カテゴリー: 2020

Adidas defeated in 3-stripe trademark dispute

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The Japan Patent Office (JPO) held in an opposition filed by Adidas AG that trademark registration no. 6085087 for horizontal three-stripes (Opposed mark) shall remain as valid as ever and entirely dismissed Adidas’ claims based on its famous three stripes.
[Opposition case no. 2018-900382, Gazette issued on February 28, 2020]

ULTRA MUSIC FESTIVAL

Opposed mark (see below) was applied for registration on October 10, 2017 over clothing, headwear, footwear in class 25, advertisement and promotion of music festival, concert in class 35, arrangement and conducting of musical performances, music festival, concerts in class 41 by Ultra Enterprises Inc., a U.S. business entity organizing outdoor electronic music event “ULTRA MUSIC FESTIVAL (UML)”, and published for registration on October 23, 2018.

Apparently, opposed mark is used as a symbolic logo for Ultra Music Festival’s RESISTANCE set.

Opposition by Adidas

On December 21, 2018, Adidas AG filed an opposition and argued opposed mark is revocable under Article 4(1)(vii) and 4(1)(xv) of the Japan Trademark Law in relation to its famous three stripes (see below).

Article 4(1)(vii)

Article 4(1)(vii) prohibits any mark likely to offend public order and morals from registering.

Based on a remarkable degree of reputation and popularity to Adidas three stripes, opponent asserted, applicant must have been aware of Adidas three stripes 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 iconic three stripes.

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.

Adidas argued that, from appearance and concept, opposed mark evidently gives rise to a same impression with Adidas three stripes since each stripe of the mark is depicted in the same direction, width and shape, besides a space between stripe also has the same width with the stripe.

Average consumers with an ordinary care of goods/services in question who have been quite familiar with Adidas are likely to associate opposed mark with Adidas’ three-stripes. Inter alia, when opposed mark is used on apparels with a smaller configuration printed in one spot, so-called ‘one-point mark’, it must be difficult for relevant consumers to distinguish opposed mark with Adidas three-stripes because of its resemblance. Besides, goods/services in question are closely related to opponent business, namely sportswear, sports shoes, sports events. If so, it is highly anticipated that relevant consumers would confuse a source of opposed mark with opponent.

JPO Decision

The Opposition Board admitted a high degree of reputation and popularity to Adidas three stripes in relation to sport shoes, sportswear, sports gear at the time of initial filing and registration of opposed mark.

In the meantime, the Board found a low degree of originality of three stripes and similarity between the marks, from visual, phonetic, and conceptual points of view. The Board stated opposed mark can be perceived as ‘three-stripes’ deployed inside a vertically long rectangle. On the other hand, opponent’s marks consist of ‘three-stripes’ deployed inside a triangle or parallelogram. Even if Adidas three stripes have acquired remarkable reputation, because of a low degree of similarity and the originality, relevant consumers at the sight of opposed mark would not hesitate to consider a source of opposed mark unrelated to Adidas.
Thus, the Board held it is unlikely that relevant consumers confuse or associate opposed mark with Adidas.

The Board also negated opponent’s allegation of ‘one-point mark’ theory by stating that even if average consumers have tendency to pay less attention to details of a mark when used on apparels with smaller configuration, due to dissimilar impression caused by a different outline (vertically long rectangle, triangle, and parallelogram) of respective mark, opposed mark shall be undoubtedly perceived as a distinctive three-stripes unrelated to Adidas by relevant consumers with an ordinary care.

Besides, from the produced evidences, 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.

Based on the foregoing, the Board concluded opposed mark shall be irrevocable under Article 4(1)(vii) as well as (xv) and granted registration a status quo.

SWATCH Defeated in SWATCH vs iWATCH Trademark Dispute

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The Trial Board of Japan Patent Office (JPO) dismissed an invalidation petition by Swiss watch giant, Swatch against TM Reg. no. 5849925 for word mark “iWATCH” owned by U.S. tech giant, Apple Inc.
[Invalidation case no. 2017-890071, Gazette issue date: January 31,2020]

iWATCH

Disputed mark, consisting of a word “iWATCH” in plain block letters (see below), was applied for registration in the name of Apple Inc. on April 25, 2014 in respect of watches, clocks and other goods in class 14.

