On September 14, 2021, the Japan Patent Office (JPO) announced an increase in trademark registration fees and renewal fees, effective April 1, 2022. For anyone considering a new Japan trademark application filing as well as anyone having a renewal due, you can take advantage of the current JPO fee structure by filing before the effective date.
<National application>
Trademark filing fee
Official fee
Present
Effective from April 2022
Trademark filing
JPY3,400 + JPY8,600/additional class
Same
Defensive mark filing
JPY6,800 + JPY17,200/additional class
Same
Trademark registration fee
Official fee
Present
Effective from April 2022
Trademark registration (for 10 years)
JPY28,200/class
JPY32,900/class
Trademark registration (for 5 years)
JPY16,400/class
JPY17,200/class
Defensive mark registration
JPY28,200/class
JPY32,900/class
Renewal fee
Official fee
Present
Effective from April 2022
Renewal (for 10 years)
JPY38,800/class
JPY43,600/class
Renewal (for 5 years)
JPY22,600/class
JPY22,800/class
Renewal of defensive mark (10 years)
JPY33,400/class
JPY37,500/class
<International application via the Madrid Protocol>
The Tokyo District Court, on September 3, 2021, awarded record damages of 202 million Japanese Yen to Co-medical who brought a lawsuit against VIDAN under the Unfair Competition Prevention Law, accusing the defendant of unlawfully imitating P’s bra design bearing a trademark “Funwari Room-Bra.” [Judicial case no. Reiwa1(Wa)11673]
Plaintiff, Co-medical Co., Ltd., has launched the sale of brassiere for use at home under the trademark of “Funwari Room-Bra” on September 12, 2016. By virtue of comfort to wear and elegant design of non-wired bra with adjustable breast support band under the cups and longline lace frill (see below left), the bra was a huge hit, ranked No. 1 on Amazon Japan. Total sales over three year period exceeded 1.4 million bras.
In October 2018, the defendant began to sell non-wired bras under the trademark of “Moriage” (see above right) that has substantially the same configuration as P’s “Funwari Room Bra.” Sales of D’s bra reached 30 million JP Yen by the time D terminated the sale in September 2019.
Co-medical filed a lawsuit at the Tokyo District Court in May 2019, and argued the configuration of D’s bras constitute an act of unfair competition under Article 2(1)(iii) of the Unfair Competition Prevention Law that prohibits “commercial act to assign goods that imitates the configuration of another person’s goods unrelated to achieve a technical function before the lapse of three years from the date of release in Japan.” If so, given substantial resemblance in shape and design between two bras, D shall be liable for 202 million JP Yen damages caused by their act under Article 5(2) and attorney fee.
The court found D’s bra constitutes an unfair competition act prohibited under Article 2(1)(iii) and awarded damages of 200 million JP Yen over a dead copy of bra design by stating as follows.
There is a slight difference in details between the two bras. However, since it would not affect a whole configuration, in fact, D’s bra shall be deemed practically identical with P’s bra in shape.
In view of the recent popularity and advertisement of P’s bra, there is reasonable doubt that D in the same trade would have been aware of and knowingly relied on P’s bra to manufacture their bra.
Under Article 5(2), D’s profit gaiend by their unfair act shall be construed marginal profit, calculated by deducting direct costs incurred to manufacture and sell D’s bras from the sales. Therefore, D is liable for 184 milliom JP Yen damages. Besides, the court has a good reason to believe that 18 million JP Yen shall be awarded as damages to recover P’s attorney fees.
In recent administrative decision, the Japan Patent Office (JPO) decided TM Reg no. 6253344 for wordmark “Miracle Volume” is dissimilar to senior registered mark “MIRACLESUIT” and “MIRACLEBODY” and dismissed an opposition claimed by A&H Sportswear Co., Inc., the owner of senior marks.
[Opposition case no. 2020-900196, Gazette issued date: August 27, 2021]
Miracle Volume
Opposed mark, consisting of the word “Miracle Volume” in standard character, was filed by a Chinese company for use on clothing, footwear, headgear as well as swimsuits in class 25 with the JPO on June 4, 2019 (TM Application no. 2019-77831).
