タグ: JPO

Dot Makes Wordmark Dissimilar

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In a trademark dispute pertinent to the similarity between “.NEXT” and “NEXT”, the  Japan Patent Office (JPO) found both marks dissimilar and reversed examiner’s rejection.

[Appeal case no. 2020-650026, Gazette issued date: June 25, 2021]

“.NEXT”

Nutanix, Inc. applied for registration of a trademark “.NEXT” (see below) to be used on services in classes 35 and 41 (IR 1418062) with the JPO via the Madrid Protocol.

Class 35

Conducting trade shows and exhibitions in the fields of computers, computer software, cloud computing, hybrid cloud computing, virtualization, storage, computer resource management, and product demonstrations; none of the aforesaid services relating to navigation, aviation, land vehicles, marine vessels, or offshore platforms.

Class 41

Educational and entertainment services, namely, conducting conferences, presentations, seminars, lectures, and speeches, in the fields of computers, computer software, cloud computing, hybrid cloud computing, virtualization, storage, computer resource management; none of the aforesaid services relating to navigation, aviation, land vehicles, marine vessels, or offshore platforms.

JPO examiner’s rejection

The JPO examiner rejected the applied mark due to a conflict with senior TM registrations for wordmark “NEXT” covering similar services in classes 35 and 41.

The examiner considered that the word “NEXT” with a stylized “X” was visually separable from a dot “.” and thus a prominent portion of the applied mark as a source indicator. If so, both marks are deemed similar as a whole and thus, the applied mark shall not be registrable in contravention of Article 4(1)(xi) of the Japan Trademark Law.

To contest the rejection, Nutanix, Inc. filed an appeal to the JPO Appeal Board on June 19, 2020, and argued dissimilarity between “.NEXT” and “NEXT”.

JPO Appeal Board decision

The JPO Appeal Board found that relevant consumers are unlikely to see respective elements of the applied mark separable from visual aspect. If so, the mark shall be considered a coined word in its entirety and just gives rise to a sound of ‘dot next’ that would never be considered too long to be pronounced at a breath.

Based on the foregoing, the Board stated that the examiner erred in finding pronunciation and concept of the applied mark correctly. In assessing similarity of the marks, it is inadequate to compare the sound and meaning arising from the word “NEXT” of the applied mark with the citations.

Consequently, the Board reversed the examiner’s refusal and decided to register the applied mark by finding dissimilarity between “.NEXT” and “NEXT”.

JPO Annual Report 2021

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The Japan Patent Office (JPO) released its 2021 Annual Report (in Japanese only) on July 14, 2021, which contain informative figures and statistics relating to IP applications in Japan and on all other activities of the JPO.

Trademark applications filed in 2020

Presumably because of the prolonged pandemic, the number of trademark applications in Japan decreased to 181,072 by 5 % in 2020.

TM application via Madrid Protocol also decreased to 17,924 by 7.8% compared to the previous year. Direct application decreased to 163,148 by 4.7 %.

Pendency time for trademark prosecution

Regardless of the decreased number of trademark applications, first office action pendency, the average number of months from the date of application filing to the JPO examiner’s first office action, was getting longer for the last five years in a row. First Action Pendency was 10.0 months in 2020.

Total pendency, the average number of months from date of filing to registration in 2020 was extended to 11.2 months, two months longer than 2019 (9.3 months).

TM applications to JPO by Foreign Company/ Non-resident

45,697 trademark applications, which account for 25.2 % of the total, were filed by foreign company or non-resident in 2020. The ratio was increased by 3.3 % since last year.

The statistic shows China was leading the ranking with about 18,181 trademark applications in 2020, increased by 45 % from the previous year.

Trademark Applications Drop as Pandemic Pushes Japan into Recession

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Japan’s economy has slipped into recession for the first time since 2015 in the last quarter, putting the nation on course for its deepest slump as the coronavirus crisis ravages businesses and consumers. First-quarter GDP data revealed Japan’s GDP shrinks 3.4% in March 2020 amid pandemic, follows a 6.4% decline during the last quarter of 2019.

As widely spreading the serious impact of the COVID-19 pandemic on the economy, the Japan Patent Office (JPO) announced, on July 1, 2020, a status update on its operations during the pandemic, including the extent to which trademark applications are declining.

The number of trademark applications filed in the Japan Patent Office (JPO) fell by a whopping 24.3% to 55,353 in the first four months 2020. In the meantime, Patent fell by 5.7% and Design fell by 3.9% for the same period.

Excerpt from the JPO Statistical Data (2020.1-4)


The data illustrated how the coronavirus pandemic is considerably hampering new trademark applications, compared with other intellectual properties, in Japan.

Excerpt from the JPO Statistical Data (2020.1-4)

Japan IP High Court ruling: “I♡JAPAN” lacks distinctiveness as a trademark

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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).

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.

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.

Patagonia Victorious in Trademark Battle

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The Trial Board of Japan Patent Office (JPO) recently upheld an invalidation petition by US outdoor apparel company, Patagonia Inc. against TM Reg. no. 6028801 for the “royalwest” mark in combination with figurative elements due to a likelihood of confusion with Patagonia logo.
[Invalidation case no. 2018-890048, Gazette issue date: June 28, 2019]

TM Registration no.6028801

Disputed mark, consisting of a word “royalwest” and figurative elements (see below left), was applied for registration on April 13, 2017 in respect of apparels and other goods in class 25.

