Protecting Nochar's trademark: a trade infringement case

Business America, August, 1997

Three years ago, Nochar, Inc. of Indianapolis, Ind. decided to become more involved in the development of foreign markets for its state-of-the-art fire safety, environmental protection, and water filtration technologies. The company pursued a strategy that included updating its international business resource library and expanding its network of knowledgeable and influential government and business contacts.

"Attending local U.S. Department of Commerce seminars and conferences was the best move we made," comments Steve Robertson, Special Projects Manager of Nochar, Inc. "We floundered for a bit, but Nicole kept setting us back on track." Nicole Blackwell, International Trade Specialist for the Commercial Service's Indianapolis Export Assistance Center, knew the ropes; her counseling and guidance continue to be a valuable asset."

Company executives were able to quickly build their files on Commercial Service export-oriented information and services. Robertson says, "Our most interesting discovery was the extent of specialized services and support mechanisms available to us for our overseas efforts."

On one occasion, Nochar made a special request for extra-close support from the Commercial Service for a critical meeting with the Japanese Ministry of Transportation. Robertson said that Dan Swart, Director of the Indianapolis Export Assistance Center, "Spent the morning with us monitoring the meeting's progress and providing us the kind of support only high-level government-to-government contacts can supply."

Establishing a network of Commercial Service contacts can be most helpful to a firm's overseas business. The value of these contacts became quite apparent to Nochar when it was notified by Satake Corporation, its import distributor in Japan, of a potential trade infringement case. The situation involved another company's unauthorized use of the registered trademark of Natural Trade Company/Nochar, Inc. (Natural Trade Company is Nochar's export agent.) Though Nochar has seen suspect activity before concerning its trademark and company literature, it decided to pursue this case.

After Nochar completed a lengthy investigation and gathered literature, such as magazine and newspaper advertisements, to support its case, the Indianapolis Export Assistance Center contacted the Commercial Service post in Tokyo (CS Tokyo) for overseas assistance. Robertson said, "We just literally dumped it all on David's (Gossack, Commercial Attache in CS Tokyo) desk."

The Commercial Service advised Nochar, Inc. and Satake Corporation to write clear, forceful, but diplomatic warning letters to urge the offending company to immediately cease any and all unauthorized use of the registered trademark, as well as other acts of unfair competition.

A follow-up letter from CS Tokyo cited the articles and sections of the Japanese Unfair Competition Prevention Act (U.C.P.A.) that Nochar alleged the offending company was violating. Nochar had put itself in a very strong position to protect its trademark by filing the application for trademark registration at the very start of business in Japan. (Japan is a member of the Paris Convention for the Protection of Industrial Property, but trademark protection is only recognized when the trademark registration is filed in Japan.)

Within less than a month, CS Tokyo received a letter from the legal representative of the maleficent firm. The letter responded to Nochar's assertion of trademark infringement by claiming an "oops"-type of defense and by promising that the situation there was an infringement of the registered trademark and would never arise in the future. Furthermore, with respect to their alleged violation of the U.C.P.A., they admitted that though there were expressions in the catalog and other literature that might cause misapprehension as to the origin of goods, the newly revised catalog had no such expressions.

Robertson states, "We had a good case. The Commercial Service's guidance took us right through to an apparent resolution in our favor. Although we are encouraged by their reasonably acceptable explanations, admissions, and immediate corrective actions, we'll monitor their behavior for some time."

According to John McCarley, Director of International Marketing for Natural Trade Company, the Satake Corporation was "impressed at how swiftly we intervened on their behalf." He also stated that the nature of the cooperation that was necessary to pursue such a case resulted in further cementing of "our relationship with Satake; that's always good for business."

Contributing to this article were members of the Indiana Export Assistance Center staff and Nochar, inc. officials.