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.
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.
On December 17, 2020, the Japan IP High Court upheld awards for JPY2,900,000 for damages suffered by Hermès in relation to a trademark infringement and passing-off case regarding the Birkin Bag imitations. [Court case no. Reiwa2(Ne)10040]
Hermès Birkin Bag
HERMES INTERNATIONAL, a French luxury fashion house, has owned Japanese trademark registration no. 5438059 for the 3D shape of the “Birkin” bag in connection with handbags of class 25 since 2011 by successfully demonstrating acquired secondary meaning as a specific source indicator of Hermès’ luxury bags.
The iconic Birkin bag was firstly created for
Jane Birkin in 1984. It is known for its superior craftsmanship and
jaw-dropping price tag, with standard models starting around JPY1,000,000. Its annual
sales figures exceed 3,000 in 1998, 8,000 in 2003, and 17,000 in 2009.
Birkin Bag Imitations
Hermes sued Kabushiki Kaisha Tia Maria at the Tokyo District Court for violating its trademark right and the unfair competition prevention law by allegedly promoting 100 or more Birkin look-alike bags (see below) in Japan with a price tag of JPY27,300 from August 2010 to February 2018.
Court decision
On June 3, 2020, the Tokyo District Court decided in favor of HERMES INTERNATIONAL and awarded damages for trademark infringement and passing-off in the amount of JPY2,900,000. [court case no. Heisei31(wa)9997]
In the decision, the Tokyo District Court found
that Hermès Birkin Bag has acquired distinctiveness and become remarkably famous
as a source indicator of Hermès’ luxury bags by 2009.
Besides, the court held that defendant’s goods constitutes an infringement of the 3D shape of the “Birkin” bag trademark since both are confusingly similar in view of the following aspects: (a) a distinctive three-lobed flap design with keyhole-shaped notches to fit around the base of the handle, (b) a dimpled triangular profile, (c) a closure which consists of two thin, horizontal straps designed to fit over the flap, with metal plates at their end that fit over a circular turn lock, (d) a padlock which fits through the center eye of the turn lock and (e), typically, a key fob affixed to a leather strap, one end of which is affixed to the bag by wrapping around the base of one end of the handle.
Screen capture of TIA MARIA’s website (http://tiamaria.zf.shopserve.jp/SHOP/V1172S.html)
The court measured damages to recover (i) defendant’s
actual sales of infringing bags (JPY2,730,780) by subtracting appropriate variable
cost (40% of the offered price) for JPY1,638,468, (ii) “mental
suffering” caused by an infringement for JPY1,000,000, and (iii) reasonable
attorney fee for JPY260,000.
The district court decision was challenged by the defendant before the High Court to set aside or vary it, however, the IP High Court dismissed the appeal entirely and sided with HERMES INTERNATIONAL.
To read a full text of the IP High Court decision (Japanese only), click here.
On September 16, 2020, the Japan IP High Court dismissed an appeal by the American multinational coffee house chain, Starbucks Corporation, challenging the unfavorable decision made by the Japan Patent Office (JPO) that did not find a likelihood of confusion with the previous Starbucks logo. [Court case no. Reiwa1(Gyo-ke)10170]
BULL PULU TAPIOCA LOGO
Starbucks has been eagerly struggling to invalidate
trademark registration for BULL PULU TAPIOKA logo (see below) because it contains
a green circular frame with white lettering inside.
Disputed mark was applied for registration over tapioca-based milk products in class 29, tapioca-flavored coffee, cocoa, confectionery; tapioca powder for foods in class 30, and restaurant service in class 43 on March 9, 2016, by a Japanese Company who operates tapioca drink parlors bearing the disputed mark in Japan. JPO registered the mark on December 9, 2016.
Invalidation action to JPO
On September 15, 2017, Starbucks Corporation
filed a petition for invalidation and alleged among others the disputed mark
shall be invalidated in contravention of Article 4(1)(xi) and (xv) of the
Trademark Law due to similarity to, or a likelihood of confusion with senior trademark
registration no. 4806987 for the previous Starbucks logo.
The third version of the Starbucks logo design, used from 1992 to 2010, consists of a black and white two-tailed siren wearing a starred crown and framed around a green circle in which the words “Starbucks Coffee” are written.
The JPO Invalidation Board questioned given
five years have already passed since Starbucks redesigned its iconic emblem to the
new logo whether the previous logo has continuously retained a substantial degree
of reputation and popularity in Japan at the time of filing the disputed mark.
