カテゴリー: Article 4(1)(xvi)

Japan IP High Court ruled “athlete Chiffon” descriptive in relation to hotel and restaurant services.

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On October 12, 2023, the Japan IP High Court affirmed the JPO refusal decision to TM App no. 2021-93231 for word mark “athlete Chiffon” in class 43 due to a lack of distinctiveness.

[Court case no. Reiwa5(Gyo-ke)10038]

JPO refusal decision

Disputed mark, consisting of two words “athlete” and “Chiffon” in standard character, was filed for use of providing temporary accommodation; accommodation bureaux services; providing foods and beverages in class 43 with The Japan Patent Office (JPO) on July 27, 2021 (TM App no. 2021-93231).

The JPO examiner rejected the mark based on Article 3(1)(iii) and Article 4(1)(xvi) of the Japan Trademark Law by stating that relevant consumers at sight of the disputed mark would merely conceive of a restaurant to provide Chiffon cakes for athletes and it will cause misrepresentation of a particular quality of service when used on other services.

Applicant filed an appeal against the examiner’s rejection. However, the JPO Appeal Board sustained the examiner’s findings and decided to refuse the disputed mark on March 22, 2023.

Appeal to the IP High Court

On April 20, 2023, the applicant filed a lawsuit to dispute registrability of the disputed mark with the IP High Court and asked the court to annul the JPO decision based on the facts that the JPO has allowed registration of lots of trademarks containing the term “athlete”, but none of them restrict its usage of designated goods or services “for athletes”. Cake shops containing a term “Chiffon” in their trade name have even delt with cakes other than chiffon. If so, the JPO obviously made an error in denying distinctiveness of respective term “athlete” and “Chiffon”. Because of it, the JPO refusal decision shall be cancelled.

IP High Court decision

From the produced evidence, the IP High Court found that, in the industry of foods and beverages, terms such as “athlete cake” and “athlete pan cakes” are commonly used to indicate special goods and service for athletes. If so, relevant consumers and traders would consider a term consisting of “athlete” followed by generic word of goods or service as an indication to specify the target of the goods or service (for athletes). “Chiffon” is known in the industry as a term to indicate ‘food that is made light by adding the clear part of eggs that have been beaten’ and commonly used in conjunction with other descriptive term, e.g., “Choco chiffon”, “banana chiffon”, “Valentine chiffon”.

Under the circumstances, the court has a reason to believe that relevant consumers would consider the term “athlete Chiffon” as a mere descriptive indication of the restaurant to provide chiffon (cakes) for athletes when used in relation to the service in question.

Screen capture from “athlete Chiffron” facebook page

A fact that several cake shops containing a term “Chiffon” in their trade name have delt with cakes other than chiffon is irrelevant to the case given the consumers conceive of chiffon cake at sight of the term “athlete Chiffon” when used on restaurant service.

Based on the foregoing, the court held the JPO did not make any error in finding facts and applying trademark law and thus the disputed mark shall be unregistrable under Article 3(1)(iii) and 4(1)(xvi).

JPO Decision: the Volkswagen Beetle 3D shape Lacks Distinctiveness

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The JPO Appeal Board affirmed the examiner’s rejection and decided to refuse IR no. 1379178 for the 3D shape of the Volkswagen Beetle due to a lack of inherent and acquired distinctiveness in relation to goods of classes 9, 28, and 30.

[Appeal case no. 2020-650030, Gazette issued date: January 27, 2023]

VW Beetle

German car giant Volkswagen AG filed a 3D mark representing the iconic VW Beetle car (see below) in relation to various goods including navigation apparatus for vehicles [onboard computers], toy automobiles, scale model automobiles of classes 9, 28, and 30 with the JPO via the Madrid Protocol on December 7, 2017.

The JPO examiner rejected the mark in contravention of Article 3(1)(iii) and 4(1)(xvi) of the Japan Trademark Law on March 19, 2020, by stating that the mark merely represents a common shape of goods when used on toy automobiles, scale model automobiles of class 28 and chocolate and desserts, ice creams, frozen yogurts and sorbets of class 30, and consumers will misunderstand the quality of goods when used on other designated goods.

