Kimura & Partners doesn’t only represent the IP interests of foreign business in Japan but also is hired by local firms to defend against international claims. Here is a typical example.
A prominent foreign company had sold its famous shoes in Japan for 30 years. They had trademark registrations in many countries for a specific shoe color. However, such registrations were not possible in Japan until the JPO (Japan Patent Office) introduced its Color Trademark Registration System in 2017. As soon as it was possible, they filed to secure the color trademark in Japan.
Many Japanese shoe companies had used the same color for over 40 years. If the foreign company’s color trademark registration were approved, the Japanese companies would be forced to discontinue using it.
Based on many Japanese companies’ requests, Kimura & Partners submitted evidence and arguments about how Japanese companies had legally established their use of Japan’s color as a vested right.
The foreign company sought to prove that the color and its use were already established in Japan and identifiable with the company instead of its Japanese competitors. The application was finally rejected in the examination division. The foreign company is now appealing to the rejection in the appeal division of JPO. The drama is continuing.