Legal Risks of Trademark Expiration
Lessons from the Gomiser case on renewal management and distributor relationships
Trademarks protect the goodwill built through years of business activity. If trademark management is neglected, however, a company may not only lose rights but also become involved in serious disputes with distributors or business partners.
1. Overview of the case
This case concerned the trademark “Gomiser” used for commercial food-waste processing machines. The manufacturer had developed and sold the product under the name “Gomiser” from around 1992. A distributor had also sold the manufacturer’s products for many years.
The manufacturer’s original trademark registration later expired because the renewal was not filed. After that, the distributor filed and obtained a registration for “Gomiser” and sued the manufacturer for an injunction and approximately JPY 417 million in damages.
2. Court decision
The Tokyo District Court dismissed the distributor’s claims, holding that the exercise of the trademark right constituted an abuse of rights.
- Ownership of goodwill: The goodwill embodied in the “Gomiser” mark was attributed to the manufacturer that developed, manufactured, and sold the product through multiple distributors.
- Limits of distributor contribution: Although the distributor contributed substantially to sales, that contribution was based on the manufacturer’s product and goodwill, not independent goodwill owned by the distributor.
- Unfair enforcement: The court viewed the distributor’s acquisition and enforcement of the trademark, without sufficient consultation with the manufacturer, as contrary to good faith.
3. Practical lessons
The case highlights the importance of trademark renewal management, distributor agreements, and clear brand ownership rules.
- Strictly manage trademark renewal deadlines.
- Specify trademark ownership, permitted use, and post-termination handling in distributor agreements.
- Establish brand management rules with distributors, OEM partners, and joint business partners.
- Consult an IP professional early when a registration has expired or ownership is unclear.
4. How MEVRO can assist
MEVRO supports trademark filings, renewal management, analysis of ownership and use, review of trademark clauses in distributor agreements, and IP systems designed to prevent disputes.