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This history records publication, display, and classification changes actually made on this site.
2026-10-09: First published on this site from the LinkedIn original, with classification, article information, and consultation navigation.
2026-10-13: aligned canonical, hreflang, and search-index URLs with the published URLs. The original article text was not changed.