The JPO admitted registration on May 12, 2020 and published for opposition on July 9, 2020.
Opposition by A&H Sportswear
A&H Sportswear Co., Ltd. filed an opposition on August 11, 2020, and argued the opposed mark “Miracle Volume” shall be cancelled in contravention of Article 4(1)(xi) of the Japan Trademark Law since the opposed mark is similar to its owned senior marks, “MIRACLESUIT” and “MIRACLEBODY”.
Allegedly, the word “Volume” has a low degree of distinctiveness since it just implies the goods in question voluminous. If so, a prominent portion of the opposed mark shall be undoubtedly “Miracle”.
Senior TM Reg no. 4789644 for wordmark “MIRACLESUIT” in class 25, consists of two words, “MIRACLE” and “SUIT”. It is obvious that the word “SUIT” lacks distinctiveness in relation to the goods in questions since it means ‘a set of clothes or a piece of clothing to be worn in a particular situation or while doing a particular activity’. Consequently, a prominent portion of “MIRACLESUIT” shall be “MIRACLE”.
TM Reg no. 5121472 for wordmark “MIRACLEBODY” in class 25, also consists of two words, “MIRACLE” and “BODY”. The word “BODY” has a low degree of distinctiveness in relation to the goods in question since it suggests the goods bearing the mark for consumers to put on. If so, likewise, a prominent portion of “MIRACLEBODY” shall be “MIRACLE”.
In so far as relevant consumers conceive of the literal element of “MIRACLE” as a prominent portion on both marks, they shall be confusingly similar accordingly, A&H Sportswear alleged.
JPO decision
The Opposition Board did not find a reasonable ground to believe that the consumers consider the word “Miracle” as a prominent portion of the opposed mark from visual and phonetical points of view. Besides, the word “Volume” per se would not entirely be descriptive in relation to apparels. If so, the opposed mark shall be taken for a coined word in its entirety.
Similarly, from visual, phonetical and conceptual points of view, the cited marks, “MIRACLESUIT” and “MIRACLEBODY”, shall be taken for a coined word in its entirety.
In assessing similarity of mark, the Board opined that the opposed mark “Miracle Volume” and the cited marks are sufficiently distinguishable because of difference arising from the word “Volume”, “SUIT”, and “BODY”.
Even if the goods in question are deemed similar to that of the cited marks, severe distinction in appearance and sound would be unlikely to cause confusion among relevant consumers.
Based on the foregoing, the Board did not side with A&H Sportswear and dismissed the opposition totally.
German luxury fashion house Hugo Boss failed in their attempt to block Japanese TM Reg no. 6218609 for word mark “BOSS” on SaaS and order processing services.
[Opposition case no. 2020-900096, Gazette issued date: August 27, 2021]
Opposed mark
Opposed mark, filed on January 22, 2019, by Rakuten, Japanese electronic commerce and online retailing company, consists of the word “BOSS” in standard character (see below).
The services sought for registration are order processing services in class 35 and providing computer programs on e-commerce, software as a service (SaaS), and other related services in class 42. Rakuten is using the opposed mark “BOSS” as an abbreviation of ‘Back Office Support System’ to indicate their service for sales order management and automated shipping system.
The JPO admitted registration on June 22, 2020, and published for post-grant opposition on February 12, 2020.
Opposition by Hugo Boss
HUGO BOSS Trademark Management GmbH & Co KG filed an opposition against the opposed mark on April 3, 2020, and claimed the opposed mark “BOSS” shall be canceled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law.
Article 4(1)(xi) is a provision to prohibit registering a junior mark that is identical with, or similar to, any senior registered mark.
Article 4(1)(xv) is a provision to prohibit registration of a trademark which is likely to cause confusion with the business of other entities.
HUGO BOSS argued that not only tradename “HOGO BOSS but also their mark “BOSS” has been well known for a luxury fashion brand and source indicators of the opponent by producing Deloitte’s annual list of the world’s largest luxury companies on which HUGO BOSS was ranked No.19(2015), No.21(2016), No.23(2017).
