カテゴリー: Trademark Examination Guideline

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

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

WENGER

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

SWISSWIN

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

IP High Court ruling

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

1. Evaluation of color difference on cross design

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


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

2.  Assessing figurative element except for cross design

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

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

“FS12” can’t be registered due to a lack of distinctiveness

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The Japan Patent Office (JPO) affirmed the examiner’s refusal and decided to reject a wordmark “FS12” due to a lack of inherent distinctiveness.
[Appeal case no. 2019-650019, Gazette issued date: January 29, 2021]

“FS12”

Fette Compacting GmbH filed a trademark application with the JPO via the Madrid Protocol (IR no. 1349196) for word mark “FS12” (see below) for use on goods of ‘Compression tools (parts of machines for the pharmaceutical industry, chemical industry, food industry, and metal industry) for producing pellets and tablets; die-table segments (parts of machines for the pharmaceutical industry, chemical industry, food industry, and metal industry) for rotary presses’ in class 7

Article 3(1)(v) of the Trademark Law


The JPO examiner refused the “FS12” mark in contravention of Article 3(1)(v) of the Trademark Law.

The article prohibits any 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 followed by a numeral, e.g. “A2”, “AB2”, is unregistrable under the article.

Followings are also enumerated as unregistrable marks under the article.

  • Numerals
  • One or two alphabetical letters, e.g. “AA”
  • Two alphabetical letters combined with “-” or “&”, e.g. “A-B”, “C&D”
  • One or two alphabetical letters accompanied by “Co.”, e.g. “AB Co.”
  • A numeral followed by one or two alphabetical letters, e.g. “2A”

The applicant filed an appeal against the refusal and argued distinctiveness of the “FS12” mark.

Appeal Board decision

However, the JPO Appeal Board dismissed the entire allegations and held that a mark consisting of a numeral and one or two alphabetical letters is incapable of identifying the source of the goods since the relevant public would perceive, without further thought, it to indicate a value, code, type, model or standard of the goods in question.

As a matter of fact, the Board found the combination of alphabetical letters, and a numeral is frequently used to indicate a value, code, type, model, or standard of the goods in relevant industries.

Given the mark “FS12” consists of two alphabetical letters and two digits written in regular font, the Board considers it is unlikely to play a role of source indicator and shall be unregistrable in contravention of Article 3(1)(v) of the Trademark Law.

To my knowledge, “FS12” would be mostly considered distinctive in other jurisdictions. Please be noted that a combination of one or two alphabetical letters and the numeral is deemed descriptive in relation to any kind of goods in Japan. 
To register such a mark, it is required to add a descriptive element or demonstrate acquired distinctiveness as a result of substantial use in Japan.

Tips to Pass the JPO Trademark Registration Exam in 2 months

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“JPO Status Report 2020” reveals more applicants make use of the “Accelerated Examination” in order to obtain an earlier trademark registration.

According to the latest report, the number of requests for accelerated examination in 2019 was 8,110, which increased by 54% than the previous year.

Accelerated Trademark Examination

The accelerated examination has enabled the shortening trademark examination period to 1.7 months on average. Being that it takes 7.9 months or longer for the JPO to notify the examination result at present, accelerated examination must be appealing to an applicant who wants their brand to be registered as early as possible.

The accelerated examination is available in three cases.

[Case 1]

An applicant is in use of or likely to use an applied mark on more than one of the goods/services in the designation, and in urgent need of registration.

To meet an urgent need requirement, the applicant is required to demonstrate; (i) unauthorized third party uses an applied mark, (ii) any third party request a license to use the applied mark, (iii) any third-party demand applicant to cease use of the applied mark, or (iv) applicant filed the identical mark to a foreign country.

[Case 2]

An applicant is in use of or likely to use an applied mark on every goods/service in the designation.

[Case 3]

An applicant is in use of or likely to use an applied mark on more than one of goods/services in the designation, and the description of goods/services are all in conformity with that listed in the Examination guidelines for similar goods and services.

Besides, (v) where the applicant seeks to apply for international registration of trademark identical with the applied mark through the Madrid Protocol, it is also admitted meeting an urgent need requirement for Case 1.

Sweet, but long road to register “Ghana” on chocolates

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The Japan Patent Office (JPO) allowed trademark registration of “Ghana” in connection with chocolates of class 30 by finding acquired distinctiveness as a source indicator of Lotte Co., Ltd., a Korea-based confectionary company.
[Appeal case no. 2019-8784, Gazette issued date: May 29, 2020]

Lotte “Ghana” Chocolates

Ghana chocolate is Lotte’s signature product and one of the most beloved chocolate in Japan for many years.