Immediately after registration on May 13, 2016, Swatch filed an opposition to challenge registrability of disputed mark based on Article 3(1)(iii), 3(1)(vi), 4(1)(xi), 4(1)(xv), 4(1)(xvi) of the Japan Trademark Law, but in vain. [Opposition case no. 2016-900234]

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, materials, efficacy, intended purpose, quantity, shape (including shape of packages), price, the method or time of production or use.

Article 3(1)(vi) is a comprehensive provision to prohibit any mark lacking inherent distinctiveness from being registered.

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 users’ benefits.

Article 4(1)(xvi) is a provision to prohibit registration of any mark likely to mislead quality of goods or services.

Invalidation Trial

Japan Trademark Law provides a provision to retroactively invalidate trademark registration for specific grounds under Article 46 (1).

In an effort to argue against the opposition decision, Swatch filed a petition for invalidation against disputed mark on October 23, 2017. Swatch argued disputed mark “iWATCH” shall be invalid because of following reasons:

  1. Given disputed mark consists of an alphabet letter “i” and a generic term in relation to a designated goods ‘watch’, the mark can be merely perceived to indicate a value, code, type, mode or standard of ‘watch’. If so, disputed mark shall be lack of distinctiveness and revocable under Article 3(1)(vi) in relation to the goods.
  2. Likewise, relevant consumers would misconceive quality of goods when disputed mark is used on goods other than ‘watch’ in class 14, e.g. jewelry, key holders, jewelry boxes, accessories. If so, disputed mark shall be revocable under Article 4(1)(xvi) in relation to goods other than ‘watch’.
  3. Disputed mark “iWATCH” resembles “SWATCH” from visual and phonetic points of view. It is unquestionable SWATCH has become remarkably famous for watches and fashion items of Swatch Group. If so, a likelihood of confusion will arise between “iWATCH” and “SWATCH” when disputed mark is used on goods in class 14. Thus, disputed mark is revocable under Article 4(1)(xi).

Board Decision

In the decision, the Board sided with Apple Inc. and found that:

  • The Board considers the term “iWATCH” is a coined word in its entirety which does not give rise to any specific meaning at all. Therefore, it is unlikely that relevant consumers conceive disputed mark just as a qualitative indication of goods in question.
  • The Board admits “SWATCH” has been acquired a high degree of reputation and popularity among relevant consumers and traders as famous watch of Swatch Group. In the meantime, the term appears less unique and creative since it is a dictionary word meaning ‘a sample piece (as of fabric) or a collection of samples’.
  • Difference on initial letter of both marks shall not be negligible on the case. The Board has no good reason to believe both marks are deemed similar from visual, phonetic and conceptual points of view.
  • If so, it is unlikely to happen that relevant consumers with an ordinary care would associate or misconceive disputed mark with Swatch or any entity systematically or economically connected with claimant even when used on ‘watch’.

Based on the foregoing, the Board concluded “iWATCH” shall be irrevocable in relation to “SWATCH” and dismissed Swatch’s invalidation petition wholly.

KUMAMON triumphs over bear mascot trademark battle

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The Japan Patent Office (JPO) sided with Kumamon and declared invalidation of trademark registration no. 5997141 for a bear-like design mark due to a likelihood of confusion with Kumamon.
[Invalidation case no. 2019-890004, Gazette issue date: February 28, 2020]

KUMAMON

Have you ever heard of “Kumamon”?

Nowadays, we are accustomed to see there are many organizations that create and use mascots to further their brands. Kumamon is a cuddly character with its pitch-black fur, red cheeks and white eyes designed as the official mascot (see below) of the Kumamoto Prefecture, a small prefecture in western Japan.

Kumamon made its debut in 2011 as part of a tourism promotion campaign for the Kyushu high-speed railway line. At the time a wave of local municipalities and companies sought to use ‘yuru-kyara’, or ‘relaxing characters’, to promote local products and attractions. Kumamon was hired as a part-time civil servant at Kumamoto before being elevated to sales manager. Such topics generated headlines and helped push Kumamon’s popularity beyond Kumamoto.

