カテゴリー: 2018

No Violation of the US President’s Personality Rights

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The Appeal Board of Japan Patent Office (JPO) admitted trademark registration for a mark consisting of jigsaw puzzles design and “TA TRUMP” (see below), saying that it does not violate personality rights of Mr. Donald John Trump, the President of the United States.

 

MARK IN QUESTION

A Japanese individual filed a trademark application for the mark consisting of jigsaw puzzles design and a word of “TA TRUMP” (see below) on November 23, 2016 by designating “psychology education cards” in class 16.

JPO examiner refused the mark on the grounds that it comprises a famous abbreviation of Mr. Donald John Trump, the President of the United States and presumably the applicant would not obtain consent from him.

 

Article 4(1)(viii)

Article 4(1)(viii) of the Trademark Law prohibits registration of trademarks which contain the representation or name of any person, famous pseudonym, professional name or pen name of another person, or famous abbreviation thereof. Notwithstanding the provision, the article is not applicable where the applicant of disputed mark produces the written consent of the person.

The Supreme Court of Japan ruled the article has aimed to protect personality rights of a living individual. A diminutive of foreign celebrity falls under the category of “abbreviation” even if his/her full name is not so familiar among Japanese citizen.

 

To contest the refusal, the applicant filed an appeal on August 11, 2017.

 

Appeal Board

In the decision rendered on January 10, 2018, the Appeal Board overruled the refusal and admitted registration of the mark in question by stating that:

  1. “TRUMP” has been known as an English term meaning playing cards among the public in Japan.
  2. In the meantime, “TRUMP” admittedly corresponds to a surname of Mr. Donald John Trump and it becomes evident he is a well-known person as the 45th President of the United States to be called “President Trump”.
  3. Overall appearance of the applied mark easily reminds us of a kind of playing card back designs.
  4. If so, the term of “TRUMP” depicted in the mark shall not be considered to suggest President Trump at all.
  5. Based on the foregoing, accordingly it is groundless to refuse the mark based on Article 4(1)(viii).

 

Never trademark “BON GOÛT” in food-service business

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The Appeal Board of the Japan Patent Office (JPO) decided to register a term of “bon goût” in relation to various foods of class 30 and restaurant service of class 43 by finding that the term is deemed a coined word to relevant public in Japan.
[Appeal case no. 2017-7985]

“BON GOÛT”

Disputed mark (see below), written in a common font design, was filed in December 14 by designating various foods of class 30, e.g. buns and breads, confectioneries, hamburgers, pizza, hot dogs, spices, noodles, pasta, coffee, tea, and restaurant service, rental of cooking apparatus and microwave ovens and others of class 43 in the ultimate.

Lack of distinctiveness

JPO examiner entirely refused the mark due to lack of distinctiveness based on Article 3(1)(iii) of the Trademark Law. In refusal decision, examiner asserted the term of “bon goût” is a French term to mean “good taste” in English.

If so, relevant consumers and traders are likely to conceive the term in association with quality of goods and services.

Besides, given the mark is written in a common font design, it shall be objectionable under Article 3(1)(iii) since the mark is solely composed 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.

 

Appeal Board decision

In the meantime, the Appeal Board overruled examiner’s rejection and granted registration of “bon goût”.

The Board admitted the terms of “bon” and “goût” are French words meaning good and taste respectively by referring to French dictionary, but, in contrast, considered a combined word of “bon goût” is unfamiliar to Japanese public with an ordinary care.
If so, disputed mark shall be deemed a coined word in its entirety and relevant consumers are unlikely to conceive any specific meaning from the mark.

Besides, the Board held, as a result of ex officio examination, there found no circumstance to convince “bon goût” is ordinarily used as a mere descriptive indication in food-service business.

Consequently, it is groundless to reject the trademark “bon goût” based on Article 3(1)(iii) since it does not give rise to any descriptive meaning in relation to the goods and services in question.

This case gives us a lesson.
Descriptive term in foreign language has a potential risk to be registered in Japan if we are unfamiliar to the term.

