投稿者: Masaki MIKAMI

Trademark Similarity: APLAY vs applay

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In a trademark dispute pertinent to the similarity between “APLAY” and “applay”, the Appeal Board of the Japan Patent Office found both marks dissimilar and reversed the examiner’s rejection.
[Appeal case no. 2020-6380, Gazette issued date: April 30, 2021]

APLAY

A senior mark, consisting of the word “APLAY” in standard character, was registered on April 28, 2017 (TM Reg no. 5943175) over computer programs; application software; game programs for home video game machines; electronic circuits, and CD-ROMS recorded with programs for hand-held games with liquid crystal displays; electronic publications; earphones; headphones in class 9, and software as a service [SaaS]; other related computer services in class 42 by Nain Inc.

Apparently, Nain has used “APLAY” on wireless earphones and connect app for android (see below).

applay

Applied junior mark, consisting of the word “applay”, was sought for registration on August 7, 2019, over toys in class 28 [TM application no. 2019-107218] by Ed. Inter Co., Ltd.

The applicant uses the mark on wooden toys for kids (see below).

The JPO examiner rejected “applay” because of similarity to “APLAY” based on Article 4(1)(xi) of the 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.

There is the 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, the examiner would decide 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.

Applicant filed an appeal against the rejection on May 12, 2020, and argued dissimilarity of the marks.

Appeal Board decision

In the decision, the Appeal Board held that:

In appearance, there are differences in the third letter ‘p’, and lower case or upper-case letters. These would give rise to a distinctive impression visually in the mind of relevant consumers where the respective mark consists of five or six-letter words, anything but long.

Next, assessing the pronunciation between applied mark [ˈæpleɪ] and the cited mark [əˈpleɪ], the difference in the first sound would be anything but negligible in view of a few phonetic compositions of four sounds in total. Relevant consumers would be unlikely to confuse each sound when pronounced because of phonetical distinction in overall nuance and tone as a whole

Thirdly, the respective mark does not give rise to any specific meaning at all. If so, both marks are incomparable from the concept.

Based on the foregoing, the Board found no reasonable reason to affirm the JPO examiner’s rejection from visual, phonetic, and conceptual points of view as well as consumer perception and decided to reverse the examiner’s rejection.

Coronavirus vs the Tokyo Olympic Games

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With fewer than 80 days to go until the Tokyo Olympics, Japan just extended a state of emergency in the capital, Tokyo until May 31, 2021, to stem a surge in coronavirus cases.

Japanese trademark applications in 2020

One year has passed since Japan’s first state of emergency was declared on April 7 last year and lasted into late May.

Recent JPO statistical data, released on April 30, 2021, revealed the number of trademark applications newly filed in the Japan Patent Office (JPO) in 2020 fell by 5.1% to 181,072 compared to the previous year, 2019. When counting the total number of classes specified the trademark applications in 2020, it fell by 24.5% from the previous year.

A total of 17,924 trademarks were filed in the JPO via the Madrid Protocol in 2020. The number dropped by 7.8% from 2019.

The data also showed a 3.4% decrease in the number of international trademark applications filed with the JPO as the office of origin in 2020 to 3,033.

The Tokyo Olympic Games

The Tokyo Olympic Committee filed an initial trademark application for the “TOKYO 2020” mark (see below) in 2011, two years before the IOC decision.

In January 2012, the Committee applied for registration for the wordmark “TOKYO 2020” in standard character covering all 45 classes to which the JPO granted protection in November 2013.

However, because of the pandemic, the Tokyo 2020 Olympic and Paralympic Games have been postponed to 2021. The Olympics will now run from July 23 to August 8 2021 and the Paralympics will be held from August 24 until September 5, 2021.

On March 25, 2020, the Committee filed a trademark application for the wordmark “TOKYO 2021” for use on goods and services in 45 classes and subsequently divided the application so that the mark would remain pending the JPO examination as long as possible in fear of trademark theft.

It came to my notice that the following trademarks are filed with the JPO by other entities.

