カテゴリー: IP High Court

Empire Steak House loses to trademark its restaurant name in Japan IP High Court battle

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On December 26, 2019, the Japan IP High Court ruled to uphold a rejection by the Japan Patent Office (JPO) to International Registration no. 1351134 for the mark “EMPIRE STEAK HOUSE” in class 43 due to a conflict with senior trademark registration no. 5848647 for word mark “EMPIRE”. [Judicial case no. Reiwa1(Gyo-ke)10104]

EMPIRE STEAK HOUSE

The case was brought into the IP High Court after the JPO decided to dismiss an appeal (case no. 2018-650052) filed by RJJ Restaurant LLC (Plaintiff), an owner of IR no.1351134 for mark consisting of stylized-words “EMPIRE STEAK HOUSE” in two lines and a golden cow design (see below) on restaurant services; carry-out restaurant services; catering services in class 43.

EMPIRE STEAK HOUSE, one of the top steakhouses in New York City since 2010, has opened their first restaurant aboard on the first floor of the new Candeo Hotel in Roppongi, Tokyo (JPN) on October 17, 2017. To secure the restaurant name in Japan, RJJ Restaurant LLC applied for registration of disputed mark via the Madrid Protocol with a priority date of March 2, 2017 in advance of the opening.

Senior registered mark “EMPIRE”

The JPO rejected disputed mark by citing senior trademark registration no. 5848647 for word mark “EMPIRE” in standard character on grilled meat and sea foods restaurant services in class 43 based on Article 4(1)(xi) of the Trademark Law.

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

Senior registered mark was applied for registration on December 8, 2015 and registered on May 13 ,2016. Apparently, senior mark is actually used as a name of restaurant, “Dining Bar Empire”, located in the city of Ueda, Nagano Prefecture (JPN).

To contend against the decision, plaintiff filed an appeal to the IP High Court on July 19, 2019.

IP High Court Decision

Plaintiff argued the literal elements of disputed mark “EMPIRE STEAK HOUSE” shall be assessed in its entirety by citing web articles relating to applicant’s restaurant which referred to the restaurant as Empire Steak House in full. Like ‘Empire State Building’ and ‘Empire Hotel’, the term “EMPIRE” gives rise to unique meaning and plays a role of source indicator as a whole when used in combination with other descriptive word. Besides, disputed mark contains an eye-catching golden cow which attracts attention to relevant consumers. If so, it is evident that the JPO erred in assessing similarity of mark between “EMPIRE STEAK HOUSE” and “EMPIRE”.

The IP High Court, at the outset, mentioned the Supreme Court decision rendered in 2008 which established general rule to grasp a composite mark in its entirety in the assessment of similarity of mark.

“Where a mark in dispute is recognized as a composite mark consisting of two elements or more, it is not permissible to decide similarity of mark as a whole simply by picking out an element of the composite mark and then comparing such element with other mark, unless consumers or traders are likely to perceive the element as a dominant portion appealing its source of origin of goods/service, or remaining elements truly lack inherent ability to serve as a source indicator in view of sound and concept.”

Next, the court analyzed the configuration of disputed mark and found it is allowed to grasp a literal element “EMPIRE” of disputed mark as dominant portion in light of the criteria applied by the Supreme Court by stating that:

  1. A term “STEAK HOUSE” is commonly used to indicate steak restaurant even in Japan.
  2. Where the term is included in restaurant name, it sometimes happens that relevant consumers over leap the term to shorten the name.
  3. In restaurants, it becomes common practice to display cucina and foodstuffs to be served on signboard or advertisement. Likewise, there are many steak and grilled meat restaurants displaying cow design. If so, relevant consumers at the sight of disputed mark would perceive the cow design as a mere indication to represent foodstuffs at the restaurant.
  4. From appearance, given the configuration of disputed mark, respective element can be considered separable.

Finally, based on the above findings, the court dismissed plaintiff’s arguments and concluded the JPO was correctly assessing similarity of mark. Given dominant portion of disputed mark is identical with the cited mark “EMPIRE” and both marks designate the same or similar services in class 43, disputed mark shall be unregistrable under Article 4(1)(xi) of the Trademark Law.