OMEGA unsuccessful in cancelling OMEGA mark

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The Japan Patent Office dismissed a trademark opposition claimed by a Swiss luxury watchmaker, OMEGA SA against trademark registration no. 5916814 for the OMEGA mark in class 41 by finding less likelihood of confusion due to remote association between watches and services in class 41.
[Opposition case no. 2017-900136]

Opposed OMEGA mark

Opposed mark (see below) was filed by a Japanese business entity on April 28, 2016 by designating the services of “fortune-telling; educational and instruction services relating to arts, crafts, sports or general knowledge; providing electronic publications; Art exhibition services; Reference libraries of literature and documentary records; production of videotape film in the field of education, culture, entertainment or sports; photography etc.” in class 41.


As a result of substantive examination, the JPO admitted registration on January 27, 2017 and published for registration on February 28, 2017.

OMEGA’s Opposition

To oppose against registration, OMEGA SA filed an opposition on April 28, 2017.

In the opposition brief, OMEGA SA asserted the opposed mark shall be cancelled in violation of Article 4(1)(xv) of the Japan Trademark Law by citing the owned luxury watch brand of OMEGA (see below).

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. Theoretically, Article 4(1)(xv) is not applicable to the case where a mark in question is objectionable under Article 4(1)(xi), which prohibit a junior mark from registering if it is deemed identical with or similar to any senior registration. Article 4(1)(xv) plays a key role where a junior mark designates remotely associated or dissimilar goods or services with that of a well-known brand business.

Board Decision

The Opposition Board admitted similarity of both marks and a remarkable degree of reputation and population of opponent OMEGA mark in relation to watches, however, questioned whether such reputation has prevailed even among relevant consumers of designated services in class 41 as long as opponent failed to produce sufficient evidences regarding the issue.

Based on remote association between watched and services designated under the opposed mark, the Board decided that, by addressing less creativity of the OMEGA mark originating from a familiar Greek alphabet even to Japanese with an ordinary care, relevant consumers of designated services in class 41 are unlikely to confuse or misconceive a source of the opposed mark with OMEGA SA or any entity systematically or economically connected with the opponent.

Adidas triumphs over 3-stripe trademark battle

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After six years of prolonged dispute, Adidas AG could achieve a victory over trademark battle involving famous 3-stripe design. In a recent trademark invalidation appeal, case no. 2016-890047, the Trial Board of Japan Patent Office (JPO) decided in favor of Adidas AG to retroactively null trademark registration no. 5430912 for three lines device mark (see below) due to a likelihood of confusion with Adidas’ famous 3-stripe design.

 

Disputed mark

Disputed mark was filed on March 2, 2011 by a Japanese business entity, designating shoes in class 25 and registered on August 5, 2011 (Registration no. 5430912).

To oppose the registration, on October 18, 2011, Adidas AG filed an opposition against disputed mark based on Article 43bis of the Trademark. But the Opposition Board of JPO overruled the opposition and decided to admit registration of disputed mark on June 27, 2012. Four years later, Adidas AG filed an invalidation appeal with an attempt to retroactively null disputed mark based on Article 4(1)(xv), 46(1)(i) of the Trademark Law.

The Japan Trademark Law provides where a trademark has been registered for five years or more, an invalidation appeal based on Article 4(1)(xv) shall be dismissed unless the trademark was aimed for registration with a fraudulent purpose.

It is imagined that the provision urged Adidas to take an invalidation action eventually since the appeal date is just one week before a lapse of five years from registration.

 

Invalidation trial

Adidas AG repeatedly argued a likelihood of confusion between Adidas’ famous 3-stripe design and disputed mark because of a high degree of popularity and reputation of 3-stripe design as a source indicator of Adidas sportswear and sports shoes, visual resemblance between the marks.

Board decision

The Board found that:

  1. Adidas’ 3-stripe design has acquired a substantial degree of reputation well before the filing date of disputed mark as a result of continuous marketing activities in Japan since 1971.
  2. Occasionally, Adidas promotes shoes depicting various types of 3-stripe design with a slight modification to length, width, angle, outline or color of the stripe.
  3. Disputed mark gives rise to the same visual impression in the mind of consumers with 3-stripe design by taking account of similar graphical representation consisting of three lines in parallel leaning to the left. Difference in detail is negligible since it can be perceived as a variation of Adidas shoes given actual business circumstances.