Lotte Co., Ltd. launched chocolates bearing the “Ghana” mark in 1964. Since then, the mark has been prominently indicated on the packages.

[“Ghana” chocolate package back in 1970’s – TM Reg no. 892507]

In 1994 of the 30th anniversary, Lotte slightly changed the design of its package and the mark and added different tastes of “Ghana” chocolates, e.g. milk chocolates, white chocolates. On new packages, the “Ghana” mark is much conspicuously and largely indicated than before.

[Current package – TM Reg no. 5405402, registered on April 8, 2011]

On December 8, 2017, Lotte sought trademark registration for the current “Ghana” logo (see below) over chocolates in class 30. [TM application no. 2017-161593]

Article 3(1)(iii) & 4(1)(xvi)

The JPO rejected the “Ghana” mark in contravention of Article 3(1)(iii) and 4(1)(xvi) of the Japan Trademark Law by stating that “Ghana” is a geographical indication corresponding to Republic of Ghana, a country of western Africa, situated on the coast of the Gulf of Guinea, one of the major producers of high-quality cocoa beans. Therefore, relevant consumers and traders at the sight of chocolates bearing the “Ghana” mark would merely conceive it of the origin of cocoa beans. Besides, whenever the mark is used on chocolates not made from Ghana cocoa beans, it inevitably misleads the quality of goods.

Acquired distinctiveness

Lotte argued the “Ghana” mark shall be protectable based on Article 3(2), even if nominally unregistrable under Article 3(1)(iii) because it has acquired distinctiveness as a result of substantial and continuous use on chocolates in Japan.

Article 3(2) of the Trademark Law

Notwithstanding the preceding paragraph, a trademark that falls under any of items (iii) to (v) of the preceding paragraph may be registered if, as a result of the use of the trademark, consumers are able to recognize the goods or services as those pertaining to a business of a particular person.

Appeal Board decision

The Appeal Board affirmed examiner’s rejection pertinent to lack of distinctiveness in connection with goods in question, however, the Board held that the “Ghana” mark would function as a source indicator of Lotte chocolates consequently and thus registrable based on the acquired distinctiveness under Article 3(2).

Allegedly Lotte “Ghana” chocolates hold top-ranked market share in Japan since 2017. In 2008, Lotte sold more than 100 million bars of “Ghana” chocolates. The annual sales exceeded 1.2 billion JP-yen in 2017.

Lotte has long been aggressive not only to advertise “Ghana” chocolates in newspapers, TV commercials, trains, and stations, but also to launch lots of chocolate events and campaigns on Valentine’s Day or Mother’s Day nationwide, and collaborations with retailers, hotels restaurants featuring ‘Ghana’ chocolates.

Due to their marketing efforts, Lotte “Ghana” brand chocolates could win several awards, e.g. Monde Selection ‘Gold Award’ (2008, 2009, 2010), D2C ‘Marketing Award’ (2002), The Japan Food Journal ‘Long Seller Award’ (2008), DENTSU ‘Excellent Award’ (2009, 2010, 2011), JR East ‘Excellent Advertisement Award’’.

Besides, “Ghana” chocolates ranked top in the brand survey published by Nikkei Research in 2016.

Lotte could eventually achieve registration of the “Ghana” mark on chocolates, but it spent more than five decades to that end.

Interestingly. Lotte has registered the “GANA” mark on goods of class 30 including chocolates since 1990. It must aim to prevent a third party from registering any mark similar to “Ghana”.

Coronavirus Impact on Trademark Procedures in Japan

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The Japan Patent Office (JPO) has announced the measures it has taken to help foreign users for trademarks during the coronavirus outbreak.

Response to the office action

JPO takes flexible approaches to allow a delayed response on the condition that the applicant requests for remedy either in the following ways:

  1. To file a written request and its reason before the lapse of a deadline in advance.
  2. To file the response with an additional written explanation within a certain period after the deadline.
[Example of reasons]

Due to the negative effects of the COVID-19, Company ____ for which applicants work/Office ___ where representatives of applicants work had been closed from _____ to _____ in 2020, and the applicants/the representatives are (were) not able to implement the prescribed procedures. Nonetheless, since it has become possible to implement the procedures from ____, 2020, please accept ____ as a valid procedure.

Priority documents

JPO allows submitting priority documents within two months after deadline, namely five months from the application date, provided that the applicant simultaneously files a statement of reasons for the failure to meet its original deadline.

