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.

Japan IP High Court ruled “AZURE” is unregistrable due to “AZULE”

On December 23, 2020, the Japan IP High Court affirmed a decision of the Japan Patent Office (JPO) finding that the “AZURE” mark is similar to senior trademark registration no. 5454302 for word mark “AZULE” in connection with medical services of class 44.
[Judicial case no. Reiwa 2(Gyo-ke)10086]

AZURE

A disputed mark is a wordmark “AZURE” in standard character. The mark filed by Willfarm Co., Ltd., a Japanese merchant on November 22, 2017, over cosmetics (cl. 3), pharmaceutical preparations, dietary supplements (cl. 5), retail or wholesale services for these goods (cl. 35), beauty salon, massage, providing medical information, health clinic services, rental of medical equipment, nutritional and dietetic consultancy, nursing home services (cl. 44). [TM application no. 2017-153742]

JPO decision

Initially, the JPO examiner refused the mark in contravention of Article 4(1)(xi) of the Trademark Law by citing senior trademark registration no. 5454302 for word mark “AZULE” written in standard character. Among other things, the designated service of ‘providing medical information, health clinic services, rental of medical equipment’ in class 44 is deemed identical with that of the citation.

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 a 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 examiner makes a decision 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.

The applicant sought to file an appeal against the examiner’s rejection and argued dissimilarity of both marks, however, the Appeal Board upheld the rejection for the same reason on June 8, 2020. [Appeal case no. 2020-1707]

To contest the administrative decision, the applicant filed a lawsuit to the IP Hight Court on July 21, 2020.

IP High Court ruling

In the lawsuit, the plaintiff argued the Board inappropriately found the “AZURE” mark would give rise to pronunciations of ‘æʒə’ and ‘a-zhə-reˈ, but it is precisely pronounced as ‘æʒə’ or ‘a-jü(ə)l’. Besides, the Board erroneously held “AZURE” is similar to “AZULE” in appearance. By virtue of the difference in the fourth letter “R” and “L”, relevant consumers of the medical services in question would easily distinguish them. If so, by taking account of slight conceptual association between the marks, the “AZURE” mark shall be considered dissimilar to “AZULE” from visual, aural, and conceptual points of view.

The Court upheld the Board decision by stating that relevant consumers at the sight of the disputed mark would pronounce the term “AZURE” as ‘æʒə’ or ‘a-zhə-reˈ since it is not a familiar foreign word among the general public in Japan. The cited mark “AZULE” also gives rise to a pronunciation of ‘a-zhə-leˈ. Therefore, both pronunciations are confusingly similar.

As for appearance, the court denied the plaintiff’s argument on the ground that the medical services in question are consumed not only by health care workers but also by the general public. As long as both terms are unfamiliar to the relevant consumers, a mere difference of one letter would be anything but sufficient for them to distinguish both marks.

Based on the foregoing, the Court dismissed the allegations entirely and ruled to reject the “AZURE” mark in contravention of Article 4(1)(xi).

To read a full text of the IP High Court decision (Japanese only), click here.

iPad vs MI PAD

JPO sided with Apple Inc. in a dispute with a China-based consumer electronics company, Xiaomi that registers and uses the “MI PAD” trademark on tablet computers by finding that “MI PAD” is likely to cause confusion with “iPad”.
[Opposition case no. 2019-685002, Gazette issued date: November 27, 2020]

Xiaomi “MI PAD”

Xiaomi, a China-based electronics manufacturer headquartered in Beijing, filed a trademark application for word mark “MI PAD” via the Madrid Protocol (IR 1223839) in respect of various goods including table computers, downloadable music files, downloadable image files in class 9, and telecommunication access services and others in class 38 on August 22, 2017.

Prior to filing the application, Xiaomi newly introduced its first tablet, the Tegra K1-powered “Mi Pad” in 2014.

The JPO admitted registration of the MI PAD mark on December 7, 2018.

Opposition by Apple “iPad”

The Opponent, whose earlier ‘iPad’ trademark for its computer tablet products was also registered in Classes 9 and 38, is the U.S. tech giant, Apple Inc.

The heart of this dispute concerned the grounds of opposition raised by Apple Inc. against Xiaomi’s ‘MI PAD’ mark registration in Japan under Article 4(1)(xv) of the Japan Trademark Law.

Article 4(1)(xv) is a provision to prohibit any mark from registering if it is likely to cause confusion with other business entities ’ well-known goods or services.

