投稿者: Masaki MIKAMI

JPO decided “Antithesis” dissimilar to a mark consisting of it and other eight terms placed in 9 rows

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In an administrative appeal disputing trademark similarity between TM registration no. 5661343 for word mark “Antithesis” with its transliteration in Japanese katakana and junior application no. 2017-101730 for a mark consisting of “Antithesis” and the other eight English terms placed in 9 rows, JPO found both marks dissimilar and reversed the examiner’s rejection.
[Appeal case no. 2019-652, Gazette issued date: March 27, 20]

TM Registration no. 5661343

Cited mark, the term “Antithesis” with its transliteration in a Japanese katakana character (see below) has been registered over clothing, footwear, and other goods in class 25 since April 4, 2014.

Junior Application no. 2017-101730  

Applied mark, consisting of nine English terms “Imitation”, “Genuine”, “Chic”, “Rudeness”, “Confusion”, “Silence”, “Gentleman”, “Lady”, and “Antithesis” placed in 9 rows inside a black rectangle (see right), was applied for registration on August 1, 2017, over clothing, footwear, and other goods in class 25 by Element Rule Co., Ltd.

JPO examiner entirely rejected applied mark on the ground that the term “Antithesis” on the bottom row can play a role of source indicator independently because of overall configuration and space above the bottom row. If so, the applied mark as a whole shall be deemed similar to the cited mark.

The applicant filed an appeal against the rejection on May 20, 2019, and argued dissimilarity of both marks.

Appeal Board decision

In the decision, the Board found that:

“From the appearance, “Antithesis” on the bottom row shall not be separable since the term is written in the same font, color, size with other terms “Imitation”, “Genuine”, “Chic”, “Rudeness”, “Confusion”, “Silence” even if there is space in the trademark.
Besides, nine terms do not give rise to any specific meaning in its entirety.  Neither do eight terms except “Antithesis”.
If so, there is no reasonable reason to believe that relevant consumers consider the term “Antithesis” on the bottom row or any other terms a dominant part of the applied mark.
It rather does mark sense that applied mark shall be perceived as a whole displaying respective English word in a different row inside a black rectangle.”

Based on the foregoing, the Board held that the Examiner erred in finding the term “Antithesis” separable as an independent source indicator of the applied mark, and decided to reverse the examiner’s rejection.

I don’t quite agree with the Appeal Board decision. In my view, the respective term contained in a junior mark shall be considered separable unless it gives rise to different meanings in a tight combination with other distinctive terms.

TWITTER Unsuccessful in “TWEET” Trademark Opposition at JPO

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The Japan Patent Office (JPO) dismissed a trademark opposition claimed by social media giant, Twitter, Inc. against trademark registration no. 6138010 for word mark “TWEET” in class 33 by finding the TWEET mark is relatively unknown as a source indicator of Twitter Inc.
[Opposition case no. 2019-900193, Gazette issued date: April 24, 2020]

Opposed mark

A wordmark “TWEET” in standard character was filed by a Japanese sake brewery, Shirataki Sake on June 21, 2018, over Japanese sake [Nihonsyu]; sake, distilled rice spirits; sake substitute; Japanese white liquor [Shochu]; Japanese sweet rice-based mixed liquor [Shiro-zake]; Naoshi [Japanese liquor]; Japanese Shochu-based mixed liquor [Mirin]; western liquors; alcoholic fruit beverages; Japanese Shochu-based beverages [Chuhai]; Chinese liquors; flavored liquors in class 33, and published for opposition on May 14, 2019, after registration on April 12, 2019.

Opposition by Twitter, Inc.

On July 12, 2019, US social media giant, Twitter, Inc. filed an opposition and argued opposed mark shall be revocable in contravention of Article 4(1)(xv) and (xix) of the Japan Trademark Law due to a likelihood of confusion with, or identical with its famous “TWEET” mark registered in various classes other than 33.

Article 4(1)(xv)

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

Twitter is a ‘microblogging’ system that allows users to send and receive short posts called “tweets”. Tweets can be up to 140 characters long and can include links to relevant websites and resources. The Japanese version of Twitter was launched in 2008 and its MAU (monthly active users) has been increasing since. Compared to the American population, 35.7% of Japanese actively use Twitter actively while only 20.7% of Americans actively use Twitter. Now, 17% of Twitter’s worldwide revenue comes from the Japanese market.