As an iconic symbol of ‘relaxing characters’, Kumamon has become a social and cultural phenomenon nationwide. Sales of goods using the Kumamon mascot topped 150 billion yen ($1.4 billion) in 2018.

To protect and promote the mascot, the Kumamoto Prefecture has registered its figurative image reproduced in 2D for various classed of goods and services in Japan as well as neighboring countries.

Disputed Mark

On March 21, 2017, Unique Design Company Limited (Belize) , sought to register the mark consisting of a bear-like design and three Chinese characters “熊本熊” which mean Kumamoto’s bear (see below) to be used on goods in class 11. The JPO granted protection of opposed mark on October 27, 2017.

Invalidation Trial

To challenge the validity of disputed mark, on January 25, 2019, the Kumamoto Prefecture filed an invalidation action to the JPO based on Article 4(1)(vi), (vii), (xi), (xv) and (xix) of the Japan Trademark Law. Kumamoto Prefecture argued that the figurative element of disputed mark closely resembles to the Kumamon character well-known for the official mascot of the Kumamoto Prefecture from appearance. Besides, the literal element of disputed mark gives rise to a similar meaning related to the Kumamoto Prefecture and Kumamon. If so, disputed mark as a whole shall be invalid due to a likelihood of confusion with Kumamon.

JPO Decision

The Invalidation Board of JPO found that:

  1. Unquestionably, Kumamon has acquired a remarkable degree of reputation and popularity nationwide as the official mascot of the Kumamoto Prefecture well before the filing date of disputed mark through continuous activities, promotions, and actual use on various goods since 2011. In addition, it becomes public among relevant consumers that the literal element of disputed mark “熊本熊” gets to be known as a Chinese name of Kumamon in China and neighboring countries.
  2. Since Kumamon has distinctive features visually different from wild bear, the mascot shall be deemed unique, creative, and impressive in itself.
  3. From appearance the bear-like design of disputed mark is confusingly similar to Kumamon. It gives rise to a similar meaning to Kumamon, the mascot originated from bear in the Kumamoto Prefecture. Likewise, the literal element of disputed mark gives rise to the same meaning. If so, both marks are considered highly similar.
  4. Due to free-use policy for brand promotion to domestic merchants (Kumamoto lets domestic companies use the character for free, but charges a license fee of a few percent on product sales by foreign companies), Kumamon mascot has been commercially used on wide range of goods over 10,000 items. 7-year cumulative sales exceed 510 billion JP-yen. If so, disputed goods in class 11, e.g. oil stoves, heaters, pocket warmers, electric foot warmers, shall be closely associated with the Kumamon goods in channels and consumers.

Based on the above findings, the Board concluded that relevant consumers and traders are likely to confuse disputed mark with Kumamon or misconceive a source from any entity systematically or economically connected with the Kumamoto Prefecture. Thus, disputed mark shall be invalidated in violation of Article 4(1)(xv) of the Trademark Law.

First ruling by IP High Court on New Type of Trademark in Japan

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On February 14 2020, the Japan IP High Court ruled to uphold the Japan Patent Office (JPO) decision and rejected TM application no. 2016-009831 for a 3D position mark consisting of three virtual images of oil stove flame due to a lack of inherent and acquired distinctiveness.
[Case no. Reiwa1(Gyo-ke)10125]

TOYOTOMI Oil Stove “Rainbow”

TOYOTOMI CO., LTD., a Japanese company, the world’s first manufacturer of kerosene-fired portable cooking stove in 1952, has allegedly produced their convection type lantern-like design oil stoves in the name of “Rainbow” since 1980.

By means of a heat-resistant glass coated on the inner surface of vertical cylindrical heat chamber of the Rainbow stoves, virtual images of orange flame appear floatingly above actual flame when stoves are in use (see below).

3D Position mark

TOYOTOMI sought for registration for its virtual images of flame in connection with convection type oil stoves in class 11 as a 3D Position mark (see below) on January 29, 2016.

In a description of the mark, applicant specified:

“applied mark is a position mark consisting of 3D virtual image of three flame rings appeared floatingly above the flame burning on stove at the inside of vertical cylindrical heat chamber. Devices colored in blue and red would not constitute an element of applied mark.“

In Japan, by enactment of the New Trademark Law in 2014, new type of mark, namely, color, sound, position, motion, hologram, was allowed for trademark registration since April 2015.

