The Patent Office held that since the demand for the trial decision in this case was made within the exclusion period, it should not be dismissed on procedural grounds.
On that basis the JPO ruled on the substance of the claim, and it issued a decision of invalidation on the grounds that X's Trademark was in breach of Article 4(1)(xv).
With respect however to the ground for invalidation under Item (xv), taking account of factors including the fact that Y's name (Valentino Globe Besloten Vennootschap), which included the word "Valentino" had been stated in the initial demand; that "VALENTINO" was famous in the fashion industry in Japan; and that X too was found to have known of "VALENTIONO" since the statements in the initial demand can be regarded in the same light as those asserted by stating a ground for invalidation to the effect that X's Trademark was a trademark that was likely to cause confusion in connection with Y's markings including "VALENTINO" the Court found that as a result of the initial demand, it was possible to see that a demand for a trial decision for invalidation that was specified in substance in the form of one claim had been established, and the Court ruled that the demand for a trial for invalidation based on the ground in Item (xv) was good in law since it complied with the exclusion period.
X argued at length in its petition, including that the hearing procedure lacked legality, that the Court erred in its finding concerning whether the "VALENTINO" mark was universally known and famous, and that the Court erred in its ruling on the likelihood of confusion as to origin under Item (xv).
In ruling as follows, the Supreme Court decided to accept the petition only in respect of X's arguments concerning the exclusion period, and dismissed X's jokoku appeal with prejudice on the merits.
Whilst a trademark registered in breach of Item (xv) ought to be invalidated in theory, the purpose of Article 47 is to be construed as placing the validity of the trademark's registration beyond challenge in order to protect the status quo in practice that arises as a result of the registration and that remains once the exclusion period expires without a demand being made for a trial for invalidation.
Given that, for a party to declare that a demand for a trial for invalidation of a registered trademark on the grounds of breach of Item (xv) complies with the exclusion period, it is reasonable to take the view that it is sufficient if an assertion that the registered trademark is in breach of Item (xv) is stated in a demand for a trial that is submitted within the exclusion period as the grounds for the claim.