Appeal to refusal decision

JPO considers a request for appeal against the examiner’s decision of refusal valid if appealed within two months after foreign users go back to normal life impacted by COVID-19, but before the lapse of six months after the original deadline. It is required to state delayed reasons in the appeal brief.

Payment of registration fee

JPO considers payment of registration fee valid if appealed within two months after foreign users go back to normal life impacted by COVID-19, but before the lapse of six months after the original deadline. It is required to file a statement of delayed reasons simultaneously.

Application for renewal

JPO accepts application for renewal of trademark registration valid if appealed within two months after foreign users go back to normal life impacted by COVID-19, but before the lapse of six months after the expiry date. It is required to file a statement of delayed reasons simultaneously.

New transformed Application after revocation of international registration

JPO considers a newly transformed application for Japanese trademark application after the revocation of International Registration valid if appealed within two months after foreign users go back to normal life impacted by COVID-19, but before the lapse of six months after the original deadline. It is required to file a statement of delayed reasons simultaneously.

More and latest information is available on the JPO website. Click here.

Fast Track Trademark Examination – Japan Patent Office

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At present, applicant will wait at least 12 months from when trademark is filed until it becomes registered by the Japan Patent Office (JPO).

Accelerated Trademark Examination

To meet a need of earlier registration, JPO has introduced “Accelerated Trademark Examination” which enables trademark application to be registered in two or three months.
However, since it requires applicant to demonstrate actual use of applied mark on at least one of designated goods and services, if applicant has yet to use the mark, such applications have no way but to be in a long queue for JPO examination.

Fast Track Trademark Examination

Newly introduced “Fast Track Trademark Examination” provides an option to achieve earlier registration for non-use trademark owners. According to announcement from JPO, the Fast Track Examination shortens trademark examination period to 6 (six) months on average.

Excerpt from the JPO website

If trademark application meets with following conditions, your trademark will be freely on the fast track without request.

  1. Good and services initially designated under the application are all listed on the “Examination Guidelines for Similar Goods and Services”, “Regulation for Enforcement of the Trademark Act”, or “International Classification of Goods and Services (Nice Classification)”; and
  2. No amendment has been made with respect to goods and services by the time JPO commences examination; and
  3. Applied mark does not belong to non-traditional trademark, international applications under the Madrid system, or partial 3D (three dimensional) mark.

JPO adopts the Fast Track Examination to trademark application filed on or after February 1, 2020.

Further information is available from here.

JPO registers PUERTA DEL SOL as trademark

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In a recent appeal decision, the Japan Patent Office (JPO) overturned examiner’s refusal and decided to register trademark “PUERTA DEL SOL” in connection with jewels, accessories, clothing and other goods of class 14, 18, 25 and 34 by finding the term shall not be recognized as a geographical indication, one of the most famous sites in Madrid, Spain.[Appeal case no. 2019-7624, Gazette issued date: January 31, 2020]

PUERTA DEL SOL

PUERTA DEL SOL Co., Ltd., a Japanese jewels and accessories company, applied for registration of word mark “PUERTA DEL SOL” in relation to jewels, accessories, bags, clothing, shoes and other various goods of class 14, 18, 25 and 34 on January 23, 2018.

On March 19, 2019, JPO examiner refused applied mark due to lack of distinctiveness based on Article 3(1)(iii) of the Trademark Law. Examiner found that PUERTA DEL SOL, a public square in Madrid (the capital and largest city of Spain), one of the best known and busiest places in the city, the heart of Madrid’s historic center used to be on the eastern border of the city, has been known for a famous tourist spot in Madrid. Since relevant traders and consumers in Japan are familiar with circumstances that variety of souvenirs and gifts are on sale at tourist spot, it is presumed that consumers will merely conceive the applied mark just as a geographical indication in connection with the designated goods, not a source indicator.

Article 3(1)(iii)

Article 3(1) of the Trademark Law is a provision to prohibit descriptive marks from registering.

Section (iii) of the article aims to remove any mark merely or directly suggesting quality of goods and services.

“Article 3(1)　Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered, unless the trademark:

(iii)　consists solely of a mark indicating, in a common manner, in the case of goods, the place of origin, place of sale, quality, raw materials, efficacy, intended purpose, quantity, shape (including shape of packages), price, the method or time of production or use, or, in the case of services, the location of provision, quality, articles to be used in such provision, efficacy, intended purpose, quantity, modes, price or method or time of provision;”

To dispute the refusal, applicant filed an appeal on June 10, 2019.