According to the JPO database, more than 480 position marks were applied for registration under the New Trademark Law and 78 position marks are successfully registered as of now (Feb 29, 2020).

JPO decision

On March 2, 2018, the JPO examiner refused applied mark under Article 3(1)(iii) of the Trademark Law based on the fact that mechanism of 3D virtual shape of three flame rings was exclusively protected under Patent No. 1508319 which was expired on July 25, 2000. According to technical specifications of the patent, it is admitted that the 3D shape was purely achieved as a result of utilitarian functionality and aesthetic functionality. If so, the JPO finds it inappropriate to register the shape as a trademark because of unfair and detrimental effect to the public caused by prospective perpetual exclusivity to the shape itself that should have been a public domain under the Patent Law.

Besides, the JPO considered applied mark has not acquired distinctiveness (secondary meaning) as a source indicator of applicant’s products regardless of substantial use for more than three decades.

Subsequently, JPO dismissed an appeal on the same ground. [Appeal case no. 2018-007479, on August 30, 2019]

To contend, applicant filed a lawsuit to the IP High Court on September 26, 2019 and demanded cancellation of the decision.

IP High Court ruling

This lawsuit was the very first case for the IP High Court to take up new type of trademark at the open court.

The court held a shape of goods shall not be protectable as a source indicator if it just aims to achieve function of the goods from utilitarian and aesthetic viewpoints. If such shape per se is apparently destined to achieve functions of goods, it shall be refused for registration under Article 3(1)(iii) of the Trademark Law.

In this regard, the court found, applied mark simply consists of a shape destined to achieve utilitarian and aesthetic functions of goods in question, since it is considered virtual images of floating flame ring aim to increase heating effect of convection type oil stoves.

A mere fact that none of competitors have used identical or similar shape with applied mark on oil stoves would be irrelevant to assess distinctiveness of mark under Article 3(1)(iii).

Even if three flame rings do not physically constitute a shape of oil stoves, the court would see the JPO did not error in adapting Article 3(1)(iii) on the case.

As for acquired distinctiveness, the court had no reason to believe applied mark acquired secondary meaning through actual use based on the produced evidence. TOYOTOMI allegedly held top-rank market share (22.5%) of convection type oil stoves in Japan and annually delivered 29,000 stoves on average for the last seven years. However, the court pointed out the TOYOTOMI Rainbow stoves share just 2% when radiation type oil stoves are counted. Besides, provided that applied mark is not visible to consumers who visit shops to purchase oil stoves from appearance of the goods when turned off, it is questionable whether average consumers would conceive the 3D shape as a source indicator, rather than a functional shape of oil stoves.

Based on the foregoing, the IP High Court upheld JPO decision.

Trademark Battle – PUMA vs KUMA

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The Japan Patent Office (JPO) decided to invalidate trademark registration no. 5661816 for a stylized word “KUMA”, which means ‘bear’ in Japanese, due to similarity to, and a likelihood of confusion with a world-renowned sports brand, PUMA. [Invalidation case no. 2019-890021, Gazette issue date: January 31,2020]

KUMA mark

Disputed mark (see below),consisting of a stylized word “KUMA” with a partial island shape of Hokkaido, Japan’s most northerly main island, depicted on the inside of letter “U”, was filed on October 24, 2013 by a Japanese business entity having its principal place of business in Hokkaido over various goods in class 25 including sportswear and shoes.

It was found Applicant has used the KUMA mark on T-shirts and other goods with a bear silhouette facing left in the upper right of the mark.

The JPO admitted registration on April 4, 2014 and published for opposition on May 13, 2014.

PUMA’s Opposition / Invalidation Trial

On June 13, 2014, PUMA SE filed an opposition against the KUMA mark based on Article 4(1)(vii) and 4(1)(xv) of the Trademark Law. PUMA argued relevant consumers or traders are likely to confuse or misconceive a source of disputed mark with PUMA when used on designated goods in class 25 because of a high reputation and close resemblance between PUMA word logo and the KUMA mark.

The Opposition Board admitted a high degree of popularity and reputation of PUMA word logo, however, Board dismissed the opposition entirely due to unlikelihood of confusion because of a low degree of similarity between the marks (Opposition case no. 2014-900177).

