カテゴリー: Invalidation trial

HYATT lost a trademark dispute in Japan: GRAND CLUB vs GRAN CLUB

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The Japan Patent Office (JPO) did not side with HYATT and dismissed an invalidation petition against TM Reg no. 6186629 for the wordmark “GRAN CLUB” by finding dissimilarity to HYATT’s earlier mark “GRAND CLUB”.

[Invalidation case no. 2022-890018, Decision date: December 14, 2022]

GRAN CLUB

The disputed mark, consisting of the word mark “GRAN CLUB” in standard character was filed by Memolead Wellness Co., Ltd., a Japanese company for use in restaurants, hotels and temporary accommodations, retirement homes, beauty salons, and other services in class 43 and 44 on September 13, 2018, with the JPO. The JPO examiner granted protection on September 10, 2019.

Apparently, the applicant uses the mark on their facility to provide a sports club, fitness gym, spa, beauty salon, sauna, café, and social club in Takasaki City, Gunma Prefecture (Japan).

GRAND CLUB

Hyatt International Corporation has effectively owned earlier TM Reg no. 4604602 for the wordmark “GRAND CLUB” in standard character on hotels, restaurants, beauty salons, and other services in Japan.

Hyatt filed an invalidation petition against “GRAN CLUB” with the JPO on March 18, 2022, and argued the disputed mark shall be invalidated in contravention of Article 4(1)(xi) of the Trademark Law due to a close resemblance between “GRAND CLUB” and “GRAND CLUB” to be used on identical or similar services.

JPO Decision

The JPO Invalidation Board found the disputed mark “GRAN CLUB” does not give rise to any specific meaning as well as the cited mark “GRAND CLUB”.

From the appearance, the Board found both marks are distinguishable by virtue of the presence or absence of the letter “D” in the middle of the marks.

Besides, the Board had a view that it is unlikely relevant consumers audibly confuse “ɡræn-klʌb” with “ɡrænd-klʌb” in view of short phonetic compositions of six or seven sounds.

Hyatt argued “GRAND CLUB” can be called “ɡræn-klʌb” among Japanese consumers based on a lot of hotels and facilities with a mark containing the term “GRAN” that is ordinary called “ɡræn”. However, the Board held the examples are neither direct nor relevant to find “GRAND CLUB” is pronounced as  “ɡræn-klʌb” by relevant consumers.

Given both marks are incomparable to the concept, the Board has a reason to believe both marks give rise to a different impression in the mind of consumers from visual, phonetical, and conceptual points of view.

Based on the foregoing, the Board concluded “GRAN CLUB” and “GRAND CLUB” are dissimilar and declared the validity of the disputed mark.

Trademark dispute: “Swan Angel” vs “ANGEL SWAN”

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In a recent decision, the Japan Patent Office (JPO) declared invalidation of TM Reg no. 5947687 for the word mark “Swan Angel” in class 41 due to a similarity to “ANGEL SWAN”.

[Invalidation case no. 2022-890031, Decision date: December 1, 2022]

Swan Angel

Disputed mark, consisting of the wordmark “Swan Angel” in standard character, was filed for use on various services including ballet school in class 41 with the JPO by a Japanese individual on October 5, 2016, and registered on May 19, 2017 (TM Reg no. 5947687).

Invalidation petition

On May 10, 2022, just before the lapse of a five-year statute of limitations, an owner of earlier TM Reg no. 5509646 for wordmark “ANGEL SWAN” in standard character filed a petition for invalidation against the disputed mark.

The owner argued disputed mark shall be invalidated in contravention of Article 4(1)(xi) of the Japan Trademark Law by stating “Swan Angel” is confusingly similar to “ANGEL SWAN” and ballet school and other services pertinent to ballet is deemed similar to the service in class 41 designated under the earlier mark since it also relates to ballet.

JPO decision

In an assessment of the similarity of marks, the JPO Invalidation Board stated:

Both the disputed mark and the cited mark consist of the two English words, “Swan” and “Angel”, commonly known among general consumers in Japan and it is reasonable to assume that relevant traders and consumers at the sight of both marks will see the words being placed in reverse order.