Trademark Dispute Over Cigarette Sub-Brand “SIGNATURE”

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In a decision dated September 12, 2019, the Japan IP High Court affirmed the Japan Patent Office’s (JPO) determination to refuse registration for the STATE EXPRESS 555 “SIGNATURE” cigarette package design due to a conflict with senior Trademark Registration No. 4658792 for word mark “SIGNATURE”.
[Court case no. Heisei31(Gyo-ke)10020]

STATE EXPRESS 555 “SIGNATURE” cigarette package design

CTBAT International Company Limited, a joint investment of subsidiaries of China National Tobacco Corporation and British American Tobacco and incorporated in Hong Kong, filed a trademark application for device mark representing cigarette package design (see below) by designating cigarette, tobacco, electronic cigarette and others in class 34 on November 28, 2016 (TM application No. 2016-134074).

It the center, “No. 555 STATE EXPRESS” is written in three lines inside a circle. “SIGNATURE” is written independently on the upper side of the design.

Senior trademark “SIGNATURE”

The JPO examiner refused registration by citing a senior Trademark Registration No. 4658792 for word mark “SIGNATURE” in standard character overt the goods of cigarette in class 34 owned by PT Gudang Garam TBK, one of Indonesia’s leading cigarette manufacturers, best known for its kretek clove cigarettes, headquartered in Kediri, Indonesia, which was acquired by Philip Morris in 2005.

PT Gudang Garam TBK has used the registered mark as a cigarette sub-brand of Gudang Garam.

CTBAT filed an appeal against the JPO examiner’s refusal and argued dissimilarity between the marks, but in vain. [Appeal case no. 2018-002007]
Subsequently, CTBAT appealed to the IP High Court and demanded cancellation of the administrative decision to refuse registration for plaintiff’s mark.

Qualitative description

CTBAT argued the term ‘SIGNATURE’ lacks distinctiveness in relation to cigarette because several cigarette manufacturers, e.g. Dunhill, Camel, Davidoff, W.O.Larsen, have been using it as a qualitative term to indicate the cigarette has a specific feature of symbolic brand.

Besides, plaintiff’s mark contains distinctive terms, “No. 555 STATE EXPRESS”, which has acquired a certain degree of popularity of the cigarette brand through substantial use for more than 100 years. If so, it is unlikely that relevant consumers and traders would recognize the term “SIGNATURE” on the upper side as a source indicator in itself.

IP High Court Ruling

The court dismissed the allegation entirely, by stating that:

  1. From overall appearance of plaintiff’s mark, the term “SIGNATURE” shall not be perceived to combine with other figurative and literal elements.
  2. From the produced evidences, it is unclear if “No. 555 STATE EXPRESS” and “555” has acquired a certain degree of popularity because the cigarette brand has never been distributed in Japan so far.
  3. It is questionable that relevant Japanese consumers fully understand the term “SIGNATURE” and associated words, “Signature model”, “Signature Blends” have a qualitative or descriptive meaning in connection with cigarette.
  4. It has been often seen that a sub-brand is used on cigarette package separable from its main brand.
  5. The court finds the cited mark is used as a source indicator (sub-brand) on its cigarette package as well.
  6. Given the term “SIGNATURE” does not inseparably combine with other elements of plaintiff’s mark, it shall be permissible to cut out the portion and assess similarity of both marks based on the portion as long as it does meet with trade practice.

Based on the foregoing, the IP High Court sided with the JPO and upheld the refusal decision.

Fashion Designer in trademark fight over his name

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On August 7, 2019, the Japan IP High Court ruled to dismiss an appeal by Ken Kikuchi, a Japanese jewelry designer, who contested a decision by the Japan Patent Office (JPO) to deny trademark registration for a composite mark consisting of a word “KEN KIKUCHI” with an eagle device under Article 4(1)(viii) of the Trademark Law.
[Judicial case no. Heisei31(Gyo-ke)10037]

KEN KIKUCHI

Disputed mark (see below) was filed by Ken Kikuchi on May 23 ,2017 covering various goods in class 14, 18 and 25 including jewelry and accessories. [TM application no. 2017-69467]

Since 2000, Ken Kikuchi allegedly has been designing and manufacturing affordable elaborate silver jewelry under the brand of his name “KEN KIKUCHI”. As a result of business expansion (14 brick-and-mortar stores in Japan, 4 stores in foreign counties) and advertisements from television, magazines, the designer’s name has acquired better reputation in the industry.