Besides, the Board did see both marks are totally dissimilar and the configuration
of a green circular frame with white lettering inside per se would never be known
for a source indicator of Starbucks. If so, the Board found that relevant
consumers are unlikely to confuse the source of goods and services in question bearing
the disputed mark with Starbucks and decided to dismiss the invalidation action
on August 21, 2019. [Invalidation case no. 2017-890065]
On December 19, 2019, Starbucks brought the case to the IP High Court and demanded the cancellation of the JPO decision.
IP High Court ruling
Starbucks argued the JPO erred in finding a
likelihood of confusion based on the interview report which indicated more than
70% of the interviewees (total of 552 people ranging in age from 20 to 69) associated
the following image of a green circular frame with white lettering inside with
Starbucks.
The IP High Court held the previous logo has become remarkably famous as a source indicator of Starbucks in 2011 when it was replaced with the new logo. The Court also found the portion of a green circular frame with white lettering inside shall be impressive to consumers at the sight of the previous Starbucks logo. However, the court raised the same question if relevant consumers conceive Starbucks even when different words other than “STARBUCKS” and “COFFEE” appear inside the frame. If so, there is no reasonable ground to believe a mere image of a green circular frame with white lettering inside has played a significant role in the source indicator of Starbucks by taking account of the fact that the disputed mark was filed four years after the redesign to the new logo.
As for the interview report, the court strictly viewed that the image was not precisely identical to the previous Starbucks logo. It just focused on extracting the generic concept of the frame with lettering. In addition, interviewees were notified in advance that the image originally contained a design in the center and words to represent a company inside the frame. Such information shall be misleading and biased. If so, the report would be anything but appropriate and relevant to assess the high recognition of the frame as well as a likelihood of confusion on the case.
Based on the foregoing, the IP High Court upheld the JPO decision.
On August 27, 2020, the Japan IP High Court ruled to affirm the Japan Patent Office (JPO) decision and rejected TM application no. 2016-34650 for a position mark consisting of fourteen open ellipses built-in grip section of cutting combs in class 21 due to a lack of inherent distinctiveness. [Court case no. Reiwa1(Gyo-ke)10143]
YS Park Cutting Comb
The YS Park Cutting Comb features a non-slip grip section with fourteen air ellipses spaced in 1cm intervals to allow for great flexibility and sectioning.
Allegedly, the comb has been distributed in
many countries and its annual sales increased to 170,000~27,000 pieces for the
last five years.
Position Mark
Plaintiff, a Japanese corporation to distribute the YS Park Cutting Comb since 1989, sought for registration for fourteen open ellipses built-in grip section of the Cutting Comb as a Position Mark (see below) on March 28, 2016.
In Japan, by an enactment of the New Trademark Law in 2014, new types of mark, namely, color, sound, position, motion, hologram, was allowed for trademark registration since April 2015.
JPO decision
On September 17, 2019, the JPO refused the position mark under Article 3(1)(vi) of the Trademark Law by finding that there are plenty of competitor’s combs with a design, pattern, hole, or pit in short intervals on the grip section and it gives rise to an impression of the decorative or functional linear pattern as a whole. If so, relevant consumers at the sight of cutting comb bearing the position mark would just conceive it as a pattern for decorative or functional indication, not as a source indicator. Besides, consecutive use on the YS Park Cutting Comb over a decade would be insufficient to acquire secondary meaning from the produced evidence and business practice in relation to cutting comb. [Appeal case no. 2018-8775]
Article 3(1)(vi) is a provision to
comprehensively prohibit from registering any mark lacking inherent
distinctiveness.
Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered, unless the trademark: (vi) is in addition to those listed in each of the preceding items, a trademark by which consumers are not able to recognize the goods or services as those pertaining to a business of a particular person.
To contend, the applicant filed a lawsuit to the IP High Court on October 29, 2019, and demanded cancellation of the decision.
IP High Court Ruling
This is the 2nd court case for the IP High Court to hear the registrability of Position Mark.
At the outset, the court stated the distinctiveness of Position Mark shall be assessed as a whole by taking account of a constituent of the mark and its position on goods or services.
The court upheld fact-findings by the JPO that plenty of competitors advertise and provide cutting combs with a pattern, pit, or open holes in short intervals on the grip section to enhance its function. In this regard, it is unlikely that relevant consumers (general consumers on the case) would consider the whole pattern as a source indicator of the comb. The court pointed that plaintiff has promoted features of fourteen open ellipses on YS Park Cutting Comb with an advertisement of “Air Suspension Function” in fact. If so, consumers would find the open holes as a functional indication.