Applicant argued “PUERTA DEL SOL” shall be sufficiently distinctive in connection with the goods in question by citing facts that the term is legitimately registered even in the territory of Spain and less familiarity to Spanish language among relevant consumers with an ordinary care, Google search by a keyword “PUERA DEL SOL” reveals most of websites refer to applicant’s goods and business.
If so, it is groundless to find that relevant consumers would conceive applied mark as a geographical indication name when used on goods in question.

Appeal Board’s decision

The Appeal Board overturned the examiner’s decision by stating that relevant consumers and traders at the sight of applied mark are unlikely to see the mark to indicate the place of origin or sale when used on goods in question. Because the Board has no reason to believe the term “PUERTA DEL SOL” is known for a famous tourist square in Madrid even though Spanish dictionary and encyclopedia mention so by taking into account less familiarity to Spanish language among relevant consumers in Japan. Furthermore, there is no clue to find that the square is commonly indicated to represent a place of origin and sale in connection with the goods in question.

Criteria for Trademark Examination Guideline

Trademark Examination Guideline (TEG) pertinent to Article 3(1)(iii) provides that where a trademark is merely composed of a geographical name in foreign country or sightseeing area, the mark is deemed as “the place of origin” of goods or “the place of their sale”, provided that consumers or traders generally recognize that the designated goods will be produced or sold at the place indicated by the geographical name.

Trademark Examination Manual, 413.103.01 sets forth criteria to examine trademarks related to foreign geographical name.

In the cases of (a) the name of a capital, (b) the name of a state, (c) the name of a prefecture, (d) the name of a state capital, (e) the name of a province, (f) the name of the capital of a province, (g) the name of a county, (h) the name of the capital of a prefecture, (i) a former country name, (j) an old regional name, (k) the name of a district, (l) the name of a city, or special district, (m) the name of a busy downtown street, and (n) the name of a sightseeing area, even though these names may not be directly described in a dictionary or other documents/material as the place of origin, the place of sales (location of transaction) of the goods, or the location of provision of services (location of transaction), if a factor exists that establishes a connection between the goods and the name as the place of sales (location of transaction), or the location of the provision of services (location of transaction), in principle, the trademark will be refused on the grounds that it indicates the location where the goods are sold (location of transaction) or the location of provision of services (location of transaction)

Rothschild Lost Trademark Opposition in Japan

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In a recent trademark opposition, the Opposition Board of the Japan Patent Office (JPO) dismissed an opposition filed by Baron Philippe de Rothschild S.A. (Rothschild) against trademark registration no. 6090508 for word mark “MOUTON” in relation to restaurant service due to unlikelihood of confusion with the fabled French winery “Château Mouton Rothschild”.
[Opposition case no. 2019-900012, Gazette issued date: September 7, 2019]

Opposed mark

Opposed mark, consisting of a word mark “MOUTON” in standard character, was filed in the name of Kabushiki Kaisha Waltz, a Japanese company deploying in business field of bars and restaurants.

The mark was filed to JPO on November 17, 2017. Going through substantive examination, JPO admitted registration in relation to “restaurant service” in class 43 and “wholesale and retail services for non-alcoholic beverages and foods” in class 35, and published for opposition on November 13, 2018.

Opposition by Rothschild

On January 15, 2019, Baron Philippe de Rothschild S.A. filed an opposition and argued opposed mark shall be revocable under Article 4(1)(vii) and 4(1)(xv) of the Japan Trademark Law by citing its wine brand “Château Mouton Rothschild”.

Article 4(1)(vii)

Article 4(1)(vii) prohibits any mark likely to offend public order and morals from registering.
Trademark Examination Guidelines set forth criteria for the article and examples.
Among others, “Trademarks whose registration is contrary to the order predetermined under the Trademark Act and is utterly unacceptable for lack of social reasonableness in the background to the filing of an application for trademark registration.”

Based on a remarkable degree of reputation and popularity to “Château Mouton Rothschild”, Rothschild asserted, applicant must have been aware of the wine brand and filed opposed mark with a malicious intention to take advantage of the reputation and credit of opponent’s famous trademark and impair the goodwill embodied on its brand.

Article 4(1)(xv)

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

Rothschild argued that opponent has used the mark “Château Mouton Rothschild”on wines from Pauillac in the Médoc region which became Premier Grand Cru in 1973, and thus part of a limited list since there are only 5 Premiers Grands Crus from the region. It is doubtless that “Château Mouton Rothschild” and its abbreviation “MOUTON” have acquired a remarkable degree of reputation and popularity as a source indicator of opponent wines. If so, relevant consumers and traders of restaurant service are likely to misconceive or associate opposed mark with famous wine brand of opponent.