Subsequently, PUMA SE entrusted the case to us. On April 3, 2019, just one day before the lapse of five-year Statute of limitations, MARKS IP LAW FIRM on behalf of PUMA SE requested for an invalidation trial and challenged invalidating the KUMA mark based on Article 4(1)(vii), (xi), (xv) and (xix) of the Japanese Trademark Law.

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

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 on identical or similar goods/service.

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

Article 4(1)(xix) prohibits to register a trademark which is identical with, or similar to, other entity’s famous mark, if such trademark is aimed for unfair purposes, e.g. gaining unfair profits, or causing damage to the entity.

Invalidation Decision

The Invalidation Board reversed the opposition decision and decided in favor of PUMA on all grounds by finding that:

  1. PUMA word logo has been continuously well-known in Japan for a source indicator of PUMA in connection with sports shoes, sportswear and others among relevant consumers and traders.
  2. A mere difference on initial letter of both marks and the Hokkaido island shape shall be insufficient to overturn an overall impression of the mark from visual and phonetic points of view. Conceptually, the KUMA mark, having a meaning of bears in Japanese, would give rise to a similar meaning with PUMA word logo, four-footed mammal. If so, by taking into consideration a high degree of reputation and popularity of PUMA word logo, both marks shall be deemed similar.
  3. Configuration of PUMA word logo looks unique, creative, and impressive in itself.
  4. Besides, given close association between designated goods in class 25 and PUMA’s business, relevant consumers of the goods in question with an ordinary care are likely to confuse its source with PUMA.
  5. It has good reasons to believe that the applicant of disputed mark did fraudulently apply the KUMA mark for registration with an aim to free-ride and dilute PUMA’s goodwill based on totality of the circumstances.
  6. If so, applicant must have filed disputed mark with a malicious intention to dilute or do harm to PUMA’s goodwill, which was impermissible to protect public order and morals

Based on the foregoing, the JPO decided to invalidate the KUMA mark based on Article 4(1)(vii), (xi), (xv) as well as 4(1)(xix) of the Japan Trademark Law.

JPO registers PUERTA DEL SOL as trademark

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In a recent appeal decision, the Japan Patent Office (JPO) overturned examiner’s refusal and decided to register trademark “PUERTA DEL SOL” in connection with jewels, accessories, clothing and other goods of class 14, 18, 25 and 34 by finding the term shall not be recognized as a geographical indication, one of the most famous sites in Madrid, Spain.[Appeal case no. 2019-7624, Gazette issued date: January 31, 2020]

PUERTA DEL SOL

PUERTA DEL SOL Co., Ltd., a Japanese jewels and accessories company, applied for registration of word mark “PUERTA DEL SOL” in relation to jewels, accessories, bags, clothing, shoes and other various goods of class 14, 18, 25 and 34 on January 23, 2018.

On March 19, 2019, JPO examiner refused applied mark due to lack of distinctiveness based on Article 3(1)(iii) of the Trademark Law. Examiner found that PUERTA DEL SOL, a public square in Madrid (the capital and largest city of Spain), one of the best known and busiest places in the city, the heart of Madrid’s historic center used to be on the eastern border of the city, has been known for a famous tourist spot in Madrid. Since relevant traders and consumers in Japan are familiar with circumstances that variety of souvenirs and gifts are on sale at tourist spot, it is presumed that consumers will merely conceive 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, applicant filed an appeal on June 10, 2019.

Applicant argued “PUERTA DEL SOL” shall be sufficiently distinctive in connection with the goods in question by citing facts that the term is legitimately registered even in the territory of Spain and less familiarity to Spanish language among relevant consumers with an ordinary care, Google search by a keyword “PUERA DEL SOL” reveals most of websites refer to applicant’s goods and business.
If so, it is groundless to find that relevant consumers would conceive applied mark as a geographical indication name when used on goods in question.

