投稿者: Masaki MIKAMI

JAGUAR LAND ROVER Lost Trademark Opposition over Jaguar Logo

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The Opposition Board of the Japan Patent Office (JPO) held a junior trademark registration no. 6104905 for a composite mark comprised of “JAGTEC” and feline device is neither similar to, nor likely to cause confusion with senior trademark registrations for leaping jaguar logo owned by Jaguar Land Rover Ltd. when used on automobiles in class 12.
[Opposition case no. 2019-900064, Gazette issued date: October 25, 2019]

Opposed mark

Opposed mark (see below) was applied for registration on March 29, 2018 by designating automobiles and its structural parts in class 12, and published for registration on January 8, 2019 without confronting any office action from the JPO examiner.

Opposition by Jaguar Land Rover

Jaguar Land Rover Ltd. filed an opposition on February 28, 2019 before the JPO and claimed that opposed mark shall be cancelled based on Article 4(1)(xi) and (xv) of the Trademark Law by citing trademark registrations for its iconic jaguar logos (see below) which include the image of a leaping jaguar, accompanied by the word “jaguar”, which the opponent claims to be used over 75 years old.

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.

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’ benefits.

Jaguar Land Rover claimed that , inter alia, opposed mark, consisting of a leaping feline device and literal element starting from “JAG”, looks confusingly similar to the cited marks from visual, oral, and conceptual points of view. Besides, the goods in question is identical with that of cited marks. If so, opposed application “for the contested goods would be recognized as uniquely and unmistakably identifying or suggesting a connection to opponent , and thus relevant consumers are likely to confuse or misconceive opposed mark with a famous car brand “JAGUAR”.

Opposition decision

To my surprise, the Opposition Board pointed out that Jaguar Land Rover alleged the leaping jaguar logo has been used since 1938 and well-acquainted with relevant consumers though, it is questionable whether cited marks have acquired a substantial reputation as a result of consecutive use from the produced evidences.

Besides, the Board flatly negated similarity between opposed mark and cited marks respectively.

By taking into consideration uncertain famousness of cited marks and low degree of similarity between the marks, the Board concluded relevant traders and consumers are unlikely to confuse or associate opposed mark with opponent or any business entity economically or systematically connected with Jaguar Land Rover even when used on automobiles. Based on the foregoing, opposed mark shall not be cancelled under Article 4(1)(xi) and (xv) of the Trademark Law.

JPO finds “CLUB MOET KYOTO” and “Moët & Chandon” likely to cause confusion

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The Opposition Board of the Japan Patent Office (JPO) sided with MHCS, the producer, inter alia, of the famous Moët & Chandon champagne, and decided to cancel trademark registration no. 6030384 for word mark “CLUB MOET KYOTO” due to a likelihood of confusion with “Moët & Chandon”.

CLUB MOET KYOTO

Opposed mark, a word mark “CLUB MOET KYOTO” written in standard character, was filed on November 14, 2017 by designating restaurant service of class 43 in the name of a Japanese business entity having its principal place of business at Kyoto. It appears the applicant owns hostess bar and opposed mark is actually used as a name of the bar. See here.

Immediately after filing the application, applicant requested the JPO to accelerate examination of opposed mark. In accordance with the request, the JPO rushed to a decision and admitted registration on March 23, 2018.

MHCS – OPPOSITION

MHCS, as a holder of the Japanese trademark “MOET”, sought to retroactively cancel the registration of opposed mark, on the grounds that the mark was likely to cause confusion with “Moët & Chandon” when used on restaurant service in class 43 under Article 4(1)(xv) of the Japan Trademark Law.

Likelihood of confusion is a key criteria when assessing the similarity of trademarks. To establish whether there is 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.

MHCS argued that a term “MOET” of opposed mark shall playa a dominant role as a source indicator since both “CLUB” and “KYOTO” are devoid of distinctive character in relation to restaurant service. If so, relevant consumers may misconceive “Moët & Chandon” from opposed mark when used on the service in question by taking its prestigious reputation of “Moët” as an abbreviation of world-famous champagne into consideration.

