カテゴリー: 2019

JPO denied registering GRAND CANYON as trademark

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In a recent appeal decision, the Japan Patent Office (JPO) upheld examiner’s refusal and decided to reject trademark “GRAND CANYON” in connection with clothing and shoes of class 25 due to lack of distinctiveness. [Appeal case no. 2017-16166]

 

GRAND CANYON

UNITIKA LTD., a Japanese textile company, applied for registration of word mark “GRAND CANYON” in relation to clothing, shoes and other goods of class 25 on September 26, 2016.

JPO examiner totally refused the application due to lack of distinctiveness based on Article 3(1)(iii) of the Trademark Law by stating that THE GRAND CANYON, a steep-sided canyon carved by the Colorado River in Arizona, one of America’s most famous and awe-inspiring natural attractions, recognized by UNESCO as a World Heritage Site, has been known for a famous tourist spot. Since relevant traders and consumers in Japan are familiar with circumstances that variety of souvenirs and gifts are on sale at tourist spot, presumably consumers will consider the applied mark just as a geographical indication in connection with the designated goods, not a source indicator.

 

Article 3(1)(iii)

Article 3(1) of the Trademark Law is a provision to prohibit descriptive marks from registering.

Section (iii) of the article aims to remove any mark merely or directly suggesting quality of goods and services.

“Article 3(1)　Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered, unless the trademark:

(iii)　consists solely of a mark indicating, in a common manner, in the case of goods, 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, or, in the case of services, the location of provision, quality, articles to be used in such provision, efficacy, intended purpose, quantity, modes, price or method or time of provision;”

 

To dispute the refusal, UNITIKA filed an appeal on May 12, 2017.

UNITIKA argued “GRAND CANYON” shall be registrable in connection with clothing by citing several trademark registrations of the name granted by the JPO. In fact, UNITIKA is an owner of trademark registration for the same mark on goods of class 24 and 25 since 2005.

 

Appeal Board’s decision

The Appeal Board, however, upheld the examiner’s decision on the ground and dismissed UNITIKA’s allegation by stating that relevant consumers and traders at the sight of applied mark depicted on clothing shall conceive of a famous World Heritage Site in US.

Existing trademark registrations for the mark “GRAND CANYON” will not affect the decision since distinctiveness of trademark is variable as time goes by – with the lapse of time.

 

Criteria for Trademark Examination Guideline

Trademark Examination Guideline (TEG) pertinent to Article 3(1)(iii) provides that where a trademark is composed of a geographical name in foreign country or sightseeing area, the mark is deemed as “the place of origin” of goods or “the place of their sale”, provided that consumers or traders generally recognize that the designated goods will be produced or sold at the place indicated by the geographical name.

Trademark Examination Manual, 413.103.01 sets forth criteria to examine trademarks related to foreign geographical name.

In the cases of (a) the name of a capital, (b) the name of a state, (c) the name of a prefecture, (d) the name of a state capital, (e) the name of a province, (f) the name of the capital of a province, (g) the name of a county, (h) the name of the capital of a prefecture, (i) a former country name, (j) an old regional name, (k) the name of a district, (l) the name of a city, or special district, (m) the name of a busy downtown street, and (n) the name of a sightseeing area, even though these names may not be directly described in a dictionary or other documents/material as the place of origin, the place of sales (location of transaction) of the goods, or the location of provision of services (location of transaction), if a factor exists that establishes a connection between the goods and the name as the place of sales (location of transaction), or the location of the provision of services (location of transaction), in principle, the trademark will be refused on the grounds that it indicates the location where the goods are sold (location of transaction) or the location of provision of services (location of transaction)

Who associates “Pen-Pineapple-Apple-pen” with Apple Inc.?

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The Japan Patent Office (JPO) dismissed an opposition filed by Apple Incorporated, a US corporation, against TM Registration no. 6031236 for word mark “Pen Pineapple Apple Pen” written in alphabets and Katakana characters, and allowed the mark to remain valid. [case no. 2018-900165]

 

Opposed mark : Pen-Pineapple-Apple-Pen

Avex Inc., a Japanese company, filed the mark to the JPO on February 24, 2017 over various kinds of goods/services in class 3,9,14,16,18,20,21,24,25,28,30,32,41,43 (14 classes in total). The JPO admitted registration on March 30, 2018.

 

Opposition by Apple Inc.

Apple Inc., an US multinational IT company, filed an opposition based on Article 4(1)(xi), (xv) and (xix) of the Trademark Law by asserting opposed mark is deemed similar to opponent famous trademark “Apple”, “Apple Pay” and “Apple Pencil”, likely to cause confusion with opponent’s business when used on designated goods and services. Besides, opposed mark was seemingly adopted with an intention to freeride good-will bestowed on opponent famous trademarks.