Twitter, Inc. argued that the above facts suggest “TWEET” has acquired substantial reputation and popularity among the general public in Japan as a source indicator of the opponent.

Even though goods in dispute are remotely associated with SNS services, a lot of alcoholic consumers have obviously made use of Twitter and “tweet” since major breweries advertise their goods on Twitter so frequently and gain a substantial number of followers on Twitter.

If so, relevant consumers of goods in dispute are likely to misconceive the source of goods bearing opposed mark with Twitter, Inc., or any entity systematically or economically connected with the opponent.

Board Decision

The Opposition Board admitted a remarkable degree of reputation and popularity of opponent trademark “Twitter” in connection with a real-time communication service based on the produced evidence boasting more than 45 million MAU in Japan as of December 2018.

Meanwhile, the Board questioned if “TWEET” has been used as a source indicator of opponent business since the evidence shows the term has been used to indicate function or usage of Twitter in a descriptive manner. Consequently, the Board found “TWEET” is relatively unknown as a source indicator of Twitter Inc.

Based on the foregoing, the Board decided opposed mark shall not be revocable in contravention of Article 4(1)(xv) and (xix) since it is unlikely that relevant consumers conceive of the opponent or connect the alcoholic beverages bearing opposed mark “TWEET” with Twitter.

Never Register “BOND GIRL” Never Again

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In a recent administrative decision, the Japan Patent Office (JPO) sided with Danjaq, LLC, and declared invalidation of a wordmark “BOND GIRL” written in a Japanese katakana character in contravention of Article 4(1)(vii) of the Trademark Law.

[Invalidation case no. 2019-890044, Gazette issued date: April 24, 2020]

Disputed mark

“BOND GIRL” written in a Japanese katakana character (see below) was filed to JPO on the service of ‘arranging, conducting, and organization of seminars’ in class 41 by a Japanese individual on November 4, 2015, and registered on December 2, 2016.

Opposition & Invalidation petition by Danjaq, LLC

On March 9, 2017, just before the lapse of a two-months opposition period, Danjaq, LLC, the holding company responsible for the copyright and trademarks to the characters, elements, and other material related to James Bond on screen, filed an opposition to the disputed mark.

However, since Danjaq failed to supplement arguments for opposition within a statutory period, the JPO decided to dismiss the opposition entirely.

On August 2, 2019, Danjaq filed a petition for invalidation and argued disputed mark shall be invalid in contravention of Article 4(1)(vii), (xv) and (xix) of the Trademark Law by citing world-famous cinematic heroine “BOND GIRL” in the James Bond film series “007”.

Article 4(1)(vii)

Article 4(1)(vii) of the Trademark Law prohibits any mark likely to cause damage to public order or morality from registration.

In the petition, Danjaq argued “BOND GIRL” has appeared as a love interest of James Bond in the movies for over 55 years since 1962. Due to frequent appearances in magazines, other public media, and various events pertinent to the Japes Bond movie, the name and sign of “BOND GIRL” has been well-known for cinematic heroine in association with the film series “007”.

If so, it is presumed that the applicant intentionally applied disputed mark with an aim to monopolize the term. Since the applicant does not have any legal interest with Danjaq, a legitimate owner of trademarks and copyrights pertaining to the 007 movies, it must impermissibly cause not only damage to public order but the disorder in domestic and foreign trade.

Invalidation Board decision

The Invalidation Board initially noted that the James Bond film series “007” is world-widely known motion pictures. From the produced evidence, the cinematic heroine “Bond girl” has regularly attracted audiences through screens, magazines, and promotional events of the movie. The sign “BONG GIRL” had further extensive marketing and licensing to companies in vastly different product categories, not only with products associated with the motion pictures, e.g. nails, cosmetics, dolls, cards, calendars, and others. Relevant consumers at the sight of the disputed mark would conceive nothing but the cinematic heroine in the film. The Board, therefore, considered that “BOND GIRL” has become worldly famous as a cinematic heroine that appeared in the “007” film series.

The Board continued in analyzing efforts made by Danjaq to enhance the commercial value of “BOND GIRL” by means of trademark registrations in various jurisdictions and licensing to different product categories.