TM application no. 2020-27573 “tokyo 2022” (cl. 32)
TM application no. 2020-32238 “Tokyo 2022” (cl.18)
TM application no. 2020-35399 “TOKYO 2020+1” (cl. 41)
TM application no. 2020-14136 “TOKYO2032” (cl. 35, 41)
TM application no. 2020-125468 “Tokyo 2021 Samurai Athlete” (cl. 41)
TM application no. 2021-16249 “TOKYO 2020-2032” (cl. 41)

Who knows when and how the Tokyo Olympic Games are safely held?
Rather, I would eager to know when will the COVID-19 pandemic end.

IP High Court affirmed TM infringement in favor of Wenger over cross design

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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.

AlphaGo Unsuccessful in Defeating AlphaMini

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“AlphaGo” AI system, developed by Google-owned artificial intelligence company DeepMind, has gained the world’s attention after defeating the top human players of the world in a game of go in the year 2016. But, in a recent opposition decision, the Japan Patent Office (JPO) did not admit the famousness of the trademark “AlphaGo”.
[Opposition case no. 2020-900207, Gazette issued date: March 26, 2021]

AlphaMini

Opposed mark “AlphaMini” (see below) was filed with the JPO by UBTECH Robotics, Inc., Chinese artificial intelligence and humanoid robotic company on July 26, 2019, and designated ‘computer programs; AI-powered humanoid robots; application software for smartphones; security surveillance robots; sensors; teaching robots; navigational instruments; mobile phones; facial recognition software; cameras’ in class 9 and ‘games; toy robots; toys; board games; balls for games; body-building apparatus; fishing tackle; archery implements’ in class 28.

According to the website of URTECH Robotics, Inc., the mark is used as a name of their humanoid educational robot.

Opposition by DeepMind “AlphaGo”

DeepMind Technologies Limited filed an opposition against “AlphaMini” and argued the opposed mark shall be canceled in contravention of Article 4(1)(xv) of the Japan Trademark Law because relevant consumes would confuse the source of goods bearing the opposed mark “AlphaMini” with DeepMind due to a close resemblance between two marks and famousness of “AlphaGo”.

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.

Besides, DeepMind owns several trademarks that begin with the term “ALPHA”, namely, “ALPHACHESS”, “ALPHAZERO”, “ALPHAFOLD”, “ALPHASHOGI”. Taking into consideration a highly renowned computer program “AlphaGo” as the very first AI program that was able to beat one of the highest-ranked human players in the world in 2016, as well as a naming strategy for “ALPHA” AI system series, relevant consumers are likely to associate the opposed mark “AlphaMini” with DeepMind when used on its designated goods in class 9 and 28.

JPO Decision

The Opposition Board of the JPO had concluded that insufficient evidence had been submitted to support the assumption of a well-known mark that is protectable under Article 4(1)(xv).

The Board pointed out that most of the produced newspapers and magazines did not prove the use of the mark “AlphaGo” as a source indicator of the computer program for Go developed by DeepMind. Instead, they just revealed the term “アルファ碁” has been used to represent the AI system by DeepMind. “アルファ碁” is precisely a translation and transliteration of “AlphaGo” written in Japanese character.

The JPO held the mere fact that the first word of both marks is identical would be insufficient. Overall impression of “AlphaGo” and “AlphaMini” is remarkably different from visual, phonetic, and conceptual points of view. Thus, the Board found a low level of similarity between the two marks.

Even if the goods in dispute are closely associated with DeepMind’s business, given a low level of similarity and insufficient evidence to assume the famousness of “AlphaGo”, the Board had no reason to believe the opposed mark would cause confusion with DeepMind when used on the disputed goods in class 9 and 28.

Based on the foregoing, the Board decided the opposed mark would not be canceled in contravention of Article 4(1)(x) of the Trademark Law and dismissed the opposition entirely.

