カテゴリー: Device mark

Patagonia Victorious in Trademark Battle

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The Trial Board of Japan Patent Office (JPO) recently upheld an invalidation petition by US outdoor apparel company, Patagonia Inc. against TM Reg. no. 6028801 for the “royalwest” mark in combination with figurative elements due to a likelihood of confusion with Patagonia logo.
[Invalidation case no. 2018-890048, Gazette issue date: June 28, 2019]

TM Registration no.6028801

Disputed mark, consisting of a word “royalwest” and figurative elements (see below left), was applied for registration on April 13, 2017 in respect of apparels and other goods in class 25.

Without confronting with a refusal during substantive examination, disputed mark was registered on March 23, 2018.

Petition for invalidation

Japan Trademark Law provides a provision to retroactively invalidate trademark registration for certain restricted reasons specified under Article 46 (1).

US outdoor apparel company Patagonia Incorporated filed a petition for invalidation against disputed mark on June 29, 2018. Patagonia argued it shall be invalidated due to similarity to an owned senior trademark registration no. 5891980 for the Patagonia mark with figurative elements depicting mountain landscape and sky in blue, purple and orange color (see above right), and a likelihood of confusion with its famous brand when used on designated goods in class 25 based on Article 4(1)(xi) and (xv) of the Trademark Law.

Board decision

At the outset, the Board admitted the Patagonia logo has acquired a high degree of popularity and reputation as a source indicator of Patagonia Inc. among relevant consumers in connection with outdoor goods.

In assessing similarity of both marks, the Board found that a literal element of respective mark is unquestionably dissimilar. However, even if both marks give rise to a different pronunciation and concept, by taking account of similar factors: (1) coloring of the sky, (2) font design and size, (3) rectangular outline, (4) black silhouette with a white border line, (5) configuration and proportion of respective elements, and balancing them comprehensively, relevant consumers with an ordinary care at the sight of both marks would conceive a same impression from appearance and associate disputed mark with Patagonia. If so, it is obvious that visual similarity plays a key role in the assessment. A phonetical and conceptual difference arising from literal element is insufficient to negate similarity between the marks in its entirety.

Based on the foregoing, the Board concluded that, from totality of circumstances and evidences, relevant traders or consumers are likely to confuse or misconceive a source of disputed mark with Patagonia or any entity systematically or economically connected with the opponent when used on apparels and any other designated goods in class 25 and declared invalidation based on Article 4(1)(xi) and (xv).

Trademark dispute over Shogun Emblem of the Samurai Era

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In a recent appeal trial over trademark dispute, the Trademark Appeal Board within the Japan Patent Office (JPO) overturned the Examiner’s determination and held that a combination mark with Tokugawa crest image and literal elements written in Chinese characters is dissimilar to, and unlikely to cause confusion with a senior trademark registration for the “TOKUGAWA CREST” device mark in connection with pickled plums of class 29.
[Appeal case no. 2018-6893, Gazette issue date: March 29, 2019]

 

TOKUGAWA CREST

The Tokugawa clan was the family that established the Edo shogunate, also known as the Tokugawa shogunate, (1603–1867), the final period of traditional Japan, a time of internal peace, political stability, and economic growth under the shogunate (military dictatorship) founded by Tokugawa Ieyasu. The Tokugawa shogunate continued to rule Japan for a remarkable 250 years and ended in 1868, with the Meiji Restoration when the Emperor regained power.

The Tokugawa crest was a circle in closing three leaves of the awoi (a species of mallow, found in Central Japan) joined at the tips, the stalks touching the circle (see below).

This gilded trefoil is gleaming on the property of the shogun and mausoleum even now in Japan.

 

YUME-AWOI

Kabushiki Kaisha Kiwa-Nouen Products, a Japanese merchant dealing with plums and its products filed a trademark application for a combination mark with Tokugawa crest image and literal elements written in Chinese characters (see below) covering pickled plums in class 29 on June 21, 2016 [TM application no. 2016-72127].

Three Chinese characters “紀州梅” in the upper right of the mark lacks distinctive since the term means plums made in Kishu, the name of a province in feudal Japan (the area corresponds to nowadays Wakayama Prefecture and southern Mie Prefecture), as a whole. Two characters “夢葵” in the center of the mark to be pronounces as “yume-awoi” is obviously a coined word and distinctive in relation to pickled plums.

The mark is actually in use on high-class pickled plums produced by applicant.

Tokugawa Museum

Going through substantive examination by the JPO examiner, applied mark was totally refused registration based on Article 4(1)(vi), (vii), (xv) of the Trademark Law on the ground that the mark contains a device resembling the Tokugawa crest which becomes famous as a source indicator of ‘Public Interest Incorporated Foundation The Tokugawa Museum’.
If so, using the mark on the designated goods by an unauthorized entity may free-ride goodwill vested in the Tokugawa crest and anything but conductive to the public interest. Besides, relevant consumers are likely to confuse or misconceive pickled plums using applied mark with goods from The Tokugawa Museum or any business entity systematically or economically connected with the museum.