The Board finally concluded that taking into account the foregoing, since it appears that the applicant makes less contribution to establishing reputation and goodwill on “BOND GIRL”, it shall be impermissible for the applicant to monopolize the term on service in question.

To prevent damage to public order, the disputed mark shall be retroactively invalidated in contravention of Article 4(1)(vii).

In the meantime, surprisingly, the Board denied Danjaq’s allegation regarding a likelihood of confusion because “BOND GIRL” is just famous for cinematic heroine, not as a source indicator of Danjaq.

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.

HERMES scores victory in trademark battle over KELLY

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In a trademark opposition at the Japan Patent Office (JPO), French luxury brand HERMES achieved victory to stop the registration of a word mark “D. KELLY” over bags and pouches in class 18.
[Opposition case no. 2018-900177, Gazette issue date: March 27, 2020]

Opposed mark

Opposed mark, “D.KELLY” was applied for registration on August 25, 2017 by designating bags and pouches in class 18, and published for registration on May 22, 2018 without any office action from the JPO examiner.

Applicant, a Japanese individual, apparently operates brick-and -mortar shops in Japan and on-line shop to promote hand bags, shoulder bags, tote bags, rucksacks/backpacks and other fashion items.
“D.KELLY” is used on the bags and as its shop name.

Hermes Kelly Bag

Opponent, HERMES INTERNATIONAL, a French luxury fashion house, claimed that the opposed mark “D.KELLY” shall be liable for cancellation under Article 4(1)(xi) and (xv) of the Japan Trademark Law by citing the Hermes Kelly Bag and an owned senior trademark registration no. 4341534 for word mark “KELLY” in standard character over bags, pouches and other goods in class 18.

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

Hermes argued opposed mark is perceived as a combination of “D.” and “KELLLY”. The prefix “D.” per se lacks distinctiveness in relation to the goods in question. The mark as a whole does not give rise to any specific meaning at all. As a consequence, the literal portion of “KELLY” shall play a dominant role as a source indicator. If so, opposed mark is deemed confusingly similar to “KELLY” owned by Hermes. Besides, both marks designate same goods in class 18.

Article 4(1)(xv) provides that a mark shall not be registered where it is likely to cause confusion with other business entity’s well-known goods or services, to the benefit of brand owner and consumers.

Given a remarkable degree of reputation of Hermes “Kelly” Bag in relation to bags, relevant consumers with an ordinary care would associate “D.KELLY” with Hermes and confuse its source when used on bags and pouches because “KELLY” is not a common surname in Japan and thus the term is more distinctive than “D.”.

JPO decision

The Opposition Board of JPO sided with Hermes and decided to cancel opposed mark by stating that:

  1. From the produced evidences, Hermes has continuously used the cited mark on bag since 1956, inspired by an icon, Princess Grace Kelly of Monaco. The bag has been advertised or publicized in fashion magazines and internet frequently. Annual sales consecutively reach in the range of JPY 1.6 to 4.6 billion, which amounts 2,000 to 4,000 bags in quantity, for the past fifteen years. The Board admits a high degree of reputation and popularity of opponent mark “KELLY” as a source indicator of Hermes bag.
  2. The Board considers opposed mark is a compound mark of “D” and “KELLY” placing dot(.) in-between. Since an alphabetical letter “D” lacks distinctiveness, relevant consumers would conceive the portion of “KELLY” as a dominant source indicator. If so, opposed mark may give rise to a meaning of Hermes brand bag, identical pronunciation and appearance with opponent’s mark. It is unquestionable that goods in question belongs to that of the citation.
  3. Provided that Hermes “Kelly Bag” has been rather known for in a name of “Kelly Bag” than “Kelly”, the Board finds a high degree of similarity between the marks in relation to bags. If so, it is undeniable that relevant consumers and traders are likely to confuse opposed mark with Hermes “Kelly Bag” or misconceive a source from any entity systematically or economically connected with Hermes International.
  4. Based on the foregoing, opposed mark shall be liable for cancellation based on Article 4(1)(xi) and (xv).