Appeal Board’s decision

The Appeal Board overturned the examiner’s decision by stating that relevant consumers and traders at the sight of applied mark are unlikely to see the mark to indicate the place of origin or sale when used on goods in question. Because the Board has no reason to believe the term “PUERTA DEL SOL” is known for a famous tourist square in Madrid even though Spanish dictionary and encyclopedia mention so by taking into account less familiarity to Spanish language among relevant consumers in Japan. Furthermore, there is no clue to find that the square is commonly indicated to represent a place of origin and sale in connection with the goods in question.

Criteria for Trademark Examination Guideline

Trademark Examination Guideline (TEG) pertinent to Article 3(1)(iii) provides that where a trademark is merely 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)

French fashion magazine “ELLE” Victorious in Trademark Opposition against “ELLEROSE”

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The Japan Patent Office (JPO) upheld an opposition filed by HACHETTE FILIPACCHI PRESSE, société anonyme (FR) and decided cancellation of Japanese trademark registration no. 6010765 for a composite mark containing “ELLROSE” due to a likelihood of confusion with a French fashion magazine “ELLE”.
[Opposition case no. 2018-900085, Gazette issued date: December 27, 2019]

ELLEROSE

Opposed mark, a composite mark consisting of three terms “ELLEROSE”, “STYLE UP”, “BODY SHAPE WEAR” aligned vertically in different font size and a silhouette of female lower body depicted in between ‘STYLE’ and ‘UP’ (see below), was applied for registration on July 25, 2017 for ‘underwear, socks, thermal supporters [clothing], waistbands, belts [clothing], special clothing for sports’ in class 25 by ELLEROSE Co., Ltd., a Japanese company. The JPO published opposed mark for registration on February 6, 2018.

ELLEROSE promoted the sales of women’s shapewear using the “STYLE UP” mark. Click here.

Opposition by ELLE

On April 6, 2018, just before the lapse of a two-months opposition period, HACHETTE FILIPACCHI PRESSE, société anonyme (hereinafter referred to as HFP), a French company responsible for the well-known women’s magazine ELLE, which had the largest readership of any fashion magazine in the world, with culturally specific editions published on six continents in the early 21st century, filed an opposition to “ELLEROSE”.

In the opposition, HFP contended that opposed mark shall be cancelled under Article 4(1)(xv) of the Japan Trademark Law, stating that relevant consumers are likely to confuse or misconceive opposed mark with HFP or any business entity systematically or economically connected with opponent due to high popularity of opponent’s fashion brand “ELLE” and close resemblance between opposed mark and “ELLE”.

Article 4(1)(xv)

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 “ELLE” has acquired a high degree of reputation and popularity among relevant consumers and traders as a source indicator of opponent in connection with magazine as well as fashion items based on the facts that (i) “ELLE japon” fashion magazine has been published in Japan since 1982. Annual circulation of the magazine was 940,000 in 2014, (ii) HSP has continuously promoted and licensed the ELLE mark on various fashion items since 1987. The number of licensees increased over 30. It turned over JPY 4.8billion (approx. USD 43million) in 2017.

Besides, the Board found that it is allowed to cut out and compare respective element of opposed mark with opponent mark “ELLE” in assessing similarity of both marks since the Board can’t identify any visual, conceptual or phonetic linkage between the elements to comprehend opposed mark as a whole. Given the elements of “STYLE UP”, “BODY SHAPE WEAR” and a silhouette of female lower body are less distinctive, there is reasonable ground to believe that relevant consumers shall be impressed with the term “ELLEROSE” and consider it a dominant part of opposed mark.

Averages consumers would easily notice the term “ELLEROSE” consists of “ELLE” and “ROSE” which is a familiar French term meaning ‘a garden plant with thorns on its stems and pleasant-smelling flowers’, and then conceive a famous fashion brand, ELLE from the term when used on goods in class 25.

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

Japan IP High Court Ordered Unofficial Mario Kart To Pay Nintendo Over $450,000

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On January 29, 2020, the Japan IP High Court ruled in favor of Nintendo over a case against go-kart operator Mari Mobility (the company formally named Maricar) and ordered damage compensation of 50 million JP.

Mari Mobility, the go-karting company formerly known as Maricar, has provided services for tourists riding around Tokyo streets in go-karts and offered Nintendo-themed costumes for customers to wear as various Mario characters, strongly resembling the likes of Mario Kart. The service has been a popular tourist attraction.