Article 4(1)(vi) is a provision to refuse any mark which is identical with, or similar to, a famous mark indicating the State, a local government, an agency thereof, a non-profit organization undertaking a business for public interest, or a non-profit enterprise undertaking a business for public interest.

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)(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.

 

Applicant filed an appeal against the refusal on May 21, 2018 and argued dissimilarity of the marks.

 

Appeal Board decision

The Board reversed the examiner’s refusal and admitted applied mark to registration by stating that:

It becomes trade practice to print family crest on the packaging of food products. Especially, trefoil awoi crest has been commonly used on the packaging of specialty products or souvenir from Aichi (Owari), Wakayama (Kishu) and Ibaragi (Mito) Prefectures where descendants from clan founder Tokugawa Ieyasu’s three youngest sons governed during the Edo shogunate. Besides, from appearance, Tokugawa crest image in applied mark looks like a background pattern and thus relevant consumers are unlikely to aware that the pattern serves the legally defined role of a trademark because the image is colored washier than literal elements. If so, two Chinese characters “夢葵” of the mark functions primarily as a source indicator.

Based on the foregoing, the Board considered, given the Tokugawa crest image in the applied mark does not play a role of source indicator at all, both marks are dissimilar and unlikely to cause confusion from visual, phonetic and conceptual points of view even if the Tokugawa crest becomes famous as a source indicator of Public Interest Incorporated Foundation The Tokugawa Museum in fact. Likewise, the Board found no specific reason to cause damage to public order or morality from applied mark.

Giorgio Armani defeated with trademark battle over V-shaped wing device

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In a recent administrative trademark decision , the Opposition Board of Japan Patent Office (JPO) dismissed an opposition filed by Giorgio Armani S.p.A against trademark registration no. 5983697 for V-shaped wing device mark on bags in class 18 due to unlikelihood of confusion.

[Opposition case no. 2017-900384, Gazette issued date: April 26, 2019]

Opposed mark

Disputed mark (see below) was applied for registration on April 24, 2017, by designating bags, wallets, suitcases, hang bags, backpacks and others of class 18 in the name of a Chinese individual.

Going through substantive examination at the Japan Patent Office (JPO), the mark was registered on September 29 of that year (TM Reg no. 5983697).

 

Armani Opposition

To oppose the mark, Giorgio Amani filed an opposition on December 22, 2017.
In the opposition brief, Armani contended that opposed mark is confusingly similar to its registered famous V-shaped wing logo in the shape of “V” letter (see below) by citing its owned IR no. 695685 and thus shall be cancelled in violation of Article 4(1)(xi), (xv) and (xix) of the Japan Trademark Law.

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

 

Board decision

To my surprise, the Opposition Board of JPO negated a certain degree of popularity and reputation of Armani V-shaped wing device mark – Armani logo, stating that produced materials are insufficient and non-objective to demonstrate famousness of the cited mark.

Besides, the Board found that both marks are sufficiently distinguishable from appearance in view of overall configuration. From phonetic and conceptual points of view, opposed mark is unlikely to give rise to any specific meaning and pronunciation as well as cited mark.If so, both marks would not be comparable from visual and conceptual points of view. By taking into consideration of above fact findings, the Board found dissimilarity of both marks and held less likelihood of confusion between the marks even if used on bags in class 18.
Based on the foregoing, the Board decided opposed mark is not subject to Article 4(1)(xi), (xv) and (xix) of the Trademark Law and dismissed the opposition totally.

Trademark registration for Tasaki’s Akoya pearls ring

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In March 17, 2017, Japanese jewelry house TASAKI & Co., Ltd., the Japanese leading producer of Akoya pearls, filed an application for trademark registration at the Japan Patent Office (JPO) for the following three-dimensional mark for rings in class 14.

Signature ring featuring a row of five seemingly identical Akoya pearls

Applied mark represents a signature ring featuring a row of five seemingly identical Akoya pearls, one of Tasaki’s bestsellers.


Tasaki commenced sales of the ring in the name of “balancing signature ring” in April, 2010 and has been continuously promoting the sales since then.

 

JPO Examination/Acquired distinctiveness

The JPO examiner totally refused the mark due to a lack of inherent distinctiveness in relation to rings [jewelery].

Tasaki filed an appeal against the decision and argued acquired distinctiveness of the 3D configuration of the ring arising from uniqueness of its shape and substantial advertisement.

According to the filed evidences to the JPO, Tasaki installed a large signboard for advertisement at busy places, Ginza (Tokyo), Kobe, Osaka and made various promotional activities via internet, direct mails and events. The ring was appeared and published in magazines more than 130 times for the last eight years.

In March 1, 2019, the Appeal Board of JPO granted trademark registration based on Article 3(2) of the Trademark Law by finding acquired distinctiveness of the 3D configuration of the ring as a source indicator of Tasaki regardless of a fact that only 2,242 rings were purchased by consumers in fact .
[Appeal case no. 2018-9531, TM Registration No. 6125506]

Article 3(2) is a provision to allow registration of applied mark if, as a result of substantial use of the mark in fact, consumers are able to connect the mark with a source indicator of designated goods or services.