Article 4(1)(xi) prohibits from registering a junior mark identical or similar to senior registered mark on identical or similar goods/service.
Article 4(1)(xv) prohibits any junior mark likely to cause confusion with others.
Article 4(1)(xix)  prohibits a junior mark identical or similar to others’ famous mark with a malicious intention.
The provisions are available as cause of claims underlying  an opposition when registered in error.

 

JPO decision

The Opposition Board of JPO held opposed mark shall NOT be revocable in accordance with the articles by stating that:

“Opposed mark, solely consisting of literal elements with same size and same font, gives rise to a pronunciation of ‘pen pineapple apple pen’ as a whole. Regardless of slight verbosity, relevant consumers will surely connect the mark with viral hit song “Pen-Pineapple-Apple-Pen or PPAP” by PIKOTARO, internet sensation from Japan, which has become known among the general public remarkably. If so, opposed mark merely gives rise to a meaning of PIKOTARO’s song.  Therefore, opposed mark shall be deemed dissimilar to opponent trademarks from visual, phonetic and conceptual points of view.

The Board admits a high degree of reputation or popularity of “APPLE” as a source indicator of opponent’s business in connection with PC, its accessories, software and smartphones, however, provided that both marks are distinctively dissimilar and ‘APPLE’ is a dictionary word commonly known among relevant public to mean the round, red or yellow, edible fruit of a small tree, the Board considers it is unlikely that relevant consumers and traders would confuse or associate opposed mark with opponent’s mark “APPLE”.

Besides, opponent alleged that PIKOTARO might compose the song inspired by “APPLE PENCIL” and ludicrously promoted with an intention of free-riding opponent’s goodwill. However, the Board was unable to find out any fact to assume malicious intention of the free-riding by applicant from the totality of the circumstances.”

 

IP High Court ruling: “BULK AAA” confusingly similar to “BULK HOMME”

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On March 7, 2019, the Japan IP High Court revoked a decision by the Japan Patent Office (JPO) to invalidation trial over a dispute of similarity between trademark “BULK AAA” and “BULK HOMME”, and ruled “BULLK AAA” shall be retroactively invalid. [Judicial case no. Heisei30(Gyo-ke)10141]

 

BULK HOMME

The case was brought into the IP High Court after the JPO decided to dismiss an invalidation trial (case no. 2017-890079) claimed by BULK HOMME Co., Ltd. (Plaintiff), an owner of senior trademark registration no. 5738351 for a  mark consisting of “BULK HOMME” and other literal elements (see below) over goods of cosmetics, skin care products for men in class 3.

 

INVALIDATION TRIAL AGAINST “BULK AAA”

In the invalidation trial, plaintiff asserted trademark registration no. 5931607 for word mark “BULK AAA” in standard character shall be invalid in violation of Article 4(1)(xi) of the Trademark Law since the mark is confusingly similar to “BULK HOMME” and designates cosmetics (class 3) which is undoubtedly identical with or similar to the goods designated under its own senior registration.

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.

Inter alia, plaintiff vehemently argued the term “AAA” in disputed mark lacks distinctiveness as a source indicator in relation to cosmetics since “AAA” is a term commonly used to represent the highest possible rating assigned to the bonds of an issuer by credit rating agencies. Given the circumstance, relevant consumes of cosmetics are likely to consider the term in disputed mark a qualitative indication of the goods even if the term has not been used as such  in connection with cosmetics in fact.

However, the Trial Board of JPO set aside the allegation by stating that disputed mark “BULK AAA” shall be assessed in its entirety. It is groundless to compare a word portion “BULK” of disputed mark with “BULK HOMME” given the Board could not identify any facts to assume relevant consumers of cosmetics conceive the term “AAA” of disputed mark as a qualitative indication. Both marks are sufficiently distinguishable from visual, phonetic, and conceptual points of view and dissimilar as a whole.

To contend against the decision, plaintiff filed an appeal to the IP High Court.

 

IP HIGH COURT DECISION

The IP High Court, to the contrary, sided with plaintiff and completely negated fact-findings made by the Trial Board of JPO. The Court held the term “AAA” is recognized as a qualitative indication even when used on cosmetics and thus the word portion of “BULK” is likely to play a dominant role of source indicator. If so, it is anything but inappropriate to pick up the word “BULK” from disputed mark and compare it with other mark in the assessment of mark similarity.