In view of a high degree of similarity between the opposed mark and the opponent’s mark “BOSS” (see below), relevant consumers are likely to confuse the source of services bearing the opposed mark with HUGO BOSS.
Board Decision
The JPO Opposition Board admitted a certain degree of the reputation of the “HUGO BOSS” mark as a source indicator of the opponent in connection with fashion items, e.g., clothing, watches, sunglasses, fragrances.
In the meantime, the Board questioned if the word “BOSS” has also acquired such popularity, stating that produced materials are insufficient to find the word perse plays the source indicator since the cited mark contains a famous mark “HUGO BOSS” adjacent to it.
Even if there is a high degree of similarity between the marks, the Board has a reasonable ground to believe the services in question, namely, order processing services (cl.35) and SaaS (cl.42) are less associated with fashion items, e.g., clothing, watches, sunglasses, fragrances.
If so, it is unlikely that relevant consumers at the sight of the opposed mark would conceive or associate it with HUGO BOSS or any entity who is systematically or economically connected with the opponent when used on the services in question.
Based on the foregoing, the JPO dismiss the entire allegations of HUGO BOSS and allowed the opposed mark “BOSS” to survive.
The Japan Patent Office (JPO) sided with Beyond Meat Inc. and canceled TM Reg no. 6197193 for wordmark “Beyond Meat Burger” by free-riding on the business reputation of “BEYOND MEAT”.
[Opposition case no. 2020-900023, Gazette issued date: July 30, 2021]
Beyond Meat Burger
Opposed mark, consisting of a wordmark “Beyond Meat Burger” written in a Japanese katakana character (see below), was filed by a Japanese individual on July 23, 2018, for use on ‘meat products’ in class 29 and ‘clothing’ in class 25.
Subsequently, the applicant deleted the designated goods in class 29.
The mark was registered on November 15, 2019, and published for opposition on December 10, 2019.
BEYOND MEAT
Beyond Meat Inc., a US food processing company that specializes in providing plant-based meat, filed an opposition against the “Beyond Meat Burger” mark with the JPO on January 24, 2020, before the lapse of a two-month statutory period for the opposition.
In the opposition brief, Beyond Meat argued the opposed mark shall be canceled in contravention of Article 4(1)(xix) of the Japan Trademark Law.
Article 4(1)(xix) prohibits registering a trademark that is identical with, or similar to, another entity’s famous mark, if such trademark is aimed for unfair purposes, e.g. gaining unfair profits, or causing damage to the entity.
It is interpreted that the “famous mark” under the article does not require a high reputation among Japanese consumers. If domestic consumers recognize such a reputation in foreign countries, it will suffice.
Beyond Meat alleged that the “BEYOND MEAT” mark has been well known for plant-based meat substitutes by the opponent to meat distributors as well as US consumers (It should be noted that Beyond Meat has yet to launch the business in Japan as of now). It is obvious that the opposed mark is confusingly similar to “BEYOND MEAT”. Presumably, the opposed party must have filed the opposed mark with a fraudulent intention to prevent registration of the “BEYOND MEAT” mark in Japan and gain unjust enrichment by doing so.
JPO decision
The JPO Opposition Board admitted that the “BEYOND MEAT” mark has acquired a remarkable degree of reputation among US consumers as a source indicator of plant-based meat substitutes by Beyond Meat Inc. even before the application date of the opposed mark
The Board assessed the opposed mark is confusingly similar to “BEYOND MEAT”. Relevant consumers with an ordinary care would see the term “Beyond Meat” as a prominent portion of the opposed mark because the consumers get familiar with the English word “Burger.”
A fact that the opposed party initially designated ‘meat products’ implies the applicant’s intention to use the opposed mark on the goods that are closely associated with meat substitutes. If so, the Board had a reasonable ground to believe the opposed mark was filed with an intention to take advantage of goodwill and business reputation associated with Beyond Meat’s tradename and trademark.
