カテゴリー: Device mark

Dropbox Unsuccessful in Trademark Opposition over Open Box Logo

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On April 7, 2022, the Opposition Board of the Japan Patent Office (JPO) dismissed a trademark opposition filed by Dropbox, Incorporated against TM Reg no. 6385226 for an open box device mark due to dissimilar to the Dropbox logo.

[Opposition case no. 2021-900281]

TM Reg no. 6385226

The opposed mark, consisting of an open box device mark depicted in a white circle and green outline (see below), was applied with the JPO on April 8, 2020, for use on computer application software; downloadable computer programs; downloadable image files via internet in class 9 and computer software design; computer programming; providing computer programs on data networks; rental of SNS server memory space in class 42 by Jiraffe Inc.

The JPO granted protection on April 6, 2021, and published for opposition on May 25, 2021.

Opposition by Dropbox

Opponent, Dropbox, Incorporated alleged the opposed mark shall be canceled in contravention of Article 4(1)(x), (xi), and (xix) of the Japan Trademark Law by citing earlier trademark registrations for the Dropbox “open box” device in classes 9, 38, and 42.

Dropbox argued, that the basic overall configuration of the open box looks almost identical to the opponent mark. Because of it, both marks give rise to the same sound and concept. Besides, the opponent mark has acquired a certain degree of popularity and reputation as a source indicator of Dropbox. If so, relevant consumers would confuse the source of goods and services bearing the opposed mark with Dropbox due to a high degree of similarity of the marks.

JPO decision

At the outset, the JPO Opposition Board did not admit a substantial degree of reputation and popularity of the opponent mark by stating that sufficient evidence was not produced by the opponent for the Board to convince such reputation.

The Board found both the opposed mark and opponent mark would not give rise to any specific sound and meaning from the overall configuration regardless of finding that the respective box device looks like an “open box”.

In assessing the similarity of the marks, the Board did not directly compare the resemblance between open boxes. Instead, by means of overall comparison, the Board considered both marks are visually distinguishable due to the difference in color and a white circle and green outline. Being that there is no clue to find similarities in sound and concept, the Board has no reason to believe both marks are likely to cause confusion from visual, phonetic, and conceptual points of view.

Based on the foregoing, the JPO found the entire allegations of Dropbox groundless and dismissed the opposition accordingly.

Trademark Parody case: Champion Defeated by Nyanpion

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On March 16, 2022, the Japan Patent Office (JPO) dismissed an opposition filed by HBI Branded Apparel Enterprises, LLC against TM Reg no. 6368388 for the mark “Nyanpion” with a device due to dissimilarity to and the unlikelihood of confusion with the famous apparel brand “Champion.”

[Opposition case no. 2021-900230]

Opposed mark

A Japanese individual applied a composite mark consisting of a stylized word “Nyanpion” and a cat device (see below) for use on apparel, headgear, footwear, sports shoes, and sportswear in class 25 with the JPO on August 25, 2020.

The JPO examiner granted protection of the opposed mark on January 29, 2021, and published for opposition on April 13, 2021.

T-shirts, sweats, hoodies, and tote bags bearing the Nyanpion mark have been promoted for sale with a catchword of “Champion” parody.

I should note that “Nyan” is the sound cats make in Japan. Because of it, “Nyanpion” easily reminds us of a combination of cat sounds and “Champion”.

Opposition by Champion

To oppose registration within a statutory period of two months counting from the publication date, HBI Branded Apparel Enterprises, LLC filed an opposition against the opposed mark on June 14, 2021.

HBI argued the opposed mark shall be canceled in contravention of Article 4(1)(vii), (x), (xi), (xv), and (xix) of the Japan Trademark Law because of the remarkable reputation and popularity of the Champion brand in relation to apparels and a high degree of similarity between the opposed mark and its owned trademark registrations (see below) to the extent that relevant consumers are likely to confuse a source of the goods in question bearing the opposed mark with “Champion”.

JPO Decision

The JPO Opposition Board admitted that the “Champion” mark has acquired a high degree of reputation as a result of substantial use in Japan for more than four decades and become famous as a source indicator of the opponent.