Appeal by Volkswagen

Volkswagen filed an appeal against the rejection on July 2, 2020, and argued the inherent and acquired distinctiveness of the 3D mark as a result of substantial use on VW’s automobiles (cl. 12) for more than six decades and around 21.5 million units cumulatively.

JPO Decision

The Appeal Board at its discretion found plenty of goods in the shape of cars promoted for sale in relation to toy automobiles, scale model automobiles (cl. 28), and chocolate and desserts, frozen yogurts, and sorbets (cl. 30).

Bearing this fact in mind, the Board has a reason to believe the applied mark is adopted for a purpose of enhancing function or the aesthetic appeal of the goods in question. If so, the shape still remains within the scope of the descriptive shape of goods and shall be unregistrable due to a lack of inherent distinctiveness in relation to these goods.

Furthermore, the Board pointed out that Volkswagen stopped manufacturing cars in the shape of the applied mark in 2003. There is reasonable doubt that the 3D mark has been famous as a source indicator of VW cars after a lapse of twenty years. Besides, the applicant has not produced any evidence to demonstrate the actual use of the 3D shape on goods in classes 9, 28, and 30 and its sales.

Based on the foregoing, the Board found the 3D mark lacks inherent and acquired distinctiveness in relation to the goods in question and dismissed the appeal entirely.

TM Race: Which is Registrable, “Virtual Marathon” or “Virtual Tokyo Marathon”?

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In a recent administrative decision, the Japan Patent Office (JPO) found the word mark “Virtual Marathon” lacks distinctiveness in relation to marathon races of class 41 although the JPO admitted registration of the word mark “Virtual Tokyo Marathon” in the same class.

[Appeal case no. 2022-001910, Decision date: December 12, 2022]

Virtual Marathon

During the COVID-19 pandemic when large gathering in person is not possible, many major running decided to go virtual around the globe.

On March 30, 2020, R-bies Co., Ltd., a Japanese company managing sports events and sports media, filed a word mark “Virtual Marathon” written in Japanese Katakana characters (see below) for use on various goods and services including marathon races in classes 9, 41, and 42.

Virtual Tokyo Marathon

Three months later, Tokyo Marathon Foundation filed a trademark application for the word mark “Virtual Tokyo Marathon” in standard character on various goods and services in classes 9, 35, 36, 38, 41, 42, and 45.

The JPO did not raise any objection to the Virtual Tokyo Marathon mark and granted protection on June 21, 2021.

Examiner’s Refusal

In the meantime, on April 7, 2021, the JPO examiner raised her objection to the Virtual Marathon mark due to a lack of inherent distinctiveness in relation to sports events and marathon races of class 41 by stating that the term “virtual marathon” is commonly used to indicate an organized event where participants run a full marathon in an individual place of their choice during a specific date range tracked on an app on their smartphones. If so, the mark “Virtual Marathon” shall not meet the requirements of Article 3(1)(iii) of the Japan Trademark Law. The applicant filed a written response and argued the distinctiveness of the mark, however, the examiner did not withdraw her objection and decided to reject the entire application on November 8, 2021.

R-bies Co., Ltd. filed an appeal to the refusal on February 8, 2022, and argued the inherent distinctiveness of the Virtual Marathon mark by citing a junior trademark application for the “Virtual Tokyo Marathon” mark that was considered distinctive in relation to the same goods and services (TM Reg no. 6420795).

JPO decision

The JPO Appeal Board affirmed the examiner’s findings by citing a lot of web articles pertinent to virtual marathon races organized in Japan.

Under the circumstance, the Board has a reason to believe that relevant consumers at the sight of the Virtual Marathon mark are likely to conceive of online footrace in which each participant goes out and runs the full marathon in their own time, not as a source indicator of sports event managed by R-bies Co., Ltd. or other specific entity.