Nintendo quickly stepped in and sued Mari Mobility for their Street Kart service, initially winning in 2018. 

Subsequently, Mari Mobility has re-branded its service as Street Kart, providing superhero-themed outfits and swapping out all Nintendo references with various superhero ones. Besides, “Unrelated to Nintendo,” was written on Mari Mobility’s karts.

The official site reads:

We at Street Kart is providing our service as usual. Street Kart is fully complied [sic] through local governing laws in Japan. Street Kart is in no way a reflection of Nintendo, the game ‘Mario Kart’. (We do not provide rental of costumes of Mario Series.)

Mari Mobility hoped to reduce the damages owed to Nintendo, a sum of 10 million yen (around $92,000) awarded by the lower court. The strategy has backfired, however, with Mari Mobility losing and IP High Court judge ordering them to pay five times the damages, now totaling 50 million yen ($458,000)

In a statement following the ruling, Nintendo stressed that it will continue defending violations of its intellectual property that damages the brands it has built up over numerous years.

[Judicial case no. Heisei30(Ne)10081]

SCOTT Bikes Failed Trademark Opposition against “PRESCOTT”

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The Japan Patent Office (JPO) dismissed a trademark opposition claimed by SCOTT USA Inc. against trademark registration no. 6025819 for stylized word mark “PRESCOTT” on bicycles in class 12 by finding dissimilarity to “SCOTT”.
[Opposition case no. 2018-900134, Gazette issue date: December 27, 2019]

“PRESCOTT”

Opposed mark, stylized word mark “PRESCOTT” (see below), was filed by a Chinese individual to the JPO on June 19, 2017 by designating ‘electric bicycles, motorized bicycles, bicycles and accessories/structural parts, motorcycles’ in class 12.

The JPO admitted registration on March 9, 2018 and published for registration on April 3, 2018.

Opposition by SCOTT

To contend registration within a statutory period of two months counting from the publication date, SCOTT USA Inc. filed an opposition on June 1, 2018.

In the opposition brief, SCOTT USA Inc. asserted the opposed mark shall be cancelled in violation of Article 4(1)(viii), (xi) and (xix) of the Japan Trademark Law given a remarkable reputation of opponent mark “SCOTT” to indicate opponent’s mountain bicycles and close resemblance between a senior registration no. 2700543 “SCOTT” in class 12 and opposed mark.

Article 4(1)(viii) 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.

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)(xix) prohibits to register a trademark which is identical with, or similar to, other entity’s famous mark, if such trademark is aimed for unfair purposes, e.g. gaining unfair profits, or causing damage to the entity.

Scott, founded in 1958 in Sun Valley, Idaho, began as a manufacturer of aluminum ski poles before it branched out into a huge range of other sectors in the sporting goods industry. These days the brand produces bikes for a whole range of disciplines, but it cut its teeth with mountain bikes, introducing its first model way back in 1986. Nowadays, as the leading bike manufacturer in Europe, designing and fabricating an extensive line of high-quality mountain bikes, road bikes, kids bikes and urban city bikes, the SCOTT bikes have been ranked top mountain bicycles brands. In Japan, SCOTT USA has progressively promoted the SCOTT bikes through its subsidiary, SCOTT Japan since 2013. SCOTT Japan spent more than 20 million JP-Yen on advertisement annually.

SCOTT USA Inc. argued that these facts are sufficient to demonstrate “SCOTT” has acquired a high degree of reputation and popularity in the field of sports bicycles as an abbreviation or source indicator of opponent. Given the reputation, it is undeniable that applicant of opposed mark must have acquainted with opponent famous mark “SCOTT” before the filing. Besides, opponent mark “SCOTT” is actually used in an italic font (see below) on the bikes, which truly gives rise to a more resembled impression with opposed mark in the mind of consumers visually.

If so, opposed mark “PRESCOTT” shall be revocable because it contains a famous trademark name “SCOTT” without permission of opponent and looks confusingly similar to opponent’s famous mark when used on sports bicycles in fact. It is obvious that the applicant aims to gain unfair profits by free-riding opponent famous trademark.