Even if there is a difference in the order of two words between the marks, the Board has no reason to believe the difference gives rise to any distinct meaning as a whole.

If so, relevant traders and consumers are likely to recognize the respective marks as a combination of “swan” and “angel” in sound and concept irrespective of the reversed order.

In this respect, both marks look similar in appearance because of the same words, font, and alphabet.

Based on the foregoing, the Board found the disputed mark “Swan Angel” is confusingly similar to the cited mark “ANGEL SWAN” from visual, phonetical, and conceptual points of view.

Taking account of another factor that respective services pertinent to ballet are deemed identical or similar as well, the Board concluded the disputed mark shall be retroactively invalidated in contravention of Article 4(1)(xi).

BOND GIRL Score Win in Trademark Dispute

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The Japan Patent Office (JPO) declared invalidation of TM Reg no. 6267785 for “BOND GIRL” with a “BG” device mark in contravention of Article 4(1)(vii) of the Trademark Law.

[Invalidation case no. 2022-890013, decided on November 18, 2022]

Disputed mark

A disputed mark, consisting of the stylized word “BOND GIRL” and “BG” logo (see below), was filed with JPO for use on scissors, swords, hand tools, spoons, and forks in class 8 by a Japanese business entity on September 4, 2019, and registered on July 9, 2020.

Apparently, the applicant has used the disputed mark on multi-tools. Click here.

Invalidation petition by Danjaq, LLC

On March 1, 2022, Danjaq, LLC, the holding company responsible for the copyright and trademarks to the characters, elements, and other material related to James Bond on screen, filed a petition for invalidation and argued disputed mark shall be invalid in contravention of Article 4(1)(vii) of the Japan Trademark Law by citing world-famous cinematic heroine “BOND GIRL” in the James Bond film series “007”.

Article 4(1)(vii)

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

In the petition, Danjaq argued “BOND GIRL” has appeared as a love interest of James Bond in the movies for over 55 years since 1962. Due to frequent appearances in magazines, other public media, and various events pertinent to the Japes Bond movie, the name and sign of “BOND GIRL” has been well-known as a cinematic heroine in association with the film series “007”.

If so, it is presumed that the applicant intentionally applied the disputed mark with the aim to monopolize the term. Since the applicant does not have any legal interest with Danjaq, a legitimate owner of trademarks and copyrights pertaining to the 007 movies, it must impermissibly cause not only damage to public order but the disorder in domestic and foreign trade.

JPO decision

The Invalidation Board found, from the produced evidence, the cinematic heroine “Bond girl” has regularly attracted audiences through screens, magazines, and promotional events of the James Bond “007” movie. The sign “BONG GIRL” had further extensive marketing and licensing to companies in vastly different product categories, not only with products associated with motion pictures, e.g. nails, cosmetics, dolls, cards, calendars, and others. Relevant consumers at the sight of the disputed mark would conceive nothing but the cinematic heroine in the film. The Board, therefore, considered that “BOND GIRL” has become worldly famous as a cinematic heroine that appeared in the “007” film series.

The Board continued in analyzing efforts made by Danjaq to enhance the commercial value of “BOND GIRL” by means of trademark registrations in various jurisdictions and licensing to different product categories.

The Board paid attention that the applicant has referred to the James Bond films and the cinematic heroin “Bond girl” in advertisements to promote the BG multi-tools.

Based on the foregoing, the Board found it is impermissible for the applicant, unrelated to Danjaq, to monopolize the term on goods in question and decided to retroactively invalidate the disputed mark in contravention of Article 4(1)(vii) for the purpose of preventing damage to public order.

A trademark dispute over ZOO

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In a recent administrative decision, the Japan Patent Office (JPO) found TM Reg no. 6246792 shall not be invalidated in contravention of Article 4(1)(xi) of the Japan Trademark Law because of dissimilarity to earlier TM Reg no. 6139339 for mark “ZOO”.

[Invalidation case no. 2021-890029, decision date: November 1, 2022]

TM Reg no. 6246792

The disputed mark consists of literal elements, “SERIES” and “70th Anniversary Premium Brand”, and figurative element that looks like “ZOO” or “700” (see below).

