Which to win, first to file or first to trademark?

A recent JPO decision over trademark opposition for “Le Tan” will serve as a cautionary message to brand owners who intend to launch business in Japan before too long.


Le Tan

Heritage Le Tan Pty Limited, an Australian Private Company, acquired the Le Tan brand in 2015 for use on tanning lotions & sprays, tanning oils, coconut screen, after sun, which has been made in Australia since 1977 and grown into the number one tanning brand in Australia.

Heritage filed a trademark application with the Japan Patent Office (JPO) for its iconic house mark (see below) on ‘Sunscreen preparations; lotions for cosmetic purposes; sun protection oils [cosmetics]; sunscreen creams; sun-tanning preparations [cosmetics]; self-tanning creams; self-tanning lotions; self-tanning preparations [cosmetic]; cosmetics’ in class 3 on October 28, 2019, when six months have passed after actual sales took place allegedly in April 2019, in Japan.

On November 30, 2020, the JPO examiner raised her objection due to a conflict with senior trademark registration no. 6251672 in contravention of Article 4(1)(xi) of the Japan Trademark Law.


Opposed mark “LE TAN”

Chanson cosmetics Inc., a Japanese private company, filed the cited mark “LE TAN” for use on ‘cosmetics and toiletries’ in class 3 on June 20, 2019, with the JPO.

The mark, consisting of words “LE TAN” and its transliteration written in Japanese Katakana characters (see below), was registered on May 14, 2020, and published for post-grant opposition on June 2, 2020.


Opposition: “Le Tan” vs “LE TAN”

Apparently, in anticipation of the upcoming refusal or perhaps, because of any other reason, Heritage filed an opposition against the mark on July 30, 2020.

In the opposition brief, Heritage argued the opposed mark shall be cancelled in contravention of Article 4(1)(xix) of the Trademark Law.

Article 4(1)(xix) prohibits registering a trademark that 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.

Heritage argued a remarkable degree of reputation and popularity of the Le Tan mark in Australia in relation to sunscreen and suntan preparations [cosmetics] as a result of substantial use of the mark by producing evidence to demonstrate growing annual sales (approx. 16 million Australian dollars in 2017), the second market share of 16 % in Australia (2013) , increasing website visitors (approx. 86,000 in 2019) , email subscriptions (24,000) and followers (Instagram: 250,000, Facebook: 180,000) , and annual expense for advertisement and publication (approx. 0.6 ~ 1 million Australian dollars for the past decade) by means of television, radio, magazine, the internet.

Heritage mentioned they had begun to export their products since 2015 and launched promotion and distribution to Japanese consumers in April 2019.

In an attempt to prove Chanson’s unlawful intention, Heritage pointed out the fact that Chanson has registered the mark “LE TEMPS” pronounced the same as “LE TAN” on the same class since 1984 and used the mark on skin-care cosmetics in fact. Heritage alleged that it appeared unreasonable for Chanson to file the opposed mark which has a same pronunciation but different spelling since Chanson must be convinced that skin-care conscious consumers are unwilling to use cosmetics giving rise to an impression of ‘the suntan.’ If so, Chanson must have filed the opposed mark just two months after the launch of trademarking Australian brand “Le Tan” in Japan simply because of interrupting their business.


JPO Decision

The Opposition Board of the JPO admitted a certain degree of reputation and popularity of the “Le Tan” mark in Australia in view of substantial use on sunscreen or suntan preparations [cosmetics] over four decades, however, the Board denied Heritage’s allegation that the opposed mark was filed with a malicious intention by stating:

From the totality of circumstance, the Board can’t find any reason to believe that Chanson sought for protection of the opposed mark to gain unfair profits or cause damage to the opponent. A mere fact the opposed mark was filed a few months after the opponent started to use the “Le Tan” mark in Japan was insufficient to find unfair purposes subject to Article 4(1)(xix). Heritage failed to convince the Board of the likelihood of interruption. Noticeably, according to the produced evidence, the opponent business in Japan is expanding contrary to their allegations.

Based on the foregoing, the JPO decided to dismiss the opposition entirely and concluded the Opposed mark shall remain valid as the status quo.

