タグ: Article 28

LV Damier pattern is unenforceable TM right against traditional Japanese checkered pattern

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In an advisory opinion on trademark dispute over world-famous “Damier’s pattern”, the Japan Patent Office did not side with LOUIS VUITTON MALLETIER.
[Case no. 2020-695001, Gazette issued date: September 24, 2021]

IR 952582 Damier’s pattern

In 1888, a French luggage maker Louis Vuitton began putting a canvas checkerboard print on its travel goods. A “distinctive checkered pattern of light and dark colors” named Damier meant to indicate the source of the products, which has been in use since then and “has been one of the biggest successes of Louis Vuitton,” according to the Paris-based luxury goods giant.

IR no. 952582

LOUIS VUITTON MALLETIER has owned IR no. 952582 for the Damier pattern on ‘Boxes of leather or imitation leather, trunks, suitcases, traveling sets (leather goods), traveling bags, luggage, garment bags for travel, hatboxes, vanity cases not fitted, toilet-cases, rucksacks, satchels, handbags, beach bags, shopping bags, sling bags, carrier bags, shoulder bags, waist bags, purses, cases, of leather or leatherboard: briefcases (leather goods), portfolio satchels, pochettes, wallets, change purses, key cases, card cases and holders (wallets), umbrellas, parasols’ in class 18 since 2008.

Ichimatsu Moyo (Traditional Japanese checkered pattern)

As you may remember, the logos for the Olympic and Paralympic Games Tokyo 2020 are based on Japanese checkered patterns. The stylish logo designs feature a popular checkered pattern which during the Edo period (1603-1867) was known as “Ichimatsu Moyo” and used the traditional Japanese color of indigo blue.

Because of its traditional background, the Ichimatsu patterns have been used on various goods even now.

Kanbe Prayer Beads Co., Ltd., a Kyoto-based merchant, has promoted cases and pouches for prayer beads (Juzu) or stamp books to keep seals given at temples and shrines for visitors (Gosyuin-Cho) that depict checkered patterns on the outer material of respective goods.

Screen capture from https://www.kyoto-kanbejuzu.co.jp/productsichimatsu.html

In order to prevent LOUIS VUITTON from alleging trademark infringement and secure incontestable status, Kanbe Prayer Beads asked the JPO for an advisory opinion on September 4, 2020.

Advisory Opinion (Hantei)

The Japan Trademark Law has provision for the Japan Patent Office to give advisory opinions about the scope of trademark right upon request under Article 28.

Proceedings of the advisory opinion system are almost the same as invalidation trials. Upon request from either party, the JPO appoints three examiners and orders the opposite party to answer the request in writing. Board seldom holds an oral hearing to investigate the case. In general, all proceedings are based on written statements and documentary evidence.

The advisory opinion by JPO does not have a binding effect, unlike the judicial decision. Accordingly, less than 10 trademark cases have been lodged with the JPO to seek the advisory opinion annually.

JPO Opinion

On April 21, 2021, the JPO provided its advisory opinion to the case by stating that:

Article 26(1)(vi) of the Japan Trademark Law provides trademark rights shall not be enforceable against any sign that consumers are unable to recognize it as a source indicator of goods or services in question.

It is unquestionable that the checkered pattern in dispute, represented on the disputed goods overall in series, has the same pattern with Ichimatsu Moyo that has been known to the public as one of traditional Japanese patterns and motifs.

Besides, Article 3(1)(vi) of the Japan Trademark Law prohibits the registration of a trademark solely consisting of a pattern in series to be considered as background design due to a lack of distinctiveness.

If so, it is highly likely that relevant consumers at the sight of goods bearing the checkered pattern in question would just conceive of Ichimatsu Moyo, one of the traditional Japanese patterns by taking account of the fact that the goods are promoted with the word “Ichimatsu” on the advertisement.

Based on the foregoing, the Board decided the checkered pattern in dispute would not fall within the scope of LV Damier’s pattern trademark right since consumers are unable to recognize the pattern as a source indicator of the goods in question under Article 26 (1)(vi) of the Trademark Law.

Nintendo loses trademark fight over “Switch” name in Japan

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The Japan Patent Office (JPO) rendered advisory opinion in a trademark fight over “Switch” name unfavorable to Japanese video game giant Nintendo.
[Case no. 2018-600008, Gazette issue date: May 31, 2019]

Nintendo Switch

Nintendo released The Switch, a home video game system that can also be used as a handheld, in March 2017. The Switch has become the fastest-selling home game console ever in the United States. By the end of 2017, more than 14 million consoles were sold worldwide.

Nintendo owned trademark registration no. 3274643 for the SWITCH mark (see below) on home games in class 9 since 1997.

Japan TM Registration no. 3274643 for SWITCH by Nintendo

Switch Carrying Case (Hard Pouch Bag)

On November 22, 2017, Nintendo found ALLONE CO., Ltd., a Japanese merchant for game accessories, distributes hard pouch bag for home games (see below) via websites and electronics retail stores.

It is obvious that a word “SWITCH” is indicated in prominent manner with a larger font size on package of the pouch bag, however, pictures of the Nintendo Switch and the console in the bag are printed on the package.

In order to settle the trademark dispute, Nintendo requested advisory opinion to the JPO on March 15, 2018.

Advisory Opinion (Hantei)

The Japan Trademark Law allows the Japan Patent Office to provide advisory opinions with respect to the scope of trademark right upon request under Article 28.

Proceedings of the advisory opinion system is almost the same as invalidation trial. Upon a request of advisory opinion from either party, the JPO appoints three examiners to constitute a trial board and orders other party to answer the request for subsequent trial. Board seldomly holds an oral hearing to investigate the case. In general, all proceedings are based on written statements and documentary evidences.

From a legal point of view, the advisory opinion by JPO does not have a binding effect, unlike the judicial decision. Accordingly, less than 10 trademark cases have been lodged with the JPO to seek the advisory opinion annually.

JPO Opinion

On April 11, 2019, the JPO released its advisory opinion to the case by stating that:

  1. As an undisputed fact, the Nintendo Switch has acquired a certain degree of reputation and popularity as a source indicator of Nintendo’s home video games among relevant consumers by the time ALLONE started to promote Switch pouch bag.
  2. It has become common practices that game accessories made by unrelated entities to the game maker have been provided with an explicit indication of its usage or purpose, “FOR” or “(専)用” on package.
  3. ALLONE indicates “FOR SWITCH” with a smaller font size on upper right of the package as well.
  4. Based on the foregoing, the board considers that relevant consumers with an ordinary care would perceive “SWITCH” on the package as a mere indication to suggest its usage, namely, suitable pouch bag for the Nintendo Switch. If so, it is unlikely that the “SWITCH” mark in dispute on the package plays a role of source indicator, but rather a mere description to indicate quality , usage or purpose of the goods.

Consequently, the Board decided the “SWITCH” mark in dispute would not conflict with Nintendo’s trademark right since Article 26 (1)(ii) of the Trademark Law provides trademark right shall be unenforceable against a mark simply indicating quality or usage of goods to the extent that the mark is used in an ordinary manner.