In the meantime, the Board negated the similarity between the marks by stating that:

From the appearance, the difference in the prefix of literal elements, “Nyanpion” and “Champion” would suffice for relevant consumers to distinguish them. The figurative element of the opposed mark represents a cat’s face. The opponent device mark gives rise to an impression of a letter “C”. If so, both marks are sufficiently distinguishable in appearance.

Phonetically, “Nyanpion” is easily distinguishable from “Champion” because of the difference in the first sound given both marks just consist of five sounds respectively.

Conceptually, the opposed mark does not give rise to any specific meaning. Meanwhile, the opponent mark has a meaning of someone or something, especially a person or animal, that has beaten all other competitors in competition and ‘famous apparel brand.’ If so, both marks are dissimilar in concept.

By virtue of a low degree of similarity, the Board found relevant consumers are unlikely to confuse or associate the source of the goods bearing the “Nyanpion” mark with “Champion” and any entity systematically or economically connected with the opponent.

Based on the foregoing, the JPO dismissed the entire allegations and decided the opposed mark shall remain valid as the status quo.

Lacoste Prevails in Trademark Parody Case

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On February 18, 2022, the Japan Patent Office (JPO) decided in favor of Lacoste and canceled Japanese TM Registration No. 6289888 for a flipped crocodile device mark in class 25 due to a likelihood of confusion with the famous crocodile logo of Lacoste.

[Opposition case no. 2020-900312, Decision date: February 18, 2022]

Opposed mark

The opposed mark, consisting of flipped crocodile device and term “OCOSITE” (see below), was filed by a Japanese individual for use on clothing, footwear, headgear, sports shoes, and sportswear in class 25 on March 17, 2020.

T-shirts printing the opposed mark are promoted for sale with a catchphrase of “funny parody T-shirt.” As the term, “OCOSITE” means ‘wake me up, get me up’ in Japanese, the opposed mark gives rise to the meaning of a crocodile struggling to get up.

The opposed mark was registered on September 9, 2020, and published for opposition on September 29, 2020.

Opposition by Lacoste

It was anything but funny to the luxury sportswear brand, Lacoste.

Lacoste filed an opposition on November 27, 2020, within a statutory period of two months counting from the publication date.

In the opposition, Lacoste claimed the opposed mark shall be canceled in contravention of Article 4(1)(vii), (xv), and (xix) of the Japan Trademark Law on the grounds that a flipped crocodile device of the opposed mark closely resembles the world-famous Lacoste crocodile logo from its appearance.

Besides, the term “OCOSITE” is depicted in a similar font to “LACOSTE” and five letters “COS” and “TE” among seven letters are identical. Given the close resemblance between crocodile devices and the meaning of “OCOSITE”, relevant consumers at the sight of clothing and sportswear bearing the opposed mark would immediately conceive of the Lacoste crocodile struggling to get up and thus likely to confuse its souse with Lacoste.

JPO decision

The Opposition Board of JPO admitted a substantial degree of reputation and popularity of the Lacoste crocodile logo in relation to clothing, footwear, and sportswear.

The Board found a high degree of similarity between the flipped crocodile of the opposed mark and the Lacoste crocodile. Noticeably, the Board held respective element, namely, the crocodile device and the term “OCOSITE” of the opposed mark shall not be inseparably combined as a whole regardless of close adjacency.

In view of a high degree of reputation and originality of the opponent mark, and close association between the opponent business and the goods in question, the Board has reason to believe relevant consumers with an ordinary care would be likely to confuse the source of goods bearing the opposed mark with Lacoste or any business entity systematically or economically connected with the opponent.

Based on the foregoing, the JPO sided with Lacoste and decided to cancel the opposed mark in contravention of Article 4(1)(xv).

Failed trademark opposition by Disney over a 3-circle silhouette

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In a recent decision, the Japan Patent Office (JPO) dismissed an opposition filed by Disney Enterprises, Inc. against TM Reg no. 6303837 for a composite mark containing a three-round device due to a low degree of similarity to famous Mickey’s 3-circle silhouette.

[Opposition case no. 2021-900006, Gazette issued date: September 24, 2021]

Opposed mark

Aoki shofuan Co., Ltd., a Japanese confectionery maker, applied a composite mark consisting of words “TSUKIGESHO”, “FACTORY”, its Japanese language and a three-round device (see below) for use on retail or wholesales service in relation to confectionery, processed foods and beverage (tea, coffee, cocoa) in class 35 with the JPO on October 21, 2019.