Plaintiff produced interviews and statements by beauticians, hairstylists, school officials/staff of Cosmetology and Beauty school and argued the secondary meaning of the Position mark, however, the court negated the allegation on the ground that such evidence is insufficient and irrelevant to demonstrate acquired distinctiveness since the goods in question shall be broadly targeted to general consumers. Thus, the court decided the JPO did not error in finding secondary meaning in the case.
On July 29, 2020, the Japan IP High Court ruled to dismiss an appeal by Kabushiki Kaisha Soloist, founded by Takahiro Miyashita, a Japanese fashion designer, who contested a decision by the Japan Patent Office (JPO) to deny trademark registration for a compound mark consisting of “TAKAHIROMIYASHITA” and “TheSoloist.” under Article 4(1)(viii) of the Trademark Law. [Judicial case no. Reiwa2(Gyo-ke)10006]
TAKAHIROMIYASHITATheSoloist.
Disputed mark (see below) was filed by Kabushiki Kaisha Soloist, founded by Takahiro Miyashita, on September 21, 2017, covering various fashion items in class 14, 18, and 25. [TM application no. 2017-126259]
In 2010, immediately after starting a company ‘Kabushiki Kaisha Soloist’, Takahiro Miyashita allegedly has launched his new brand “TAKAHIROMIYASHITATheSoloist.” and used the disputed mark on clothing, sandals, sunglass, eyewear, accessories designed by him since then and the disputed mark has become famous for his fashion brand. Consequently, relevant consumers and traders would not associate the disputed mark with any individual other than him.
Refusal decision by JPO
The Japan Patent Office (JPO) refused the mark in contravention of Article 4(1)(viii) of the Trademark Law, on the ground that the disputed mark contains a full name of private individual named “Takahiro Miyashita”. It is obvious that there are several Japanese people with the same name.
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 for the purpose of protecting personal rights of a living individual. Notwithstanding the provision, the article is not applicable where the applicant of the disputed mark produces the written consent of the person.
The Supreme Court of Japan has ruled the article shall be interpreted to protect the 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.
On January 29, 2019, the Appeal Board of
JPO decided to affirm the examiner’s refusal on the same ground. [Appeal case
no. 2019-1138]
To contest the administrative decision, the
applicant filed an appeal to the IP High Court.
IP High Court Ruling
The court dismissed the allegation
entirely, by stating that:
Even though the disputed mark contains literal elements unrelated to the name of a living person, Article 4(1)(viii) is still applicable since relevant consumers would conceive the literal portions of “TAKAHIROMIYASHITA” as a name of a Japanese person.
It is indisputable that there are several Japanese with the same name as Takahiro Miyashita and some of their names are written in different Chinese characters.
The applicant failed to prove that he obtained consent from them.
Alleged facts that the founder of the applicant has become famous as a fashion designer and because of it, relevant consumers and traders are unlikely to connect the disputed mark with any individual other than the designer would be construed irrelevant in applying Article 4(1)(viii).
Based on the foregoing, the IP High Court
sided with the JPO and upheld the refusal decision.
Click here to see the Court’s official ruling (Japanese only)
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.
On June 17, 2020, the Japan IP High Court affirmed the JPO’s rejection of the “I♡JAPAN” mark in relation to various goods of class 14,16,18 and 24 due to a lack of distinctiveness. [Judicial case no. Reiwa 1(Gyo-ke)10164]
I♡JAPAN
The disputed mark consists of the capital letter “I”, followed by a red heart symbol, below which are the capital letters “JAPAN” (see below). The mark filed by CREWZ COMPANY, a Japanese merchant on April 17, 2018, over various goods in class 14, 16, 18, and 24 [TM application no. 2018-049161].
Noticeably, the JPO already allowed trademark registration for the same mark on apparels in class 25 on March 27, 2015, filed by the applicant [TM Registration no. 5752985]. Regardless of it, the examiner refused disputed mark in contravention of Article 3(1)(vi) of the Trademark Law.
Article 3(1)(vi) is a provision to comprehensively prohibit from registering
any mark lacking inherent distinctiveness.
Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered, unless the trademark: (vi) is in addition to those listed in each of the preceding items, a trademark by which consumers are not able to recognize the goods or services as those pertaining to a business of a particular person.
