カテゴリー: Device mark

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.

IP High Court affirmed TM infringement in favor of Wenger over cross design

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On April 21, 2021, the Japan IP High Court affirmed the Tokyo District Court’s decision in favor of Wenger S.A. and ruled to dismiss the appeal brought by TravelPlus International who was sentenced for trademark infringement by using cross design marks similar to the Wegner cross on backpacks. [Court case nos. IP High Court Reiwa2(ne)10060]

WENGER

Wenger, the Swiss company, has owned international registration no. 1002196 for the cross mark (see below) for use on backpacks of class 18 and others goods in Japan since November 5, 2010.

SWISSWIN

TravelPlus International (TI) distributed “SWISSWIN” brand backpacks adorned with a logo evoking the Swiss flag which consists of a cross surrounded by a square in Japan. According to the court decision, an affiliated company of TI has produced the Wenger bags as an OEM vendor.   

IP High Court ruling

The IP High Court dismissed the appeal entirely and issued a decision addressing the interpretation of similar marks evoking the Swiss flag that is unregistrable under the Trademark Law.

1. Evaluation of color difference on cross design

TI argued color difference shall be a crucial factor in this case based on Article 4(1)(iv) of the Japan Trademark Law that prohibits registration of an identical or similar mark to the Red Cross.


However, the judge denied the allegation by stating that any cross design dissimilar to the Red Cross can be registrable under the article. If so, it does not make sense to find the color difference on cross designs that would materially affect the similarity of the marks. Both marks should be assessed in their entirety by taking account of other elements as well.

2.  Assessing figurative element except for cross design

TI argued both marks should be assessed similarly on the assumption that the square plays a dominant role of source indicator based on Article 4(1)(i). Any mark identical or similar to a foreign national flag is unregistrable under the article. If so, it should not be allowed to claim trademark infringement based on the cross design which is undoubtedly similar to the Swiss flag.

However, the judge dismissed the allegation and reiterated its stance that in finding similarity of the mark, both marks should be assessed in their entirety, not only with the square but also the cross, since both marks just consist of these elements.

Mercedes-Benz StarParts vs Star-Parts

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In an administrative decision, the Japan Patent Office (JPO) held the “Mercedes-Benz Star Parts” with a car device mark is dissimilar to the “Star-Parts” word mark.
[Appeal case no. 2020-650009, Gazette issued date: November 27, 2020]

Mercedes-Benz StarParts

Daimler AG applied for registration of a composite mark consisting of “Mercedes-Benz StarParts” in two lines, a car device overlapping with checkmark icon, and a blue horizontal line in between (see below), in relation to ‘Parts for vehicles for locomotion by land, air, water or rail’ of class 12 via the Madrid Protocol (IR No. 1402813).

On December 5, 2019, the JPO examiner refused the applied mark based on Article 4(1)(xi) of the Trademark Law due to a conflict with senior trademark registration no. 5806962 for word mark “Star-Parts” in standard character which designates retail services or wholesale services for automobiles, parts, and accessories thereof in class 35.

Daimler AG filed an appeal against the refusal on March 4, 2019.

JPO Appeal Board’s decision

The Appeal Board overturned the examiner’s rejection by stating that the respective element of the applied mark shall be separably conceivable in view of a low degree of phonetic and conceptual association between figurative and literal elements. In the meantime, “StarParts” shall not be perceived as a dominant portion appealing its source of origin of goods, given “Mercedes-Benz” unquestionably plays an impressive role in identifying the source known for Germany luxury car maker. If so, it is not permissible to assess the similarity between the cited mark “Star-Parts” and the applied mark by dissecting the literal portion of “StarParts” from the applied mark.

Based on the foregoing, the Board concluded the refusal shall be disaffirmed since the examiner erroneously assessed the similarity between the marks.

I am of the view that the JPO’s decision looks unreasonable. From this viewpoint, any composite mark containing a famous or strong source indicator can be deemed dissimilar and eligible for registration.