The Opponent argued the “MI PAD” mark shall cause confusion with Apple “iPad” when used tablet computers and related goods and services, given a remarkable reputation of “iPad” holding a top market share (42% in 2017, 43.2% 2018) in Japan and the close resemblance between “iPad” and “MI PAD”.

JPO decision

The Opposition Board admitted a remarkable degree of reputation and popularity of opponent trademark “iPad” based on the produced evidence boasting the top market share consecutively for the past nine years in Japan. Besides, the Board found “iPad”, consisting of “i” and “Pad”, is highly unique because the term “Pad” is anything but descriptive in relation to tablet computers.

In the assessment of mark, the Board held the dissimilarity between the signs at issue, resulting from the presence of the additional letter ‘m’ at the beginning of “MI PAD”, is not sufficient to offset the high degree of visual and phonetic similarity between the two signs. It is unquestionable that the designated goods and services are closely associated with tablet computers and consumed by the same consumers.

If so, it is likely that the consumers at the sight of disputed goods and services bearing the “MI PAD” mark would confuse or misconceive its source with Apple Inc. or any entity systematically or economically connected with the opponent.

Based on the foregoing, the Board decided opposed mark shall be canceled in contravention of Article 4(1)(xv).

Google’s Trademark Battle over Street View

The Opposition Board of the Japan Patent Office (JPO) sided with Google LLC and decided to cancel trademark registration no. 6086044 for word mark “STREET VIEW MODEL (SVM)” due to a likelihood of confusion with Google’s “STREET VIEW”.
[Opposition case no. 2018-900391, Gazette issued on September 25, 2020]

Opposed mark

A Japanese individual filed a trademark application for word mark “STREET VIEW MODEL (SVM)” written in Japanese Katakana character (see below) by designating the service of ‘providing online non-downloadable videos and photographs’ in class 41 with the JPO on December 27, 2017.

The opposed mark was registered and published for opposition on October 30, 2018.

Google “Street View”

On December 28, 2018, Google LLC filed an opposition against “STREET VIEW MODEL (SVM)” and argued that the opposed mark shall be canceled in contravention of Article 4(1)(xv) and (xix) of the Trademark Law based on its owned senior registration for the STREET VIEW mark (IR no. 12138361) in class 9 and 42 because both marks resemble and relevant consumers would confuse or associate the opposed mark, containing “STREET VIEW” famous for the service featured on Google map enabling to provide panoramic 360-degree views from the designated street, with the opponent when used on the designated service in question.

IR no. 12138361

Article 4(1)(xv) prohibits registering a trademark which is likely to cause confusion with the business of other entities.

Board Decision

The Board did not question the famousness of the STREET VIEW mark as a source indicator of Google’s service for providing digital images on a map at the time of both initial filing and registration of the opposed mark.

In the assessment of similarity between the marks, the Board found that the average consumers would likely pay considerable attention to the term “STREET VIEW” of the opposed mark because of its fame. If so, a high degree of similarity exists between the opposed mark and “STREET VIEW”.

It is true that the “STREET VIEW” mark is anything but a fancy or invented word since it consists of two common English words that the relevant consumers are familiar with, however, given the designated service in question and Google “STREET VIEW” are related to providing digital images via the internet, these are supposedly purchased or consumed by the same consumers. If so, the Board considers the opponent business, and the service in question are closely associated.

Based on the foregoing, the Board concluded that relevant traders and consumers are likely to confuse or misconceive a source of the opposed mark when used in relation to the service (class 41) with Google or any entity systematically or economically connected with the opponent and thus decided cancellation in contravention of Article 4(1)(xv).

Failed Opposition by ESPRIT against trademark registration “ESPRIT SELECTION”

The Japan Patent Office (JPO) dismissed a trademark opposition claimed by fashion company Esprit against trademark registration no. 6155147 for a work mark consisting of “ESPRIT” and “SELECTION” over retail service in class 35 by finding dissimilarity and less likelihood of confusion with “ESPRIT”.
[Opposition case no. 2019-900260, Gazette issued date: July 31, 2020]

“ESPRIT SELECTION”

Opposed mark, a wordmark consisting of “ESPRIT” with larger font size and “SELECTION” with smaller font size in two lines (see below), was filed by a Japanese business entity, Harmonick Co., Ltd., on November 19, 2018, by designating ‘retail services or wholesale services for a variety of goods in each field of clothing, foods and beverages, and living ware, carrying all goods together’ in class 35.