Based on the foregoing, the JPO decided to retroactively cancel the opposed mark “Beyond Meat Burger” in contravention of Article 4(1)(xix).
The Japan Patent Office (JPO) dismissed a trademark opposition claimed by WeWork Companies Inc. against Japanese trademark registration no. 6271212 for wordmark “iWork” by finding less likelihood of confusion with “WeWork”.
[Opposition case no. 2020-900249, Gazette issued date: July 30, 2021]
iWork
Desigmassion Company Ltd. applied the wordmark “iWork” in standard character for registration on ‘rental of offices for coworking’ in class 36 and ‘rental of temporary accommodation; providing foods and beverages; rental of meeting rooms; rental of facilities for exhibitions’ in class 43 wit the JPO on February 1, 2021 (TM App no. 2020-011256).
The mark did not face any refusal during the substantive examination and was published for opposition on August 4, 2020.
The company offers all-inclusive coworking space and private office “iWork” in Downtown Tokyo.
WeWork
WeWork Companies Inc., one of the leading global flexible space providers, filed an opposition against the iWork mark on October 1, 2020, before the lapse of a two-month statutory period for the opposition, in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law.
Article 4(1)(xv) prohibits registering a trademark that is likely to cause confusion with a business of another entity.
The likelihood of confusion is a key criterion when assessing the similarity of trademarks. To establish whether there is the likelihood of confusion, the visual, phonetic, and conceptual similarity will be assessed as well as the goods and/or services involved. This assessment is based on the overall impression given by those marks, account being taken, in particular, of their distinctive and dominant components. A low degree of similarity between the goods or services may be offset by a high degree of similarity between the marks, and vice versa.
WeWork argued that “iWork” shall be deemed similar to the opponent’s senior registered mark “WeWork” (IR no. 1453286) because a mere difference of the prefix “we” and “i” would be insufficient for relevant consumers to distinguish two marks from phonetical and visual points of view.
Besides, in view of a remarkable degree of reputation and popularity of the opponent mark as a source indicator of coworking space among relevant consumers, a close association between their services, and resemblance in appearance and sound between the marks, it is unquestionable that relevant consumers are likely to conceive “WeWork” at the sight of the opposed mark “iWork” when used on the services in question.
JPO decision
To my surprise, the JPO Opposition Board did not admit the famousness of the “WeWork” mark by stating that the opponent just had 27 locations in six cities and 22,000 users in Japan at the time of filing the opposed mark, and the produced evidence was insufficient to find a high degree of recognition among domestic consumers.
In the assessment of similarity between the marks, the Board found that relevant consumers were apt to pay higher attention to the prefix of a mark. Given the short sound consisting of four syllables, a different letter and pronunciation in the prefix position shall give rise to a distinctive impression in the minds of the consumer. Both marks are undisputedly dissimilar in concept.
By taking into consideration a low degree of similarity between “iWork” and “WeWork”, and insufficient evidence to assume the famousness of “WeWork”, even if the services in dispute are closely associated with WeWork’s business, the Board had no reason to believe the opposed mark would cause confusion with WeWork when used on the disputed services in class 36 and 43.
Based on the foregoing, the Board decided the opposed mark would not be canceled in contravention of Article 4(1)(xi) and (x) of the Trademark Law and dismissed the opposition entirely.
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”.
The Japan Patent Office sided with Sony Corporation and declared invalidation of TM Registration no. 5764615 for wordmark “SONICODE” due to a likelihood of confusion with “SONY”.
[Invalidation case no. 2020-890039, Gazette issued date: July 30, 2021]
SONICODE
Field System Inc., a mobile application developer, applied wordmark “SONICODE” in standard character for registration on various goods including telecommunication apparatus, electronic machines, consumer video game programs, and its related services in class 9, 38, and 41 with the JPO on December 12, 2014 (TM App no. 2014-105218).
The mark did not face any refusal during the substantive examination and it was registered on date May 15, 2015.
Apparently, the mark has been used on mobile applications for smartphones.