Based on the foregoing, the Appeal Board upheld the examiner’s refusal and decided to reject the word mark “Virtual Marathon” in contravention of Article 3(1)(iii).

As a matter of interpretation of the Trademark Law, provided that “Virtual Marathon” is to be rejected under Article 3(1)(iii), “Virtual Tokyo Marathon” shall be rejected on the same ground as well unless Tokyo Marathon Foundation demonstrates acquired distinctiveness of the mark as a result of substantial use. I believe it is impossible because the Tokyo Marathon was never virtually started before registration.

Does “GRILL SWISS” mislead quality when used on non-Swiss confectionary?

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The Opposition Board of Japan Patent Office (JPO) decided Trademark Registration no. 6372876 for the “GRILL Swiss” mark would be unlikely to mislead consumers as to the quality of goods in class 30 even when used on non-Swiss confectionary.

[Opposition case no. 2021-900258, Gazette issue date: July 29, 2022]

Opposed mark

Opposed mark, outlined letters of “GRILL Swiss” on a red background, was applied for use on various goods and services in classes 29, 30, and 43 without any geographical restriction of the origin of respective goods and services on April 9, 2019, by Ginza Grill.

The opposed mark has been used on a Western food restaurant in Ginza, Tokyo since 1947.

The JPO granted protection of the mark and published for opposition on April 27, 2021.

Opposition by Choco Swiss

Choco Swiss filed an opposition against the “GRILL Swiss” mark in contravention of Article 4(1)(xvi) of the Trademark Law.

Article 4(1)(xvi) is a provision to prohibit the registration of a trademark that is likely to mislead as to the quality of the goods or services.

The Trademark Examination Guideline (TEG) provides an example that the “SWISSTEX” mark for use on watches shall be unregistrable based on the article. It should be noted that the mark can be registered in the event that the goods are amended to Swiss-made watches.

Opponents claimed the opposed mark “GRILL Swiss” caused a misunderstanding of the quality of following goods in class 30 when used on non-Swiss foods.

Aromatic preparations for food, not from essential oils; Tea; Coffee [roasted, powdered, granulated, or in drinks]; Prepared coffee and coffee-based beverages; Cocoa [roasted, powdered, granulated, or in drinks]; Prepared cocoa and cocoa-based beverages; Ice; Confectionery; Bread and buns; Sandwiches; Steamed buns stuffed with minced meat [Chuka-manjuh]; Hamburgers [sandwiches]; Pizzas; Hot dog sandwiches; Meat pies; Seasonings [other than spices]; Spices; Unroasted coffee beans; Cereal preparations; Chocolate spread; Chinese stuffed dumplings [Gyoza, cooked]; Chinese steamed dumplings [Shumai, cooked]; Sushi; Fried balls of batter mix with small pieces of octopus [Takoyaki]; Boxed lunches consisting of rice, with added meat, fish or vegetables; Ravioli; Cooked rice; Cooked curry rice; Cooked curry rice with fried pork, rice with hashed meat; omelet with a filling of ketchup‐seasoned fried rice; Instant confectionery mixes; Pasta sauce; Husked rice; Husked oats; Husked barley; Gluten for food; Flour.

Opponents argued the opposed mark uses the word “Swiss” in a prominent manner, which indicates Switzerland. Besides, the white-outlined letters on a red background give consumers an impression of Switzerland because of the same color as the Swiss flag. Therefore, if the opposed mark is used on non-Swiss foods including Swiss confectionary, a famous origin of chocolate, relevant consumers would inevitably misunderstand as if the goods bearing the opposed mark were originally manufactured and sold in Switzerland.

JPO Decision

The Opposition Board found both words “GRILL” and “Swiss” are less distinctive as a source indicator in relation to the goods in question equivalently. Being that the term “GRILL Swiss” would not give rise to any specific meaning, the Board held the literal element of the opposed mark is a coined word. If so, it is unlikely that relevant consumers consider the word “SwiSS” of the opposed mark as an indication to represent a specific quality of the goods including confectionery.