The mark was filed for use on flour and other foods in class 30 in the name of ODAZO SEIFUN Co., Ltd. on March 15, 2019.

According to the applicant’s website, the company uses the mark on a series of high-quality wheat flour and clearly calls it “ZOO”.

The JPO granted registration of the mark on April 20, 2020.

TM Reg no. 6139339

The opponent has owned earlier TM Reg no. 6139339 for the mark “ZOO” in three colors (see below) in classes 29, 30, and 41 since April 19, 2019.

On June 28, 2021, the opponent filed an invalidation action and argued that the disputed mark shall be invalidation due to its close resemblance to the earlier trademark “ZOO” in contravention of Article 4(1)(xi) of the Japan Trademark Law.

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

The opponent alleged that the disputed mark obviously gives rise to the same pronunciation and sound as the earlier mark from its configuration. If so, both marks shall be considered confusingly similar when used on goods in class 30.

JPO decision

Astonishingly, the JPO Invalidation Board found both marks are dissimilar from visual, phonetical, and conceptual points of view by stating;

In assessing the similarity between the disputed mark and the cited mark, both marks are clearly distinguishable from overall appearance, as there is a clear difference between the three tiers/one tier, literal elements and color, even if some components are colored in red.

In addition, the figurative element of the disputed mark is recognizable as a geometric figure. Meanwhile, the cited mark consists of the word “ZOO”. Therefore, the disputed mark does not give rise to a sound of “ZOO”, but “Series Seventies Anniversary Premium Brand,” “Series,” and “Seventies Anniversary Premium Brand”. It is obvious that both marks are unlikely to cause confusion in sound.

Assuming that the figurative elements of the disputed mark does not give rise to any specific meaning, there is no reason to find similarity in concept between the disputed mark and the cited mark in its entirety.

Therefore, the disputed mark is considered dissimilar to the cited mark in terms of the impressions, memories, associations that they give to traders and consumers through appearance, sound and concept.

Based on the foregoing, the Board held the disputed mark shall not be invalidated under Article 4(1)(xi) of the Japan Trademark Law even if the goods in question are identical or similar to the designated goods of the cited mark, and dismissed the entire allegations.

Trademark Dispute over Side Stripe on Footwear

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In a trademark dispute along the side of shoes between Vans Incorporated and Revenge X Storm Limited, the Japan Patent Office (JPO) did not side with Vans Incorporated.

[Invalidation case no. 2021-890049, Decision date: September 29, 2022]

REVENGE shoes

Revenge X Stream Limited filed a device mark representing a shoe for the right leg with a thunder-shaped line along the side of the shoe for use on ‘sports shoes’ in class 25 with the JPO on June 5, 2018.

The mark was successfully registered on October 2, 2020 (TM Reg no. 6299288).

Invalidation action by VANS

VANS INC. filed an invalidation action on September 16, 2021, and argued the mark shall be invalidated in contravention of Article 4(1)(x), (xi), and (xv) of the Japan Trademark Law by citing earlier trademark registrations for the iconic Vans Side stripe used on OLD SKOOL (see below) since 1977.

VANS alleged the appearance of Vans OLD SKOOL perse has become famous to indicate VANS’ shoes among relevant consumers of sports shoes in Japan.

JPO Decision

To my surprise, the JPO Invalidation Board denied a certain degree of reputation and popularity of the Vans Side stripe as a source indicator of VANS’ shoes from the totality of the produced evidence.

Besides, the Board negated the similarity of both marks by stating:

“The mark in question represents a thunder-shaped sideline along the side of sports shoes. On the other hand, the Vans Side stripe consists of a gently wavy curved sideline along the side of the shoes.

Therefore, the appearance of the two marks clearly differs in the shape of the sideline on the side of the shoe and is clearly distinguishable.

In this way, even if both marks cannot be compared in terms of concept, they are dissimilar and unlikely to be confused in terms of appearance and pronunciation, and therefore, the degree of similarity shall be quite low.”

Given a low degree of similarity between the two marks, the Board has a reason to believe that relevant consumers are unlikely to confuse a source of sports shoes bearing the mark in question with VANS.

Based on the foregoing, the Board found the entire allegations of VANS groundless and decided to dismiss invalidation action accordingly.