SONY
SONY CORPORATION, a major Japanese manufacturer of consumer electronics products, filed an opposition against the SONICODE mark on August 5, 2015, before the lapse of a two-month statutory period for the opposition, in contravention of Article 4(1)(xi), (xv), and (xix) of the Japan Trademark Law. However, the JPO Opposition Board found both marks dissimilar and no likelihood of confusion between the marks SONY and SONICODE and dismissed SONY’s allegations entirely. [Opposition case no. 2015-900260]
On May 12, 2020, just three days before the lapse of the five-year statute of limitations, SONY CORPORATION files a petition for invalidation and alleged that the contested mark shall be invalidated based on Article 4(1)(x), (xi), (xv).
SONY argued that relevant consumers would conceive SONY at the sight of the contested mark SONICODE because of a high reputation of SONY and less distinctiveness of the term “CODE” in relation to the goods and services in question.
To bolster the arguments, SONY demonstrated how AI speakers, e.g., Amazon Alexa, Google Assist, Microsoft Cortana, Apple Siri, reacted to hear “SONICODE”. Allegedly, the AI speakers recognized it as ‘SONY code’ or ‘SONY cord’ and displayed information relating to SONY.
Field System Inc. did neither answer to the petition nor dispute at all during the invalidation procedure.
JPO decision
The JPO Invalidation Board did not question a remarkable degree of reputation, popularity, and originality of “SONY” as a source indicator of the opponent’s business and its products (telecommunication apparatus, electronic machines, consumer video game programs).
Besides, the Board found the prefix “SONI” of the contested mark gives rise to a similar appearance and pronunciation with “SONY”. Relevant consumers are likely to consider that the contested mark consists of “SONI” and “CODE”. If so, even if both marks are deemed dissimilar in their entirety, the Board has good reason to believe “SONICODE” has a certain degree of similarity to “SONY”.
In view of a close association between the goods and services in question and the opponent business, the Board concluded the contested mark shall be retroactively invalidated in contravention of Article 4(1)(xv). In the meantime, because of the dissimilarity of the marks, the Board dismissed allegations based on Article 4(1)(x) and (xi).
The Japan Patent Office dismissed a trademark opposition claimed by the Italian luxury firm, Dolce & Gabbana against trademark registration no. 6259630 for word mark “DolceSport” in class 18, 20, 22, 25, and 28 by finding a less likelihood of confusion with “Dolce & Gabbana.”
[Opposition case no. 2020-900206, Gazette issued date: July 30, 2021]
“Dolce Sport”
Opposed mark, consisting of the word “Dolce Sport” in standard character, was filed by a Japanese company, SIS Co., Ltd. for use on various goods belonging to class 18,20, 22, 25 and 28 with the JPO on May 30, 2019 (TM Application no. 2019-83931).
The JPO admitted registration on June 15, 2020 and published for registration on July 7, 2020.
Opposition by Dolce & Gabbana
Dolce & Gabbana filed an opposition on August 19, 2020 and argued the opposed mark “Dolce Sport” shall be cancelled in contravention of Article 4(1)(xv) of the Japan Trademark Law since relevant consumes are likely to confuse the source of goods bearing the opposed mark with Dolce & Gabbana because of a close resemblance between “Dolce Sport” and a word “Dolce” that has become famous per se as a source indicator of the opponent.
Article 4(1)(xv) is a provision to prohibit registration of a trademark which is likely to cause confusion with the business of other entities.
To apply the article, it is requisite that the mark of other entities has acquired a certain degree of reputation and popularity among relevant consumers in Japan.
Opponent produced evidence to demonstrate the word “Dolce” per se has been used on their goods, e.g. perfume, cosmetics, and bags. See below.
JPO decision
The JPO Opposition Board did not admit the term “Dolce” per se has become famous as a source indicator of Dolce & Gabbana by stating that famous brand “Dolce & Gabbana” is obviously represented adjacent to the term “Dolce” on their goods. If so, the Board has good reason to believe that it would be unclear whether the term has acquired a certain degree of reputation as a source indicator of the opponent from the produced evidence. Besides, the Board questioned whether “Dolce” has been known as an abbreviation of “Dolce & Gabbana” due to the same reason.