OPPOSITION DECISION

The JPO Opposition Board decided in favor of MHCS, finding that both “Moët & Chandon” and its abbreviation “Moët” have acquired substantial reputation as a top ranking champagne brand distributed by MHCS. It is unlikely that relevant consumers would conceive “Moët” as a surname of foreigners. If so, the term is anything but a dictionary word, rather a coined word. Besides, both marks are confusingly similar, due to visual, phonetic and conceptual similarities, since the literal elements “CLUB” and “KYOTO” of opposed mark are devoid of distinctive character in relation to the service in question, as well as close association between champagne and restaurant service for which protection was sought based on the fact that MHCS once opened restaurant in the year 2014.

Based on the above considerations, the Opposition Board cancelled trademark registration of opposed mark in its entirety, finding there to be likelihood of confusion between “Moët & Chandon” and the trademark applied for.
[Opposition case no. 2018-900152, Gazette issued date: October 25, 2019]

Volkswagen Unsuccessful in Trademark Opposition to Baidu’s “Car-pollo” mark

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In a trademark opposition involving the Volkswagen Polo, the Opposition Board of Japan Patent Office (JPO) decided that VW’s famous car model name “Polo” is dissimilar to, and unlikely to cause confusion with, the word mark “Car-pollo” even when used in relation to car navigation.
[Opposition Case no. 2019-900054, Gazette issued date: October 25, 2019]

Trademark opposition

German car giant Volkswagen AG filed an opposition against TM registration no. 615016 for word mark “Car-pollo” written in standard character (Opposed mark) sought for registration by Baidu Online Network Technology Beijing Company Limited, a Chinese language internet search company, on the grounds that Opposed mark shall be objectionable under Article 4(1)(xi) and 4(1)(xv) of the Japan Trademark Law based on senior trademark registrations for word mark “POLO”.

The opposed mark designates navigation apparatus (GPS) for vehicles [on-board computers]; car video recorders; batteries for vehicles; battery charging devices for motor vehicles; electric locks for vehicles and others in class 9, wheel barrows; airplanes; vessels; bicycles; electric bicycles in class 12, and automatic driving cars design in class 42.

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.

Volkswagen argued opposed mark is a compound word consisting of “Car”, which would be unregistrable alone in relation to the designated goods and service, and “pollo” formed with hyphen. If so, the term “pollo” would constitute the dominant portion of opposed mark. Since the term is an unfamiliar Italian and Spanish word in Japan, relevant consumers would not conceive its meaning of ‘chicken’ at all. The term “pollo” gives rise to a same sound with “POLO” and resembles with “POLO” from appearance. Also, the designated goods in class 12 of both marks are identical or similar. Therefore, opposed mark shall be objectionable under Article 4(1)(xi).

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’ benefits.

Volkswagen argued “POLO” has acquired substantial popularity and reputation as a source indicator of VW’s famous car model name. Thus, it is highly likely that relevant traders and consumers confuse or misconceive the source of goods and services using opposed mark “Car-pollo” with opponent or a business entity systematically or economically connected with VW. If so, opposed mark shall be objectionable under Article 4(1)(xv).

Board decision

The Board admitted “POLO” has become remarkably famous for a car mode name of Volkswagen by taking into consideration of the facts that the Volkswagen Polo has been continuously imported to Japan since 1982 and ranked in the top 5 of new imported automobile registrations for the past decade.

In the meantime, the Board found “POLO” and “Car-pollo” are totally dissimilar from visual, sound and conceptual points of view. Regarding opponent’s allegation the Board stated the term “Car” isn’t a usual word to indicate ‘wheel barrows; airplanes; vessels; bicycles; electric bicycles’ of class 12. From the produced evidence, there does not exist any circumstance to admit the term “pollo” shall be conceived as a dominant portion of opposed mark in fact. If so, it looks rather appropriate to consider relevant consumers would grasp opposed mark in its entirety.