Refusal decision by JPO

The Japan Patent Office (JPO) refused the mark based on Article 4(1)(viii) of the Trademark Law, on the ground that the literal element of disputed mark can be perceived to identify a private individual named “Ken Kikuchi”. According to white pages, evidently there exist several Japanese people with the same name. If so, disputed mark shall not be allowed for registration since it contains a name of living person per se.

Article 4(1)(viii)

Article 4(1)(viii) of the Trademark Law prohibits registration of trademarks which contain the representation or name of any person, famous pseudonym, professional name or pen name of another person, or famous abbreviation thereof. Notwithstanding the provision, the article is not applicable where the applicant of disputed mark produces the written consent of the person.

The Supreme Court of Japan has ruled the article shall be interpreted to protect personal rights of a living individual. In line with the Supreme Court ruling, Trademark Examination Manuals (TEM) set forth that the article is applicable not only to natural persons (including foreigners) and corporations but also associations without capacity.

The Appeal Board of JPO also sided with the examiner’s refusal on the same ground. [Appeal case no. 2018-7529]

To contest the administrative decision, the designer filed an appeal to the IP High Court on March 25, 2019

IP High Court Ruling

The court dismissed the allegation entirely, by stating that:

  1. “KEN” and “KIKUCHI” are both commonly used names to Japanese people.
  2. Literal elements of disputed mark shall be perceived as a name of person even if the name is written in alphabet, given it has become popular to write a full name on the passport, credit card and others in alphabet.
  3. Article 4(1)(viii) shall be construed to comprehend a name of person written in alphabet.
  4. It is not relevant to consider reputation of disputed mark in applying the article since it aims to protect personal rights of a living individual.
  5. Irrespective of the fact that a person named “Ken Kikuchi” surely exists, applicant failed to prove consent from the person.

Based on the foregoing, the IP High Court sided with the JPO and upheld the refusal decision.

The Japan IP High Court Finds “EQ” Entitled to Trademark Registration Belonging to Mercedes Benz

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On July 3, 2019, the Japan IP High Court reversed a decision of the Japan Patent Office (JPO) finding that the company Daimler AG was entitled to registration of “EQ” for Motor vehicles in class 12, even though the term “EQ” by itself is descriptive for the goods.
[Case no. Heisei31(Gyo-ke)10004, Daimler AG vs the JPO Commissioner]

The EQ Application

The JPO has refused registration to an application for EQ in standard characters (word only, see below) on the basis that the mark was descriptive for the goods “Motor vehicles” in class 12 based on Article 3(1)(v) of the Trademark Law.

The article prohibits an applied mark from registering if it consists solely of a very simple and common mark. Trademark Examination Guidelines (TEG) stipulates that a mark consisting of one or two alphabetical letters is not eligible for registration under the article. Click here.

A mark consisting of two alphabetical letters is not capable of identifying the source of the goods due to a lack of distinctiveness because a combination of two alphabetical letters is limited on quantity and currently used to represent a model name of vehicle, e.g. BMW XS, TOYOTA Carina ED, Ferrari FX, Nissan GT-R.

Descriptive terms falling under the article are only capable for registration based on Article 3(2) if they have “acquired distinctiveness”, which means the term has taken on a meaning in the public view so that people see the term as a trademark identifying the goods rather than simply describing the goods.

In this regard, Daimler AG argued the EQ mark, a coined term originating from “Electric Intelligence” to appeal design, extraordinary driving pleasure, high levels of everyday suitability and maximum safety of electric car by Mercedes-Benz, has acquired distinctiveness since launching the brand at the Paris Motor Show in September 2016.