Based on the above findings, the Board concluded that relevant consumers and traders are likely to confuse shoes using disputed mark with Adidas’ famous 3-stripe design or misconceive a source from any entity systematically or economically connected with Adidas AG. Thus, disputed mark shall be invalidated in violation of Article 4(1)(xv) of the Trademark Law.

 

Appeal Board reversed examiner’s rejection in the BOB trademark dispute

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In an administrative appeal disputing trademark similarity between TM registration no. 5719997 for word mark “BOB” and a junior application no. 2016-49394 for the “bob” device mark represented as below, the Appeal Board of the Japan Patent Office decided that both marks are deemed dissimilar and reversed examiner’s rejection.
[Appeal case no. 2017-10420, Gazette issued date: January 26, 2018]

 

TM Registration no. 5719997

The cited mark, consisting of a word “BOB” in standard character, was registered on November 21, 2014 by designating various items of furniture in class 20.

 

Junior Application no. 2016-49394

Applied junior mark consists of the following “bob” device mark.

It was applied for registration on May 5, 2016 by designating furniture in class 20.

As a result of substantive examination by the JPO examiner, applied mark was rejected due to a conflict with the cited mark based on Article 4(1)(xi) of the Trademark Law.
Subsequently, the applicant filed an appeal against the rejection and disputed dissimilarity of both marks.

 

Board decision

In the decision, the Appeal Board held that:

applied mark is a device in dark brown, consisting of two circles protruding upward on the left side, a circle connected with the two circles in line, and wavy lines underneath.

From appearance, even if it may happen the circle design is recognized as a stylized design of “bob”, the Board opines that the design is unlikely to be considered as alphabetical letters due to a remarkable extent of stylization or abstraction. Thus, it is reasonable to conclude that applied mark shall not give rise to any specific pronunciation and meaning.

Based on the foregoing, in the assessment of trademark similarity, the Board decided that:

Obviously, both marks are distinguishable in appearance. As long as applied mark does not give rise to a specific pronunciation and meaning, it is meaningless to compare the pronunciation and meaning of both marks. Consequently, the Board finds no ground to affirm examiner’s rejection from visual, phonetic, and conceptual point of view.

Astonishingly, JPO considered the bob device mark is unreadable.

JPO admits “TE’ CON MIEL” is distinctive in relation to tea

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In a recent trademark opposition, the Opposition Board of the Japan Patent Office (JPO) decided to overrule the opposition against TM Registration no. 5951823 for word mark “TÉ CON MIEL” designating tea in class 30 due to distinctiveness of the mark among relevant Japanese consumers.
[Opposition case no. 2017-900259, Gazette issued date: January 26,2018]

Opposed mark

Opposed mark consists of a term “TE’ CON MIEL” and its transliteration written in Japanese character (Katakana) as shown below.

Opposition

Opponent argued the mark shall be objectionable based on Article 3(1)(iii) and 4(1)(xiv) of the Trademark Law because of descriptive meaning in relation to tea.

Each Spanish word of the mark means ‘tea’ for “TE”, ‘with’ for “CON”, ‘honey’ for “MIEL” respectively. It is obvious that opposed mark gives rise to a meaning of ‘TEA WITH HONEY’ in English as a whole.

Article 3(1)(iii)

Article 3(1)(iii) of the Trademark Law prohibits any mark from registering if 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.

Opponent relied on the article on the assumption that opposed mark just indicates quality or ingredient of designated goods and lacks distinctiveness in relation to ‘tea with honey’ which is undoubtedly included in the designation of tea.

Article 4(1)(xiv)

Article 4(1)(xiv) is a provision to prohibit any mark from registering if the mark is likely to mislead as to the quality of goods or service.

