SUPERMAN defeated in trademark battle by SUPER M.E.N.

On April 7, 2022, the Opposition Board of the Japan Patent Office (JPO) dismissed a trademark opposition filed by Warner Bros against TM Reg no. 6375288 for the wordmark “SUPER M.E.N.” and found the mark is dissimilar to “Superman.”

[Opposition case no. 2021-900257]

“SUPER M.E.N.”

Opposed mark, consisting of the word “SUPER M.E.N.” written in alphabets and Japanese Katakana character (see below) was applied with the JPO on February 7, 2020, for use on various goods in classes 5,9,10,25,28 and services in classes 35, 45 (TM App no. 2020-14074) by Dr. Nakamatsu, a famous Japanese inventor.

The JPO granted protection on March 29, 2021, and published for opposition on April 27, 2021.

Dr. Nakamatsu promotes unique face shields bearing the SUPER M.E.N. mark to help prevent the spread of COVID-19. According to the advertisement, “M.E.N.” suggests ‘mouth, eye, and nose’ and ‘face mask; festival mask’ (The term “omen” is the exact word to mean it in Japanese).

Image credit: Dr.NakaMats.Com.

Opposition by Warner Bros

Opponent, Warner Bros. Entertainment Inc. claimed the opposed mark “SUPER M.E.N.” shall be canceled in contravention of Article 4(1)(xi) of the Japan Trademark Law by citing earlier trademark registrations for a fictional superhero “Superman” in relation to visor caps; cap peaks of class 25 and toy masks; carnival masks; costume masks; theatrical masks of class 28.

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

There is the criterion that the examiner is checking when assessing the similarity between the marks:

  • visual similarity
  • aural similarity
  • conceptual similarity

and taking into account all these three aspects, the examiner would decide if a mark is similar (at least to some extent) to the earlier mark and if there is a likelihood of confusion for the consumers.

Warner Bros argued that the opposed mark gives rise to a meaning of ‘multiple SUPERMAN’ from its configuration. Besides, in view of resembled appearance and pronunciation between the marks, relevant consumers of the goods in question are likely to associate the opposed mark with the superhero “SUPERMAN” and confuse the source of origin of these goods.


JPO decision

The JPO Opposition Board found the opposed mark is pronounced as “super-men”, however, it does not give rise to any specific meaning at all.

By virtue of the difference between the letters “E” and “A” and the katakana character, both marks can be sufficiently distinguishable by appearance.

In phonetical comparison between “super-man” and “super-men”, relevant consumers would be unlikely to confuse each sound when pronounced in view of a few phonetic compositions of four sounds in total and distinction in the sound of “ma” and “me”.

There is no doubt both marks are dissimilar in concept because the opposed mark does not give rise to any meaning similar to ‘a fictional superhero’.

Based on the above findings, the Board held that “SUPER M.E.N.” and “SUPERMAN” are obviously dissimilar from visual, phonetic, and conceptual points of view.

In a conclusion, the JPO dismissed the entire allegations of Warner Bros and allowed registration of the opposed mark.

Patagonia Inc Failed in Registering “PATAGONIA”

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

[Appeal case no. 2020-16786]

“PATAGONIA”

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

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

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

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


Appeal by Patagonia Inc.

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

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


JPO decision

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

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

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

BEYOND MEAT defeats “Beyond Meat Burger”

The Japan Patent Office (JPO) sided with Beyond Meat Inc. and canceled TM Reg no. 6197193 for wordmark “Beyond Meat Burger” by free-riding on the business reputation of “BEYOND MEAT”.

[Opposition case no. 2020-900023, Gazette issued date: July 30, 2021]

Beyond Meat Burger

Opposed mark, consisting of a wordmark “Beyond Meat Burger” written in a Japanese katakana character (see below), was filed by a Japanese individual on July 23, 2018, for use on ‘meat products’ in class 29 and ‘clothing’ in class 25.

Subsequently, the applicant deleted the designated goods in class 29.

The mark was registered on November 15, 2019, and published for opposition on December 10, 2019.