Glenfiddich Wins Trademark Dispute Over Deer Design

The Japan Patent Office (JPO) sided with Glenfiddich, the world’s most awarded Single Malt Scotch Whisky, who fought against trademark registration for the BLACK FOREST composite mark in class 33 due to close resemblance to the Glenfiddich deer design. [Opposition case no. 2018-685017, Gazette issued date: April 30, 2021]


BLACK FOREST composite mark

The opposed mark, consisting of the words “BLACK FOREST”, “FINEST WINE QUALITY FROM GERMANY” and a stylized stag’s head (see below), was filed with the JPO on May 12, 2017, for use on ‘Wines and sparkling wines; all the above goods made in Germany’ in class 33 by Badischer Winzerkeller eG via the Madrid Protocol (IR no. 1353061).

On June 6, 2018, the JPO granted protection of the opposed mark and published for post-registration opposition.


Opposition by Glenfiddich

Glenfiddich owner William Grant & Sons opposed on the basis of its earlier international registrations (IR no. 919341&919342) in the mark GLENFIDDICH and a stylized stag head (see below) for use on whisky and whisky-based liqueurs are concerned, only scotch whisky and scotch whisky-based liqueurs produced in Scotland of class 33, in contravention of Article 4(1)(xi) of the Japan Trademark Law.

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

In the opposition, the opponent argued, inter alia, a close resemblance of the stylized deer design. Taking into consideration the design element is visually separable from literal elements, relevant consumers at the sight of the stylized stag head of the opposed mark that appeared on a wine label are likely to connect it with Glenfiddich.

JPO decision

The Opposition Board of the JPO found that judging from the configuration of each mark, it is allowed to assess the similarity of both marks by means of comparing its design element.

The Board held the stylized stag head of both marks would give rise to a resembled impression from appearance and the same concept regardless of some differences in detail.

If so, even though the pronunciation of respective design is incapable of comparison, from the totality of the circumstances, relevant consumers are likely to confuse the origin of the goods in question bearing the opposed mark with Glenfiddich.

Based on the foregoing, the JPO decided to retroactively cancel IR no. 1353061 in contravention of Article 4(1)(xi) of the Trademark Law.

Japan: Trademark Law Revision Act promulgated on May 21, 2021

The Japan Trademark Law Revision Act of 2021 (Act No. 42) passing congress on May 14, 2021, was promulgated on May 21.

Hot topics of trademark-related revision are:

1. On-line oral hearing

Under the current law, the Japan Patent Office (JPO) has no choice but to hold an oral hearing for administrative proceedings only when the parties are physically present in the oral proceedings. The revised act enables the JPO to hold oral proceedings by video conference.

2. Notifications by email

Under the current law, trademark applicant via the Madrid Protocol gets to know the status of registration only by means of receiving written notification from the JPO. The revised act allows the JPO to electronically send registration notifications to the applicant via the International Bureau by email.

3. Customs enforcement

In view of an increasing number of counterfeits imported for private use, the revised act restricts the counterfeits that were exported from a foreign country via postal mail by a business entity even if purchased by a private person in Japan and constitute trademark infringement at the time when they enter the territory of Japan.

4. Payment of second official fee for registration via the Madrid Protocol

Article 68-30 of the revised act looks attractive to Madrid users indeed. The Madrid users are no longer required to pay a second official fee to the JPO in order to accomplish trademark registration in Japan.

5. Fee increase

The revised act increases official fees for trademarks by more than 10%. Details will be decided by the JPO.

Official feeExistingRevised act
Filing feeJPY28,200/classLess than JPY32,900/class (17% increase)
Registration feeJPY38,800/classLess than JPY43,60/class (12% increase)

When does the revised act come into force?

The revised act is set to become effective within a year from the promulgation date.

Trademark Similarity: APLAY vs applay

In a trademark dispute pertinent to the similarity between “APLAY” and “applay”, the Appeal Board of the Japan Patent Office found both marks dissimilar and reversed the examiner’s rejection.
[Appeal case no. 2020-6380, Gazette issued date: April 30, 2021]

APLAY

A senior mark, consisting of the word “APLAY” in standard character, was registered on April 28, 2017 (TM Reg no. 5943175) over computer programs; application software; game programs for home video game machines; electronic circuits, and CD-ROMS recorded with programs for hand-held games with liquid crystal displays; electronic publications; earphones; headphones in class 9, and software as a service [SaaS]; other related computer services in class 42 by Nain Inc.

Apparently, Nain has used “APLAY” on wireless earphones and connect app for android (see below).

applay

Applied junior mark, consisting of the word “applay”, was sought for registration on August 7, 2019, over toys in class 28 [TM application no. 2019-107218] by Ed. Inter Co., Ltd.