OKLOK vs OKLOCK

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In a trademark dispute, similarity between “OKLOK” and “OKLOCK”, the Appeal Board of the Japan Patent Office found both marks dissimilar and reversed examiner’s rejection.
[Appeal case no. 2019-16781, Gazette issued date: March 27, 2020]

OKLOK

A senior mark, consisting of a word “OKLOK” in standard character, was registered on September 21, 2018 (TM Reg no. 6083192) over electric locks; electronic key fobs being remote control apparatus; anti-theft warning apparatus; other goods in class 9 by a Chinese business entity, 深圳市龙兄弟数码锁有限公司 (Shenzhen Longbrothers Digital Co., Ltd.).

Owner has used “OKLOK” on fingerprint key less padlock, Smart Bluetooth Security Lock with USB Charge and other intelligent anti-theft devices (see below).

[Capture shot of OKLOK official site]

OKLOCK

Applied junior mark, consisting of a word “OKLOCK” in standard character, was applied for registration on April 3, 2019 over anti-theft locks for use on automobile steering wheels and other goods in class 12 [TM application no. 2019-47122].

Applicant uses “OKLOCK” on car steering wheel locks and anti-theft car hand brake and gear lock (see below).

The JPO examiner rejected “OKLOCK” because of confusing similarity to “OKLOK” based on Article 4(1)(xi) of the Trademark Law.

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

There is 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) with the earlier mark and if there is a likelihood of confusion for the consumers.

Applicant filed an appeal against the rejection on December 11, 2019 and argued dissimilarity of both marks.

Appeal Board decision

In the decision, the Appeal Board held that:

From appearance, applied mark “OKLOCK” contains a letter “C” unlike the cited mark “OKLOK”. This gives rise to a distinctive impression visually in the mind of relevant consumers where respective mark consists of five or six-letter words, anything but long.

Next, applied mark is pronounces as [oʊˈkeɪ lɑːk]. In the meantime, the cited mark just gives rise to a pronunciation of [oʊˈkeɪ el ə keɪ] because relevant consumers are likely to see “OKLOK” as a combination of five alphabets and read it as each letter sounds since “OKLOK” does not appear in dictionary.

Thirdly, applied mark does not give rise to any specific meaning in its entirety even though it is perceived as a combination of “OK” and “LOCK”. Likewise, relevant consumers would not conceive any meaning from “OKLOK” and just see it as a coined word. If so, both marks are incomparable from concept.

Based on the foregoing, the Board found no reasonable ground to affirm examiner’s rejection from visual, phonetic, and conceptual points of view and decided to reverse examiner’s rejection.

JPO protects 3D shape of cherry design bottle for soy sauce dispenser

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In a recent administrative decision, the Japan Patent Office (JPO) found 3D shape of cherry design bottle is inherently distinctive in relation to soy sauce dispensers in class 21 even without secondary meaning.
[Appeal case no. 2019-7188, Gazette issue date: March 27, 2020]

3D shape of cherry design bottle

RISU Co., Ltd. filed a trademark application for three-dimensional shape of soy sauce bottle featuring cherry designs (see below) in relation to say sauce dispensers of class 21 on July 20, 2017 (TM Application no. 2017-96914).

From appearance, the 3D shape does not differentiate from an ordinary soy sauce dispenser except cherry designs in red encircling a clear cylindrical plastic bottle.

As a matter of fact, RISU Co., Ltd. has produced various plastic products for home use as well as cherry patterned table top condiment containers.

Article 3(1)(iii)

The JPO examiner rejected registration of the 3D mark on the ground that relevant consumers would not conceive the shape as a source indicator in relation to soy sauce dispensers since there exists similar goods depicting decorative patterns and colors to aim at attracting their attentions. The mark merely represents a shape of designated goods in a common manner and thus is not eligible for registration based on Article 3(1)(iii) of the Trademark Law.

Article 3(1)(iii) is a provision to prohibit any mark from registering where the mark solely consists of elements just to indicate, in a common manner, the place of origin, place of sale, quality, raw materials, efficacy, intended purpose, quantity, shape (including shape of packages), price, the method or time of production or use.

To dispute the refusal, applicant, applicant filed an appeal on June 3, 2019.

Appeal Board’s decision

The Appeal Board disaffirmed examiner’s rejection of the 3D shape by stating that:

Figurative elements depicted on a clear plastic cylindrical bottle would be rather perceived as a distinctive device created on a cherry motif, than a decoration for the purpose of enhancing function or aesthetic appeal of goods in question. If so, the 3D shape per se is deemed to play a role of source indicator sufficiently. It is obvious that examiner errored in finding distinctiveness of the 3D shape.