Trademark Opposition or Invalidation, Which Is Useful in Japan?

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Opposition

A trademark opposition is a proceeding in which a third party can oppose a newly registered trademark under Article 43bis of the Japan Trademark Law. For example, once a trademark is newly registered by JPO, this fact is published in the Official Gazette of Trade Marks immediately after it is actually registered. This kicks off a two (2) month period known as the ‘opposition period’ during which other parties are then given an opportunity to ‘oppose’ the registration of the trademark.

Invalidation

Trademark invalidation is an inter-partes proceeding in which a party has a legal interest in the result that can null a trademark registration under Article 46 of the Japan Trademark Law. If the registration is less than five years old, the party challenging the trademark rights can rely on any ground that could have prevented registration initially.

Comparison

Conflict with earlier registration (similarity of mark and goods/service), a likelihood of confusion with famous mark, and descriptiveness are the most common grounds asserted both in opposition and invalidation action.

 Trademark OppositionTrademark Invalidation
Statute of limitations2 months from the publication date5 years from the registration date
Official feeJPY11,000 for 1 class
JPY19,000 for 2 classes		JPY55,000 for 1 class
JPY95,000 for 2 classes
StandingLegal interest is not requiredLegal interest is required
CounterargumentNo obligation to counterargue unless the JPO notifies a cancellation ground to a registrant.Mandatory for a registrant to counterargue, otherwise it may adversely affect.
Pendency period7.9 months11.5 months
Appeal to decisionOnly the registrant can file an appeal against an unfavorable decisionEither party can file an appeal against the JPO decision

Which action to take?

From a cost-saving point of view, opposition undoubtedly looks more attractive than invalidation, however, when you look at the success rate of opposition (see below table), it may change your mind. There has been a big gap in the success rate between opposition and invalidation for years.

YearThe success rate of the OppositionThe success rate of Invalidation
201513%32%
201616%42%
201711%33%
201811%34%
201911%56%
202011%35%

Therefore, in terms of probability theory, invalidation action is by far preferable to opposition for the purpose of removing trademark registration in Japan.

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.

JPO found likelihood of confusion between SONY and SONICODE

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The Japan Patent Office sided with Sony Corporation and declared invalidation of TM Registration no. 5764615 for wordmark “SONICODE” due to a likelihood of confusion with “SONY”.

[Invalidation case no. 2020-890039, Gazette issued date: July 30, 2021]

SONICODE

Field System Inc., a mobile application developer, applied wordmark “SONICODE” in standard character for registration on various goods including telecommunication apparatus, electronic machines, consumer video game programs, and its related services in class 9, 38, and 41 with the JPO on December 12, 2014 (TM App no. 2014-105218).

The mark did not face any refusal during the substantive examination and it was registered on date May 15, 2015.

Apparently, the mark has been used on mobile applications for smartphones.

SONY

SONY CORPORATION, a major Japanese manufacturer of consumer electronics products, filed an opposition against the SONICODE mark on August 5, 2015, before the lapse of a two-month statutory period for the opposition, in contravention of Article 4(1)(xi), (xv), and (xix) of the Japan Trademark Law. However, the JPO Opposition Board found both marks dissimilar and no likelihood of confusion between the marks SONY and SONICODE and dismissed SONY’s allegations entirely. [Opposition case no. 2015-900260]

On May 12, 2020, just three days before the lapse of the five-year statute of limitations, SONY CORPORATION files a petition for invalidation and alleged that the contested mark shall be invalidated based on Article 4(1)(x), (xi), (xv).

SONY argued that relevant consumers would conceive SONY at the sight of the contested mark SONICODE because of a high reputation of SONY and less distinctiveness of the term “CODE” in relation to the goods and services in question.

To bolster the arguments, SONY demonstrated how AI speakers, e.g., Amazon Alexa, Google Assist, Microsoft Cortana, Apple Siri, reacted to hear “SONICODE”. Allegedly, the AI speakers recognized it as ‘SONY code’ or ‘SONY cord’ and displayed information relating to SONY.

Field System Inc. did neither answer to the petition nor dispute at all during the invalidation procedure.