HISAMITSU unsuccessful in registering a shape of “Salonpas”

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The Appeal Board of Japan Patent Office (JPO) disallowed registration of a shape of famous Japanese pain relief patches in the name of “Salonpas” manufactured by Hisamitsu Pharmaceutical Co., Inc. due to lack of inherent distinctiveness in relation to poultices, class 5. [Appeal case no. 2017-12694]

 

Salonpas

Hisamitsu Pharmaceutical Co., Inc. filed a trademark application for a shape of Over-The-Counter Topical Pain Patch known for “Salonpas” (see below) by designating pharmaceutical preparations, gauze for dressings, bandages for dressings, adhesive plasters and other goods in class 5 [TM application no. 2015-7479].

Salonpas is a product of Hisamitsu Pharmaceutical, a company whose history dates back to the mid-1800s. Salonpas was introduced in 1934 and was first distributed in Asia. The FDA approved the Salonpas Pain Relief Patch for the US market in 2008. Approximately 20 billion Salonpas transdermal patches have been sold in the last 20 years. Salonpas has been acknowledged as World’s No.1 OTC Topical Analgesics in patch format.

 

JPO Examination

The JPO examiner totally refused the application based on Article 3(1)(iii) of the Japan Trademark Law stating that the applied mark can be easily seen as a shape of poultices and the shape does solely consist of a common configuration to achieve the basic function of poultices. If so, the applied mark lacks distinctiveness as a source indicator.

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

 

To dispute the refusal, Hisamitsu filed an appeal on August 28, 2017.

 

Appeal Board’s decision

The Appeal Board, however, upheld the examiner’s decision on the ground and dismissed Hisamitsu’s allegation by stating that relevant consumers and traders shall conceive of a mere qualitative representation to indicate the shape of poultices and plasters at the sight of applied mark given similar indications are depicted on the packages of other supplier’s goods on the market (see below).

 

Based on the foregoing, the Board consequently refused to register the mark based on Article 3(1)(iii) of the Trademark Law.

Trademark race for the 2020 Tokyo Olympic Games – Episode 2

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

Heart shape device mark

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

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

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

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

Olympic Rings

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

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

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

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

 

Appeal Board decision

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

Serapian Loses Trademark Opposition against S device mark

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

 

Opposed mark

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

Serapian Opposition

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

 

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

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

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

 

The Ruling

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

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

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

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

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

LUIS POULSEN Victory over trademark infringement lawsuit for Pendant Lamp Shade

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On December 27, 2018, the Tokyo District Court sided with Luis Poulsen A/S, a Danish company, in a lawsuit for trademark infringement against R&M Japan Co., Ltd. who imported into Japan and sold lighting apparatus allegedly identical with or confusingly similar to a registered 3D mark in the shape of unique pendant lamp shade well-known for “PH5” and awarded damages of 4.4 million JPY. [Case no. Heisei 29(Wa)22543]

 

Luis Poulsen “PH-5”

Luis Poulsen A/S has manufactured and sold lighting apparatus with a unique lamp shape well-known for “PH-5” in Japan past four decades. The shape was successfully registered as a 3D mark by the JPO in 2016 as a result of demonstrating acquired distinctiveness of the shape as a source indicator in connection with goods of ramp shade in class 11 (see below) [Trademark registration no. 5825191].

 

Infringing product

R&M Japan, Defendant, imported into Japan and sold lighting apparatus which apparently looks identical with the shape of PH-5 (see below).

Defendant argued that the Court should dismiss the complaint in its entirely.

According to the court decision, defendant admitted to reproducing a design which has terminated its exclusive right after the lapse of statutory period and thus became public domain.

Defendant also disputed there happened no damages to plaintiff on the grounds that the company put consumers on notice to offer replica designer lighting or free generic design items in the marketplace. There exists a remarkable price gap between genuine PH-5 and defendant product. If so, claimed damages shall not be linked to defendant’s act.

 

Court decision

The Tokyo District Court ruled in favor of Luis Poulsen by stating that:

  1. It is unquestionable that infringing product constitutes trademark infringement given the same shape with registered 3D mark representing “PH-5” owned by plaintiff.
  2. Provided that the 3D shape of “PH-5” has been successfully registered as a trademark in Japan, expiration of design right shall not prevent the owner from enforcing trademark right against the shape once registered as design right.
  3. Even if infringing product was offered to sell on notice of replica designer lighting or free generic design items at a lower price than genuine PH-5, it shall not deny a fact that infringing product is likely to compete with plaintiff.

Based on the foregoing, the Court ruled that R&M Japan committed a trademark infringement and awarded Luis Poulsen 4.4 million JPYen for damages.

R&M Japan once challenged validity of trademark registration for the 3D mark of PH-5, but resulted in vain. click here.