JPO decision
The JPO Appeal Board sustained the examiner’s refusal and decided to reject disputed mark by stating that we are nowadays accustomed to finding goods bearing the “I♡” logo followed by a geographical indication, which represents a strong devotion or attachment to the area/city in its entirety. In fact, the “I♡JAPAN” design is commonly used on several goods as a symbol to support the Japanese sports team or souvenirs for tourists. If so, the design shall not be exclusively occupied by a specific entity. Under the circumstances, relevant consumers are unlikely to conceive the disputed mark as a source indicator of the applicant. Thus, the mark shall be rejected in contravention of Article 3(1)(vi) and the examiner did not error. [Appeal case no. 2018-16957]
To contend against the decision, the applicant filed an appeal to the IP High Court.
IP High Court ruling
The IP High Court dismissed the applicant’s allegation entirely, stating that the disputed mark gives rise to the meaning of “I love JAPAN”. The court found the “I♡” logo followed by a geographical indication is commonly used to appeal a strong devotion or attachment to the area/city. Inter alia, various merchants promote goods bearing the “I♡JAPAN” design as a sign of their support to Japan or the Japanese sports team. If so, relevant consumers and traders would not conceive disputed mark as a source indicator of goods in question, but merely a symbol to represent their devotion and support to Japan. Therefore, the disputed mark shall not be registrable under n contravention of Article 3(1)(vi).
Besides, the court found the fact of a precedent registration for the same mark in a different class would not affect the distinctiveness of disputed mark since it does not have a legal effect to bind subsequent examination in assessing registrability of a junior mark under Article 3(1)(vi).
On May 20, 2020, the Japan IP High Court denied the JPO decision and sided with Apple Inc. by finding the “CORE ML” mark is dissimilar to senior trademark registration no. 5611369 for word mark “CORE” in connection with computer software of class 9. [Case no. Reiwa1(Gyo-ke)10151]
CORE ML
Apple Inc. filed a trademark application
for word mark “CORE ML” in standard character by designating computer software
in class 9 on November 6, 2017 (TM App no. 2017-145606).
Apple’s Core ML is its own framework for
Machine Learning used across Apple products for performing fast prediction or
inference with easy integration of pre-trained machine learning models on the
edge, which allows you to perform real-time predictions of live images or video
on the device.
JPO decision
The Japan Patent Office (JPO) rejected “CORE ML” in contravention of Article 4(1)(xi) of the Trademark Law due to a conflict with senior trademark registration no. 5611369 for word mark “CORE” in standard character over electronic machines, computer software, and other goods in class 9 owned by Seiko Holdings Corporation.
Article 4(1)(xi) is a provision to prohibit from registering a junior mark that is deemed identical with, or similar to, any senior registered mark.
In the decision, the JPO stated applied mark apparently consists of two words, “CORE” and “ML”. The term “CORE”, a familiar English word meaning ‘a central and foundational part’, would play a role of source indicator in connection with the goods in question. In the meantime, “ML” is a descriptive term since it is commonly used as an abbreviation of ‘Machine Learning’ in the computer software industry. If so, it is permissible to select the term “CORE” as a dominant portion of applied mark and compare it with the cited mark “CORE”.
To contend against the decision, Apple Inc.
filed an appeal to the IP High Court.
IP High Court ruling
The IP High Court, at the outset, referred to the Supreme Court ruling in 2008 which established the criterion to grasp a composite mark in its entirety in the assessment of similarity of the mark.
“Where a mark in dispute is recognized as a composite mark consisting of two elements or more, it is not permissible to assess the similarity of mark simply by means of taking out an element of the composite mark and then comparing such element with the other mark, unless consumers or traders are likely to perceive the element as a dominant portion indicating its source of origin of goods/service, or remaining elements truly lack inherent distinctiveness as a source indicator in view of sound and concept.”
Based on the criteria, the court found that applied mark
shall be assessed in its entirety on the following grounds:
“CORE” would be merely recognized as a term to mean ‘a central and foundational part’ in connection with goods in question.
It is unlikely that relevant consumers at the sight of “CORE ML” used on computer software conceive the term “ML” as an abbreviation of ‘machine learning’. If so, “ML” would not give rise to any specific meaning.
The above facts suggest that “CORE” would never play a dominant role and “ML” shall not be considered less distinctive than “CORE” as a source indicator in view of the concept.
From appearance and sound, there is no reasonable ground to believe “CORE” and “ML” shall be recognized individual and separable.