JPO Status Report 2021 – The impact of Covid-19 on Japan trademarks

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Unquestionably, 2020 was remarkably a tough and soul-destroying year for businesses around the world. The coronavirus pandemic has had a major impact on every aspect of day-to-day life, including the world of business. Just as the fluctuations in the economy and our changing work and lifestyles due to long months spent at homes destroyed our understanding of “normal.” Business mentality, preferences, and actions taken during the crisis have all changed. As a result, it was inevitable for trademark filings to be affected by these changes.

According to “JPO Status Report 2021” released on March 31, 2021, by the Japan Patent Office (JPO), a total of 181,072 trademark applications were filed in 2020. This number is down 5% compared to the previous year when the number of applications amounted to 190,773.

It is interesting to see that Pfizer Inc. became a top-ranking foreign registrant in 2020 who could successfully register 154 trademarks in Japan, drastically increased from the previous year.

Requests for accelerated examination consecutively increased to 11,204 by 38% in 2020, which enables applicants to obtain trademark registration within 2months.

As a background, it should be noted that the entire trademark process for general examination at the JPO (the total time of application from filing to registration) takes 10.9 months on average, which is nearly 2 months longer than the previous year.

You can access and download the full text of “JPO Status Report 2021” from here.

COCO vs COCOMIST – Decision of the Opposition Board of the Japan Patent Office

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Chanel handed a loss in its attempt to block Japanese trademark registration no. 6202587 for wordmark “COCOMIST” to be used on cosmetics, perfumery, fragrances, incense, and other goods in class 3.
[Opposition case no. 2020-900047, Gazette issued date: February 26, 2021.]

COCOMIST

The opposed mark consists of the word “COCOMIST” written in standard character (see below). Applicant, a Japanese company, 196+ Inc., filed it for use on ‘cosmetics, perfumery, fragrances, incense, toiletry preparations’ and other goods in Class 3 on January 7, 2019.

The mark was published for post-grant opposition on December 24, 2019, without confronting any office action from the JPO examiner.

It is apparent that the applicant actually uses the opposed mark on cleaning mist.

Opposition by CHANEL

On February 20, 2020, CHANEL SARL filed an Opposition and argued the opposed mark shall be canceled in contravention of Article 4(1)(xi), (xv), and (xix) of the Trademark Law on the grounds that:

  1. Since 1995, the opponent has owned senior trademark registration no. 2704127 for wordmark “COCO” over cosmetics, perfumery, and fragrances, which has unquestionably acquired a remarkable degree of reputation and popularity as a source indicator of the opponent’s cosmetics as well as a nickname or short name of French fashion designer “Gabrielle COCO CHANEL”, the founder of the Chanel brand.
  2. The term “MIST” lacks distinctiveness in relation to cosmetics. If so, relevant consumers at the sight of the opposed mark would easily conceive “COCO” as a prominent portion when used on goods in question.
  3. In view of the close resemblance between two marks and goods, presumably, the applicant must have applied the opposed mark for use on cosmetics with prior knowledge of the cited mark and fraudulent intention of free-riding on its reputation.

JPO Decision

The JPO Opposition Board admitted a high degree of reputation and popularity of “COCO” as a source indicator of the opponent’s perfumery and fragrances among relevant consumers based on substantial use of the cited mark in Japan but questioned its famousness in relation to other cosmetics except for perfumery and fragrances.

The JPO denied the similarity between the opposed mark and “COCO”, stating that the opposed mark shall be taken as a whole in view of a tight combination of its literal element from appearance. If so, the opposed mark does not give rise to any specific meaning and the Board has no reasonable ground to believe that the opposed mark “COCOMIST” shall be similar to “COCO” from visual, phonetic, and conceptual points of view.

Given a low degree of similarity between the marks, the Board held the opposed mark is unlikely to cause confusion even when used on perfumery and fragrances.

Assuming that both marks are dissimilar, the Board was not convinced that the applicant aimed for free-riding on the goodwill of Chanel.

Based on the foregoing, the JPO dismissed the entire allegations of CHANEL SARL and allowed the opposed mark to register as the status quo.

