カテゴリー: Article 4(1)(xix)

Failed Opposition by ESPRIT against trademark registration “ESPRIT SELECTION”

Posted on

The Japan Patent Office (JPO) dismissed a trademark opposition claimed by fashion company Esprit against trademark registration no. 6155147 for a work mark consisting of “ESPRIT” and “SELECTION” over retail service in class 35 by finding dissimilarity and less likelihood of confusion with “ESPRIT”.
[Opposition case no. 2019-900260, Gazette issued date: July 31, 2020]

“ESPRIT SELECTION”

Opposed mark, a wordmark consisting of “ESPRIT” with larger font size and “SELECTION” with smaller font size in two lines (see below), was filed by a Japanese business entity, Harmonick Co., Ltd., on November 19, 2018, by designating ‘retail services or wholesale services for a variety of goods in each field of clothing, foods and beverages, and living ware, carrying all goods together’ in class 35.

Applicant commercially provides gift catalogs bearing the opposed mark so that shoppers can find a great selection of products from the catalogs.

The JPO admitted registration on June 21, 2019, and published for opposition on July 16, 2019.

Opposition by ESPRIT

To oppose registration within a statutory period of two months counting from the publication date, Esprit International filed an opposition on September 11, 2019.

In the opposition, Esprit asserted the opposed mark shall be canceled in contravention of Article 4(1)(xv) and (xix) of the Japan Trademark Law because of a high degree of popularity and reputation of owned senior trademark registrations nos. 2097119 and 2187153 for the “ESPRIT” logo (see below) as an international fashion brand and close resemblance with the opposed mark “ESPRIT SELECTION”.

Article 4(1)(xv) provides that a mark shall not be registered where it is likely to cause confusion with other business entities ’ well-known goods or services, to the benefit of brand owners and consumers.

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.

Esprit argued the term “SELECTION” is descriptive in relation to the retail service in question since it is commonly used to indicate ‘the things chosen or selected’ or ‘an assortment of things from which a choice can be made’. If so, relevant consumers would conceive the term “ESPRIT” as a prominent portion of the opposed mark and thus both marks shall be unquestionably deemed similar as a whole.

Besides, the service in question is closely related to the opponent business since Esprit offers affordable fashion and lifestyle with a huge selection of ladies’, men’s, and kids’ clothing as well as accessories.

Board Decision

The Opposition Board of JPO denied a high degree of popularity and reputation of “ESPRIT”, stating that the opponent failed to produce evidence to demonstrate actual and substantial use of the opponent mark, advertisement, sales record, and market share in Japan. A mere fact that opponent is a global company doing business in more than 40 countries and operates more than 440 “ESPRIT” shops in European and neighboring Asian countries are insufficient and irrelevant to find whether the opponent mark becomes famous among relevant consumers and traders in Japan.

Besides, the term “SELECTION” shall not be taken to explicitly indicate the quality of the service in question. Even if it is depicted with smaller font size than “ESPRIT”, the Board would not find a reasonable ground to believe the term “ESPRIT” solely plays a role of source indicator in the configuration of the opposed mark. If so, the opposed mark shall be assessed in its entirety.

Based on the foregoing, the Board concluded “ESPRIT SELECTION” and “ESPRIT” are dissimilar as a whole from visual, phonetical, and conceptual points of view. Provided that the opponent mark has not acquired a certain degree of reputation and popularity among relevant consumers in Japan, it unlikely happens that the consumers confuse or misconceive a source of the opposed mark with Esprit or any entity systematically or economically connected with the opponent. Thus, the opposed mark shall not be canceled on the grounds of Article 4(1)(xv) and (xix).

Is “You Tuber” a source indicator of Google?

Posted on

The Japan Patent Office (JPO) recently dismissed Google LLC’s invalidation petition against TM Reg. no. 5999063 for word mark “NYAN TUBER” by finding “YouTuber” would be famous, but not as a source indicator of Google.
[Invalidation case no. 2018-890081, Gazette issued date: June 26, 2020]

Disputed mark

PECO Co., Ltd., a Japanese business entity working on the health benefits of the human-animal bond, filed a trademark application for word mark “NYAN TUBER” written in Japanese Katakana character (see below) on pet-related services in class 35 and 42 to the JPO on April 3, 2017.