Based on the foregoing, the Board decided that, even if the opposed mark “Dolce Sport” has a medium degree of similarity with the “Dolce” and the goods in question are somewhat associated with the opponent business, relevant consumers are unlikely to confuse or misconceive a source of the opposed mark with Dolce & Gabbana by taking account of less originality of the term “Dolce” having a meaning of ‘sweet; dessert’ in Italian language and lack of good-will protectable under Article 4(1)(xv) enough to indicate a source of “Dolce & Gabbana”.
The Japan Patent Office (JPO) dismissed an invalidation petition by Disney Enterprises, Inc. against Japanese TM Reg no. 5710595 for the wordmark “Mary Poppins” by finding that “Mary Poppins” has not been well known as a source indicator of Disney.
[Invalidation case no. 2019-890040, Gazette issued date: June 25, 2021]
TM Registration no. 5710595
Disputed mark, consisting of the word “Mary Poppins” in standard character (see below), was applied for registration on February 28, 2014, in respect of caring for babies [excluding services provided at facilities]; babysitting in class 45.
Without confronting refusal during the substantive examination, the disputed mark was registered on October 17, 2014.
The applicant of the disputed mark, Mary Poppins Inc., has apparently offered babysitting services in Kobe, Japan since its establishment in 1988.
Screen capture from https://www.marypoppins.co.jp/en/
Petition for invalidation by Disney
Japan Trademark Law has a provision to retroactively invalidate trademark registration for certain restricted reasons specified under Article 46 (1), provided that the interested party files an invalidation petition within a five-year statute of limitations.
Disney filed a petition for invalidation against the disputed mark on July 18, 2019, three months before the lapse of the limitations period, and argued the mark unquestionably freerides on the world-famous Walt Disney film “Mary Poppins” and thus relevant consumers would associate the disputed mark with Disney when used on the services in question. If so, it shall be invalid in contravention of Article 4(1)(vii), (xv), and (xix) of the Japan Trademark Law.
Article 4(1)(vii) of the Trademark Law prohibits any mark likely to cause damage to public order or morality from registration.
Article 4(1)(xv) provides that a mark shall not be registered where it is likely to cause confusion with other business entities ’ well-known goods or services, to the benefit of brand owners and users.
Article 4(1)(xix) prohibits registering a trademark that is identical with, or similar to, another entity’s famous mark, if such trademark is aimed for unfair purposes, e.g. gaining unfair profits, or causing damage to the entity.
Mary Poppins, an American musical film, released in 1964, features the now-iconic screen debut of Julie Andrews. A children’s classic, Mary Poppins is considered to be among the finest of Walt Disney’s productions based on the original books by P.L Travers.
JPO Decision
The JPO Invalidation Board admitted a certain degree of reputation and popularity of “Mary Poppins” as the title of the beloved Walt Disney film and the name of the main character of the film.
In the meantime, the Board questioned if “Mary Poppins” has played a distinctive role in indicating a source of Disney’s goods or services. A mere fact that goods featuring the Walt Disney films and its characters are merchandised at the Tokyo Disney Resort and Disney Shops in Japan is insufficient to prove Disney has used “Mary Poppins” as a source indicator to identify their business, the Board found.
In so far as “Mary Poppins” has not been recognized as a source indicator, but a title of the world-famous Walt Disney film or the main character of the film, it is unlikely that relevant consumers would consider the disputed mark “Mary Poppins” used on the services in question coming from Disney or entities systematically or economically connected with the opponent.
The Board also referred to the precedent court cases that ruled invalidation of the trademark “Anne of Green Gables” and “Tarzan” in contravention of Article 4(1)(vii). Contrary to these films, the Board could find no authorized activity to protect or preserve the film or original books of “Mary Poppins” as cultural heritage and prohibit unlicensed use by the private sector. If so, it is inadequate to treat the case equally with them. The Board held that the disputed mark shall not be likely to cause damage to public order or morality.
Based on the foregoing, the JPO decided the disputed mark shall remain valid and dismissed the invalidation entirely.