The JPO examiner granted protection of the opposed mark on September 23, 2020, and published for opposition on November 4, 2020.

Opposition by Disney

To oppose against registration within a statutory period of two months counting from the publication date, Disney Enterprises, Inc. filed an opposition against the opposed mark on January 4, 2021.

Disney argued the opposed mark shall be canceled in contravention of Article 4(1)(x), (xi), (xv), and (xix) of the Trademark Law because of the remarkable reputation and popularity of Mickey’s 3-circle silhouette (see below) as a source indicator of Disney and a high degree of similarity between the opposed mark and the opponent’s famous mark.

JPO decision

The JPO Opposition Board did not question the famousness of Mickey’s 30-circle silhouette as a source indicator of Disney and their business since most consumers would conceive a world-famous iconic character “Mickey Mouse” at the sight of the silhouette.

In the meantime, the Board negated similarity between the marks by stating that:

  1. From appearance, both marks are easily distinguishable because the opposed mark contains distinctive literal elements “TSUKIGESHO” and its Japanese language written in a conspicuous manner, and the figurative element (three round silhouette) is depicted upside down.
  2. Phonetically, both marks are quite dissimilar because the opponent mark does not give rise to a pronunciation contrary to the opposed mark.
  3. Conceptually, although the opposed mark does not give rise to any specific meaning, both marks are dissimilar given the opponent mark is well-known for an indication of Mickey Mouse.
  4. In view of different configuration of the figurative element by depicting three circles upside down, relevant consumers are unlikely to associate the three-round device of the opposed mark with Mickey Mouse. If so, the figurative element would not be considered as a prominent portion to play a source indicator of the opposed mark.

Based on the foregoing, the JPO found both marks are too dissimilar to cause a likelihood of confusion. If so, the Board can’t find reasonable grounds to believe the opposed mark shall be canceled under Article 4(1)(x), (xi), (xv), and (xix) and decided to dismiss the opposition.

Failed Opposition by Longines over Winged Hourglass logo mark

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The Japan Patent Office (JPO) dismissed a trademark opposition claimed by Swiss luxury watchmaker, Longines Watch Co., Francillon Ltd., against Japanese trademark registration no. 6165986 by finding dissimilarity to Longine winged hourglass logo.
[Opposition case no. 2019-900301, Gazette issued date: August 27, 2021]

Opposed mark

Opposed mark, consisting of a winged device (see below right), was filed by a Chinese undertaking on July 11, 2018, for use on jewelry, clocks, watches, chronometers, and other goods in class 14.

The JPO admitted registration of the opposed mark on July 26, 2019, and published for post-grant opposition on August 20, 2019.

Opposition by Longines

To oppose against registration within a statutory period of two months counting from the publication date, Compagnie des Montres Longines, Francillon S.A. filed an opposition on October 18, 2019.

In the opposition brief, Longines asserted the opposed mark shall be retroactively canceled in contravention of Article 4(1)(vii), (x), (xi), and (xix) of Japan Trademark Law due to a resemblance to Longine’s famed winged hourglass logo (see above left).

Article 4(1)(vii) prohibits any mark likely to cause damage to public order or morality from registration.

Article 4(1)(x) prohibits registering a trademark that is identical with, or similar to, other entity’s well-known mark over goods or services closely related to the entity’s business.

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

Article 4(1)(xix) prohibits registering a mark that is identical with, or similar to, another entity’s famous mark, with an aim to gain unfair profits, or cause damage to the entity, even if goods or services sought for registration are unrelated to the entity’s business.

JPO decision

The JPO Opposition Board did admit a certain degree of the reputation of wordmark “LONGINES” from the produced evidence. In the meantime, the Board questioned if the winged hourglass logo per se has acquired a similar degree of reputation as a source indicator of the opponent’s watches by stating that the logo has been always used in conjunction with or adjacent to the LONGINES mark.

Besides, the Board considered both marks dissimilar as a whole from visual, phonetic, and conceptual points of view. The cited mark consists of an hourglass and straight wings. The opposed mark consists of geometrical figures conceived as a human body and spread wing. Taking account of distinctions in appearance, the Board has reasonable ground to believe that relevant consumers would be unlikely to confuse a source of the opposed mark with Longines when used on the goods in question.

