Perfetti v Rakuten: A Kyosaku--a wake-up stick against online marketplace operators

Abstract

John Tessensohn is an IP lawyer and Board Member, SHUSAKU YAMAMOTO, Osaka, Japan. In a game changing breakthrough, the Intellectual Property High Court of Japan (IPHCJ) decision Perfetti Van Melle S.p.A v Rakuten K.K., was a wake-up call to online marketplace operators who could be exposed to trade mark infringement damages or injunction liability if they do not act within a reasonable time period to remove infringing listings from their websites after receipt of the brand owners’ notice or have reasonable grounds to believe that infringements have occurred. Trade mark counterfeiting statistics from the Japanese customs, police and intellectual property authorities provide a nuanced context to the online trade mark infringement battle between two billion dollar litigants. The clash is emblematic of the collision of two developing Japanese trends, its healthily growing e-commerce marketplace and the increasing online counterfeiting threat from abroad. The comparative legal position regarding online trade mark infringement in the United States and Europe is also briefly explored amidst the inexorable rise of the China online counterfeiting syndrome. The IPHCJ has crafted a balanced judicial stick to encourage a culture of enlightened cooperation and mutual benefit, rather than facilitate conflict, between trade mark owners and online marketplace operators.