Given a lower degree of similarity between both marks and lack of originality for the term “POLO”, which means a game played on horseback between two teams, each of four players, the Board also negated a likelihood of confusion between “POLO” and “Car-pollo” even when opposed mark is used on car video recorders; batteries for vehicles; battery charging devices for motor vehicles; electric locks for vehicles, and car-related services.

Based on the foregoing, the Board dismissed opposition and allowed “Car-pollo” to survive.

Rothschild Lost Trademark Opposition in Japan

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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.

HUGO BOSS fails in attempt to block trademark registration

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German luxury fashion house Hugo Boss has failed in their attempt to stop the registration of a composite mark consisting of “BOSSWASH” and a spread-eagle device at the Japan Patent Office (JPO).
[Opposition case no. 2017-900382, Gazette issue date: October 25, 2019]

Opposed mark

Opposed mark, filed in April 2017, consists of the literal element “BOSSWASH” and a spread-eagle in black with crown over its head, a letter “B” on its right wing and “W” on left wing (see below).

The application was for bags and pouches in class 18 and published for registration (TM Registration no. 5985092) by the JPO on October 24, 2017.

Opposition by Hugo Boss

To oppose against registration within a statutory period of two months counting from the publication date, HUGO BOSS Trademark Management GmbH & Co KG filed an opposition on December 20, 2017.

Hugo Boss’s opposition to stop the registration was based on claims that the “BOSSWASH” mark could be similar to or confused with sixteen of their earlier trademarks (#2190696, #3236870, IR746972, IR754225, IR773035, IR782587, IR827260, IR827261, IR831750, IR952458, IR964946, IR1023719, IR1055000, IR1058629, IR1072604, IR1263822), which prominently contain the term “BOSS”.

Board Decision

In the decision, the JPO found that, given the literal portion of opposed mark “BOSSWSH” shall be inseparable and perceived in its entirety, opposed mark and Hugo Boss’s trademarks were sufficiently distinguishable in visual, phonetic and conceptual points of view.

To my surprise, the Opposition Board of JPO admitted a high degree of popularity and reputation of “HUGH BOSS” as a trade name of opponent, however, it denied popularity of Hugo Boss’s trademarks, stating that produced materials are insufficient and non-objective to demonstrate substantial use and famousness of the cited marks.

Based on the foregoing, the JPO concluded it is unlikely that consumers confuse or misconceive a source of the opposed mark with Hugo Boss and dismissed the opposition totally.

Failed Opposition by Apple against trademark registration “EYE PHONE”

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The Japan Patent Office (JPO) dismissed a trademark opposition claimed by the U.S. tech giant, Apple Inc. against trademark registration no. 6099794 for word mark “EYE PHONE” in class 9 by finding less likelihood of confusion with Apple “iPhone”.
[Opposition case no. 2019-900030, Gazette issue date: September 27, 2019]

“EYE PHONE”

Opposed mark, a word mark “EYE PHONE” in standard character, was filed by a Japanese business entity, NOVELTY EYE-WEAR Inc., on February 26, 2018 by designating ‘spectacles [eyeglasses and goggles]’ in class 9.

The JPO admitted registration on November 22, 2018 and published for registration on December 18, 2018.

APPLE’s Opposition

To oppose against registration within a statutory period of two months counting from the publication date, Apple Inc. filed an opposition on January 28, 2019.

In the opposition brief, Apple Inc. asserted the opposed mark shall be cancelled in violation of Article 4(1)(vii), (xv) and (xix) of the Japan Trademark Law given a remarkable reputation of opponent mark “iPhone” to indicate opponent’s smart phones currently holding a 44.1% market share in Japan and close resemblance between “iPhone” and “EYE PHONE”.

Apple Inc. argued opposed mark “EYE PHONE” has the same pronunciation with “iPhone” and gives a similar impression in appearance. If so, both marks shall be confusingly similar. Besides, the goods in question are closely related to smart phones since smartphone users get to wear specific glasses for smartphone to block blue light. Recently, smart glasses, wearable device that brings with suitable technology a computer screen/display in front of a person’s eye, have become a hot topic.

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.