Based on the above findings, the Board decided the opposed mark contains a coined word within the red device and it would not represent the quality (place of production, place of sale, etc.) of the goods in question. If so, the opposed mark shall not be canceled in contravention of Article 4(1)(xvi) and remains valid as the status quo.

Patagonia Inc Failed in Registering “PATAGONIA”

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On December 15, 2021, the Japan Patent Office (JPO) affirmed the examiner’s rejection to protect a wordmark “PATAGONIA” for seafood in class 29 and dismissed an appeal filed by Patagonia Inc. due to a lack of distinctiveness.

[Appeal case no. 2020-16786]

“PATAGONIA”

An American clothing company that markets and sells outdoor clothing, Patagonia Incorporated, filed a divided-trademark application for wordmark “PATAGONIA” in standard character on goods of ‘fresh, chilled or frozen edible aquatic animals (not live); blue mussels, not live; oysters, not live; processed seafood products; soups’ in class 29 on August 19, 2019 (TM Application no. 2019-110730).

The JPO examiner rejected the mark in contravention of Articles 3(1)(iii) and 4(1)(xvi) of the Japan Trademark Law on August 24, 2020.

The examiner asserted “PATAGONIA” refers to a geographical region that encompasses the southern end of South America and is a popular tourist destination for nature-lovers and adventure-seekers. Since Patagonia travel guides often have contents of Patagonia’s seafood, it is likely that relevant consumers and traders at the sight of seafood bearing the wordmark “PATAGONIA” with ordinary care would conceive the goods from the Patagonia region and see it as an indication of the origin of seafood.

If so, whenever the mark is used on seafood, not from the Patagonia region, it inevitably misleads the quality of goods.

Appeal by Patagonia Inc.

On December 7, 2020, Patagonia Inc. filed an appeal against the rejection and argued the term “Patagonia” is frequently accompanied by “region” or “sea” when used to indicate the origin of seafood because Patagonia is neither a nation nor a specific province but is a region comprising of all southerly Chile and Argentina. Being that the applied mark “PATAGONIA” has acquired a substantial degree of reputation and popularity in connection with apparel as a source indicator of Patagonia Inc., relevant consumers would rather conceive of a famous apparel brand at the sight of seafood bearing the mark “PATAGONIA.”

Besides, it is questionable if relevant consumers are familiar with the Patagonian Sea as an origin of seafood available in Japan.

JPO decision

The JPO Appeal Board found the mark “PATAGONIA” lacks distinctiveness in connection with the goods in question by stating that fish and seafood from the Patagonian Sea have been imported to Japan over the past three decades. The term “Patagonia” perse or its transliteration written in Japanese Katakana character has been used to indicate the origin of the goods. Under the circumstances, it is unquestionable that relevant consumers at the sight of seafood bearing the mark “PATAGONIA” would see it as an indication of the origin of the goods.

The Board did not question the famousness of the “PATAGONIA” mark in connection with outdoor-related goods. However, the Board denied the distinctiveness of the mark in relation to seafood even though Patagonia Inc. has promoted seafood for sale in Japan since 2016 because the mark in question is not used, but “PATAGONIA PROVISIONS”.

Based on the foregoing, the Board dismissed the entire allegations and decided to reject the mark in contravention of Article 3(1)(iii).

SMART vs SMART TYRE

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The Japan Patent Office (JPO) dismissed an opposition against trademark registration no. 6227071 for work mark “SMART TYRE” over a tire and other goods in class 12 claimed by Daimler AG who argued the mark is confusingly similar to senior registrations for the “SMART” mark in the same class owned by smart Automobile Co., Ltd.
[Opposition case no. 2020-900136, Gazette issued date: December 25, 2020]

“SMART TYRE”

The opposed mark, composing of wordmark “SMART TYRE” written in standard character, was sought for registration by Sumitomo Rubber Industries, Ltd., famous for “DUNLOP” tire brand, by designating various tires, automobiles, motorcycles, bicycles, and its structural parts and accessories in class 12 on August 21, 2018.  
[TM Application no. 2018-105830]

The mark was registered and published for opposition on March 10, 2020.