JPO decision

The Opposition Board denied a certain degree of reputation and popularity of opponent trademark “SCOTT” in connection with mountain bicycles by stating that the produced evidences have no reference to sales amount and total number of participants to promotional events of the SCOTT bikes in Japan. 20 million JP-Yen (approx. USD182,000) for advertising expenses would be anything but a sufficient amount to prove famous bicycle brands.

Even if it is true that SCOTT sold more than 420,000 bicycles in European market in 2010 and achieved the largest market share in the high-end sports bicycles in ten EU countries, e.g. Germany, Norway, Sweden, the Board considers it insufficient to find a high degree of reputation among consumers in specific country in EU from the produced evidences.

In the assessment of mark, the Board held “PRESCOTT” and “SCOTT” are totally dissimilar from visual and phonetical points of view. Unless the Board finds a term “SCOTT” becomes famous in relation to the goods in question, there is no reason to see it as the dominant portion of opposed mark.

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

I often see the case like this where the JPO gives an unfavorable decision to famous brand owner. One reason is just due to insufficient production of evidences to show its famousness outside of Japan. Provided that Japanese consumers recognize such circumstance in foreign countries, the brand shall be broadly protected under the Japan Trademark Law.

San Miguel defeat in trademark dispute over ‘AGUA MIGUEL’

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In a recent trademark decision, the Opposition Board of Japan Patent Office (JPO) dismissed an opposition against TM Reg. no. 6104642 for word mark ‘AGUA MIGUEL’ filed by Philippines-based San Miguel Brewing International Ltd. who argued a likelihood of confusion with its famous beer brand ‘San Miguel’.
[Opposition case no. 2019-900077, Gazette issued on December 27, 2019]

Opposed mark – AGUA MIGUEL

Opposed mark ‘AGUA MIGUEL’ written in standard character was filed in the name of NIPPON BEER CO., LTD., a Japanese importer and wholesaler of beers and beverage from abroad.

The mark was filed to JPO on March 29, 2018 and, without confronting with office action from the JPO examiner, published for registration on January 8, 2019 over the goods of “mineral water” in class 32.

Opposition by San Miguel

On March 8, 2019, before the lapse of a two-months opposition period, San Miguel Brewing International Ltd. filed an opposition. In the opposition, San Miguel contended opposed mark shall be cancelled based on Article 4(1)(xv) of the Trademark Law.

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

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.

San Miguel argued opposed mark is likely to cause confusion with opponent’s beer brand ‘San Miguel’, which occupies 90% of the market share in Philippines and its reputation has been widely known in Asian countries including Japan. Opposed mark consists of terms ‘AGUA’ and ‘MIGUEL’. ‘AGUA’ is less distinctive in relation to mineral water since it means water in Spanish. If so, it is apparent that the portion of ‘MIGUEL’ relatively plays a dominant role of source indicator of opposed mark. Likewise, presumably relevant consumers would pay more attention to the term ‘Miguel’ from famous beer brand. In view of close association between mineral water and beers and resemblance between the marks, it is undeniable that relevant consumers are likely to confuse or misconceive opposed mark with San Miguel or any business entity systematically or economically connected with opponent.

Board decision

The Opposition Board found a low degree of similarity between ‘San Miguel’ and ‘AGUA MIGUEL’ from visual, phonetic and conceptual points of view. Even if the term ‘AGUA’ means water in Spanish, relevant consumers with an ordinary care at the sight of opposed mark would be unlikely to see the portion of ‘MIGUEL’ as a dominant part, but rather gasp opposed mark in its entirety.

The Board found a certain degree of popularity and reputation of beer brand ‘San Miguel’ among traders and beer drinkers, but, to my surprise, the Board questioned if the beer has been widely known among general consumers regardless of continuous domestic use of the mark in commerce since 1972, by stating that produced materials have no reference to actual sales performance in Japan. A mare fact of continuous use for the last 47 years is insufficient and non-objective to demonstrate famousness of the San Miguel beer brand in Japan.

Provided that opponent failed to demonstrate ‘San Miguel’ has been well-known for opponent’s beer among relevant consumers, the Board held that opposed mark is unlikely to cause confuse with opponent or any business entity systematically or economically connected with San Miguel in view of a remote resemblance between both marks. Thus, opposed mark shall not be revocable to Article 4(1)(xv) of the Trademark Law and dismissed the opposition entirely.