Thus, the 3D mark is eligible for registration in connection with soy sauce dispensers of class 21 even without finding secondary meaning because of inherent distinctiveness of the shape.

BRIDGESTONE Victorious in Trademark Dispute for B Mark Logo

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The Japan Patent Office (JPO) upheld an invalidation petition by the world’s largest tire and rubber company, Bridgestone Corporation against TM Reg. no. 5664068 for the “SB NAGAMOCHI” mark due to a likelihood of confusion with its well-known B mark logo.
[Invalidation case no. 2018-890068, Gazette issue date: March 27, 2020]

TM Registration no. 5664068

Disputed mark, consisting of “SB” logo and a word “NAGAMOCHI” in a smaller plain letter (see below left), was applied for registration on September 13, 2013 in respect of non-electric prime movers for land vehicles, not including their parts; AC motors or DC motors for land vehicles, not including their parts; automobiles and their parts and fittings; two-wheeled motor vehicles, bicycles and their parts and fittings; adhesive rubber patches for repairing tubes or tires in class 12.

Without confronting with a refusal during substantive examination, disputed mark was registered on April 18, 2014.

Applicant of disputed mark, RMP NAGAMOCHI Technology Japan Ltd promotes various structural parts for automobiles, e.g. cylinders, brakes and clutch hoses, brake calipers, brake pads, rubber parts, filters, gaskets. Disputed mark was actually used on brake pads (see below).

Petition for invalidation

Japan Trademark Law has a provision to retroactively invalidate trademark registration for certain restricted reasons specified under Article 46 (1) provided that interested party files an invalidation petition within five-year statute of limitations.

Bridgestone Corporation, a Japanese tire and rubber company, filed a petition for invalidation against disputed mark on September 5, 2018. Bridgestone argued the mark shall be invalidated due to a likelihood of confusion with its famous “B” mark logo (see above right) when used on all goods in class 12 based on Article 4(1)(xv) of the Trademark Law.

Article 4(1)(xv) provides that a mark shall not be registered where it is likely to cause confusion with other business entity’s well-known goods or services, to the benefit of brand owner and users.

Board Decision

In the decision, JPO Trial Board sided with Bridgestone by finding that:

  1. In 2016, Bridgestone holds top-ranked market share (14.6%) of automobiles tires in the world, the largest market share (55.9%) of tires and rubber products in Japan.
  2. Bridgestone has consecutively used “B” mark logo on goods and promotions as a symbolic house mark of Bridgestone group since 1984 and even when announcing sponsorship partnership with the Olympic Games and Tokyo2020 Paralympic Games Gold Partner.
  3. Based on the foregoing, it is unquestionable that “B” mark logo has acquired strong and considerable reputation as a source indicator of Bridgestone tires and rubber products among relevant traders and consumers of goods in question.
  4. “B” logo is a ‘strong’ mark because it is depicted with distinctive figurative element so that the mark as a whole can be seen sufficiently distinguishable from an ordinary “B” letter.
  5. Both marks look different when compared in its entirety, however, 2nd letter of “SB” logo is considered highly similar to “B” mark logo from visual point of view.
  6. Disputed goods “automobiles and their parts and fittings; two-wheeled motor vehicles, bicycles and their parts and fittings” and “tires” have the potential to be connected in the minds of the consumers. Since respective products share distributors or can be found in the same stores, there finds proximity in channels of trade and marketing of the products on which the marks are used.
  7. Foregoing weighs in favor of finding confusion. Thus, disputed mark shall be invalidated in violation of Article 4(1)(xv) of the Trademark Law.

No Success for Monster Energy Claws

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The Japan Patent Office (JPO) dismissed a trademark opposition claimed by MONSTER ENERGY COMPANY against trademark registration no. 6091273 for “M” logo design on goods/services in class 3,5,35 and negated the likelihood of confusion with Monster Energy Claws.
[Opposition case no. 2018-900390, Gazette issue date: February 28, 2020]

MONSTER HAIR

Opposed mark, “M” logo design (see below), was filed by AND BEAUTY JAPAN Co., Ltd. on June 12, 2018 on goods of hair nourishers; cosmetics; soaps and detergents in class 3, medicinal preparations for stimulating hair growth; pharmaceutical preparations; dietary supplements for humans in class 5, retail services and wholesale services for above goods in class 35, and registered for publication on November 13, 2018.