Board Decision

The Opposition Board admitted a remarkable degree of reputation and popularity of opponent trademark “iPhone” in connection with smart phones based on the produced evidences boasting the top market share consecutively for the past seven years in Japan.

Meanwhile, the Board found a low degree of originality of “iPhone” given a combination of alphabetical letter “i” and descriptive term “Phone” in relation to smartphones.

In the assessment of mark, the Board held “EYE PHONE” and “iPhone” are dissimilar even if both marks have the same pronunciation since they are sufficiently distinguishable from visual and conceptual point of view. Also, the Board negated close relation between glasses and smartphones in view of its nature, purpose, usage, distribution channel and consumers.

If so, it is unlikely that the consumers confuse or misconceive a source of opposed mark with Apple Inc. or any entity systematically or economically connected with opponent.

Based on the foregoing, the Board decided opposed mark shall not be cancelled on the grounds of Article 4(1)(vii), (xv) and (xix).

Calvin Klein defeated with trademark battle over “CK”

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Japan Patent Office (JPO) dismissed an opposition by Calvin Klein Trademark Trust, a well-known name in fashion, who claimed “CK” device mark is likely to cause confusion with Calvin Klein when used on various designated goods in class 16 and 21. [Opposition case no. 2019-900068]

Opposed mark

Opposed mark, TM Registration no. 6102531, was filed in the name of Crecia Kasuga Co., Ltd., having its head office in Fuji city located at the southern base of Mt. Fuji, on February 22, 2018.

Opposed mark, consisting of two alphabetical letters “CK” and a device looking like Mt. Fuji or paper roll (see below), designates toilet paper, tissue paper, kitchen paper and other paper products for home use in class 16 and cleaning tools and washing utensils in class 21.

JPO granted to register opposed mark and published for registration on December 25, 2018.

Opposition

On February 22, 2019, Calvin Klein Trademark Trust filed an opposition against the CK device mark.

Calvin Klein argued that opposed mark is subject to cancellation in violation of Article 4(1)(xv) of the Trademark Law on the grounds that “CK” and “ck” have acquired such fame as a source indicator of famous fashion brand “Calvin Klein” that, upon seeing the opposed mark used on goods in class 16 and 21, the average consumer would be led to infer the existence of a connection to the owner of the famous brand.

Board decision

The Opposition Board pointed out that, from the produced evidences, “CK” has been ordinarily used in conjunction with or adjacent to ‘Calvin Klein’ as well as “ck” and thus questioned whether “CK” and “ck” have become famous in itself as a source indicator of Calvin Klein among relevant traders and consumers at the time of both the application and the grant of registration of Opposed mark.

Besides, two alphabetical letters are deemed descriptive and unregistrable under the Japan Trademark Law. If so, unless opponent is successful in demonstrating acquired distinctiveness of “CK” or “ck”, a mere coincidence of two alphabetical letters is insufficient to find similarity between opposed mark and opponent’s marks.

Based on the foregoing, the Board concluded relevant traders and consumers are unlikely to confuse or associate the goods using opposed mark with opponent or any business entity economically or systematically connected with Calvin Klein. Therefore, opposed mark shall not be cancelled due to Article 4(1)(xv) of the Trademark Law.

JPO rejects 3D Shape Mark of Giant Cotton Candy

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In a dispute of registrability to a unique three-dimensional shape of giant cotton candy, the Appeal Board of Japan Patent Office (JPO) refused protection of the 3D mark due to lack of distinctiveness.  
[Appeal case no. 2017-9666, Gazette issue date: September 27, 2019]

TOTTI CANDY FACTORY

If you ever visit Harajuku (Tokyo) chances are you will spot people carrying around gigantic pastel-colored cotton candy. When you think of cotton candy, a balloon-size blob of sticky blue or pink fluff probably comes to mind. But this cotton candy is here to rewrite any preconceptions you have about the treat, because not only does it come in the most beautiful shades of pastel you’ve ever seen, it’s also legitimately larger than your head. It’s so big, it’s actually hard to take a cute picture holding it — because it blocks your entire face with its pretty rainbow hues.