BEYOND MEAT

Beyond Meat Inc., a US food processing company that specializes in providing plant-based meat, filed an opposition against the “Beyond Meat Burger” mark with the JPO on January 24, 2020, before the lapse of a two-month statutory period for the opposition.

In the opposition brief, Beyond Meat argued the opposed mark shall be canceled in contravention of Article 4(1)(xix) of the Japan Trademark Law.

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.

It is interpreted that the “famous mark” under the article does not require a high reputation among Japanese consumers. If domestic consumers recognize such a reputation in foreign countries, it will suffice.

Beyond Meat alleged that the “BEYOND MEAT” mark has been well known for plant-based meat substitutes by the opponent to meat distributors as well as US consumers (It should be noted that Beyond Meat has yet to launch the business in Japan as of now). It is obvious that the opposed mark is confusingly similar to “BEYOND MEAT”. Presumably, the opposed party must have filed the opposed mark with a fraudulent intention to prevent registration of the “BEYOND MEAT” mark in Japan and gain unjust enrichment by doing so.


JPO decision

The JPO Opposition Board admitted that the “BEYOND MEAT” mark has acquired a remarkable degree of reputation among US consumers as a source indicator of plant-based meat substitutes by Beyond Meat Inc. even before the application date of the opposed mark

The Board assessed the opposed mark is confusingly similar to “BEYOND MEAT”. Relevant consumers with an ordinary care would see the term “Beyond Meat” as a prominent portion of the opposed mark because the consumers get familiar with the English word “Burger.”

A fact that the opposed party initially designated ‘meat products’ implies the applicant’s intention to use the opposed mark on the goods that are closely associated with meat substitutes. If so, the Board had a reasonable ground to believe the opposed mark was filed with an intention to take advantage of goodwill and business reputation associated with Beyond Meat’s tradename and trademark.

Based on the foregoing, the JPO decided to retroactively cancel the opposed mark “Beyond Meat Burger” in contravention of Article 4(1)(xix).

Trademark Dispute over “RED HOT”

The Japan Patent Office (JPO) dismissed trademark opposition against wordmark “REDHOT” written in Katakana character opposed by The French’s Food Company LLC who owns senior trademark “REDHOT” and “FRANK’S REDHOT” in class 30.

[Opposition case no. 2020-900289, Gazette issued date: June 25, 2021]

Opposed mark “REDHOT”

Opposed mark, consisting of the word “REDHOT” written in Japanese Katakana character (see below), was filed by Kentucky Fried Chicken Japan (KFC) for use on fried chicken, meat, processed meat products, and other goods in class 29 and hamburgers, hot dog sandwiches, bread rolls, and other goods except for seasonings and spices in class 30 with the JPO on November 6, 2018 (TM Application no. 2018-142676).

KFC Japan has begun selling the “Red Hot Chicken”, red and white pepper with a touch of habanero, giving it a crisp, spicy flavor and the taste of domestic chicken in limited quantities since 2004.


FRANK’S REDHOT

The French’s Food Company LLC, an owner of the #1 brand of hot sauce “Frank’s RedHot” in America, filed an opposition on November 2, 2020.

Opponent argued that the opposed mark shall be canceled in contravention of Article 4(1)(xi) and (xv) because of similarity to senior TM Reg nos. 4723565 and 5523112 for wordmark “REDHOT” on seasonings and spices in class 30 (Citation 1), and a likelihood of confusion with TM Reg no. 5523111 for wordmark “FRANK’S REDHOT” (Citation 2) which has become famous as a source indicator in connection with hot sauce as a result of substantial and continuous use since 1920.


JPO decision

The Opposition Board of JPO found that Article 4(1)(xi) shall not be applicable to the opposed mark.

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

Since the designated goods, seasonings and spices, of the opposed mark are deemed dissimilar to any other goods belonging to class 30. In so far as respective goods in question are dissimilar, the opposed mark shall not be subject to the article even though the mark is identical with Citation 1.

The Board questioned whether the mark “FRANK’S REDHOT” has acquired a certain degree of reputation and popularity among relevant consumers in Japan by taking account of the produced evidence. The mere fact that the opponent’s hot sauces get to be a popular choice at specific dining restaurants is insufficient to support the famousness of Citation 2 in Japan.