Based on the foregoing, the court pointed out the JPO erred in finding applied mark appropriately and decided that the applied mark “CORE ML” is deemed dissimilar to the cited mark “CORE” as a whole given the remarkable difference in sound and appearance, even if both marks resemble in concept.
On February 14 2020, the Japan IP High Court ruled to uphold the Japan Patent Office (JPO) decision and rejected TM application no. 2016-009831 for a 3D position mark consisting of three virtual images of oil stove flame due to a lack of inherent and acquired distinctiveness. [Case no. Reiwa1(Gyo-ke)10125]
TOYOTOMI Oil Stove “Rainbow”
TOYOTOMI CO., LTD., a Japanese company, the world’s first manufacturer of kerosene-fired portable cooking stove in 1952, has allegedly produced their convection type lantern-like design oil stoves in the name of “Rainbow” since 1980.
By means of a heat-resistant glass coated on the inner surface of vertical cylindrical heat chamber of the Rainbow stoves, virtual images of orange flame appear floatingly above actual flame when stoves are in use (see below).
3D Position mark
TOYOTOMI sought for registration for its
virtual images of flame in connection with convection type oil stoves in class
11 as a 3D Position mark (see below) on January 29, 2016.
In a description of the mark, applicant specified:
“applied mark is a position mark consisting of 3D virtual image of three flame rings appeared floatingly above the flame burning on stove at the inside of vertical cylindrical heat chamber. Devices colored in blue and red would not constitute an element of applied mark.“
In Japan, by enactment of the New Trademark Law in 2014, new type of mark, namely, color, sound, position, motion, hologram, was allowed for trademark registration since April 2015.
According to the JPO database, more than
480 position marks were applied for registration under the New Trademark Law
and 78 position marks are successfully registered as of now (Feb 29, 2020).
JPO decision
On March 2, 2018, the JPO examiner refused applied
mark under Article 3(1)(iii) of the Trademark Law based on the fact that mechanism
of 3D virtual shape of three flame rings was exclusively protected under Patent
No. 1508319 which was expired on July 25, 2000. According to technical specifications
of the patent, it is admitted that the 3D shape was purely achieved as a result
of utilitarian functionality and aesthetic functionality. If so, the JPO finds
it inappropriate to register the shape as a trademark because of unfair and detrimental
effect to the public caused by prospective perpetual exclusivity to the shape
itself that should have been a public domain under the Patent Law.
Besides, the JPO considered applied mark has
not acquired distinctiveness (secondary meaning) as a source indicator of
applicant’s products regardless of substantial use for more than three decades.
Subsequently, JPO dismissed an appeal on
the same ground. [Appeal case no. 2018-007479, on August 30, 2019]
To contend, applicant filed a lawsuit to
the IP High Court on September 26, 2019 and demanded cancellation of the
decision.
IP High Court ruling
This lawsuit was the very first case for the IP High Court to take up new type of trademark at the open court.
The court held a shape of goods shall not
be protectable as a source indicator if it just aims to achieve function of the
goods from utilitarian and aesthetic viewpoints. If such shape per se is apparently
destined to achieve functions of goods, it shall be refused for registration
under Article 3(1)(iii) of the Trademark Law.
In this regard, the court found, applied mark simply consists of a shape destined to achieve utilitarian and aesthetic functions of goods in question, since it is considered virtual images of floating flame ring aim to increase heating effect of convection type oil stoves.
A mere fact that none of competitors have used
identical or similar shape with applied mark on oil stoves would be irrelevant
to assess distinctiveness of mark under Article 3(1)(iii).
Even if three flame rings do not physically
constitute a shape of oil stoves, the court would see the JPO did not error in
adapting Article 3(1)(iii) on the case.
As for acquired distinctiveness, the court had
no reason to believe applied mark acquired secondary meaning through actual use
based on the produced evidence. TOYOTOMI allegedly held top-rank market share (22.5%)
of convection type oil stoves in Japan and annually delivered 29,000 stoves on
average for the last seven years. However, the court pointed out the TOYOTOMI
Rainbow stoves share just 2% when radiation type oil stoves are counted.
Besides, provided that applied mark is not visible to consumers who visit shops
to purchase oil stoves from appearance of the goods when turned off, it is questionable
whether average consumers would conceive the 3D shape as a source indicator, rather
than a functional shape of oil stoves.
Based on the foregoing, the IP High Court
upheld JPO decision.