You can find this giant rainbow cotton candy at a sweet shop popular with young people in Harajuku, Totti Candy Factory.

3D shape of the cotton candy was applied for registration with JPO in respect of confectionery (class 30) on May 20, 2016. [TM application no. 2016-54840]

Registrability of 3D shape mark

The shape of a product can be an important element that generates value for a company. For this reason, the protection of three-dimensional forms is of commercial interest. Three-dimensional trademarks include the shape of a product or its packaging. Prior to 1996, there was no proper statutory provision that recognized three-dimensional shapes as trademarks. 1996 revision to the Trademark Law recognized 3D shape trademarks such as the shape of the packaging and specific product shapes. Now, a Trademark Registration can be attained for any distinctive three-dimensional shapes, that discern the goods or services of one business from those of other businesses, under the Japan Trademark law.

JPO Examination

JPO examiner entirely rejected the 3D shape mark by stating that:

“Appearance of the applied mark in color can be perceived merely as an ordinary three-dimensional shape of cotton candy. If so, the shape is deemed equivalent to a configuration solely consisting of the shape of goods in a common manner to the extent that relevant traders and/or consumers are unlikely to recognize the shape as a source indicator. Hence, the mark is subject to Article 3(1)(iii) of the Trademark Law. From the produced evidence, it is questionable whether the shape has acquired distinctiveness as a result of substantial use.”

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, an owner of Totti Candy Factory, filed an appeal on June 30, 2017.

Appeal Board’s decision

The Appeal Board affirmed examiner’s rejection of the 3D shape based on lack of distinctiveness. As grounds for rejection, Board cited following conical cotton candies in several colors distributed by third parties.

In addition, the Board negated acquired distinctiveness of the 3D shape by stating that:

  1. Allegedly applicant has used applied mark on cotton candy since February 2015, however, he failed to produce objective evidence of its first use.
  2. In general, cotton candy is consumed by individuals in a wide age range. If so, three brick-and-mortar shops at Harajuku (Tokyo), Shinsaibashi (Osaka), Nagoya PARCO (Aichi) are insufficient to demonstrate increased publicity among relevant consumers all over the country.
  3. According to the produced sales record, from the period of February 2015 through June 2017 applicant sold 370,302 pieces of Giant Rainbow Cotton Candy, amounting to 200 million JP-yen in total sales. However, its market share remains unclear.
  4. A fact that Totti Giant Cotton Candy has gotten popular with young women in their teens and early 20’s is insufficient to admit acquire distinctiveness of the 3D shape since consumers of cotton candy are not limited to young women.
  5. Advertisement and publications of Giant Rainbow Cotton Candy contains a term “TOTTI CANDY FACTORY” or “Totti” adjacent to the 3D shape. From these evidences, it is questionable whether relevant consumers would conceive the 3D shape in itself as a source indicator of Totti Candy Factory.

Based on the foregoing, the Board consequently refused to register the mark based on Article 3(1)(iii) of the Trademark Law.

Chloé Victorious in Trademark Battle

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In a recent administrative trademark decision, the Opposition Board of Japan Patent Office (JPO) upheld an opposition to the registration of “CHLOEFRANCIS” on the ground that it is likely to cause confusion with a French fashion house, Chloe.
[Opposition case no. 2018-900048, Gazette issued date: August 30, 2019]

CHLOEFRANCIS

Opposed mark, a word mark “CHLOEFANCIS” in standard character was applied for registration on May 25, 2017 for ‘shoes’ in class 25 by Kabushiki Kaisha Jay Jay Japan, a Japanese shoemaker.

Jay Jay Japan has been promoting the sales of women’s shoes, ballerinas and heels using the CHLOEFRANCIS mark.

Opposition by Chloe

On February 23, 2018, Chloe S.A.S., a French luxury fashion house founded in 1952 by Gaby Aghion, filed an opposition, stating that relevant consumers are likely to confuse or misconceive opposed mark with Chloe or any business entity systematically or economically connected with opponent due to high popularity of opponent’s fashion brand “Chloe” and close resemblance between opposed mark and “Chloe”.