Montblanc Unsuccessful in Trademark Opposition

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The Japan Patent Office (JPO) dismissed a trademark opposition claimed by Montblanc-Simplo GmbH, Germany, against Japanese trademark registration no. 6240752 for “MONTBLANC PROFESSIONAL PRIDES” with a device mark, stating that the opposed mark is unlikely to cause confusion with “Montblanc” known around the world for its superior writing instruments when used on the goods in question of class 25.
[Opposition case no. 2020-900159, Gazette issued date: February 26, 2021]

MONTBLANC PROFESSIONAL PRIDES

Opposed mark, consisting of words “MONTBLANC” and “PROFESSIONAL PRIDES” combined with a three-vertical-line design (see below) , was filed on April 17, 2019, by a Japanese business entity, SUMISHO MONTBLANC Co., Ltd. for use on ‘Medical scrubs; nurse dresses; nurse overalls; nurse pants; nurse uniforms; nurse caps; clothing; nurse shoes; footwear’ and other goods in class 25, and published for opposition on April 21, 2020, after registration on March 30, 2020.

Opposition by Montblanc-Simplo GmbH

On June 18, 2020, Montblanc-Simplo GmbH filed an opposition and claimed that the opposed mark shall be cancelled in contravention of Article 4(1)(xv) of the Japan Trademark Law due to a likelihood of confusion with the wordmark “MONTBLANC” known for its superior writing instruments.

Article 4(1)(xv)

Article 4(1)(xv) prohibits registering a trademark which is likely to cause confusion with the business of other entities.

Among other things, Montblanc argued the word “MONTBLANC” shall be considered as a prominent portion of the opposed mark since it does not indivisibly combine with the rest of the elements, namely, “PROFESSIONAL PRIDES” and three-vertical-line design. If so, taking account of a remarkable degree of reputation and popularity to the Montblanc writing instruments, relevant consumers would misconceive the source of goods bearing the opposed mark with the opponent.

Board Decision

It does not surprise me that the Opposition Board admitted a remarkable degree of reputation and popularity of the “Montblanc” mark in connection with fountain pens and ball-point pens based on the facts that the opponent has made and sold writing instruments identified by the MONTBLANC trademark for more than a hundred years since 1906 and operates 121 brick-and-mortar stores in Japan as of now.

Meanwhile, the Board questioned if “Montblanc” has been widely known even among relevant consumers of the goods in class 25 since the Board was unable to find a reasonable ground to believe that medical scrubs, nurse shoes and other goods in question are closely associated with the writing instruments. In this respect, a mere fact that the opposed mark contains the word “MONTBLANC” would be insufficient to find a likelihood of confusion with the opponent when used on goods in question.

Based on the foregoing, the Board decided the opposed mark shall not be subject to cancellation in contravention of Article 4(1)(xv) and allowed registration as the status quo.

JPO rejects “AIR NECKTIE” due to similarity to NIKE “AIR”

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The Japan Patent Office (JPO) dismissed an appeal filed by a Japanese individual who sought registration for use of the wordmark “AIR NECKTIE” on neckties in class 25 due to the similarity to NIKE “AIR.”
[Appeal case no. 2020-4106, Gazette issued date: February 26, 2021.]

AIR NECKTIE

The mark in question, consisting of two English words “AIR” and “NECKTIE”, and its transliteration in a Japanese katakana character (see below), was filed for use on ‘neckties’ in class 25 with the JPO on July 6, 2018 [TM Application no. 2018-88482].

TM App no. 2018-88482

AIR

The examiner raised her objection based on Article 4(1)(xi) of the Trademark Law by citing senior registration nos. 502137 and 4327964 for the mark “AIR” owned by NIKE Innovate C.V. (see below) which cover clothing, shoes, neckties, and other goods in class 25.

TM Reg no. 502137
TM Reg no. 4327964

Article 4(1)(xi) is a provision to prohibit registering a junior mark that is deemed identical with, or similar to, any senior registered mark.