Opposition by Daimler AG

On May 11, 2020, just before the lapse of a two-months opposition period, Daimler AG filed an opposition before the JPO and claimed that the opposed mark shall be canceled in contravention of Article 4(1)(xi) and (xvi) of the Japan Trademark Law by citing senior trademark registrations for the “SMART” mark (see below) in class 12, which the opponent allegedly has used on the micro compact cars since 1998.

Daimler AG argued the opposed mark is a composite mark consisting of “SMART” and “TYRE”. The term “TYRE” undoubtedly lacks distinctiveness in relation to the goods of ‘tires’. If so, the dominant portion of the opposed mark shall be the term “SMART” which is identical to the cited marks. Besides, the ‘tires’ is considered as a structural part of automobiles and thus deemed similar to automobiles designated under the citations.

Therefore, the opposed mark shall be canceled based on Article 4(1)(xi).

Article 4(1)(xi) is a provision to prohibit registering a junior mark that is deemed identical with, or similar to, any senior registered mark.

Board decision

Surprisingly, the Opposition Board of the JPO found the opposed mark “SMART TYRE” shall be considered in its entirety irrespective of the fact that the term “TYRE” means ‘tire’. In addition, the Board held the opposed mark does not give rise to any specific meaning at all, and it is deemed a coined word.

Based on this finding, the Board assessed the similarity of marks as follows.

From appearance, both marks are sufficiently distinguishable since the opposed mark contains the term “TYRE” unlike the citations.

Phonetically, the opposed mark consists of seven sounds. In the meantime, the citations have four sounds. Due to the difference, relevant consumers are unlikely to confuse both marks.

The citations truly give rise to adjective meanings of ‘clever, bright, intelligent’. Meanwhile, the opposed mark has no meaning.

Therefore, the opposed mark “SMART TYRE” is dissimilar to the citations from visual, phonetical, and conceptual points of view even if the goods in question is deemed similar to the citations.

By stating that the term “TYRE” is inseparably and tightly incorporated into the opposed mark to the extent that relevant consumers would not conceive it as a descriptive indication in relation to the goods of class 12, the Board concluded the opposed mark shall not cause misapprehension of quality even when used on goods in question other than tires.

Based on the foregoing, the Board decided the opposed mark shall not be canceled in contravention of Article 4(1)(xi) and (xvi) of the Trademark Law and allowed “SMART TYRE” to survive.

The JPO’s finding does not look reasonable to me. It is clear that “TYRE” indicates ‘tire’. I suppose the Board rather should have mentioned the term “SMART” nowadays becomes generic when used in combination with the descriptive word(s) on the goods in question.

El Clasico Scores a Goal in Trademark Race

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The Japan Patent Office (JPO) overturned the examiner’s refusal and decided to register the “El Clasico” mark in connection with sporting activities, production of sports events, sports information services, and other services of class 41 by finding the term shall not be recognized as football matches between FC Barcelona and Real Madrid C.F.
[Appeal case no. 2019-650060, Gazette issued date: October 30, 2020]

El Clasico

“El Clasico” is a magical phrase to make football fans passionate, emotional, and excited. The meaning of El Clasico is the Spanish name that is given to any football match between fierce Spanish rivals Real Madrid and Barcelona FC. The literal translation of El Clasico is ‘The Classic’. According to the Cambridge Dictionary, “El Clasico” is defined as ‘any of the games played between the football teams Real Madrid and Barcelona’. Being that this rivalry can be dated back to the 1930s and ever since then, it is one of the most viewed annual sporting events.

Liga Nacional de Fútbol Profesional, the administrator of the Spanish football league, aka LaLiga, applied for registration of the “El Clasico” mark (see below) in relation to sporting activities, production of sports events, sports information services, and other services of class 41 via the Madrid Protocol (IR No. 1379292).

