Kadokawa Sues MTI over Ring Tone Service Name
1.@@On March 3, 2006, Kadokawa Holdings Inc. filed suit in Tokyo District Court against MTI Inc., an Internet provider of cell phone ring tones, alleging that MTI had infringed its trademark rights. Kadokawa is demanding 390 million yen in damages and an injunction ordering MTI to cease use of a website domain name that it claims infringes a Kadokawa registered Japanese trademark.
2. @@Kadokawa said in a statement that it determined that MTI had infringed its registered trademark gsugomeroh (Japanese Trademark No. 4754248) by using the mark gsugomeroh on an MTI run website that sells cell phone ring tones, and by using the domain name gsugomero.comh for the site.
3. @@MTI also issued a statement, in which it said that in April 2005, it changed the name of the website to gmusic.jp torihoudaih. Prior to that, the site was run as gsugomero torihoudaih. MTI said that once it realized that the trademark gsugomeroh belonged to Kadokawa, it began good faith negotiations with the company to reach a satisfactory resolution. However, MTI and Kadokawa disagreed on the reasonable royalty to be paid for MTIfs use of the mark, and Kadokawa brought suit for damages and requested an injunction based on its rights in the gsugomeroh mark. MTI confirms that the damages that Kadokawa is claiming are much greater than the royalty amounts discussed in the negotiations, and that MTI will argue the reasonableness of its position in court.
4.@@ Lexwell has investigated the situation regarding the dispute and learned that the application for Kadokawafs Trademark No. 4754248 gsugomeroh was filed on August 6, 2003. The mark is registered for goods and designated services in Classes 9, 38, and 41. MTI also filed an application for gsugomeroh, specifying goods in Class 9, but the filing date was October 10, two months after Kadokawafs filing. Because ring tone services are essentially in Class 9, downloadable gmusic,h the marks conflict with each other since both applications claim the same specified products. Because of the time needed to update the JPTO trademark database, there appears to be a lag time in which trademark searches do not bring up recently filed applications.
@@@Many observers are interested in seeing how Kadokawafs demand for damages based on reasonable royalty is resolved and how MTIfs use of the domain name is interpreted.
Lexwell Advice for Trademark Searches and Filing
@@@@@Because there usually is a one to two month time lag between an initial trademark search and the filing of an application in the JPTO trademark database, Lexwell recommends that once clients have submitted a trademark application, they conduct periodic follow-up searches until the application comes up in the search. Only then can the applicant be certain that no third party has filing priority.