“BELLO case”

Overview:

The Plaintiff in this case is involved in the production and distribution of fashion goods, and holds a registered trademark on the mark “BELLO” appearing in a bolded gothic font, and other similar trademarks (collectively referred to as “the subject trademarks”). The Defendant manages the theme park “Universal Studio Japan (USJ)”. The Plaintiff requested an injunction for the sales etc. of the Defendant’s products in a directly managed store, asserting that the Defendant’s sale of Minions’ character goods having the word “BELLO” (collectively referred to as “the Defendant’s marks”) constitutes infringement of the subject trademarks.

Legal Issue:

Whether the Defendant’s marks qualify as trademark use (Japanese Trademark Law, Article 26, paragraph 1, No. 6)

Summary of Conclusions:

The decision discusses the aspects of trademark use and of transactions in relation to the Defendant’s marks, with the consideration that images of Minions or the Defendant’s marks appear in the design of apparel.
The court asserted that the Minions appear in a popular American movie, and are therefore presumed as characters having a high level of public exposure.  Since the Defendant’s products are goods showing such characters, a consumer that is interested in the Minions characters will purchase the Defendant’s product based on the fact that it is a Minions’ character good.
In addition, the Minions are characters featured in the USJ theme park, such that consumers can distinguish the source of the Minions products as official character goods sold by USJ (the Defendant) at stores in the park and nearby. The court concluded that the consumers need look no further to identify the source.
The court held that consumers visiting the directly managed USJ stores within the park or nearby would recognize the Defendant’s marks “BELLO!” as a word or a phrase having a link with the well-known Minions’ characters, at the very least.
In addition, the court held that the subject trademarks are not well-known among the consumers of the Defendant’s products, and that the consumers would not associate the Defendant’s marks with the source represented by the subject trademarks of the Plaintiff.  Moreover, the Defendant’s products are sold at online stores other than USJ’s online store, and the court found that consumers at such online stores seem to recognize the source of the products, based on the character designs, in association with the Minion characters featured by USJ. Accordingly, the court recognized the Defendant’s marks and products as related to the Minion character designs.
As to transactions, the court considered from the evidence on the sales of the Defendant’s products, that the Defendant’s mark “BELLO!” is not indicative of the source.  Consequently, the Defendant’s marks were not found to qualify as trademark use.

Comments:

This decision discusses the applicability of trademark use for character goods based on the level of public exposure, as well as on the transactions on such products. This decision serves as a useful reference on a practical level.