JPO Decision

However, the JPO dismissed the argument on the grounds that:

  1. Daimler has neither used the EQ mark by itself as a name of electric car nor produced evidences of its plan to sell electric car named “EQ”.
  2. Daimler uses the EQ mark in a stylized design in press releases. If so, it is questionable whether relevant consumers conceive the EQ mark in standard characters as a source indicator of Mercedes-Benz.
  3. According to the produced evidences, Daimler uses the EQ mark in combination with other literal elements, e.g. “Generation EQ Concept”, “Concept EQA”, “EQC”, “smart vision EQ for two”, “EQ POWER”, “EQ POWER+”.
  4. There are no actual domestic sales of the electric car using the applied mark during the past two years from the date Daimler launched the brand in fact.
  5. A combination of two alphabetical letters, “E” and “Q”, has been generally used as a mode name in association with vehicles, e.g. TOYOTA electric car “eQ”, HYUNDAI luxury sedan “EQ900”, Zhengzhou Nissan truck “EQ1060”, Laufenn tyre “S FIT EQ”, ALPINE car navigation “EX11Z-EQ”, SPECIALLIZED bicycle “ALIBI SPORT EQ”. If so, the EQ term shall not be eligible for monopoly by a specific entity any longer.

The Appeal Board of JPO also upheld the refusal.
[Appeal case no. 2018-650016]

To contest the administrative decision, Daimler AG filed an appeal to the IP High Court on January 15, 2019.

IP High Court Ruling

The court first found the EQ mark in standard characters is not eligible for registration under Article 3(1)(v) of the Trademark Law.

In the meantime, the court found Daimler has newly released, promoted, and used the EQ mark with a combination of “POWER” as a new brand concept of electric car by Mercedes-Benz. Given a space for single letter between “EQ” and “POWER”, relevant consumers at the sight of promotional materials, advertisements and car magazines pertinent to Mercedes-Benz’s new electric car brand would perceive “EQ” as a specific source indicator. Taking account of enormous number of circulation of magazines (approx. 230,000) and advertisements for users (170,000 per year), the court held the EQ mark has been well known for a source indicator of Daimler electric car among relevant consumers and traders even if the duration of actual use and sales amount are not sufficient by themselves.

Notably, the court also negated fact-finding by JPO regarding ordinary use of the term EQ in association with vehicles by stating that since competitors use the term in a tight combination with other literal elements, they can be simply perceived as a mode name. If so, such use shall not be construed to negate acquired distinctiveness of the EQ mark by Daimler.

Based on the foregoing, the court ruled the EQ mark is entitled to trademark registration based on Article 3(2) of the Trademark Law and reversed a decision by the JPO on that account.

IP High Court ruling: “BULK AAA” confusingly similar to “BULK HOMME”

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On March 7, 2019, the Japan IP High Court revoked a decision by the Japan Patent Office (JPO) to invalidation trial over a dispute of similarity between trademark “BULK AAA” and “BULK HOMME”, and ruled “BULLK AAA” shall be retroactively invalid. [Judicial case no. Heisei30(Gyo-ke)10141]

 

BULK HOMME

The case was brought into the IP High Court after the JPO decided to dismiss an invalidation trial (case no. 2017-890079) claimed by BULK HOMME Co., Ltd. (Plaintiff), an owner of senior trademark registration no. 5738351 for a  mark consisting of “BULK HOMME” and other literal elements (see below) over goods of cosmetics, skin care products for men in class 3.

 

INVALIDATION TRIAL AGAINST “BULK AAA”

In the invalidation trial, plaintiff asserted trademark registration no. 5931607 for word mark “BULK AAA” in standard character shall be invalid in violation of Article 4(1)(xi) of the Trademark Law since the mark is confusingly similar to “BULK HOMME” and designates cosmetics (class 3) which is undoubtedly identical with or similar to the goods designated under its own senior registration.

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

Inter alia, plaintiff vehemently argued the term “AAA” in disputed mark lacks distinctiveness as a source indicator in relation to cosmetics since “AAA” is a term commonly used to represent the highest possible rating assigned to the bonds of an issuer by credit rating agencies. Given the circumstance, relevant consumes of cosmetics are likely to consider the term in disputed mark a qualitative indication of the goods even if the term has not been used as such  in connection with cosmetics in fact.