Without confronting with a refusal during substantive examination, disputed mark was registered on March 23, 2018.

Petition for invalidation

Japan Trademark Law provides a provision to retroactively invalidate trademark registration for certain restricted reasons specified under Article 46 (1).

US outdoor apparel company Patagonia Incorporated filed a petition for invalidation against disputed mark on June 29, 2018. Patagonia argued it shall be invalidated due to similarity to an owned senior trademark registration no. 5891980 for the Patagonia mark with figurative elements depicting mountain landscape and sky in blue, purple and orange color (see above right), and a likelihood of confusion with its famous brand when used on designated goods in class 25 based on Article 4(1)(xi) and (xv) of the Trademark Law.

Board decision

At the outset, the Board admitted the Patagonia logo has acquired a high degree of popularity and reputation as a source indicator of Patagonia Inc. among relevant consumers in connection with outdoor goods.

In assessing similarity of both marks, the Board found that a literal element of respective mark is unquestionably dissimilar. However, even if both marks give rise to a different pronunciation and concept, by taking account of similar factors: (1) coloring of the sky, (2) font design and size, (3) rectangular outline, (4) black silhouette with a white border line, (5) configuration and proportion of respective elements, and balancing them comprehensively, relevant consumers with an ordinary care at the sight of both marks would conceive a same impression from appearance and associate disputed mark with Patagonia. If so, it is obvious that visual similarity plays a key role in the assessment. A phonetical and conceptual difference arising from literal element is insufficient to negate similarity between the marks in its entirety.

Based on the foregoing, the Board concluded that, from totality of circumstances and evidences, relevant traders or consumers are likely to confuse or misconceive a source of disputed mark with Patagonia or any entity systematically or economically connected with the opponent when used on apparels and any other designated goods in class 25 and declared invalidation based on Article 4(1)(xi) and (xv).

JPO Annual Report 2019

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The Japan Patent Office released its 2019 Annual Report (in Japanese only) on July 12, 2019, which contain informative figures and statistics relating to IP applications in Japan and on all other activities of the JPO.

Trademark Applications in Japan

The number of trademark applications in Japan has increased recent years.
In 2018, 184,483 trademark applications were filed to the JPO. TM application via Madrid Protocol increased to 17,802 by 2.7% compared to the previous year. Direct application decreased to 166,681 by 4 %.

Trademark Application to JPO by Year

Timeline for Trademark Registration

Due to the recent increase, timeline for trademark prosecution, i.e., the average time between filing and first office action, was getting longer for the last four years in a row. Trademark Average First Action Pendency was 6.3 months in 2017. In the meantime, the pendency in 2018 exceeded 7.9 months on average. Accordingly, the average total pendency period for trademark registration was 9.3 months in 2018.

Timeline for trademark registration

Application to JPO by Foreign Company/ Non-resident

39,209 trademark applications, which account for 21.3% of the total, were filed by foreign company or non-resident in 2018. The number was increased by 8.4% since last year.

TM Application to JPO by Foreign applicants

The statistic shows Europe was leading the ranking with about 10,000 trademark applications in 2017.
In 2018, China took the leading place eventually.

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.

Trademark race for the 2020 Tokyo Olympic Games – Episode 2

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The Appeal Board of Japan Patent Office (JPO) refused Trademark Application No. 2017-11978 for a device mark consisting of five interlaced heart shape logos for goods of clothing and footwear in class 25 because of similarity to Olympic rings based on Article 4(1)(vi) of the Japan Trademark Law.

Heart shape device mark

Mark in question ( see below) was filed on February 6, 2017 by designating goods of clothing, footwear, masquerade costumes, clothes for sports in class 25.

Article 4(1)(vi) of the Trademark Law

The JPO examiner refused the mark by citing the Olympic Rings based on Article 4(1)(vi) of the Trademark Law.
Article 4(1)(vi) is a provision to refuse any mark which is identical with, or similar to, a famous mark indicating the State, a local government, an agency thereof, a non-profit organization undertaking a business for public interest, or a non-profit enterprise undertaking a business for public interest.

JPO trademark examination guidelines clearly refer to the Olympic Symbol as an example of the mark to indicate a non-profit business for public interest.

Olympic Rings

The Olympic symbol, widely known throughout the world as the Olympic Rings, is the visual ambassador of Olympic for billions of people.

The Olympic symbol is defined in Olympic Charter, Rule 8 as

“The Olympic symbol consists of five interlaced rings of equal dimensions (the Olympic rings), used alone, in one or in five different colours. When used in its five-colour version, these colours shall be, from left to right, blue, yellow, black, green and red. The rings are interlaced from left to right; the blue, black and red rings are situated at the top, the yellow and green rings at the bottom.”

The Olympic Rings, publicly presented for the first time in 1913, remain a global representation of the Olympic movement and its activity.

 

Appeal Board decision

In an appeal, the Board sustained examiner’s refusal and decided the mark in question shall be refused on the same ground.
The Board stated that mark in question has same configuration with the Olympic Rings, inter alia, depicting horizontally three heart shape logos on an upper row and two on a lower row, and thus consumers at the sight of the mark are likely to conceive or connect it with a well-known Olympic symbol from appearance.
[Appeal case no. 2018-3425, Gazette issued date : December 28, 2018]