Chiteki Zaisan Koto Saibansho [Intellectual Property High Court] August 19, 2010

ASRock, a Taiwan-based manufacturer of computer motherboards, successfully registered its logo “ASRock” as a trademark in several countries. However, before ASRock obtained trademark registration in Japan and South Korea, a similarly designed logo—also bearing the name “ASRock”—was registered in both countries by a South Korean individual (the trademark holder) (defendant) who was purportedly a retail and wholesale seller of computers and electronics. The trademark holder then sent notices to several official dealers of ASRock products requesting exorbitant amounts of money to purchase the trademark. One of these dealers was Unistar Kabushiki Kaisha (Unistar) (plaintiff), an authorized Japanese importer of ASRock products. Unistar requested a trial from the Japanese patent office (JPO) for the invalidation of the trademark holder’s trademark. Evidence showed that the trademark holder’s business activities were limited to a few listings in online auctions and that the trademark holder’s registered business address showed no sign of being used for actual business purposes. However, the JPO declined Unistar’s request for invalidation, holding that the official ASRock trademark was not well known in Japan at the time the trademark holder registered his trademark. The JPO also noted that the trademark holder might still make more extensive use of the trademark in the future. Unistar appealed to the Japan Intellectual Property High Court.