Opponent relied on the article presuming that relevant consumers misconceive the quality of a tea when opposed mark is used on tea other than honey tea.

In order to bolster the argument, opponent produced evidential materials showing tea bags imported from Spain.

Board decision

However, the Opposition Board, by taking into consideration the produced evidences and relevant facts, held as follows.

  1. Each term of “TE”, “CON” and “MIEL” is not familiar among relevant Japanese consumers with an ordinary care. Besides, there exists no circumstance to find a whole term of “TE’ CON MIEL” gets to be known for its descriptive meaning. If so, relevant consumers consider opposed mark as a distinctive source indicator.
  2. A fact that “TE’ CON MIEL” is used on honey tea as a generic term in Spain and other Spanish native countries does not immediately negate a distinctive perception toward opposed mark among relevant Japanese consumers
  3. Obviously, produced evidences are insufficient to demonstrate a certain degree of perception as a generic indication of ‘honey tea’ in Japan.

Based on the foregoing, the Board concluded opposed mark shall not be objectionable under Article 3(1)(iii) and 4(1)(xiv) and dismissed the opposition.

It should be noted that a descriptive term in foreign language can be deemed distinctive and registered in Japan 

Apple Inc. failed in a trademark opposition to block “Apple Assist Center”

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The Japan Patent Office dismissed a trademark opposition claimed by the U.S. tech giant, Apple Inc. against trademark registration no. 59923763 for word mark “Apple Assist Center” in class 35, 36, and 43 by finding less likelihood of confusion.
[Opposition case no. 2017-900155]

Apple Assist Center

Opposed mark “Apple Assist Center” was filed by a Japanese business entity on July 22, 2016 by designating the services of “secretary services; telephone answering and message handling services; reception services for visitors” in class 35, “rental of business and commercial premises; management of buildings; providing information in the field of buildings for business and commercial use” in class 36, “rental of conference room; rental of exhibition room” in class 43.
As a result of substantive examination, the JPO admitted registration on February 17, 2017 and published for registration on March 21, 2017.

Apple’s Oppositioon

To oppose against registration, Apple Inc. filed an opposition on May 17, 2017.

In the opposition brief, Apple Inc. asserted the opposed mark shall be cancelled in violation of Article 4(1)(xv) of the Japan Trademark Law.

Article 4(1)(xv) of the Trademark Law 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. Theoretically, Article 4(1)(xv) is applicable to the case where a mark in question designates remotely associated or dissimilar goods or services with that of a well-known brand business.

Board Decision

The Opposition Board admitted a remarkable degree of reputation and population of opponent trademark “Apple” in the field of computers, smart phones, audio devices etc., however, gave a negative view in relation to goods and services remotely associated with Apple products by taking account of arguments and evidences Apple Inc. provided during the trial.

Besides, in the assessment of mark similarity, the Board found “Apple Assist Center” and “Apple” are dissimilar since they are sufficiently distinguishable in visual, phonetic, and conceptual point of view. The Board considered that the word of “Assist Center” does not immediately give rise to a descriptive meaning in relation to the designated service of class 35, 36, and 43. Given that “Assist Center” is deemed a coined word, it is not permissible to separate a element of “Apple” from the opposed mark.

Based on the foregoing, the Board decided that, unless Apple Inc. demonstrates possibility to embark on business related to the designated services and overlapping of consumers between Apple products and the opposed mark, relevant consumers are unlikely to confuse or misconceive a source of the opposed mark with Apple Inc. or any entity systematically or economically connected with the opponent.

It surprises me that the Board considered “Assist Center” does not lack distinctiveness in relation to business support services.

 

Adidas successful in invalidating three bones device mark

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In a trademark invalidation appeal, case no. 2017-890017, the Trial Board of Japan Patent Office (JPO) decided in favor of Adidas AG to retroactively null trademark registration no. 5799460 for three bones device mark (see below) due to a likelihood of confusion with Adidas’ famous 3-stripe design.

Disputed mark

Disputed mark was filed on May 1, 2015 by a Japanese business entity, designating the goods of clothing for pets in class 18 and registered on October 16, 2015.