On August 15, 2019, the JPO examiner refused the applied mark due to a lack of distinctiveness in contravention of Article 3(1)(iii) of the Trademark Law. Examiner asserted that the term “El Clasico” gets to be known as football matches between FC Barcelona and Real Madrid C.F. If so, relevant consumers would conceive that services bearing the applied mark just relate to football matches between two teams. In this respect, the applied mark shall not be registrable based on Article 4(1)(xvi) as well since the consumers would mistake its nature when used on service unrelated to football matches between two teams.

LaLiga filed an appeal against the refusal on November 15, 2019.

JPO Appeal Board’s decision

The Appeal Board overturned the examiner’s decision by stating that relevant consumers and traders at the sight of the applied mark are unlikely to see the mark to represent football matches between indicate FC Barcelona and Real Madrid C.F. immediately when used on services in question.

Taking into account less familiarity with the Spanish language among relevant consumers in Japan and the literal meaning of ‘The Classic’, the Board found the term “El Clasico” would be conceived as a coined word in its entirety. Furthermore, the Board could not identify any fact that the term is commonly used to represent a specific nature or quality in connection with the services in question.

Based on the foregoing, the Board concluded the refusal shall be disaffirmed since the examiner erroneously found the applied mark “El Clasico”.

Sweet, but long road to register “Ghana” on chocolates

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The Japan Patent Office (JPO) allowed trademark registration of “Ghana” in connection with chocolates of class 30 by finding acquired distinctiveness as a source indicator of Lotte Co., Ltd., a Korea-based confectionary company.
[Appeal case no. 2019-8784, Gazette issued date: May 29, 2020]

Lotte “Ghana” Chocolates

Ghana chocolate is Lotte’s signature product and one of the most beloved chocolate in Japan for many years.

Lotte Co., Ltd. launched chocolates bearing the “Ghana” mark in 1964. Since then, the mark has been prominently indicated on the packages.

[“Ghana” chocolate package back in 1970’s – TM Reg no. 892507]

In 1994 of the 30th anniversary, Lotte slightly changed the design of its package and the mark and added different tastes of “Ghana” chocolates, e.g. milk chocolates, white chocolates. On new packages, the “Ghana” mark is much conspicuously and largely indicated than before.

[Current package – TM Reg no. 5405402, registered on April 8, 2011]

On December 8, 2017, Lotte sought trademark registration for the current “Ghana” logo (see below) over chocolates in class 30. [TM application no. 2017-161593]

Article 3(1)(iii) & 4(1)(xvi)

The JPO rejected the “Ghana” mark in contravention of Article 3(1)(iii) and 4(1)(xvi) of the Japan Trademark Law by stating that “Ghana” is a geographical indication corresponding to Republic of Ghana, a country of western Africa, situated on the coast of the Gulf of Guinea, one of the major producers of high-quality cocoa beans. Therefore, relevant consumers and traders at the sight of chocolates bearing the “Ghana” mark would merely conceive it of the origin of cocoa beans. Besides, whenever the mark is used on chocolates not made from Ghana cocoa beans, it inevitably misleads the quality of goods.

Acquired distinctiveness

Lotte argued the “Ghana” mark shall be protectable based on Article 3(2), even if nominally unregistrable under Article 3(1)(iii) because it has acquired distinctiveness as a result of substantial and continuous use on chocolates in Japan.

Article 3(2) of the Trademark Law

Notwithstanding the preceding paragraph, a trademark that falls under any of items (iii) to (v) of the preceding paragraph may be registered if, as a result of the use of the trademark, consumers are able to recognize the goods or services as those pertaining to a business of a particular person.

Appeal Board decision

The Appeal Board affirmed examiner’s rejection pertinent to lack of distinctiveness in connection with goods in question, however, the Board held that the “Ghana” mark would function as a source indicator of Lotte chocolates consequently and thus registrable based on the acquired distinctiveness under Article 3(2).