Regardless of the arguments made on a written response to the office action by the applicant, the JPO examiner entirely rejected the “AIR NECKTIE” mark based on the ground.

On March 6, 2020, the applicant filed an appeal against the refusal with the JPO and disputed that the applied mark “AIR NECKTIE” is dissimilar to the cited mark “AIR.”

JPO decision

The JPO Appeal Board referred to the tests established by the Supreme Court ruling in 2008 to determine whether it is permissible to take out respective elements of the composite mark when assessing the similarity of two marks.

“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 marks 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 tests, the Board found that it is permissible to take out a literal element “AIR” from the applied mark and compare it with the citations by stating the following grounds:

  1. The applied mark can be seen as a composite mark consisting of ‘AIR’ and ‘NECKTIE’ because of the space between two words.
  2. “NECKTIE” is unquestionably recognized as a generic term in connection with ‘neckties’ in class 25.
  3. Relevant consumers at the sight of neckties bearing the mark “AIR NECKTIE” would conceive the term “AIR” as a prominent source indicator.
  4. “AIR NECKTIE” does not give rise to any specific meaning in its entirety.
  5. The above facts suggest that “NECKTIE” lacks inherent distinctiveness in relation to the goods in question, and it would not play the role of source indicator of the applied mark in view of sound as well as concept.

Based on the foregoing, the Board affirmed the examiner’s rejection and decided that the applied mark “AIR NECKTIE” is similar to the cited marks as a whole given the remarkable similarity in sound and concept, even if the word “NECKTIE” differentiates two marks in appearance.

“MACSELL” for use on PC value estimation service is unlikely to cause confusion with Apple “Mac”

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The Japan Patent Office (JPO) dismissed an opposition claimed by Apple Inc. against trademark registration no. 6223514 for word mark “MACSELL” on used mobile phone, Smartphone, PC and tablet computer value estimation service in class 36 by finding less likelihood of confusion with Apple “Mac” series.
 [Opposition case no. 2020-900114, Gazette issued date: Jan 29, 2021]

MACSELL

Opposed word mark “MACSELL” in standard character was filed on March 22, 2019, for the service of used mobile phone, Smartphone, PC and tablet computer value estimation, and others in class 36. Going through the substantive examination, the JPO admitted registration on February 6, 2020.

Apparently, the opposed mark is used as a tradename of used Mac and Surface recycle shop managed by the applicant.

Capture from “MACSELL” website
Capture from Google “Street View”

Apple’s Opposition

Apple Inc. argued the opposed mark “MACSELL” shall be canceled in violation of Article 4(1)(xv) of the Japan Trademark Law.

“Mac” has become famous as a source indicator of Apple’s PC by virtue of substantial use with various trademarks, e.g. “MacBook Air” and “MacBook Pro” on laptops, “iMac” and “iMac Pro” on desktops, “Mac Pro” and “Mac mini” on computer hardware.

The opposed mark, consisting of “MAC” and “SELL”, would easily give rise to a meaning of offering Apple’s PC for sale.

If so, relevant consumers at the sight of the opposed mark when used on the service in question are likely to associate and confuse the origin of the opposed mark with Apple Inc. or any entity related to the opponent.

JPO decision

The JPO Opposition Board admitted a remarkable degree of reputation and popularity of “Mac” as a source indicator of Apple Inc. and a close association between Apple’s goods and the service in question.

However, the Board found a low level of similarity between “MACSELL” and “Mac” by stating that the term “SELL” would severely cause a distinctive impression between both marks from visual, phonetical, and conceptual points of view, even if the marks share the word “MAC.”

Besides, taking into account a low level of originality of the opponent mark “Mac,” the Board questioned if relevant consumers and traders are likely to associate or connect the opposed mark with the opponent when used on the service in question.

Consequently, the Board held that relevant consumers would be unlikely to confuse the source of the opposed mark with Apple Inc. and any entity economically or systematically connected with the opponent.

Based on the foregoing, the Board decided to dismiss the opposition entirely and allowed registration of the opposed mark as status quo.