Besides, relevant consumers would be easily able to distinguish the opposed mark with “FRANK’S REDHOT” by means of the distinctive term “FRANK’S” of Citation 2.

Given the low degree of similarity and unproven famousness as a source indicator of the opponent, the Board concluded it is unlikely that relevant consumers would confuse the source of goods bearing the opposed mark with the opponent or Citation 2 from the totality of circumstances, and thus dismissed the opposition entirely.

“MONA LISA” May Smile At You

In a recent decision, the Japan Patent Office (JPO) disaffirmed the examiner’s refusal and accepted for registration of the world-famous painting, ‘Mona Lisa’ by Leonardo da Vinci.
[Appeal case no. 2020-9377, Gazette issued date: May 28, 2021]


“MONA LISA”

Disputed mark, consisting of a wordmark “MONA LISA” written in a Japanese katakana character (see below), was filed by a Japanese company, Negibito Co., Ltd on February 20, 2019, for use on ‘edible live aquatic animals; edible unprocessed seaweeds; fresh vegetables; fresh fruits; live mammals, fish [not for food], birds and insects and other goods in class 32.

Apparently, the company uses the disputed mark on specially grown scallions with a high sugar content of more than 20 degrees to be sold at JPY10,000 (USD92) for one stalk!


Article 4(1)(vii)

JPO examiner raised her objection by stating that since “MONA LISA” has been known for the world-famous painting, ‘Mona Lisa’ by Leonardo da Vinci, it shall contravene the generally accepted sense of morality or the international faith if registered. Accordingly, the disputed mark shall be rejected in contravention of Article 4(1)(vii) 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.

Trademark Examination Guidelines 42.107.05 provides seven criteria to take into consideration to determine if a mark, consisting of valuable cultural products (works of art), shall contravene the article.

(i) Famousness of the cultural products
(ii) Recognition of the cultural products among citizens or local residents
(iii) State of use of the cultural products
(iv) Relationship between the state of use of the cultural products and the designated goods or services
(v) Background, purpose, and reason for filing an application
(vi) Relationship between the cultural products and the applicant
(vii) Authorized entity that manages and owns the cultural products (if any)

The applicant filed an appeal against the refusal on July 3, 2020.


JPO Appeal Board decision

The Appeal Board assessed seven criteria pertinent to the works of art “MONA LISA” in accordance with the Trademark Examination Guideline.

The Board admitted a remarkable degree of recognition and reputation of “MONA LISA” among the general public in Japan as the world-famous painting by Leonardo da Vinci.

In the meantime, the Board questions if the goods in question are closely related to works of art and art exhibitions that the term “MONA LISA” has been used.

Besides, the Board found that the term is not used to promote or develop certain regions associated with the painting in relation to the goods in question.

Based on the foregoing, the Board held that it is unlikely that registration of the disputed mark would constitute a genuine and sufficiently serious threat to a fundamental interest of society when used in connection with the goods in class 32. Therefore, the disputed mark “MONA LISA” shall not be refused on the basis of the public policy exception provided for in Article 4(1)(vii) of the Trademark Law.

JPO found Italian word “Panetteria” distinctive in relation to restaurant service

In a recent administrative decision, the Appeal Board of the Japan Patent Office (JPO) disaffirmed the examiner’s refusal and found “Panetteria ARIETTA” and “ARIETTA” are dissimilar by virtue of distinctiveness of the term “Panetteria.”

[Appeal case no. 2020-9688, Gazette issued date: May 28, 2021]

Panetteria ARIETTA

FOOD ENGINEERING DESIGN INC., a Japanese commercial bakery and restaurant, filed a trademark registration for word mark consisting of the term “Panetteria ARIETTA” in a gothic type and its transliteration written in a Japanese katakana character (see below) for use on confectionery and bread in class 30 and restaurant service in class 43 on January 15, 2019 [TM App no. 2019-8176].

The applicant has used the applied mark as a shop name on bakeries located in Tokyo.