Article 4(1)(xv)

Chloe sought to retroactively cancel opposed mark 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’ benefits.

Board decision

The Board admitted “Chloe” has acquired a high degree of reputation among relevant consumers and traders in connection with fashion items.

Besides, the Board found that opposed mark apparently consists of “CHLOE” and “FRANCIS”. If so, relevant consumers shall be impressed with the term “CHLOE” and consider it a dominant part of opposed mark since they easily conceive a famous source indicator of the high-end fashion brand, Chloe.

Furthermore, the Board pointed out that Jay Jay Japan has used opposed mark with a space between the two words, “CHLOE” and “FRANCIS”.

Based on the foregoing, the Board concluded that, relevant traders or consumers are likely to confuse or misconceive a source of opposed mark with Chloe SAS or any entity systematically or economically connected with the opponent when used on shoes in class 25 and declared cancellation based on Article 4(1)(xv).

Porsche wins trademark protection for “911”

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Porsche, a German sports car maker, has recently won trademark protection for its widely known three-digit code “911” in Japan.
[Appeal case no. 2018-650044]

911 – a mark composed exclusively of numerals

Dr. Ing. h.c. F. Porsche Aktiengesellschaft filed a trademark application for three-digit mark “911” in standard character to the Japan Patent Office (JPO) via the Madrid Protocol with a priority date of March 15, 2014, which is the international registration date for IR no. 1199656.

Evidently, the mark represents the famous Porsche 911, one of the greatest sportscar.  

It starts in 1963. 911 was Designed as a Rear Engined Luxury Sports Coupe from the get-go. Germans wanted to call it the 901. and that had been it’s factory code ever since it was in production. But Porsche was forced to rename the model the ‘911’ after French Automaker Peugeot claimed the name 901, having the {Number – Zero – Number}, was in violation of French copyright and trademark protection laws.

On April 5, 2018, the JPO examiner refused the 911 mark on the ground that it is descriptive for the designated goods ‘sports cars’ in class 12 based on Article 3(1)(v) of the Trademark Law.

The article prohibits any mark from registering if it consists solely of a very simple and common mark. Trademark Examination Guidelines (TEG) stipulates that a mark consisting of numerals is not eligible for registration under the article. Click here.

A mark composed exclusively of numerals is deemed uncapable of identifying the source of the goods since relevant public immediately perceives, without further thought, a description of one of the essential characteristics of the goods in question, such as their quantity or value.

The examiner had considered that since the sign 911 can be used to indicate a value, code, type, model or standard, it could be immediately perceived by the relevant public as descriptive of a characteristic of the goods in question and not of their provenance from a specific undertaking.

Numerals falling under the article are only capable for registration based on Article 3(2) if they have “acquired distinctiveness”, which means the term has taken on a meaning in the public view so that people see the term as a trademark identifying the goods rather than simply describing the goods.

In the appeal, Porsche argued the 911 mark in itself has already played a role of source indicator as a result of substantive use since 1964.

APPEAL BOARD Decision – Acquired Distinctiveness

JPO Appeal Board granted protection of the 911 mark, stating that the mark has acquired distinctiveness due to substantive and continuous use with goods in question based on following fact-findings.

  1. Appellant has used the 911 mark as a sports car brand of its high-end product since 1964 in Japan and been continuously distributing the sports car.
  2. Recent domestic sales show 1,420 cars in 2016, 1,543 cars in 2017.
  3. Press release, news articles, catalogs and advertisements on magazines and newspapers featuring Porsche count to approximately 300 per year from 2010 to 2014.
  4. From the produced evidences, it could be seen that the 911 mark has been used in a separable manner with Porsche.

Thus, the Board found the applied mark in itself has been widely known for a source indicator of the famous Porsche 911 among relevant consumers of goods in respect of which an application for registration has been filed. If so, the 911 mark is exceptionally eligible for registration in connection with sports cars of class 12 based on Article 3(2) of the Trademark Law.