The applicant uses the mark on wooden toys for kids (see below).

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

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

There is the criterion that the examiner is checking when assessing the similarity between the marks:

  • visual similarity
  • aural similarity
  • conceptual similarity

and taking into account all these three aspects, the examiner would decide if a mark is similar (at least to some extent) to the earlier mark and if there is a likelihood of confusion for the consumers.

Applicant filed an appeal against the rejection on May 12, 2020, and argued dissimilarity of the marks.

Appeal Board decision

In the decision, the Appeal Board held that:

In appearance, there are differences in the third letter ‘p’, and lower case or upper-case letters. These would give rise to a distinctive impression visually in the mind of relevant consumers where the respective mark consists of five or six-letter words, anything but long.

Next, assessing the pronunciation between applied mark [ˈæpleɪ] and the cited mark [əˈpleɪ], the difference in the first sound would be anything but negligible in view of a few phonetic compositions of four sounds in total. Relevant consumers would be unlikely to confuse each sound when pronounced because of phonetical distinction in overall nuance and tone as a whole

Thirdly, the respective mark does not give rise to any specific meaning at all. If so, both marks are incomparable from the concept.

Based on the foregoing, the Board found no reasonable reason to affirm the JPO examiner’s rejection from visual, phonetic, and conceptual points of view as well as consumer perception and decided to reverse the examiner’s rejection.

Coronavirus vs the Tokyo Olympic Games

With fewer than 80 days to go until the Tokyo Olympics, Japan just extended a state of emergency in the capital, Tokyo until May 31, 2021, to stem a surge in coronavirus cases.

Japanese trademark applications in 2020

One year has passed since Japan’s first state of emergency was declared on April 7 last year and lasted into late May.

Recent JPO statistical data, released on April 30, 2021, revealed the number of trademark applications newly filed in the Japan Patent Office (JPO) in 2020 fell by 5.1% to 181,072 compared to the previous year, 2019. When counting the total number of classes specified the trademark applications in 2020, it fell by 24.5% from the previous year.

A total of 17,924 trademarks were filed in the JPO via the Madrid Protocol in 2020. The number dropped by 7.8% from 2019.

The data also showed a 3.4% decrease in the number of international trademark applications filed with the JPO as the office of origin in 2020 to 3,033.

The Tokyo Olympic Games

The Tokyo Olympic Committee filed an initial trademark application for the “TOKYO 2020” mark (see below) in 2011, two years before the IOC decision.

In January 2012, the Committee applied for registration for the wordmark “TOKYO 2020” in standard character covering all 45 classes to which the JPO granted protection in November 2013.

However, because of the pandemic, the Tokyo 2020 Olympic and Paralympic Games have been postponed to 2021. The Olympics will now run from July 23 to August 8 2021 and the Paralympics will be held from August 24 until September 5, 2021.

On March 25, 2020, the Committee filed a trademark application for the wordmark “TOKYO 2021” for use on goods and services in 45 classes and subsequently divided the application so that the mark would remain pending the JPO examination as long as possible in fear of trademark theft.

It came to my notice that the following trademarks are filed with the JPO by other entities.

TM application no. 2020-27573 “tokyo 2022” (cl. 32)
TM application no. 2020-32238 “Tokyo 2022” (cl.18)
TM application no. 2020-35399 “TOKYO 2020+1” (cl. 41)
TM application no. 2020-14136 “TOKYO2032” (cl. 35, 41)
TM application no. 2020-125468 “Tokyo 2021 Samurai Athlete” (cl. 41)
TM application no. 2021-16249 “TOKYO 2020-2032” (cl. 41)


Who knows when and how the Tokyo Olympic Games are safely held?
Rather, I would eager to know when will the COVID-19 pandemic end.

IP High Court affirmed TM infringement in favor of Wenger over cross design

On April 21, 2021, the Japan IP High Court affirmed the Tokyo District Court’s decision in favor of Wenger S.A. and ruled to dismiss the appeal brought by TravelPlus International who was sentenced for trademark infringement by using cross design marks similar to the Wegner cross on backpacks. [Court case nos. IP High Court Reiwa2(ne)10060]

WENGER

Wenger, the Swiss company, has owned international registration no. 1002196 for the cross mark (see below) for use on backpacks of class 18 and others goods in Japan since November 5, 2010.