Opposition decision

The Opposition Board admitted a certain degree of reputation and popularity to “Château Mouton Rothschild” as a source indicator of opponent among traders and wine lovers, however, questioned whether the wine brand has become famous among general consumers. Besides, from the produced evidences, the Board was not convinced that “MOUTON” has been known as an abbreviation of “Château Mouton Rothschild”.
In the assessment of the similarity between two marks, the Board found a low degree of similarity between opposed mark and “Château Mouton Rothschild” from visual, phonetic, and conceptual points of view. If so, even if wine and restaurant service are associated, it is unlikely that average consumers confuse or associate opposed mark with Rothschild.

Also, the Board found it was not foreseen a circumstance to offend public order and morals from registering opposed mark and give harmful effect to the international faith provided that “MOUTON” is a dictionary word meaning ‘processed sheepskin that has been sheared and dyed to resemble beaver or seal’.

Based on the foregoing, the Board concluded opposed mark shall not be revocable under Article 4(1)(vii) as well as (xv) and granted registration a status quo.

Is “VEGAS” an abbreviation for Las Vegas, or a source indicator?

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In a trademark opposition disputing over abbreviation for ‘Las Vegas’, the Japan Patent Office (JPO) decided the term “VEGAS” shall be distinctive in connection with a service of providing amusement facilities (casino facilities, Pachinko parlors) of class 41.
[Opposition case no. 2018-900349, Gazette issue date: August 30, 2019]

VEGAS

Opposed mark is a word mark “VEGAS” in a plain gothic type.

The mark was filed in December 26, 2017 by a Japanese entertainment company, VEGASVEGAS Co., Ltd., headquartered in Tokyo, for various services in class 41 including providing casino (gambling) facilities, Pachinko parlors.

JPO, going through substantive examination, admitted registration (TM Registration no. 6080858) and published for opposition on October 9, 2018.

TRADEMARK OPPOSITION – Article 3(1)(iii)

On November 26, 2018, before the lapse of a two-months opposition period, DAIHACHI Co., Ltd. (d/b/a VEGAS GROUP), an amusement company, operating Pachinko & slot machine parlors in the name of VEGAS, filed an opposition, arguing that the word ‘VEGAS’ has been known among relevant consumers for an abbreviation for Las Vegas, the gamblers’ paradise, a trendy tourist destination, the entertainment capital of the world.

If so, it shall be forbidden to allow exclusive use of famous geographical indication by trademark right. Besides, consumers at the sight of opposed mark would establish a link between the geographical indication Las Vegas and “amusement facilities, casino (gambling) facilities and Pachinko parlors” and just conceive the facilities using opposed mark are connected with or equivalent to services available in Las Vegas Nevada (US).

Therefore, it is evident that opposed mark lacks distinctiveness in connection with the designated service of providing amusement facilities (casino facilities, Pachinko parlors) of class 41 and shall be revocable under Article 3(1)(iii) of the Trademark Law.

Article 3(1) of the Trademark Law is a provision to prohibit descriptive marks from registering.

Section (iii) of the article aims to remove any mark merely or directly suggesting quality of goods and services.

“Article 3(1)　Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered, unless the trademark:

(iii)　consists solely of a mark indicating, in a common manner, in the case of goods, the place of origin, place of sale, quality, raw materials, efficacy, intended purpose, quantity, shape (including shape of packages), price, the method or time of production or use, or, in the case of services, the location of provision, quality, articles to be used in such provision, efficacy, intended purpose, quantity, modes, price or method or time of provision;”

OPPOSITION DECISION

JPO Opposition Board totally dismissed the opposition by stating that:

  1. From the produced evidences, it is unclear whether ‘VEGAS’ becomes ordinary indication for Las Vegas in Nevada, US.
  2. The Board could not find circumstances and business practices related to the service in dispute that ‘VEGAS’ has been used to indicate a specific quality of the service or an association with Las Vegas at all.
  3. A mere fact that ‘VEGAS’ reminds consumers of Las Vegas is insufficient to negate distinctiveness of opposed mark in connection with the service in dispute.

Based on the foregoing, the JPO decided opposed mark shall play a part of source indicator over the service in class 41 and irrevocable under Article 3(1)(iii) of the Trademark Law.

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.