Rothschild – MARKS IP LAW FIRM

TM Reg no. 6090508 “MOUTON”

WALTZ Co., Ltd. filed a trademark application for wordmark “MOUTON” in relation to retail or wholesale services of various foods and drinks (not including wine) of class 35 and restaurant services of class 43 with the JPO on November 17, 2017. The applicant operates a bar and restaurant named “MOUTON” in Shinjuku, Tokyo.

A screen capture from https://www.pub-mouton.com/

The mark was granted protection on September 5, 2018, published for a post-grant opposition on November 13, 2018.

Unsuccessful Opposition

Baron Philippe de Rothschild S.A. filed an opposition against TM Reg no. 6090508 “MOUTON” on January 15, 2019 and claimed cancellation of the mark in contravention of Article 4(1)(vii) and (xv) of the Trademark Law. However, the JPO Opposition Board decided to dismiss the opposition on September 6, 2019 (Opposition case no. 2019-900012).

Subsequently, to challenge the validity of the trademark registration for the MOUTON mark, Baron Philippe de Rothschild S.A. filed an invalidation with the JPO on October 7, 2022, a month before the five-year statute of limitations from the registration date was set to lapse. The claimant argued the disputed mark is identical with a well-known abbreviation of the world-famous wine “Chateau Mouton Rothschild”. Besides, in view of close association between wine and the services in question, relevant consumers and traders would confuse a source of the services bearing the mark “MOUTON” with the claimant. If so, the disputed mark shall be invalidated in contravention of Article 4(1)(xv) of the Trademark Law.

WALTZ did not respond to the arguments during the invalidation trial procedure.

JPO Invalidation decision

On January 22, 2024, the JPO Trial Board decided to annul TM Reg no. 6090508 “MOUTON” in relation to all of the retail or wholesale services designated in class 35 and restaurant services in class 43 by stating that:

From the facts revealed by the produced evidence, the Board has a reason to believe that the term “Mouton” has acquired a substantial degree of reputation and popularity among relevant consumers and traders to indicate the world-famous wine and its abbreviation.

Undoubtedly, the disputed mark “MOUTON” shall be similar to the mark “Chateau Mouton Rothschild” from phonetical and conceptual points of view even if there is a distinction in appearance between the marks.

There is a close association between wine and retail or wholesale services of various foods and drinks as well as restaurant services.

If so, relevant consumers are likely to confuse a source of the services bearing the disputed mark with the claimant or other business entity systematically or economically connected with them.

Based on the foregoing, the Trial Board found the disputed mark shall be invalidated in contravention of Article 4(1)(xv) of the Trademark Law.

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.

タグ: Rothschild

Trademark Dispute: Chateau Mouton Rothschild vs MOUTON