Allegedly Lotte “Ghana” chocolates hold top-ranked market share in Japan since 2017. In 2008, Lotte sold more than 100 million bars of “Ghana” chocolates. The annual sales exceeded 1.2 billion JP-yen in 2017.

Lotte has long been aggressive not only to advertise “Ghana” chocolates in newspapers, TV commercials, trains, and stations, but also to launch lots of chocolate events and campaigns on Valentine’s Day or Mother’s Day nationwide, and collaborations with retailers, hotels restaurants featuring ‘Ghana’ chocolates.

Due to their marketing efforts, Lotte “Ghana” brand chocolates could win several awards, e.g. Monde Selection ‘Gold Award’ (2008, 2009, 2010), D2C ‘Marketing Award’ (2002), The Japan Food Journal ‘Long Seller Award’ (2008), DENTSU ‘Excellent Award’ (2009, 2010, 2011), JR East ‘Excellent Advertisement Award’’.

Besides, “Ghana” chocolates ranked top in the brand survey published by Nikkei Research in 2016.

Lotte could eventually achieve registration of the “Ghana” mark on chocolates, but it spent more than five decades to that end.

Interestingly. Lotte has registered the “GANA” mark on goods of class 30 including chocolates since 1990. It must aim to prevent a third party from registering any mark similar to “Ghana”.

SWATCH Defeated in SWATCH vs iWATCH Trademark Dispute

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The Trial Board of Japan Patent Office (JPO) dismissed an invalidation petition by Swiss watch giant, Swatch against TM Reg. no. 5849925 for word mark “iWATCH” owned by U.S. tech giant, Apple Inc.
[Invalidation case no. 2017-890071, Gazette issue date: January 31,2020]

iWATCH

Disputed mark, consisting of a word “iWATCH” in plain block letters (see below), was applied for registration in the name of Apple Inc. on April 25, 2014 in respect of watches, clocks and other goods in class 14.

Immediately after registration on May 13, 2016, Swatch filed an opposition to challenge registrability of disputed mark based on Article 3(1)(iii), 3(1)(vi), 4(1)(xi), 4(1)(xv), 4(1)(xvi) of the Japan Trademark Law, but in vain. [Opposition case no. 2016-900234]

Article 3(1)(iii) is a provision to prohibit any mark from registering where the mark solely consists of elements just to indicate, in a common manner, the place of origin, place of sale, quality, materials, efficacy, intended purpose, quantity, shape (including shape of packages), price, the method or time of production or use.

Article 3(1)(vi) is a comprehensive provision to prohibit any mark lacking inherent distinctiveness from being registered.

Article 4(1)(xi) is a provision to refrain from registering a junior mark which is deemed identical with, or similar to, any senior registered mark.

Article 4(1)(xv) provides that a mark shall not be registered where it is likely to cause confusion with other business entity’s well-known goods or services, to the benefit of brand owner and users’ benefits.

Article 4(1)(xvi) is a provision to prohibit registration of any mark likely to mislead quality of goods or services.

Invalidation Trial

Japan Trademark Law provides a provision to retroactively invalidate trademark registration for specific grounds under Article 46 (1).

In an effort to argue against the opposition decision, Swatch filed a petition for invalidation against disputed mark on October 23, 2017. Swatch argued disputed mark “iWATCH” shall be invalid because of following reasons:

  1. Given disputed mark consists of an alphabet letter “i” and a generic term in relation to a designated goods ‘watch’, the mark can be merely perceived to indicate a value, code, type, mode or standard of ‘watch’. If so, disputed mark shall be lack of distinctiveness and revocable under Article 3(1)(vi) in relation to the goods.
  2. Likewise, relevant consumers would misconceive quality of goods when disputed mark is used on goods other than ‘watch’ in class 14, e.g. jewelry, key holders, jewelry boxes, accessories. If so, disputed mark shall be revocable under Article 4(1)(xvi) in relation to goods other than ‘watch’.
  3. Disputed mark “iWATCH” resembles “SWATCH” from visual and phonetic points of view. It is unquestionable SWATCH has become remarkably famous for watches and fashion items of Swatch Group. If so, a likelihood of confusion will arise between “iWATCH” and “SWATCH” when disputed mark is used on goods in class 14. Thus, disputed mark is revocable under Article 4(1)(xi).