“Nyan” is the sound cats make in Japan. Cats don’t make the same sounds in other countries. In the United States, it sounds like meow. In Germany, it’s miau; and, in France, it’s miaou.

So, “NYAN TUBER” easily reminds Japanese consumers of a person who frequently uploads videos of cats to ‘YouTube’.

The disputed mark was registered on November 24, 2017 (TM Registration no. 5999063).

Invalidation petition by Google

On October 24, 2018, Google LLC filed a petition for invalidation and alleged among others the disputed mark shall be invalidated in contravention of Article 4(1)(vii),(x),(xi),(xv),(xix) of the Trademark Law due to similarity to, or a likelihood of confusion with “YouTuber”

Google argued “YouTuber” has become famous as an indication closely associated with Google’s well-known online video sharing services ‘YouTube’. Because of it, relevant consumers and traders at sights of the disputed mark would connect or associate it with ‘YouTuber’.

YOU TUBER

According to recent polls, becoming a YouTuber or vlogger becomes the most popular career goal for Japanese children and teenagers.

TOP 5 JOBS BOYS WANT (2019)
1. Youtuber/Vlogger, 2. Soccer player, 3. Baseball player, 4. Driver, 5. Policeman

PECO counterargued that it becomes usual for YouTubers to use him/her YouTube name “___Tuber”. If so, relevant consumers at the sight of “NYAN TUBER” videos would just consider the disputed mark represents the video or a person who uploaded it and never conceive the mark as a source indicator of Google or YouTube.

Invalidation Board decision

The JPO Invalidation Board did not question a high degree of popularity and reputation of “YouTube” as a source indicator of Google’s online video sharing services.

In the meantime, the Board found “YouTuber” would be recognized as a generic term to represent ‘a person who creates and uploads videos on the YouTube online video sharing service’ by referring to some dictionaries. In fact, Google does not register the term over any goods and services at all, and thus the Board denied the famousness of “YouTuber” as a source indicator of Google’s service.

With regard to the assessment of the similarity between “YouTuber” and “NYAN TUBER”, the Board found that both marks are dissimilar as a whole even though they have partially the same in the suffix. The difference in the prefix, “NYAN” and “YOU” substantially gives rise to a distinctive impression from appearance, sound, and concept as a whole in the minds of relevant consumers. Accordingly, both marks would be anything but confusingly similar.

Based on the foregoing, the Board dismissed Google’s allegations entirely and declared validation of the disputed mark.

ZARA Fails in Japanese Trademark Opposition Against “ZORA”

Posted on2 Comments

The Japan Patent Office (JPO) dismissed an opposition filed by Industria de Diseño Textil, SA (INDITEX), owner of the fashion brand “ZARA” against trademark registration no. 6164247 for word mark “ZORA” in class 18 by finding dissimilarity to and less likelihood of confusion with “ZARA”.
[Opposition case no. 2019-900291, Gazette issued date: June 26, 2020]

Opposed mark

Opposed mark, consisting of a wordmark “ZORA” in standard character, was applied for registration in the name of CREST Co., Ltd., a Japanese company offering a wide variety of bags, pouches, and wallets for women or kids, on July 20, 2018, by designating bags, pouches, wallets in class 18, and published for opposition on August 13, 2019, without confronting with office action from the JPO.

Opposition by Inditex

Opponent, INDITEX, one of the world’s largest fashion retailers and owner of the fashion brand “ZARA”, claimed opposed mark “ZORA” shall be revocable in contravention of Article 4(1)(xi), (xv) and (xix) of the Japan Trademark Law by citing senior trademark registrations for word mark “ZARA” in relation with bags, pouches, wallets in class 18 and 35.

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

INDITEX argued “ZORA” is similar to its own trademark “ZARA”, a worldwide famous fast-fashion brand, from visual, phonetic and conceptual points of view. Besides, the goods in question are identical.