Besides, “HOMME” is a French word meaning “for men”. From the produced evidences, it seems apparent the word has been used in relation to men’s cosmetics, and consumers are accustomed to it so that they can recognize the meaning. Given the term is depicted in a thinner font than “BULK” in the citation, “BULK” gives dominant impression as a source indicator in the mind of consumers. Accordingly, it is reasonable to pick up the word “BULK” from the citation and compare it with other mark in the assessment of mark similarity.

The Court found that the Trial Board materially erred in the fact-finding and assessing similarity of mark. As long as dominant portion “BULK” of both marks and designated goods are identical, disputed mark shall be invalid based on Article 4(1)(xi).

Trademark Opposition: “DISCOVERY” vs. “DISCOVERER”

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In a recent administrative decision to trademark opposition filed by Jaguar Land Rover Limited who alleged trademark registration no. 6011666 for word mark “DISCOVERER” designating goods of “batteries and cells, telecommunication machines and apparatus, recorded video discs, and other goods” belonging to class 9 owned by a Japanese business entity is confusingly similar to “DISCOVERY” famous for four-wheel-drive vehicles produced by the opponent, the Opposition Board of Japan Patent Office (JPO) dismissed the opposition due to an unlikelihood of confusion.

[Opposition case no. 2018-900086, Gazette issue date: January 25, 2019]

 

Opposed mark – DISCOVERER

Opposed mark (trademark registration no. 6100666) just consists of a term “DISCOVERER” in a plain roman type and its transliteration in a Japanese katakana character.

The mark was filed on April 24, 2017 by designating “batteries and cells, telecommunication machines and apparatus, recorded video discs, and other goods” belonging to class 9.

JPO, going through substantive examination, admitted registration and published for opposition on February 13, 2018.

 

Opposition by Land Rover “DISCOVERY”

On April 6, 2018, before the lapse of a two-months opposition period, Jaguar Land Rover Limited filed an opposition, stating that relevant consumers are likely to confuse or misconceive opposed mark with opponent or any business entity systematically or economically connected with Land Rover due to high popularity of “DISCOVERY” for Land Rover SUV and similarity between “DISCOVERY” and “DISCOVERER”.

 

Article 4(1)(xv)

Jaguar Land Rover sought to retroactively cancel opposed mark in relation to all designated goods in class 9 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 negated a certain degree of popularity and reputation of opponent mark “DISCOVERY”, stating that produced materials are insufficient and non-objective to demonstrate famousness of the cited mark.

Besides, the Board found that both marks are sufficiently distinguishable from visual, phonetic and conceptual points of view and deemed dissimilar.

Even if car makers are looking at ways to speed up development of self-driving and recent cars consist of batteries and telecommunication apparatus in fact, given non-originality of opponent “DISCOVERY” mark and remoteness between opposed goods and vehicles, the Board held that relevant consumers of opposed goods are unlikely to confuse or associate “DISCOVERER” with opponent or any business entity systematically or economically connected with Jaguar Land Rover Limited.

Thus, opposed mark shall not be revocable to Article 4(1)(xv) of the Trademark Law and dismissed the opposition entirely.

Is Marie-Antoinette a name of French Queen consort or a trademark?

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The Japan Patent Office (JPO) ordered to dismiss an invalidation trial against IR no. 1238820 for word mark “Marie-Antoinette” by finding the mark shall be irrevocable under Article 4(1)(vii) of the Trademark Law. [case no. 2017-68002]

Tempting Brands Netherlands B.V. (NL), filed an international registration for the mark over goods of “Bleaching preparations [deodorants] for cosmetic purposes; perfumery, essential oils, cosmetics, hair lotions; dentifrices; cosmetic soaps, soaps for personal use; douching preparations for personal sanitary or deodorant purposes [toiletries]” in class 3 and others in class 9, 18 and 25 on Dec. 5, 2014 claiming priority based on Benelux TM application dated Aug. 22, 2014, and designating Japan which granted registration of the mark on Feb. 10, 2017.

To challenge, an invalidation trail was filed against the mark. Claimant, a Japanese business entity asserted the mark shall be invalidated in violation of Article 4(1)(vii) of the Trademark Law on the grounds that the mark “Marie-Antoinette” written in a plain letter represents the late ill-fated queen consort of King Louis XVI of France who has been highly well-known as a symbolic queen of beauty among relevant public not only in France but also Japan and other countries. If so, it is extremely harmful to prestige of “Marie Antoinette” and social affections on the historical figure to admit an exclusive right on the name to any unrelated entity. It may inevitably offend public order and morals

Article 4(1)(vii) of the Trademark Law prohibits any mark likely to cause damage to public order or morality from registration. Trademark Examination Guidelines provides  “Name of a well-known or famous historical personage likely to free-ride on public measures derivative from the personage and damage the public interests in face” as an example to apply the article.