Applicant commercially provides gift catalogs bearing the opposed mark so that shoppers can find a great selection of products from the catalogs.

The JPO admitted registration on June 21, 2019, and published for opposition on July 16, 2019.

Opposition by ESPRIT

To oppose registration within a statutory period of two months counting from the publication date, Esprit International filed an opposition on September 11, 2019.

In the opposition, Esprit asserted the opposed mark shall be canceled in contravention of Article 4(1)(xv) and (xix) of the Japan Trademark Law because of a high degree of popularity and reputation of owned senior trademark registrations nos. 2097119 and 2187153 for the “ESPRIT” logo (see below) as an international fashion brand and close resemblance with the opposed mark “ESPRIT SELECTION”.

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 consumers.

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

Esprit argued the term “SELECTION” is descriptive in relation to the retail service in question since it is commonly used to indicate ‘the things chosen or selected’ or ‘an assortment of things from which a choice can be made’. If so, relevant consumers would conceive the term “ESPRIT” as a prominent portion of the opposed mark and thus both marks shall be unquestionably deemed similar as a whole.

Besides, the service in question is closely related to the opponent business since Esprit offers affordable fashion and lifestyle with a huge selection of ladies’, men’s, and kids’ clothing as well as accessories.

Board Decision

The Opposition Board of JPO denied a high degree of popularity and reputation of “ESPRIT”, stating that the opponent failed to produce evidence to demonstrate actual and substantial use of the opponent mark, advertisement, sales record, and market share in Japan. A mere fact that opponent is a global company doing business in more than 40 countries and operates more than 440 “ESPRIT” shops in European and neighboring Asian countries are insufficient and irrelevant to find whether the opponent mark becomes famous among relevant consumers and traders in Japan.

Besides, the term “SELECTION” shall not be taken to explicitly indicate the quality of the service in question. Even if it is depicted with smaller font size than “ESPRIT”, the Board would not find a reasonable ground to believe the term “ESPRIT” solely plays a role of source indicator in the configuration of the opposed mark. If so, the opposed mark shall be assessed in its entirety.

Based on the foregoing, the Board concluded “ESPRIT SELECTION” and “ESPRIT” are dissimilar as a whole from visual, phonetical, and conceptual points of view. Provided that the opponent mark has not acquired a certain degree of reputation and popularity among relevant consumers in Japan, it unlikely happens that the consumers confuse or misconceive a source of the opposed mark with Esprit or any entity systematically or economically connected with the opponent. Thus, the opposed mark shall not be canceled on the grounds of Article 4(1)(xv) and (xix).

Economic Forum Trademark Dispute

World Economic Forum, the International Organization for Public-Private Cooperation committed to improving the state of the world, failed in their attempt to cancel trademark registration no. 6137205 for wordmark “Junior Economic Forum” at the Japan Patent Office (JPO).
[Opposition case no. 2019-900192, Gazette issued date: July 31, 2020]

Junior Economic Forum

Opposed mark (TM Registration no. 6137205), consisting of three words “Junior Economic Forum” in standard character, was applied for registration on June 4, 2018, for ‘educational and instruction services relating to arts, crafts, sports or general knowledge; arranging, conducting and organization of seminars; production of videotape film in the field of education, culture, entertainment or sports; organization of entertainment events’ in class 41 by a Japanese individual and published for opposition on May 14, 2019.

Opposition by WORLD ECONOMIC FORUM

On July 12, 2019, before the lapse of a two-months opposition period, World Economic Forum (WEF), an independent international organization hosting an annual opportunity for leaders across business and government to come together to discuss solutions to the world’s most pressing economic and social challenges in Davos, filed an opposition to the opposed mark.

WEF claimed that the opposed mark “Junior Economic Forum” shall be partially canceled in contravention of Article 4(1)(xi) of the Japan Trademark Law in relation to the service of “arranging, conducting and organization of seminars” of class 41 by citing an owned senior international registration no. 1309337 for word mark “WORLD ECONOMIC FORUM” over the services of ‘Organization, arranging and conducting of colloquiums, conferences, congresses, seminars, symposiums; organization of congresses and conferences for cultural and educational purposes with the purpose to promote discussions on industrial, regional and global changes and issues’ in class 41 and others, which has been effectively registered in Japan since July 21, 2017.