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

INDITEX argued, given “ZARA” has acquired a remarkable reputation among relevant consumers and the close resemblance between the marks and goods, relevant consumers are likely to confuse or misconceive opposed mark with “ZARA”.

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.

INDITEX argued the applicant must have filed opposed mark aiming to gain unfair profits by the free-riding opponent famous trademark “ZARA”.

JPO Decision

The JPO Opposition Board admitted a high degree of reputation and popularity of “ZARA” among relevant consumers and traders as a source indicator of the opponent in connection with clothing based on the facts that (i) “ZARA” launched fashion business in Japan since 1998 and increased the number of its stores in Japan to 100 as of December 2019, (ii) worldwide sales in excess of EUR 18 billion. (iii) ZARA has been ranked No.24(2017), No.25(2018), No.29(2019) on Interbrand’s list of the most valuable global brands.

In the meantime, the Board held “ZORA” and “ZARA” are obviously dissimilar in appearance and pronunciation by stating that difference on the second letter and the first sound would be anything but negligible given both marks visually consists of four alphabets and aurally just two sounds. As for the concept, it is incomparable since either mark does not give rise to any specific meaning.

If so, both marks are unlikely to cause confusion due to dissimilarity between the marks. Besides, the Board could not identify any ground to believe the applicant filed opposed mark for unfair purposes or causing damage to the entity.

Based on the foregoing, the JPO dismissed the entire allegations of INDITEX and allowed “ZORA” to survive.

TWITTER Unsuccessful in “TWEET” Trademark Opposition at JPO

Posted on

The Japan Patent Office (JPO) dismissed a trademark opposition claimed by social media giant, Twitter, Inc. against trademark registration no. 6138010 for word mark “TWEET” in class 33 by finding the TWEET mark is relatively unknown as a source indicator of Twitter Inc.
[Opposition case no. 2019-900193, Gazette issued date: April 24, 2020]

Opposed mark

A wordmark “TWEET” in standard character was filed by a Japanese sake brewery, Shirataki Sake on June 21, 2018, over Japanese sake [Nihonsyu]; sake, distilled rice spirits; sake substitute; Japanese white liquor [Shochu]; Japanese sweet rice-based mixed liquor [Shiro-zake]; Naoshi [Japanese liquor]; Japanese Shochu-based mixed liquor [Mirin]; western liquors; alcoholic fruit beverages; Japanese Shochu-based beverages [Chuhai]; Chinese liquors; flavored liquors in class 33, and published for opposition on May 14, 2019, after registration on April 12, 2019.

Opposition by Twitter, Inc.

On July 12, 2019, US social media giant, Twitter, Inc. filed an opposition and argued opposed mark shall be revocable in contravention of Article 4(1)(xv) and (xix) of the Japan Trademark Law due to a likelihood of confusion with, or identical with its famous “TWEET” mark registered in various classes other than 33.

Article 4(1)(xv)

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

Twitter is a ‘microblogging’ system that allows users to send and receive short posts called “tweets”. Tweets can be up to 140 characters long and can include links to relevant websites and resources. The Japanese version of Twitter was launched in 2008 and its MAU (monthly active users) has been increasing since. Compared to the American population, 35.7% of Japanese actively use Twitter actively while only 20.7% of Americans actively use Twitter. Now, 17% of Twitter’s worldwide revenue comes from the Japanese market.

Twitter, Inc. argued that the above facts suggest “TWEET” has acquired substantial reputation and popularity among the general public in Japan as a source indicator of the opponent.

Even though goods in dispute are remotely associated with SNS services, a lot of alcoholic consumers have obviously made use of Twitter and “tweet” since major breweries advertise their goods on Twitter so frequently and gain a substantial number of followers on Twitter.

If so, relevant consumers of goods in dispute are likely to misconceive the source of goods bearing opposed mark with Twitter, Inc., or any entity systematically or economically connected with the opponent.

Board Decision

The Opposition Board admitted a remarkable degree of reputation and popularity of opponent trademark “Twitter” in connection with a real-time communication service based on the produced evidence boasting more than 45 million MAU in Japan as of December 2018.