However, the Trial Board of JPO set aside the allegation by stating that disputed mark “BULK AAA” shall be assessed in its entirety. It is groundless to compare a word portion “BULK” of disputed mark with “BULK HOMME” given the Board could not identify any facts to assume relevant consumers of cosmetics conceive the term “AAA” of disputed mark as a qualitative indication. Both marks are sufficiently distinguishable from visual, phonetic, and conceptual points of view and dissimilar as a whole.

To contend against the decision, plaintiff filed an appeal to the IP High Court.

 

IP HIGH COURT DECISION

The IP High Court, to the contrary, sided with plaintiff and completely negated fact-findings made by the Trial Board of JPO. The Court held the term “AAA” is recognized as a qualitative indication even when used on cosmetics and thus the word portion of “BULK” is likely to play a dominant role of source indicator. If so, it is anything but inappropriate to pick up the word “BULK” from disputed mark and compare it with other mark in the assessment of mark similarity.

Besides, “HOMME” is a French word meaning “for men”. From the produced evidences, it seems apparent the word has been used in relation to men’s cosmetics, and consumers are accustomed to it so that they can recognize the meaning. Given the term is depicted in a thinner font than “BULK” in the citation, “BULK” gives dominant impression as a source indicator in the mind of consumers. Accordingly, it is reasonable to pick up the word “BULK” from the citation and compare it with other mark in the assessment of mark similarity.

The Court found that the Trial Board materially erred in the fact-finding and assessing similarity of mark. As long as dominant portion “BULK” of both marks and designated goods are identical, disputed mark shall be invalid based on Article 4(1)(xi).

POLO BCS defeated in trademark battle with POLO RALPH LAUREN

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In a ruling on the merits of whether or not an applied mark “POLO HOME / BRITISH COUNTRY SPIRIT” is likely to cause confusion with a world-famous trademark “POLO” by the fashion house Ralph Lauren, the Japan IP High Court sided with the JPO and ruled in favor of Ralph Lauren on December 10, 2018.

[Court case no. H30(Gyo-ke)10067]

 

“POLO HOME / BRITISH COUNTRY SPIRIT”

POLO BCS Co., Ltd., plaintiff of the case, is a Japanese business entity, promoting apparel products bearing trademarks of “POLO BRITISH COUNTRY SPIRIT”, “POLO BCS”, and “POLO HOME”.

 

POLO BCS filed a trademark registration for the mark “POLO HOME / BRITISH COUNTRY SPIRIT” as shown in below on January 5, 2015 by designating clothing and other goods in class 25. [TM application no. 2015-305]

 

In fact, POLO BCS, a registrant of the word mark “POLO” on class 25 in Japan since 1997 (TM registration no. 1434359 and 2721189), granted trademark license to Ralph Lauren in the year of 1987 and since then continuously allows RL to use the mark “POLO” in Japan.

 

JPO decision

The Japan Patent Office (JPO) rejected the applied mark based on Article 4(1)(xv) of the Trademark Law on June 3, 2016. The refusal relies on a prominent portion of the mark “POLO” is likely to cause confusion with RALPH LAUREN when used on apparel products, being that “POLO” becomes remarkably well-known for an abbreviation of POLO RALPH LAUREN among relevant consumers with an ordinary care.

Article 4(1)(xv) is a provision to prohibit any mark from being 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.

POLO BCS filed an appeal against the refusal on August 16, 2016, but its attempt resulted in failure [Appeal case no. 2016-12344].
To contest the JPO decision, POLO BCS appealed to the IP High Court filed immediately.

 

IP High Court decision

The court admitted a high degree of reputation and popularity of Ralph Lauren and “POLO” as an abbreviation of Polo Ralph Lauren in connection with apparel products by taking account of following fact findings.

  1. The first collection for Polo brand was launched in the US by a designer Mr. Ralph Lauren in 1967.
  2. Annual sales of Ralph Lauren exceed 7 billion USD in 2013 around the globe.
  3. In 1976, Ralph Lauren launched Polo brand and shops in Japan.
  4. According to brand perception survey of 900 randomly selected Japanese consumers ages 20 to 69 conducted in 2010, 81.8% of consumers recognize Ralph Lauren.
  5. Annual sales of 26.7 billion JPY in Japan (fiscal year 2008) accounts for 6% of global sales of Ralph Lauren.