The Invalidation Trial Board decided the mark shall not be subject to the article due to the following reason.

It is unquestionable that “Marie-Antoinette” represents a name of queen consort of King Louis XVI of France and becomes famous in France as well as Japan. In the meantime, the Board could not see a fact that the name has been made use of for revitalization of local communities or tourism industry. If so, it is quite unlikely to happen that the mark could offend public order and morals when used on goods of class 3. Besides, the Board has no reason to believe registration of the mark would cause disrespect for France and French people as well as international fidelity.  Besides, there finds no circumstances to conclude the mark is proscribed to use by other legislation and applicant apparently filed the mark with a malice or fraudulent intent to be blamed.  Based on the foregoing, the international registration shall be deemed valid since the Board was unable to find out any relevant facts to apply the article on the case.

It is not freely allowed to use and register a name of historical personage as trademark. JPO rejected “Darwin” and “Monet” based on Article 4(1)(vii), but allowed registration of “Elvis”.

Japan: trademark registration of era names will be banned

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The Japan Patent Office (JPO) revised its screening criteria to prevent all era names from being registered as trademarks.

The amendment came as the country prepares for the change in May of the current era name following the abdication of Emperor Akihito on April 30, 2019. Japan will start using the new name from May 1 when Crown Prince Naruhito ascends to the throne. The government announced to unveil the new era name on April 1, a month before the Imperial succession, to mitigate the impact of the change on people’s lives.

There was concern that the JPO might be flooded with requests to register the new era name for trademarks during the last month of the Heisei Era, which commenced on Jan. 8, 1989.


According to the JPO, more than 100 trademark registration applications for merchandise and company names using “Heisei” were filed in January of that year.

Under previous criteria, there was room for era names, except Heisei, to be registered as trademarks.
The revised guidelines to ensure trademarks do not feature any era name now clearly state that all era names, in principle, cannot be used for trademarks.

However, even after the revision, familiar product and corporate names already using old era names, such as Meiji Holdings Co. and Taisho Pharmaceutical Co., will continue to be treated as exceptions.

Trademark race for the 2020 Tokyo Olympic Games – Episode 2

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The Appeal Board of Japan Patent Office (JPO) refused Trademark Application No. 2017-11978 for a device mark consisting of five interlaced heart shape logos for goods of clothing and footwear in class 25 because of similarity to Olympic rings based on Article 4(1)(vi) of the Japan Trademark Law.

Heart shape device mark

Mark in question ( see below) was filed on February 6, 2017 by designating goods of clothing, footwear, masquerade costumes, clothes for sports in class 25.

Article 4(1)(vi) of the Trademark Law

The JPO examiner refused the mark by citing the Olympic Rings based on Article 4(1)(vi) of the Trademark Law.
Article 4(1)(vi) is a provision to refuse any mark which is identical with, or similar to, a famous mark indicating the State, a local government, an agency thereof, a non-profit organization undertaking a business for public interest, or a non-profit enterprise undertaking a business for public interest.

JPO trademark examination guidelines clearly refer to the Olympic Symbol as an example of the mark to indicate a non-profit business for public interest.

Olympic Rings

The Olympic symbol, widely known throughout the world as the Olympic Rings, is the visual ambassador of Olympic for billions of people.

The Olympic symbol is defined in Olympic Charter, Rule 8 as

“The Olympic symbol consists of five interlaced rings of equal dimensions (the Olympic rings), used alone, in one or in five different colours. When used in its five-colour version, these colours shall be, from left to right, blue, yellow, black, green and red. The rings are interlaced from left to right; the blue, black and red rings are situated at the top, the yellow and green rings at the bottom.”

The Olympic Rings, publicly presented for the first time in 1913, remain a global representation of the Olympic movement and its activity.

 

Appeal Board decision

In an appeal, the Board sustained examiner’s refusal and decided the mark in question shall be refused on the same ground.
The Board stated that mark in question has same configuration with the Olympic Rings, inter alia, depicting horizontally three heart shape logos on an upper row and two on a lower row, and thus consumers at the sight of the mark are likely to conceive or connect it with a well-known Olympic symbol from appearance.
[Appeal case no. 2018-3425, Gazette issued date : December 28, 2018]

KANGOL: Assessing the Similarity Between Hairbands and Head wear

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In a trademark opposition trial to seek cancellation of TM registration no. 6028674, the Opposition Board of Japan Patent Office (JPO) dismissed the opposition claimed by Kangol Limited, an English clothing company famous for its head wear, because of dissimilarity between hairbands and head wear.
[Opposition case no. 2018-900149, Gazette issue date: December 28, 2018]

Opposed mark

Opposed mark, consisting of the word “KANGOL” and a kangaroo device (see below), was filed in the name of Crown Creative Co., Ltd., a Japanese business entity on June 23, 2017, and admitted registration on March 16, 2018 over the goods of hairbands and others in class 25.