Due to a low degree of similarity and popularity, the Board did not find a reasonable doubt that the opposed mark was sought for registration with an aim to obtain unfair profits from Longines and disorder public interest and morality from the totality of the circumstances.

Based on the foregoing, the Board decided to dismiss the opposition entirely and found opposed mark shall not be canceled under Article 4(1)(vii), (x), (xi), and (xix).

LV Damier pattern is unenforceable TM right against traditional Japanese checkered pattern

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In an advisory opinion on trademark dispute over world-famous “Damier’s pattern”, the Japan Patent Office did not side with LOUIS VUITTON MALLETIER.
[Case no. 2020-695001, Gazette issued date: September 24, 2021]

IR 952582 Damier’s pattern

In 1888, a French luggage maker Louis Vuitton began putting a canvas checkerboard print on its travel goods. A “distinctive checkered pattern of light and dark colors” named Damier meant to indicate the source of the products, which has been in use since then and “has been one of the biggest successes of Louis Vuitton,” according to the Paris-based luxury goods giant.

IR no. 952582

LOUIS VUITTON MALLETIER has owned IR no. 952582 for the Damier pattern on ‘Boxes of leather or imitation leather, trunks, suitcases, traveling sets (leather goods), traveling bags, luggage, garment bags for travel, hatboxes, vanity cases not fitted, toilet-cases, rucksacks, satchels, handbags, beach bags, shopping bags, sling bags, carrier bags, shoulder bags, waist bags, purses, cases, of leather or leatherboard: briefcases (leather goods), portfolio satchels, pochettes, wallets, change purses, key cases, card cases and holders (wallets), umbrellas, parasols’ in class 18 since 2008.

Ichimatsu Moyo (Traditional Japanese checkered pattern)

As you may remember, the logos for the Olympic and Paralympic Games Tokyo 2020 are based on Japanese checkered patterns. The stylish logo designs feature a popular checkered pattern which during the Edo period (1603-1867) was known as “Ichimatsu Moyo” and used the traditional Japanese color of indigo blue.

Because of its traditional background, the Ichimatsu patterns have been used on various goods even now.

Kanbe Prayer Beads Co., Ltd., a Kyoto-based merchant, has promoted cases and pouches for prayer beads (Juzu) or stamp books to keep seals given at temples and shrines for visitors (Gosyuin-Cho) that depict checkered patterns on the outer material of respective goods.

Screen capture from https://www.kyoto-kanbejuzu.co.jp/productsichimatsu.html

In order to prevent LOUIS VUITTON from alleging trademark infringement and secure incontestable status, Kanbe Prayer Beads asked the JPO for an advisory opinion on September 4, 2020.

Advisory Opinion (Hantei)

The Japan Trademark Law has provision for the Japan Patent Office to give advisory opinions about the scope of trademark right upon request under Article 28.

Proceedings of the advisory opinion system are almost the same as invalidation trials. Upon request from either party, the JPO appoints three examiners and orders the opposite party to answer the request in writing. Board seldom holds an oral hearing to investigate the case. In general, all proceedings are based on written statements and documentary evidence.

The advisory opinion by JPO does not have a binding effect, unlike the judicial decision. Accordingly, less than 10 trademark cases have been lodged with the JPO to seek the advisory opinion annually.

JPO Opinion

On April 21, 2021, the JPO provided its advisory opinion to the case by stating that:

Article 26(1)(vi) of the Japan Trademark Law provides trademark rights shall not be enforceable against any sign that consumers are unable to recognize it as a source indicator of goods or services in question.

It is unquestionable that the checkered pattern in dispute, represented on the disputed goods overall in series, has the same pattern with Ichimatsu Moyo that has been known to the public as one of traditional Japanese patterns and motifs.

Besides, Article 3(1)(vi) of the Japan Trademark Law prohibits the registration of a trademark solely consisting of a pattern in series to be considered as background design due to a lack of distinctiveness.

If so, it is highly likely that relevant consumers at the sight of goods bearing the checkered pattern in question would just conceive of Ichimatsu Moyo, one of the traditional Japanese patterns by taking account of the fact that the goods are promoted with the word “Ichimatsu” on the advertisement.