 

Besides, the court found close similarity between applied mark and “POLO” by Ralph Lauren given a tiny font size of “BRITISH COUNTRY SPIRIT” in the configuration of applied mark and less distinctiveness of the word “HOME” in relation to apparel for home use.

Plaintiff argued to consider the fact that RL has used the “POLO” mark in Japan under license from plaintiff. But the court negated the argument stating that such fact would not mean consumers recognize the mark as a source indicator of plaintiff. In addition, plaintiff argued originality and fame of the word “POLO” as a source indicator of Ralph Lauren by citing Polo Game, organizations for the game, e.g. US POLO ASSOCIATION, HURLINGHAM POLO, and a generic name of Polo shirts. Court considered such circumstances would mean less originality of the mark “POLO”, but never deny fame of the mark as a source indicator of Ralph Lauren as long as consumers doubtlessly connect it with Ralph Lauren.

Based on the foregoing, the IP High Court concluded it is obvious that relevant consumers are likely to confuse or misconceive a source of the applied mark with Ralph Lauren or any entity systematically or economically connected with RL when used on clothing in class 25.

IP High Court denied registering 3D Shape of Nursing Care Bed

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The Japan IP High Court, in its ruling on November 29, 2018, did not side with Paramount Bed Co., Ltd., a Japanese manufacturer and distributor of medical and nursing care product, who filed an appeal against refusal decision by JPO to TM Application no. 2015-29155 for 3D mark representing the shape of home care bed.
[Case No. Heisei 30 (Gyo-ke) 10060]

 

3D shape of home care bed

Disputed mark, representing three-dimensional shape of nursing care bed, was filed on March 31, 2015 by designating nursing care bed and mattress in class 20. The Japan Patent Office (JPO) refused the mark due to a lack of distinctiveness.

Paramount Bed argued acquired distinctiveness as a source indicator of Paramount nursing care bed through substantial use of the mark and its unique shape.
According to the argument, Paramount has distributed more than 145,000 sets of nursing care bed and mattress which 3D shape is identical with the applied mark. The company spent USD 2,400,000 to advertise the bed in newspaper and USD 20,000,000 in TV commercial during the past five years. Paramount produced on-line questionnaire results which showed more than 60 % of relevant traders have recognized the shape as a series of Paramount Bed.

 

IP High Court ruling

The IP High Court dismissed the allegation entirely, stating that the produced evidences are unpersuasive to conclude the 3D shape acquired distinctiveness as a source indicator of Paramount Bed’s business because of below-mentioned reasons.

  1. As long as nursing care beds are likely to be used by general public, questionnaire results answered by traders are insufficient to demonstrate acquired distinctiveness among relevant consumers.
  2. Given the shape of applied mark occasionally appears while nursing care bed is in operation and the bed has coverlet on it in ordinary days, it is questionable whether relevant consumers have perceived the shape of applied mark per se as a source indicator.
  3. Besides, catalogs and advertisements pertinent to Paramount nursing care bed show configurations of the bed other than the shape of applied mark.

Based on the foregoing, the court upheld JPO decision.

Japan IP High Court: Cancellation of trademark right due to inappropriate use by licensee

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The IP High Court ruled on September 26, 2018 to totally cancel TM Reg. No. 1809362 for the mark “TOP-SIDER” on the ground that use of the registered mark by licensee is likely to cause confusion with goods from a business entity other than trademark owner.
[Case no. Heisei30(Gyo-ke)10053]

TM Registration – “TOP-SIDER”

Registered mark in question, consisting of the word “TOP-SIDER” written in plain Gothic font (see below), was registered in 1985 over the goods of clothing, coats, shirts and others in class 25 and  has been validly renewed over three decades .

Licensee’s Use

Mizujin  Co., Ltd, a  non-exclusive licensee of the registered mark in question, used “TOP-SIDER” logo on T-shirts (see below).

