カテゴリー: Generic term

Japan IP High Court ruled “athlete Chiffon” descriptive in relation to hotel and restaurant services.

Posted on

On October 12, 2023, the Japan IP High Court affirmed the JPO refusal decision to TM App no. 2021-93231 for word mark “athlete Chiffon” in class 43 due to a lack of distinctiveness.

[Court case no. Reiwa5(Gyo-ke)10038]

JPO refusal decision

Disputed mark, consisting of two words “athlete” and “Chiffon” in standard character, was filed for use of providing temporary accommodation; accommodation bureaux services; providing foods and beverages in class 43 with The Japan Patent Office (JPO) on July 27, 2021 (TM App no. 2021-93231).

The JPO examiner rejected the mark based on Article 3(1)(iii) and Article 4(1)(xvi) of the Japan Trademark Law by stating that relevant consumers at sight of the disputed mark would merely conceive of a restaurant to provide Chiffon cakes for athletes and it will cause misrepresentation of a particular quality of service when used on other services.

Applicant filed an appeal against the examiner’s rejection. However, the JPO Appeal Board sustained the examiner’s findings and decided to refuse the disputed mark on March 22, 2023.

Appeal to the IP High Court

On April 20, 2023, the applicant filed a lawsuit to dispute registrability of the disputed mark with the IP High Court and asked the court to annul the JPO decision based on the facts that the JPO has allowed registration of lots of trademarks containing the term “athlete”, but none of them restrict its usage of designated goods or services “for athletes”. Cake shops containing a term “Chiffon” in their trade name have even delt with cakes other than chiffon. If so, the JPO obviously made an error in denying distinctiveness of respective term “athlete” and “Chiffon”. Because of it, the JPO refusal decision shall be cancelled.

IP High Court decision

From the produced evidence, the IP High Court found that, in the industry of foods and beverages, terms such as “athlete cake” and “athlete pan cakes” are commonly used to indicate special goods and service for athletes. If so, relevant consumers and traders would consider a term consisting of “athlete” followed by generic word of goods or service as an indication to specify the target of the goods or service (for athletes). “Chiffon” is known in the industry as a term to indicate ‘food that is made light by adding the clear part of eggs that have been beaten’ and commonly used in conjunction with other descriptive term, e.g., “Choco chiffon”, “banana chiffon”, “Valentine chiffon”.

Under the circumstances, the court has a reason to believe that relevant consumers would consider the term “athlete Chiffon” as a mere descriptive indication of the restaurant to provide chiffon (cakes) for athletes when used in relation to the service in question.

Screen capture from “athlete Chiffron” facebook page

A fact that several cake shops containing a term “Chiffon” in their trade name have delt with cakes other than chiffon is irrelevant to the case given the consumers conceive of chiffon cake at sight of the term “athlete Chiffon” when used on restaurant service.

Based on the foregoing, the court held the JPO did not make any error in finding facts and applying trademark law and thus the disputed mark shall be unregistrable under Article 3(1)(iii) and 4(1)(xvi).

JPO rejects “AIR NECKTIE” due to similarity to NIKE “AIR”

Posted on

The Japan Patent Office (JPO) dismissed an appeal filed by a Japanese individual who sought registration for use of the wordmark “AIR NECKTIE” on neckties in class 25 due to the similarity to NIKE “AIR.”
[Appeal case no. 2020-4106, Gazette issued date: February 26, 2021.]

AIR NECKTIE

The mark in question, consisting of two English words “AIR” and “NECKTIE”, and its transliteration in a Japanese katakana character (see below), was filed for use on ‘neckties’ in class 25 with the JPO on July 6, 2018 [TM Application no. 2018-88482].

TM App no. 2018-88482

AIR

The examiner raised her objection based on Article 4(1)(xi) of the Trademark Law by citing senior registration nos. 502137 and 4327964 for the mark “AIR” owned by NIKE Innovate C.V. (see below) which cover clothing, shoes, neckties, and other goods in class 25.

TM Reg no. 502137
TM Reg no. 4327964

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.

Regardless of the arguments made on a written response to the office action by the applicant, the JPO examiner entirely rejected the “AIR NECKTIE” mark based on the ground.

On March 6, 2020, the applicant filed an appeal against the refusal with the JPO and disputed that the applied mark “AIR NECKTIE” is dissimilar to the cited mark “AIR.”

JPO decision

The JPO Appeal Board referred to the tests established by the Supreme Court ruling in 2008 to determine whether it is permissible to take out respective elements of the composite mark when assessing the similarity of two marks.

“Where a mark in dispute is recognized as a composite mark consisting of two elements or more, it is not permissible to assess the similarity of marks simply by means of taking out an element of the composite mark and then comparing such element with the other mark, unless consumers or traders are likely to perceive the element as a dominant portion indicating its source of origin of goods/service, or remaining elements truly lack inherent distinctiveness as a source indicator in view of sound and concept.”

Based on the tests, the Board found that it is permissible to take out a literal element “AIR” from the applied mark and compare it with the citations by stating the following grounds:

  1. The applied mark can be seen as a composite mark consisting of ‘AIR’ and ‘NECKTIE’ because of the space between two words.
  2. “NECKTIE” is unquestionably recognized as a generic term in connection with ‘neckties’ in class 25.
  3. Relevant consumers at the sight of neckties bearing the mark “AIR NECKTIE” would conceive the term “AIR” as a prominent source indicator.
  4. “AIR NECKTIE” does not give rise to any specific meaning in its entirety.
  5. The above facts suggest that “NECKTIE” lacks inherent distinctiveness in relation to the goods in question, and it would not play the role of source indicator of the applied mark in view of sound as well as concept.