Based on the foregoing, the Board decided the checkered pattern in dispute would not fall within the scope of LV Damier’s pattern trademark right since consumers are unable to recognize the pattern as a source indicator of the goods in question under Article 26 (1)(vi) of the Trademark Law.

Hummel scores win in a trademark dispute over Chevron

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Hummel gained a victory in a trademark opposition against Japanese TM registration no. 6190746 for sixfold chevron right device mark due to a conflict with Hummel Chevron.
[Opposition case no. 2020-90007, Gazette issued date: May 28, 2021]

TM Reg no. 6190746

Opposed mark, consisting of a sixfold Chevron right device, was filed by a Japanese company for use on apparel and shoes in class 25 on November 14, 2018.

The JPO examiner did not raise her objection to the opposed mark and granted protection on September 27, 2019.

Hummel Chevron

On January 14, 2020, Hummel Holding A/S, the leading sportswear company from Denmark, filed an opposition and argued the opposed mark shall be canceled in contravention of Article 8(1) of the Trademark Law because of similarity to senior trademarks that consist of multiple Chevron right, left or down devices (see below) in class 25 owned by Hummel.

Article 8(1) is a provision to prohibit registration of any junior mark that is identical with, or similar to earlier applied marks based on the “first-to-file” principle.

Apparently, Hummel has been eager to claim broader protection of the Hummel Chevron.

JPO decision

Among the citations, the JPO Opposition Board found the opposed mark is confusingly similar to the sixfold Chevron down mark from a visual point of view regardless of dissimilar in direction of Chevron based on the finding that both marks would not give rise to any specific meaning and different pronunciation. Besides, the goods in question are deemed identical or similar respectively.

Since the opponent mark was applied for one month before the opposed mark on October 17, 2018, Hummel is entitled to claim a prior application right under the article.

Based on the foregoing, the JPO side with Hummel and decided to cancel the opposed mark entirely in contravention of Article 8(1).

The Opposition Board did not mention whether the opposed mark is deemed similar to the Hummel Chevron other than the sixfold down.

Glenfiddich Wins Trademark Dispute Over Deer Design

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The Japan Patent Office (JPO) sided with Glenfiddich, the world’s most awarded Single Malt Scotch Whisky, who fought against trademark registration for the BLACK FOREST composite mark in class 33 due to close resemblance to the Glenfiddich deer design. [Opposition case no. 2018-685017, Gazette issued date: April 30, 2021]

BLACK FOREST composite mark

The opposed mark, consisting of the words “BLACK FOREST”, “FINEST WINE QUALITY FROM GERMANY” and a stylized stag’s head (see below), was filed with the JPO on May 12, 2017, for use on ‘Wines and sparkling wines; all the above goods made in Germany’ in class 33 by Badischer Winzerkeller eG via the Madrid Protocol (IR no. 1353061).

On June 6, 2018, the JPO granted protection of the opposed mark and published for post-registration opposition.

Opposition by Glenfiddich

Glenfiddich owner William Grant & Sons opposed on the basis of its earlier international registrations (IR no. 919341&919342) in the mark GLENFIDDICH and a stylized stag head (see below) for use on whisky and whisky-based liqueurs are concerned, only scotch whisky and scotch whisky-based liqueurs produced in Scotland of class 33, in contravention of Article 4(1)(xi) of the Japan Trademark Law.

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.

In the opposition, the opponent argued, inter alia, a close resemblance of the stylized deer design. Taking into consideration the design element is visually separable from literal elements, relevant consumers at the sight of the stylized stag head of the opposed mark that appeared on a wine label are likely to connect it with Glenfiddich.

JPO decision

The Opposition Board of the JPO found that judging from the configuration of each mark, it is allowed to assess the similarity of both marks by means of comparing its design element.

The Board held the stylized stag head of both marks would give rise to a resembled impression from appearance and the same concept regardless of some differences in detail.

If so, even though the pronunciation of respective design is incapable of comparison, from the totality of the circumstances, relevant consumers are likely to confuse the origin of the goods in question bearing the opposed mark with Glenfiddich.

Based on the foregoing, the JPO decided to retroactively cancel IR no. 1353061 in contravention of Article 4(1)(xi) of the Trademark Law.