Sperry Top-Sider

Sperry Top-Sider LLC, a US business entity, famous for “Sperry Top-Sider” deck shoes, filed a cancellation trial against the registration based on Article 53 of the Japan Trademark Law and argued that above use by Mizujin shall be inappropriate since it is likely to cause confusion with “Sperry Top-Sider”.

Cancellation trial based on Article 53

JPO sided with Sperry and decided to entirely cancel the registration. To contend, trademark owner appealed to the IP High Court and alleged cancellation of the decision.

Article 53 of the Trademark Law provides that trademark right is subject to cancellation if use of the mark by licensee causes confusion with respect to another’s business and trademark owner is liable for failure to supervise with an ordinary care.

IP High Court decision

The IP High Court upheld the JPO decision, stating that:

  1. Apparently from totality of the circumstances, trademark owner must have noticed above use by Mizujin.
  2. ”TOP-SIDER” logo contains figurative elements to be seen as cloud and yacht, and looks quite similar to the Sperry mark.
  3. “Sperry Top-Sider” logo has become well-known for Sperry’s deck shoes among traders and general consumers.
  4. Since T-shirts and shoes are offered for sale to wear at same apparel shops, they are closely related with each other in view of sales channel as well as consumers.
  5. Thus, the Court finds that above use by licensee is likely to cause confusion with respect to Sperry business on deck shoes.

It is noteworthy that trademark owner is entitled to grant a licensee the right to use registered mark, however, by doing so , it enhances a risk to lose trademark right if he is careless to supervise the licensee’s inappropriate use and cause confusion.

IP High Court: “VANSNEAKER” is confusingly similar to famous “VANS” sneakers

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The IP High Court ruled on August 29, 2018 to uphold the Japan Patent Office (JPO) decision to cancel TM Reg. No. 5916735 for the mark “VANSNEAKER” over shoes in class 25 due to a conflict with TM Reg. No. 5245474 for famous mark “VANS”.
[Case no. Heisei30(Gyo-ke)10026]

VANSNEAKER

Disputed mark “VANSNEAKER” in the standard character format was filed on July 25, 2016 and registered next January by designating shoes in class 25 in the name of VAN Jacket Inc., a Japanese business entity, who succeeded to apparel business of “VAN” brand all the rage in the 60’S.

Opposition by VANS Incorporated

VANS Incorporated, a US business entity, established in California 1966,  famous for “VANS” sneakers, filed an opposition  by citing its own senior registered mark “VANS” in standard character format over shoes in class 25. The JPO decided to cancel disputed mark in breach of Article 4(1)(xi) of the Trademark Law on the ground that it is confusingly similar to famous “VANS” mark from a conceptual point of view. [Opposition case no. 2017-900135]

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.

Appeal to the IP High Court

To contend, VAN Jacket appealed to the IP High Court and demanded cancellation of the decision.

VAN Jacket alleged in the court that JPO decision was based on an erroneous assumption of fact because it considered the portion of “VANS” plays a dominant role in source indicator. Given disputed mark “VANSNEAKER” consists of one word in its entirety, it is unlikely that consumers perceive the last letter “S” of “VANS” functions to represent an initial letter of “SNEAKER” as well.

Court decision

The IP High Court, however, dismissed the arguments by VAN Jacket, stating that:

  1. Cited mark ”VANS” has become famous among Japanese general consumers in connection with sneakers and shoes both at the time of filing application and registration of disputer mark.
  2. “NEAKER” does not give rise to any specific meaning. In the meantime, “SNEAKER”, combining “S” with “NEAKER” adjacent to it, is an English word familiar among relevant public to mean a type of the designated goods (shoes).
  3. It becomes usual to prevent successive letter in a coined mark consisting of two words where first word ends with a letter and send word starts with the same letter.
  4. Based on the foregoing, consumers at sight of disputed mark shall pay attention to a distinctive portion of “VANS” and are likely to conceive that the mark consists of two words, “VANS” and “SNEAKER” by omitting first or the last letter “S” of respective words.
  5. Consequently, the Court finds that disputed mark is likely to cause confusion with famous “VANS” sneakers when used on shoes.