Meanwhile, the Board questioned if “TWEET” has been used as a source indicator of opponent business since the evidence shows the term has been used to indicate function or usage of Twitter in a descriptive manner. Consequently, the Board found “TWEET” is relatively unknown as a source indicator of Twitter Inc.

Based on the foregoing, the Board decided opposed mark shall not be revocable in contravention of Article 4(1)(xv) and (xix) since it is unlikely that relevant consumers conceive of the opponent or connect the alcoholic beverages bearing opposed mark “TWEET” with Twitter.

Never Register “BOND GIRL” Never Again

Posted on

In a recent administrative decision, the Japan Patent Office (JPO) sided with Danjaq, LLC, and declared invalidation of a wordmark “BOND GIRL” written in a Japanese katakana character in contravention of Article 4(1)(vii) of the Trademark Law.

[Invalidation case no. 2019-890044, Gazette issued date: April 24, 2020]

Disputed mark

“BOND GIRL” written in a Japanese katakana character (see below) was filed to JPO on the service of ‘arranging, conducting, and organization of seminars’ in class 41 by a Japanese individual on November 4, 2015, and registered on December 2, 2016.

Opposition & Invalidation petition by Danjaq, LLC

On March 9, 2017, just before the lapse of a two-months opposition period, Danjaq, LLC, the holding company responsible for the copyright and trademarks to the characters, elements, and other material related to James Bond on screen, filed an opposition to the disputed mark.

However, since Danjaq failed to supplement arguments for opposition within a statutory period, the JPO decided to dismiss the opposition entirely.

On August 2, 2019, Danjaq filed a petition for invalidation and argued disputed mark shall be invalid in contravention of Article 4(1)(vii), (xv) and (xix) of the Trademark Law by citing world-famous cinematic heroine “BOND GIRL” in the James Bond film series “007”.

Article 4(1)(vii)

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

In the petition, Danjaq argued “BOND GIRL” has appeared as a love interest of James Bond in the movies for over 55 years since 1962. Due to frequent appearances in magazines, other public media, and various events pertinent to the Japes Bond movie, the name and sign of “BOND GIRL” has been well-known for cinematic heroine in association with the film series “007”.

If so, it is presumed that the applicant intentionally applied disputed mark with an aim to monopolize the term. Since the applicant does not have any legal interest with Danjaq, a legitimate owner of trademarks and copyrights pertaining to the 007 movies, it must impermissibly cause not only damage to public order but the disorder in domestic and foreign trade.

Invalidation Board decision

The Invalidation Board initially noted that the James Bond film series “007” is world-widely known motion pictures. From the produced evidence, the cinematic heroine “Bond girl” has regularly attracted audiences through screens, magazines, and promotional events of the movie. The sign “BONG GIRL” had further extensive marketing and licensing to companies in vastly different product categories, not only with products associated with the motion pictures, e.g. nails, cosmetics, dolls, cards, calendars, and others. Relevant consumers at the sight of the disputed mark would conceive nothing but the cinematic heroine in the film. The Board, therefore, considered that “BOND GIRL” has become worldly famous as a cinematic heroine that appeared in the “007” film series.

The Board continued in analyzing efforts made by Danjaq to enhance the commercial value of “BOND GIRL” by means of trademark registrations in various jurisdictions and licensing to different product categories.

The Board finally concluded that taking into account the foregoing, since it appears that the applicant makes less contribution to establishing reputation and goodwill on “BOND GIRL”, it shall be impermissible for the applicant to monopolize the term on service in question.

To prevent damage to public order, the disputed mark shall be retroactively invalidated in contravention of Article 4(1)(vii).

In the meantime, surprisingly, the Board denied Danjaq’s allegation regarding a likelihood of confusion because “BOND GIRL” is just famous for cinematic heroine, not as a source indicator of Danjaq.

KUMAMON triumphs over bear mascot trademark battle

Posted on

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.

Trademark Battle – PUMA vs KUMA

Posted on

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.

SCOTT Bikes Failed Trademark Opposition against “PRESCOTT”

Posted on

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.