Subsequently after the registration, Adidas AG filed an opposition against disputed mark on November 26, 2015. Since it ended in vain, Adidas AG challenged inadequacy of the decision and registration by means of invalidation trial.

Invalidation trial

During the invalidation trial, Adidas AG argued a likelihood of confusion between Adidas’ famous 3-stripe design and disputed mark because of a high degree of popularity and reputation of 3-stripe design as a source indicator of Adidas sportswear and sports shoes, visual resemblance between the marks, and close relatedness of its consumers and commodity goods.

Board decision

The Board found that:

  1. Adidas’ 3-stripe design has acquired a substantial degree of reputation well before the filing date of disputed mark as a result of continuous marketing activities in Japan since 1971.
  2. Three bones device mark visually resembles with 3-stripe design by taking account of the same graphical representations allocating three trapezoids in different length in parallel to be seen it constituting a triangle in overall appearance.
  3. It becomes apparent that distributors of sports gears, apparels, bags, and shoes also deal with clothing for pets nowadays.

Based on the above findings, the Board concluded that consumers who are accustomed to the circumstance, are likely to confuse clothing for pets using disputed mark with Adidas’ famous 3-stripe design or misconceive a source from any entity systematically or economically connected with Adidas AG. Thus, disputed mark shall be invalidated in violation of Article 4(1)(xv) of the Trademark Law.

It should be noteworthy that a decision to dismiss opposition is not appealable under the Japan Trademark Law. If opposed party wants to argue the decision, there is no way other than invalidation trial.

JPO refused to register word mark “ROMEO GIGLI” due to lack of consent from Italian fashion designer

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In a recent decision, the Appeal Board of Japan Patent Office (JPO) refused to register trademark application no. 2015- 100245 for a red-colored word mark “ROMEO GIGLI” in gothic script (see below) designating goods of Class 24 and 25 on the grounds that applicant failed to obtain a consent from Italian fashion designer, Romeo Gigli, based on Article 4(1)(viii) of the Trademark Law.[Case no. 2017-3558]

Disputed mark was filed on October 16, 2015 in the name of ECCENTRIC SRL, an Italian legal entity, by designating following goods in Class 24 and 25.

Class 24:

“woven fabrics; elastic woven material; bed and table linen; towels of textile; bed blankets; table cloths of textile; bed covers; bed sheets; curtains of textile or plastic; table napkins of textile; quilts”

Class 25:

“clothing; T-shirts; shirts; jumpers; trousers; pants; jackets; skirts; jeans; neckties; overcoats; coats; belts; gloves; mufflers; sweat suits; underwear; swimsuits; headgear; hats; caps; footwear; special footwear for sports”

 

Article 4(1)(viii)

On December 9, 2016, JPO examiner refused the mark based on Article 4(1)(viii) of the Trademark Law.

Article 4(1)(viii) is a provision to prohibit registration of trademarks which contain the representation or name of any person, famous pseudonym, professional name or pen name of another person, or famous abbreviation thereof. Notwithstanding the provision, the article is not applicable where the applicant of disputed mark produces the written consent of the person.

The Supreme Court of Japan has ruled the article shall be interpreted to protect personal rights of a living individual. In line with the Supreme Court ruling, Trademark Examination Manuals (TEM) set forth that the article is applicable not only to natural persons (including foreigners) and corporations but also associations without capacity. Familiar name of foreigners falls under the category of “abbreviation” if its full name contains middle name(s) unknown to Japanese consumer.

Click here to access TEM on the JPO website.

Finding that disputed mark just consists of an individual name of famous fashion designer, Romeo Gigli, the examiner raised an objection based on Article 4(1)(viii) unless ECCENTRIC SRL obtains a consent from the designer.

 

APPEAL

The applicant filed a notice of appeal with the Appeal Board, a body within JPO responsible for hearing and deciding certain kinds of cases including appeals from decisions by JPO Examiners denying registration of marks, on March 9, 2017 and contended against the refusal decision by examiner.

During the appeal trial, ECCENTRIC SRL argued inadequacy of the decision by demonstrating following facts.