ARIETTA

The JPO examiner raised her objection on the ground that the applied mark is deemed similar to senior trademark registration no. 5106118 for word mark consisting of the term “ARIETTA” and its transliteration written in a Japanese katakana character (see below) on restaurants and other services in class 43.

In the refusal decision dated May 7, 2020, the examiner asserted the term “Panetteria” is an Italian word meaning ‘bakery’ and thus lacks distinctiveness in relation to bread and restaurant service. If so, other term “ARIETTA” of the applied mark would play a dominant role of its source indicator. Accordingly, the examiner rejected the applied mark in contravention of Article 4(1)(xi) of the Japan Trademark Law.

The applicant filed an appeal against the refusal on July 10, 2020.


JPO Appeal Board decision

The Appeal Board questioned whether an Italian word “Panetteria” is commonly used as a descriptive indication in relation to restaurant service in Japan. The Board found the term as well as its meaning is not familiar among the general public. Under the circumstance, the examiner errored in assessing distinctiveness of the word. A mere fact that the term “Panetteria” appears in an Italian language dictionary is insufficient to conclude a portion of the term “ARIETTA” per se plays a role of source indicator of the applied mark.

Provided that relevant consumers would not conceive any specific meaning from the term “Panetteria”, the Board held the applied mark “Panetteria ARIETTA” and cited mark “ARIETTA” are obviously dissimilar as a whole from visual, phonetic, and conceptual points of view.

Based on the foregoing, the JPO Appeal Board disaffirmed the examiner’s rejection and decided to register the applied mark accordingly.

Katakana to prevent mispronunciation of brands

The unique writing system of the Japanese language consists of three different character sets: Kanji (several thousands of Chinese characters), and Hiragana and Katakana (two syllabaries of 46 characters each).

Specifically, Katakana gets used to writing foreign loanwords phonetically.

By virtue of Katakana, we get a clue to learn the proper pronunciation of unpronounceable alphabetical words. In this regard, Katakana is obviously of great help to avoid phonetic slip-ups and mispronouncing high-profile brand names in Japan.

For instance, when we come across the word “YVES SAINT LAURENT” for the first time, we most likely call it “i-bes-sein-to-lo-ren-to”.
Likewise, we are likely to call “Uber” as “yu-be:ru”, “Google” as “go:gu-lu”, “NIKE” as “ni-ke”, “Levis” as “le-vi-su”, “XLARGE” as “eks-la:ji”, “Michelin” as “mi-sye-lin”, “XXIO” as “eks-esk-ai-ou”.

In other words, less attention to Katakana in promoting alphabetical brand names is likely to result in mispronunciation among the relevant public in Japan as you can see from the above instances.

What’s worse, it may give rise to a tragedy that trademark registration for the alphabetical name is insufficient to force an unauthorized entity to cease its use of a mark consisting of Katakana to represent the correct pronunciation of the name due to dissimilarity of the marks.

Provided that trademark registration is solely composed of alphabetical words, the pronunciation of the mark is construed based on the most natural, logical way to pronounce it.

In this regard, it was a bit surprised that the Supreme Court judged a wordmark written in Katakana to be read as “reeru-dyu-tan” is phonetically identical with a registered mark “L’Air du Temps” in Case 1998 (Gyo-Hi) 85. Undoubtedly the judgment was based on the facts that “L’Air du Temps” had become well-known as a brand of perfume and the registered mark had been advertised accompanying a Katanaka “reeru-dyu-tan” as well.

When we come across the word “L’Air du Temps” for the first time, little thought is given to call it “reeru-dyu-tan”. The most natural way to pronounce it is “lu-ea:-dyu-ten-po-su” indeed. Thus, the Supreme Court judgment should not be considered to negate the necessity of Katakana in avoiding mispronounced marks.

It is advisable to use and register a Katakana character representing the correct pronunciation of the brand name as well as the alphabetical letters, especially where the letters are unpronounceable to the Japanese and thus natural pronunciation is not what a brand owner expects the Japanese to call it.

NIKE uses and registers its corporate name in both respectively.