Happiness Diamond makes Chopard Happy Diamonds unhappy

Posted on

Swiss manufacturer and retailer of luxury watches, jewelry and accessories, CHOPARD INTERNATIONAL S.A. failed in their attempt to stop the registration of a word mark “Happiness Diamond” at the Japan Patent Office.
[Opposition case no. 2019-900134, Gazette issue date: November 29, 2019]

HAPPINESS DIAMOND

Opposed mark (TM Registration no. 6118600), consisting of two words “Happiness Diamond” in standard character, was applied for registration on November 26,2018 for jewelry, accessories, watches in class 14 by Happiness and D Co., Ltd., a Japanese company.

At an initial application, applicant requested the JPO to expedite substantive examination. In accordance with the request, JPO examiner put a priority on the mark and admitted to grant registration in two months subsequent to substantive examination.

Accelerated Examination

JPO applies the accelerated examination system to trademark application on the condition that the application meets the following condition.

  1. Applicant/licensee uses or will use applied mark on one of designated goods/services at least, and there exists an urgency to registration, e.g. unauthorized use by third parties
  2. All designated goods/services are actually or shortly used by applicant/licensee, or
  3. Applicant/licensee uses or will use applied mark on one of designated goods/services at least, and all the goods/services are designated in accordance with a standard description based on Examination Guidelines for Similar Goods and Services.

Accelerated examination system enables applicant to obtain examination results in less than two months on average, which is six months shorter than regular examination nowadays.

Opposition by Chopard

On April 26, 2019, before the lapse of a two-months opposition period, CHOPARD INTERNATIONAL S.A., a Swiss manufacturer and retailer of luxury watches, jewelry and accessories, filed an opposition to opposed mark.

Opponent (CHOPARD) claimed that the opposed mark “Happiness Diamond” shall be retroactively cancelled under Article 4(1)(x), (xi), (xv), (xix) of the Japan Trademark Law in relation to all designated goods in class 14 by citing an owned senior international registration no. 446502 for word mark “Happy Diamonds” covering ‘Mechanical hand-winding and self-winding watches; electric and electronic watches; chronometers; jewelry; jewelry watches; all these goods adorned with diamonds’ in class 14, which has been effectively registered in Japan since September 24, 2010.

Article 4(1)(x) prohibits to register a trademark which is identical with, or similar to, other entity’s well-known mark over goods or services closely related with the entity’s business.

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) 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.

To stop registration of opposed mark, CHOPARD has to prove “Happy Diamonds” is similar to “Happiness Diamond”. Even if both marks are deemed dissimilar, CHOPARD is still able to win the case by demonstrating likelihood of confusion resulting from fame of CHOPARD “Happy Diamonds”.

Board Decision

To my surprise, the Board held “Happiness Diamond” is sufficiently dissimilar to “Happy Diamonds” by stating that:

  1. From appearance and pronunciation, both marks, consisting of two words, are unlikely to cause confusion given the difference on the first word “Happiness” and “Happy”.
  2. Besides, both marks do not give rise to any specific meaning. If so, it is incomparable in concept.
  3. Thus, from the totality of the circumstances, relevant consumers would neither associate nor connect opposed mark with “Happy Diamonds”.

The Board questioned whether CHOPARD “Happy Diamonds” has acquired a sufficient degree of reputation and popularity among relevant consumers in Japan to be protectable under Article 4(1)(xv) of the Trademark Law in view of produced evidences although opponent alleged its first use dates back to 1976. If so, it is unlikely that relevant consumers confuse or misconceive a source of the opposed mark with CHOPARD or any entity systematically or economically connected with the opponent.

Consequently, opposed mark is not subject to Article 4(1)(x), (xi), (xv) and (xix), and remains valid as a status quo.

Failed Opposition by Apple against trademark registration “EYE PHONE”

Posted on

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

“EYE PHONE”

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

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

APPLE’s Opposition

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

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

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

Article 4(1)(xv) provides that a mark shall not be registered where it is likely to cause confusion with other business entity’s well-known goods or services, to the benefit of brand owner and consumers.

Board Decision

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

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

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

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

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