It is doubtless opposed mark exactly looks the same with the KANGOL trademark owned by Kangol Limited.

 

Opposition by Kangol

On June 11, 2018, Kangol Limited filed an opposition based on its-own senior TM registration no. 5036704 for the Kangol mark (see below) over the goods of head wear, helmets, night caps and hoods in class 25.

 

In the opposition brief, Kangol asserted opposed mark shall be cancelled in violation of Article 4(1)(xi) of the Japan Trademark Law.
Article 4(1)(xi) is a provision to refrain from registering a junior mark which is deemed identical with, or similar to, any senior registered mark.

Since the marks of the respective parties are identical, Kangol focused on arguing the designated goods, inter alia hairbands, of opposed mark is similar to hear wear.

 

Similarity of goods

Trademark Examination Guidelines (TEG) [Part III Chapter 10: Article 4(1)(xi)] set forth criteria to determine similarity of goods.
In principle, similarity of goods is evaluated whether or not the relevant goods are likely to cause confusion as if they are goods manufactured and sold by the same business entity, when an identical or similar trademark is used for the designated goods of the trademark as applied and the cited trademark due to circumstances such that normally the goods are manufactured and sold by the same business entity.
To assess the similarity of goods, the following criteria are comprehensively taken into consideration.

(i) Whether both goods are produced by the same suppliers.
(ii) Whether both goods are distributed through the same sales channel.
(iii) Whether both goods are made from the same materials and achieve the same quality.
(iv) Whether both goods are for the same usage.
(v) Whether both goods are purchased by the same consumers.
(vi) Whether respective goods constitutes finished goods or a component of other goods.

 

Board decision

In the assessment of similarity between hairbands and head wear, the Board totally denied, based on the above criteria, Kangol’s allegations by stating that:

It is true that both goods are used for many purposes and can be made from various kinds of materials. Hairbands are used for cold protection or decoration just like with head wear. Some of hairbands and head wear use cloth or rubber as a material. However, suppliers, sales channel, consumers, usage and materials of both goods are substantially different in general. If so, relevant consumers and traders are unlikely to conceive both goods with the Kangol mark would come from the same source.

Accordingly, JPO decided opposed mark shall not be subject to Article 4(1)(xi) and valid as a status quo.

Serapian Loses Trademark Opposition against S device mark

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The Italian-based fashion house Stefano Serapian S.r.l., known for its briefcases, handbags and purses opposed the registration in Japan of the trademark S logo owned by the Japanese company, Kabushiki Kaisha Overseas.

 

Opposed mark

Overseas filed an application to register S logo (see below) designating, among others, bags, purses, pouches and leather goods in class 18 on April 27, 2017. Going through substantive examination at the Japan Patent Office (JPO), it was registered on October 20 of that year (TM Reg no. 5990450).

Serapian Opposition

A trademark opposition proceeding filed on January 15, 2018, Serapian contended that opposed mark is confusingly similar to its registered famous “S” device mark (see below) by citing its owned IR no. 1117130 and thus shall be cancelled in violation of Article 4(1)(xi) and (xv) of the Japan Trademark Law.

 

Article 4(1)(xi) is a provision to refrain 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 consumers.

Theoretically, Article 4(1)(xv) is applicable to the case where a mark in question is deemed dissimilar to well-known brand, but still likely to cause confusion because of a high degree of popularity and reputation of the brand.

 

The Ruling

The Opposition Board of JPO negated a certain degree of popularity and reputation of Serapian’s “S” device mark, stating that produced materials are insufficient and non-objective to demonstrate famousness of the cited mark.

Besides, the Board found that both marks are sufficiently distinguishable from appearance in view of overall configuration. From phonetic and conceptual points of view, it is apparent that respective mark would not be perceived as an alphabetical letter ‘S’, but a geometric figure device without any specific concept and pronunciation. If so, both marks would not give rise to similar appearance, sound and meaning at all.

Even if taking account of originality of “S” device mark, as long as it remains unclear whether Serapian “S” device mark has become popular among relevant consumers in Japan, the Board had no reason to admit a likelihood of confusion.

As a conclusion, the Board decided opposed mark is not subject to Article 4(1)(xi) and (xv) of the Trademark Law and dismissed the opposition accordingly.

[Opposition case no. 2018-900017, Gazette issue date December 28, 2018]