Board Decision

In the decision, the Board sided with Apple Inc. and found that:

  • The Board considers the term “iWATCH” is a coined word in its entirety which does not give rise to any specific meaning at all. Therefore, it is unlikely that relevant consumers conceive disputed mark just as a qualitative indication of goods in question.
  • The Board admits “SWATCH” has been acquired a high degree of reputation and popularity among relevant consumers and traders as famous watch of Swatch Group. In the meantime, the term appears less unique and creative since it is a dictionary word meaning ‘a sample piece (as of fabric) or a collection of samples’.
  • Difference on initial letter of both marks shall not be negligible on the case. The Board has no good reason to believe both marks are deemed similar from visual, phonetic and conceptual points of view.
  • If so, it is unlikely to happen that relevant consumers with an ordinary care would associate or misconceive disputed mark with Swatch or any entity systematically or economically connected with claimant even when used on ‘watch’.

Based on the foregoing, the Board concluded “iWATCH” shall be irrevocable in relation to “SWATCH” and dismissed Swatch’s invalidation petition wholly.

GEOGRAPHICAL INDICATION BOURBON LOSES TRADEMARK OPPOSITION

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In a recent decision, the Japan Patent Office (JPO) has dismissed the opposition filed by Distilled Spirits Council of the United States (DISCUS), a US non-profit organization which represents the interests of producers and traders of spirit drinks, including Bourbon whiskey, against trademark registration no. 5927252 for the word mark “ROYCE’ BOURBON” for bourbon whiskey in class 33.

[Opposition case no. 2017-900181, Gazette issued on March 29, 2019]

 

ROYCE’ BOURBON

Opposed mark (see below) is a combination of “ROYCE” with apostrophe and “BOURBON” written in a plain roman type.

ROYCE’ BOURBON was filed in January 25, 2016 by a Japanese confectionery company, ROYCE’ Confect Co., Ltd., headquartered in Hokkaido, for bourbon whiskey in class 33.

JPO, going through substantive examination, admitted registration and published for opposition on April 4, 2017.

 

TRADEMARK OPPOSITION

On June 2, 2019, before the lapse of a two-months opposition period, DISCUS filed an opposition, arguing that the word ‘BOURBON’ in the mark applied for would allow consumers to establish a link between the geographical indication Bourbon and “bourbon whiskey”. Therefore, the use and registration of the mark by unrelated entity to Bourbon County, Kentucky (USA) would dilute and exploit the reputation of the geographical indication [Bourbon]. Opposed mark shall be prohibited from registration based on Article 4(1)(vii) of the Trademark Law as well as Article 4(1)(xvi) since the mark is likely to offend public order and cause misconception in quality.

 

BOARD DECISION

The Board admitted Bourbon is an indication of origin/geographical indication from the United States to represent an American Whiskey produced mainly in the southern part of Kentucky State. However, the Board considered opposed mark shall neither offend public order nor cause misconception in quality, stating that:

To the extent opposed mark just covers “bourbon whiskey”, appropriate use of the mark would not disorder fair deal and international trade practice. If so, the Board finds no clue to conclude the applicant adopted the mark with intentions to free ride the reputation of the geographical indication [Bourbon].

Likewise, as long as the Bourbon denomination may be used only for products manufactured in Kentucky by regulations, the designated goods “bourbon whisky” is unquestionably from the US. If so, opposed mark ROYCE’ BOURBON would not cause qualitative misconception in the minds of relevant consumers in relation to “bourbon whiskey” at all.

Based on the foregoing, the Board decided opposed mark shall not be objectionable under Article 4(1)(vii) and (xvi), and granted registration a status quo.