  • ECCENTRIC SRL is a legitimate successor of trademark rights owned by Romeo Gigli as a consequence of mandatory handover resulting from bankruptcy of company managed by Romeo Gigli irrespective of his intention. Under the circumstance, it is almost impossible to obtain a written consent from him.
  • In the meantime, ECCENTRIC SRL has already obtained trademark registrations for the word mark “ROMEO GIGLI” in several jurisdictions.
  • Besides, ECCENTRIC SRL is a current registrant of Japanese TM registration no. 2061302 for identical wordmark in Class 4,18,21 and 26.
  • There has been no single complaint from consumers, traders or Romeo Gigli in person.

ECCENTRIC SRL alleged that the above facts shall amount to having obtained an implicit consent from Romeo Gigli in fact. Thus, disputed mark shall be allowed for registration even without a written consent in the context of purpose of the article.

The Appeal Board dismissed the appeal, however, and sustained the examiner’s decision by saying that trademark registrations in foreign countries shall not be a decisive factor in determining registrability of disputed mark under Article 4(1)(viii) in Japan. Absence of complaint from Romeo Gigli shall not be construed that he has consented to register his name in the territory of Japan explicitly or implicitly.

Unless applicant produces evidence regarding a consent from Romeo Gigli otherwise, disputed mark shall be refused to register based on Article 4(1)(viii) of the Trademark Law.

 

According to the JPO database, ECCENTRIC SRL filed an appeal against the Board decision to the IP High Court in November 2017. The Court decision will be rendered within a couple of months.

 

 

IP High Court admitted high reputation of Red Bull mark in relation to automobiles as well

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In a lawsuit disputing similarity of red-colored bull device marks, the IP High Court nullified the JPO decision in favor of Red Bull GmbH known for Red Bull energy drink, and ruled to invalidate TM registration no. 5664585 (Disputed Mark) on the ground that it is likely to cause confusion with the Red Bull Mark.
[Case no. Heisei29(Gyo-ke)10080,  Judgement date: December 25, 2017]

Disputed Mark, filed on October 4, 2013 by designating various goods for automobiles in class 1,3,4 and 5, e.g. detergent additives to gasoline, was registered on April 18, 2014 by a Korean distributor dealing with goods related to automobiles. Prior to the appeal to the IP High Court, Red Bull was unsuccessful to attack Disputed Mark in an opposition and invalidation trial.

The Court concluded that relevant traders and consumers at the sight of designated goods using Disputed Mark would likely connect it with famous Red Bull Mark, and consequently misbelieve the source of the goods from Red Bull, an entity economically related to Red Bull, or a paerner authorized to use Red Bull Mark in business based on the following findings.

Trademark similarity

Both marks are visually confusing irrespective of differences in detail since the marks share basic configuration of depicting a left-pointing horned red bull in a vibrant motion over yellow and warm color of background. Besides, Disputed Mark gives rise to a meaning of a red-colored jumping bull and Red Bull Mark does a meaning of a red-colored rushing bull. If so, it is obvious that both marks are almost identical or similar in concept. Therefore, Disputed Mark is deemed substantially similar to Red Bull Mark.

High reputation of Red Bull Mark

Red Bull Mark, as a source indicator of plaintiff, becomes well-known not only in the field of energy drinks but also among traders and consumers of goods related to automobiles. Admittedly, it has acquired a high degree of reputation.

Consumers

Consumes of automobile goods are not limited to car enthusiast. They can be purchased by the general consuming public. Plaintiff has distributed various types of goods relating to automobiles and car race with Red Bull Mark for promotional purpose under the scheme of trademark license. It is undeniable that most of the public with an ordinary care are neither precisely familiar with trademark and brand in detail, nor always mindful to manufacturer and source indicators in the selection of goods.

It is noteworthy that the Court admitted high reputation of Red Bull Mark in the field of automobiles as well even if it evidently represents one of sponsors for car racing team

Masaki MIKAMI, Attorney at IP Law – Founder of MARKS IP LAW FIRM