AND BEAUTY JAPAN promotes MONSTER HAiR sprays for men. Opposed mark is actually represented on the spray can.

Opposition by Monster Energy

On December 26, 2018, Monster Energy Company filed an opposition and argued opposed mark shall be revocable under Article 4(1)(xv) of the Japan Trademark Law due to a likelihood of confusion with Monster Energy Claws.

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.

Monster Energy argued that opponent has used the mark Monster Energy Claws on energy drinks since 2002. In Japan, since its debut in May 2012, approximately 236 million cans were sold in three years which amount 175 million USD or more. Monster Energy has been aggressively promoting the energy drinks in sports and music events, and grants license to supply bracelets, key holders, T-shirts, headgears, racing jackets, gloves, helmets for sports, stickers, umbrellas, videogames. According to a survey of popular energy drinks, Monster Energy holds a 25% market share in Japan, 2013. These facts suggest Monster Energy Claws has acquired substantial reputation and popularity among relevant consumers as a source indicator of opponent. Besides, both marks give rise to visual, phonetical, and conceptual impression relating to an alphabetical letter “M”. Given energy drinks are closely associated with pharmaceutical preparations and dietary supplements for humans, relevant consumers are likely to misconceive the source of goods using opposed mark with Monster Energy or an entity systematically or economically connected with opponent.

Board Decision

At the outset, JPO provided a viewpoint that Monster Energy drinks belong to carbonated drinks [refreshing beverages] in class 32. If so, opponent failed to demonstrate its market share in carbonated drinks. From the produced evidences, the Board admits relevant traders and the young generation would recognize Monster Energy Claws as a source indicator of opponent to some extent, however, it is doubtful whether opponent mark has been highly known among general consumers of carbonated drinks.

In the assessment of similarity of mark, the Board found opponent mark shows three vertical parallel black shaky lines of different lengths whose upper parts is broader and which, from the perspective of the relevant public, might resemble three ‘claws’ or a very abstract depiction to which no specific and clear meaning can be attributed. With regard to the phonetic and conceptual aspect, the signs at issue are incomparable. From appearance, it is obvious that both marks are sufficiently distinguishable. Thus, the Board held the signs at issues are dissimilar and unlikely to cause confusion.

Besides, the Board negated close relation between energy drinks and pharmaceutical preparations, dietary supplements for humans in view of its nature, purpose, usage, distribution channel and manufacturers.

In respect of the overall assessment of the likelihood of confusion, having regard to all the relevant factors, the Based found there was no likelihood of confusion on the part of the relevant public and decided opposed mark shall not be revocable under Article 4(1)(xv).

Fast Track Trademark Examination – Japan Patent Office

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At present, applicant will wait at least 12 months from when trademark is filed until it becomes registered by the Japan Patent Office (JPO).

Accelerated Trademark Examination

To meet a need of earlier registration, JPO has introduced “Accelerated Trademark Examination” which enables trademark application to be registered in two or three months.
However, since it requires applicant to demonstrate actual use of applied mark on at least one of designated goods and services, if applicant has yet to use the mark, such applications have no way but to be in a long queue for JPO examination.

Fast Track Trademark Examination

Newly introduced “Fast Track Trademark Examination” provides an option to achieve earlier registration for non-use trademark owners. According to announcement from JPO, the Fast Track Examination shortens trademark examination period to 6 (six) months on average.

Excerpt from the JPO website

If trademark application meets with following conditions, your trademark will be freely on the fast track without request.

  1. Good and services initially designated under the application are all listed on the “Examination Guidelines for Similar Goods and Services”, “Regulation for Enforcement of the Trademark Act”, or “International Classification of Goods and Services (Nice Classification)”; and
  2. No amendment has been made with respect to goods and services by the time JPO commences examination; and
  3. Applied mark does not belong to non-traditional trademark, international applications under the Madrid system, or partial 3D (three dimensional) mark.

JPO adopts the Fast Track Examination to trademark application filed on or after February 1, 2020.

Further information is available from here.