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

WEF argued that since both marks consist of three words and two of them, “Economic Forum” are the same, the opposed mark “Junior Economic Forum” as a whole is deemed similar to “WORLD ECONOMIC FORUM” from visual, phonetic and conceptual points of view.
Besides, the service in question ‘arranging, conducting, and organization of seminars’ is unquestionably similar to the designated services of the citation.

JPO Decision

The Opposition Board decided both marks are distinctively dissimilar by stating that:

  1. From appearance, the difference in the prefix, “Junior” and “WORLD”, would give rise to a distinctive impression between the mark as a whole since the prefix is considered as the dominant element in visual assessment.
  2. Likewise, both marks shall be sufficiently distinguishable in sound as a whole due to the difference in prefix.
  3. It would not happen confusion in concept since both marks are unlikely to give rise to any specific meaning.
  4. From the totality of the circumstances, relevant consumers would neither associate nor connect “Junior Economic Forum” with “WORLD ECONOMIC FORUM”

Consequently, the opposed mark is not subject to Article 4(1) (xi) and remains valid as a status quo.

Is “MAHARAJA” a generic term in relation to Indian restaurants?

On July 8, 2020, the Japan IP High Court affirmed the JPO’s rejection in a trademark dispute over the “MAHARAJA” mark for Indian restaurant services in class 43. [Judicial case no. Reiwa2(Gyo-ke)10022]

Disputed mark

The disputed mark prominently consists of “Maharaja” with stylization in red (see below).

The mark was filed by MAHARAJA.CO., LTD, on December 25, 2017, designating the services of providing Indian cuisine; providing alcoholic beverages, tea, coffee, or juices; providing hotel accommodation in class 43 [TM application no. 2017-168406].

The applicant allegedly opened the first “Maharaja” Indian restaurant at Shinjuku (Tokyo) in 1968 and now operates the “Maharaja” restaurants at some places in Japan.

JPO decision

The Japan Patent Office (JPO) rejected the disputed mark in contravention of Article 4(1)(xi) of the Japan Trademark Law by citing the following senior registrations.

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

The JPO found that the stylized “Maharaja” term, due to its position, larger font, and color, dominates the perception of the disputed mark. If so, the disputed mark obviously gives rise to the same sound and meaning with the Citations. “MAHARAJA” means the head of one of the royal families that used to rule parts of India (Collins English Dictionary). Because of a high degree of phonetic and conceptual similarity, the mere difference in appearance is not sufficient to neutralize the similarity.

Besides, it is unquestionable that the disputed mark designates identical or similar services with the Citations.

For the reader’s reference, I had better explain that the Citations are respectively co-existing on similar services of providing Indian cuisine; providing alcoholic beverages in the same class. It is because these were filed just after the implementation of Servicemark in 1992 and the Trademark Law exceptionally secured for registration to protect the existing business status even if similar marks are filed by other entities on the condition that business owners apply for registration within a statutory period for the implementation.

To contest the JPO decision [Appeal case no. 2019-4961], the applicant appealed to the IP High Court on February 19, 2020.

IP High Court ruling

Applicant argued that since “MAHARAJA” has become a generic term in relation to Indian restaurant services, relevant consumers would find the appearance of the “MAHARAJA” mark rather than sound and meaning as a material clue to distinguish such restaurants. To bolster the argument, the applicant referred to the fact that 14 (fourteen) restaurants managed by an entity other than the applicant provide Indian foods using tradename “MAHARAJA” in Japan.

Given relevant consumers are accustomed to seeing the term “MAHARAJA” in close connection with Indian foods, it would likely be a generic term in relation to the service in question. If so, the aural and conceptual elements of generic term shall not be taken into consideration in assessing the similarity of the mark. The JPO errored in finding the background of the case appropriately.

The court, however, did deny the applicant’s allegation, stating that the on-line database of NTT telephone directory (town page) shows 2162 Indian restaurants exist in Japan as of 2017. It means more than 2,100 Indian restaurants use a tradename other than “MAHARAJA”. Under the circumstances, the court would not find a reasonable reason to believe “MAHARAJA” has become a generic term in relation to the service.

Even though there are plenty of Indian restaurants under the tradename of “MAHARAJA” in Japan as the applicant argues, the court would not be convinced if relevant consumers distinguish such restaurants simply by means of the visual elements of a mark (tradename). Because the court finds it commercial practice for shop owners to modify the font and color of mark (tradename) depending on its place and venue.

Based on the foregoing, the court decided that the JPO did not error in finding similarity of the mark and dismissed the appeal entirely.