SWISSWIN

TravelPlus International (TI) distributed “SWISSWIN” brand backpacks adorned with a logo evoking the Swiss flag which consists of a cross surrounded by a square in Japan. According to the court decision, an affiliated company of TI has produced the Wenger bags as an OEM vendor.   

IP High Court ruling

The IP High Court dismissed the appeal entirely and issued a decision addressing the interpretation of similar marks evoking the Swiss flag that is unregistrable under the Trademark Law.

1. Evaluation of color difference on cross design

TI argued color difference shall be a crucial factor in this case based on Article 4(1)(iv) of the Japan Trademark Law that prohibits registration of an identical or similar mark to the Red Cross.


However, the judge denied the allegation by stating that any cross design dissimilar to the Red Cross can be registrable under the article. If so, it does not make sense to find the color difference on cross designs that would materially affect the similarity of the marks. Both marks should be assessed in their entirety by taking account of other elements as well.

2.  Assessing figurative element except for cross design

TI argued both marks should be assessed similarly on the assumption that the square plays a dominant role of source indicator based on Article 4(1)(i). Any mark identical or similar to a foreign national flag is unregistrable under the article. If so, it should not be allowed to claim trademark infringement based on the cross design which is undoubtedly similar to the Swiss flag.

However, the judge dismissed the allegation and reiterated its stance that in finding similarity of the mark, both marks should be assessed in their entirety, not only with the square but also the cross, since both marks just consist of these elements.

AlphaGo Unsuccessful in Defeating AlphaMini

“AlphaGo” AI system, developed by Google-owned artificial intelligence company DeepMind, has gained the world’s attention after defeating the top human players of the world in a game of go in the year 2016. But, in a recent opposition decision, the Japan Patent Office (JPO) did not admit the famousness of the trademark “AlphaGo”.
[Opposition case no. 2020-900207, Gazette issued date: March 26, 2021]

AlphaMini

Opposed mark “AlphaMini” (see below) was filed with the JPO by UBTECH Robotics, Inc., Chinese artificial intelligence and humanoid robotic company on July 26, 2019, and designated ‘computer programs; AI-powered humanoid robots; application software for smartphones; security surveillance robots; sensors; teaching robots; navigational instruments; mobile phones; facial recognition software; cameras’ in class 9 and ‘games; toy robots; toys; board games; balls for games; body-building apparatus; fishing tackle; archery implements’ in class 28.

According to the website of URTECH Robotics, Inc., the mark is used as a name of their humanoid educational robot.

Opposition by DeepMind “AlphaGo”

DeepMind Technologies Limited filed an opposition against “AlphaMini” and argued the opposed mark shall be canceled in contravention of Article 4(1)(xv) of the Japan Trademark Law because relevant consumes would confuse the source of goods bearing the opposed mark “AlphaMini” with DeepMind due to a close resemblance between two marks and famousness of “AlphaGo”.

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

Besides, DeepMind owns several trademarks that begin with the term “ALPHA”, namely, “ALPHACHESS”, “ALPHAZERO”, “ALPHAFOLD”, “ALPHASHOGI”. Taking into consideration a highly renowned computer program “AlphaGo” as the very first AI program that was able to beat one of the highest-ranked human players in the world in 2016, as well as a naming strategy for “ALPHA” AI system series, relevant consumers are likely to associate the opposed mark “AlphaMini” with DeepMind when used on its designated goods in class 9 and 28.

JPO Decision

The Opposition Board of the JPO had concluded that insufficient evidence had been submitted to support the assumption of a well-known mark that is protectable under Article 4(1)(xv).

The Board pointed out that most of the produced newspapers and magazines did not prove the use of the mark “AlphaGo” as a source indicator of the computer program for Go developed by DeepMind. Instead, they just revealed the term “アルファ碁” has been used to represent the AI system by DeepMind. “アルファ碁” is precisely a translation and transliteration of “AlphaGo” written in Japanese character.

The JPO held the mere fact that the first word of both marks is identical would be insufficient. Overall impression of “AlphaGo” and “AlphaMini” is remarkably different from visual, phonetic, and conceptual points of view. Thus, the Board found a low level of similarity between the two marks.

Even if the goods in dispute are closely associated with DeepMind’s business, given a low level of similarity and insufficient evidence to assume the famousness of “AlphaGo”, the Board had no reason to believe the opposed mark would cause confusion with DeepMind when used on the disputed goods in class 9 and 28.

