Licensing dispute in the Apple Appstore?

Question

Apple App Store

Hey! I have a completely stupid app in the appstore, which, besides, almost never sells (less than 10 sales per month). Here it is . I received this email the other day:
From: Jimmy Goto <[email protected]>
Subject: Trademark Infringement Claim
Date: June 4, 2012 12:48:41 AM PDT
To: [email protected]
To iTunes Marketing & IP legal
We are Nikoli.Co.Ltd., in Japan.
We would like to inform you about the infringement of our trademark.
Attached please find the documents and links relating to the infringement of
our trademarks.
Our contact information is:
Jimmy Goto
[email protected]
Phone [phone]
Two files attached to the letter: one and two
The requirement is really somehow crazy, besides, my application is not called Sudoku, but sudoku game.
It is clear that you can simply delete the application from the app store, since there is almost no profit from it anyway, but you don’t want to be led by such people.
The question is what threatens me, and what can happen next. The fact that the game may eventually be deleted does not bother me. But I would like to avoid any penalties and problems for my other applications.
Opinions, advice?

Answer 1

The files that are attached to the letter are the Sudoku trademark certificate in Japanese and its translation into Russian. Nikoli have registered the rights to this mark and therefore send letters to Apple. You are not the first and, I think, not the last to receive such letters.
The bottom line is that they can only claim if your game is distributed in the Japanese apple store, they don't have any claim rights in other countries. For example, in the US, the Sudoku trademark cannot be registered, it is not protected. Although there is a "Sudoku Deluxe" sign, the Sudoku element is not guarded in it.
Therefore, the easiest solution to completely get rid of attacks from Nikoli is to remove the game from the Japanese segment. If it is not presented there, then based on the documents they refer to, they have no grounds for making claims.
You can, for example, leave the game in the Japanese segment, then Nikoli can file a claim with you in court (as a general rule, documents are presented at the location of the defendant, but it is possible that Japanese law also implies filing claims in Japan). In court, you can talk about the lack of protection of the Sudoku sign, that in the case of your application there is no confusing similarity. In the worst case, fines and damages. Therefore, in my opinion, it will be easiest to remove the game from the Japanese apple store.

Answer 2

Send a request to apple support to remove their sudoku, as it duplicates the functionality of yours and therefore unnecessary in the app store. Support will decide who to remove. And all claims will already be against them, and not against unknown Asians.

Answer 3

For the emergence of Nikoli.Co.Ltd. Trademark rights outside of Japan require registration of such trademark in the Registry of the International Bureau of the World Intellectual Property Organization in accordance with the Protocol to the Madrid Agreement Concerning the International Registration of Marks, 1989.
Subject to the requirements for using the App Store as set out in the iTunes Product Terms and Conditions, you agree not to use or attempt to use the Stores from locations outside the territory of a particular country. Thus, if an application hosted in the Japanese version of the App Store is intended only for accounts registered in Japan, then the use of a trademark in this application is subject to the jurisdiction of Japanese law. Accordingly, as noirart rightly pointed out , if the application using the disputed trademark is not in the Japanese App Store, there is no violation of the trademark right.
If such an application is present in both the Japanese AppStore and Nikoli.Co.Ltd. goes to court, when considering, in addition to the protectability of the word sudoku, the rules on unfair competition of the Paris Convention for the Protection of Industrial Property, to which Japan and Russia are both parties, will have to be taken into account. In particular, it will be necessary to prove that the use of the word sudoku in the author's application harms Nikoli.Co.Ltd, misleads the public about the nature, properties, suitability for use of the product (in this case, the application), and so on. Given the number of sudoku games on the App Store, this won't be easy.

Answer 4

Everyone has already said above: you need to draw the attention of the support that this is a national trademark, ask to remove your game from the Japanese segment and consider the dispute resolved on this.