JPO decision

The JPO Invalidation Board did not question a remarkable degree of reputation, popularity, and originality of “SONY” as a source indicator of the opponent’s business and its products (telecommunication apparatus, electronic machines, consumer video game programs).

Besides, the Board found the prefix “SONI” of the contested mark gives rise to a similar appearance and pronunciation with “SONY”. Relevant consumers are likely to consider that the contested mark consists of “SONI” and “CODE”. If so, even if both marks are deemed dissimilar in their entirety, the Board has good reason to believe “SONICODE” has a certain degree of similarity to “SONY”.

In view of a close association between the goods and services in question and the opponent business, the Board concluded the contested mark shall be retroactively invalidated in contravention of Article 4(1)(xv). In the meantime, because of the dissimilarity of the marks, the Board dismissed allegations based on Article 4(1)(x) and (xi).

To whom does “Mary Poppins” return?

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The Japan Patent Office (JPO) dismissed an invalidation petition by Disney Enterprises, Inc. against Japanese TM Reg no. 5710595 for the wordmark “Mary Poppins” by finding that “Mary Poppins” has not been well known as a source indicator of Disney.

[Invalidation case no. 2019-890040, Gazette issued date: June 25, 2021]

TM Registration no. 5710595

Disputed mark, consisting of the word “Mary Poppins” in standard character (see below), was applied for registration on February 28, 2014, in respect of caring for babies [excluding services provided at facilities]; babysitting in class 45.

Without confronting refusal during the substantive examination, the disputed mark was registered on October 17, 2014.

The applicant of the disputed mark, Mary Poppins Inc., has apparently offered babysitting services in Kobe, Japan since its establishment in 1988.

Screen capture from https://www.marypoppins.co.jp/en/

Petition for invalidation by Disney

Japan Trademark Law has a provision to retroactively invalidate trademark registration for certain restricted reasons specified under Article 46 (1), provided that the interested party files an invalidation petition within a five-year statute of limitations.

Disney filed a petition for invalidation against the disputed mark on July 18, 2019, three months before the lapse of the limitations period, and argued the mark unquestionably freerides on the world-famous Walt Disney film “Mary Poppins” and thus relevant consumers would associate the disputed mark with Disney when used on the services in question. If so, it shall be invalid in contravention of Article 4(1)(vii), (xv), and (xix) of the Japan Trademark Law.

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

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

Article 4(1)(xix) prohibits registering a trademark that is identical with, or similar to, another entity’s famous mark, if such trademark is aimed for unfair purposes, e.g. gaining unfair profits, or causing damage to the entity.

Mary Poppins, an American musical film, released in 1964, features the now-iconic screen debut of Julie Andrews. A children’s classic, Mary Poppins is considered to be among the finest of Walt Disney’s productions based on the original books by P.L Travers.

JPO Decision

The JPO Invalidation Board admitted a certain degree of reputation and popularity of “Mary Poppins” as the title of the beloved Walt Disney film and the name of the main character of the film.

In the meantime, the Board questioned if “Mary Poppins” has played a distinctive role in indicating a source of Disney’s goods or services. A mere fact that goods featuring the Walt Disney films and its characters are merchandised at the Tokyo Disney Resort and Disney Shops in Japan is insufficient to prove Disney has used “Mary Poppins” as a source indicator to identify their business, the Board found.

In so far as “Mary Poppins” has not been recognized as a source indicator, but a title of the world-famous Walt Disney film or the main character of the film, it is unlikely that relevant consumers would consider the disputed mark “Mary Poppins” used on the services in question coming from Disney or entities systematically or economically connected with the opponent.

The Board also referred to the precedent court cases that ruled invalidation of the trademark “Anne of Green Gables” and “Tarzan” in contravention of Article 4(1)(vii). Contrary to these films, the Board could find no authorized activity to protect or preserve the film or original books of “Mary Poppins” as cultural heritage and prohibit unlicensed use by the private sector. If so, it is inadequate to treat the case equally with them. The Board held that the disputed mark shall not be likely to cause damage to public order or morality.

Based on the foregoing, the JPO decided the disputed mark shall remain valid and dismissed the invalidation entirely.