Based on the foregoing, the Board decided the opposed mark would not be canceled in contravention of Article 4(1)(x) of the Trademark Law and dismissed the opposition entirely.

JPO Status Report 2021 – The impact of Covid-19 on Japan trademarks

Unquestionably, 2020 was remarkably a tough and soul-destroying year for businesses around the world. The coronavirus pandemic has had a major impact on every aspect of day-to-day life, including the world of business. Just as the fluctuations in the economy and our changing work and lifestyles due to long months spent at homes destroyed our understanding of “normal.” Business mentality, preferences, and actions taken during the crisis have all changed. As a result, it was inevitable for trademark filings to be affected by these changes.

According to “JPO Status Report 2021” released on March 31, 2021, by the Japan Patent Office (JPO), a total of 181,072 trademark applications were filed in 2020. This number is down 5% compared to the previous year when the number of applications amounted to 190,773.

It is interesting to see that Pfizer Inc. became a top-ranking foreign registrant in 2020 who could successfully register 154 trademarks in Japan, drastically increased from the previous year.

Requests for accelerated examination consecutively increased to 11,204 by 38% in 2020, which enables applicants to obtain trademark registration within 2months.

As a background, it should be noted that the entire trademark process for general examination at the JPO (the total time of application from filing to registration) takes 10.9 months on average, which is nearly 2 months longer than the previous year.

You can access and download the full text of “JPO Status Report 2021” from here.

COCO vs COCOMIST – Decision of the Opposition Board of the Japan Patent Office

Chanel handed a loss in its attempt to block Japanese trademark registration no. 6202587 for wordmark “COCOMIST” to be used on cosmetics, perfumery, fragrances, incense, and other goods in class 3.
[Opposition case no. 2020-900047, Gazette issued date: February 26, 2021.]

COCOMIST

The opposed mark consists of the word “COCOMIST” written in standard character (see below). Applicant, a Japanese company, 196+ Inc., filed it for use on ‘cosmetics, perfumery, fragrances, incense, toiletry preparations’ and other goods in Class 3 on January 7, 2019.

The mark was published for post-grant opposition on December 24, 2019, without confronting any office action from the JPO examiner.

It is apparent that the applicant actually uses the opposed mark on cleaning mist.

Opposition by CHANEL

On February 20, 2020, CHANEL SARL filed an Opposition and argued the opposed mark shall be canceled in contravention of Article 4(1)(xi), (xv), and (xix) of the Trademark Law on the grounds that:

  1. Since 1995, the opponent has owned senior trademark registration no. 2704127 for wordmark “COCO” over cosmetics, perfumery, and fragrances, which has unquestionably acquired a remarkable degree of reputation and popularity as a source indicator of the opponent’s cosmetics as well as a nickname or short name of French fashion designer “Gabrielle COCO CHANEL”, the founder of the Chanel brand.
  2. The term “MIST” lacks distinctiveness in relation to cosmetics. If so, relevant consumers at the sight of the opposed mark would easily conceive “COCO” as a prominent portion when used on goods in question.
  3. In view of the close resemblance between two marks and goods, presumably, the applicant must have applied the opposed mark for use on cosmetics with prior knowledge of the cited mark and fraudulent intention of free-riding on its reputation.

JPO Decision

The JPO Opposition Board admitted a high degree of reputation and popularity of “COCO” as a source indicator of the opponent’s perfumery and fragrances among relevant consumers based on substantial use of the cited mark in Japan but questioned its famousness in relation to other cosmetics except for perfumery and fragrances.

The JPO denied the similarity between the opposed mark and “COCO”, stating that the opposed mark shall be taken as a whole in view of a tight combination of its literal element from appearance. If so, the opposed mark does not give rise to any specific meaning and the Board has no reasonable ground to believe that the opposed mark “COCOMIST” shall be similar to “COCO” from visual, phonetic, and conceptual points of view.

Given a low degree of similarity between the marks, the Board held the opposed mark is unlikely to cause confusion even when used on perfumery and fragrances.

Assuming that both marks are dissimilar, the Board was not convinced that the applicant aimed for free-riding on the goodwill of Chanel.

Based on the foregoing, the JPO dismissed the entire allegations of CHANEL SARL and allowed the opposed mark to register as the status quo.