Based on the foregoing, the Board affirmed the examiner’s rejection and decided that the applied mark “AIR NECKTIE” is similar to the cited marks as a whole given the remarkable similarity in sound and concept, even if the word “NECKTIE” differentiates two marks in appearance.

SMART vs SMART TYRE

Posted on

The Japan Patent Office (JPO) dismissed an opposition against trademark registration no. 6227071 for work mark “SMART TYRE” over a tire and other goods in class 12 claimed by Daimler AG who argued the mark is confusingly similar to senior registrations for the “SMART” mark in the same class owned by smart Automobile Co., Ltd.
[Opposition case no. 2020-900136, Gazette issued date: December 25, 2020]

“SMART TYRE”

The opposed mark, composing of wordmark “SMART TYRE” written in standard character, was sought for registration by Sumitomo Rubber Industries, Ltd., famous for “DUNLOP” tire brand, by designating various tires, automobiles, motorcycles, bicycles, and its structural parts and accessories in class 12 on August 21, 2018.  
[TM Application no. 2018-105830]

The mark was registered and published for opposition on March 10, 2020.

Opposition by Daimler AG

On May 11, 2020, just before the lapse of a two-months opposition period, Daimler AG filed an opposition before the JPO and claimed that the opposed mark shall be canceled in contravention of Article 4(1)(xi) and (xvi) of the Japan Trademark Law by citing senior trademark registrations for the “SMART” mark (see below) in class 12, which the opponent allegedly has used on the micro compact cars since 1998.

Daimler AG argued the opposed mark is a composite mark consisting of “SMART” and “TYRE”. The term “TYRE” undoubtedly lacks distinctiveness in relation to the goods of ‘tires’. If so, the dominant portion of the opposed mark shall be the term “SMART” which is identical to the cited marks. Besides, the ‘tires’ is considered as a structural part of automobiles and thus deemed similar to automobiles designated under the citations.

Therefore, the opposed mark shall be canceled based on Article 4(1)(xi).

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.

Board decision

Surprisingly, the Opposition Board of the JPO found the opposed mark “SMART TYRE” shall be considered in its entirety irrespective of the fact that the term “TYRE” means ‘tire’. In addition, the Board held the opposed mark does not give rise to any specific meaning at all, and it is deemed a coined word.

Based on this finding, the Board assessed the similarity of marks as follows.

From appearance, both marks are sufficiently distinguishable since the opposed mark contains the term “TYRE” unlike the citations.

Phonetically, the opposed mark consists of seven sounds. In the meantime, the citations have four sounds. Due to the difference, relevant consumers are unlikely to confuse both marks.

The citations truly give rise to adjective meanings of ‘clever, bright, intelligent’. Meanwhile, the opposed mark has no meaning.

Therefore, the opposed mark “SMART TYRE” is dissimilar to the citations from visual, phonetical, and conceptual points of view even if the goods in question is deemed similar to the citations.

By stating that the term “TYRE” is inseparably and tightly incorporated into the opposed mark to the extent that relevant consumers would not conceive it as a descriptive indication in relation to the goods of class 12, the Board concluded the opposed mark shall not cause misapprehension of quality even when used on goods in question other than tires.

Based on the foregoing, the Board decided the opposed mark shall not be canceled in contravention of Article 4(1)(xi) and (xvi) of the Trademark Law and allowed “SMART TYRE” to survive.

The JPO’s finding does not look reasonable to me. It is clear that “TYRE” indicates ‘tire’. I suppose the Board rather should have mentioned the term “SMART” nowadays becomes generic when used in combination with the descriptive word(s) on the goods in question.

El Clasico Scores a Goal in Trademark Race

Posted on

The Japan Patent Office (JPO) overturned the examiner’s refusal and decided to register the “El Clasico” mark in connection with sporting activities, production of sports events, sports information services, and other services of class 41 by finding the term shall not be recognized as football matches between FC Barcelona and Real Madrid C.F.
[Appeal case no. 2019-650060, Gazette issued date: October 30, 2020]

El Clasico

“El Clasico” is a magical phrase to make football fans passionate, emotional, and excited. The meaning of El Clasico is the Spanish name that is given to any football match between fierce Spanish rivals Real Madrid and Barcelona FC. The literal translation of El Clasico is ‘The Classic’. According to the Cambridge Dictionary, “El Clasico” is defined as ‘any of the games played between the football teams Real Madrid and Barcelona’. Being that this rivalry can be dated back to the 1930s and ever since then, it is one of the most viewed annual sporting events.

Liga Nacional de Fútbol Profesional, the administrator of the Spanish football league, aka LaLiga, applied for registration of the “El Clasico” mark (see below) in relation to sporting activities, production of sports events, sports information services, and other services of class 41 via the Madrid Protocol (IR No. 1379292).

On August 15, 2019, the JPO examiner refused the applied mark due to a lack of distinctiveness in contravention of Article 3(1)(iii) of the Trademark Law. Examiner asserted that the term “El Clasico” gets to be known as football matches between FC Barcelona and Real Madrid C.F. If so, relevant consumers would conceive that services bearing the applied mark just relate to football matches between two teams. In this respect, the applied mark shall not be registrable based on Article 4(1)(xvi) as well since the consumers would mistake its nature when used on service unrelated to football matches between two teams.

LaLiga filed an appeal against the refusal on November 15, 2019.

JPO Appeal Board’s decision

The Appeal Board overturned the examiner’s decision by stating that relevant consumers and traders at the sight of the applied mark are unlikely to see the mark to represent football matches between indicate FC Barcelona and Real Madrid C.F. immediately when used on services in question.

Taking into account less familiarity with the Spanish language among relevant consumers in Japan and the literal meaning of ‘The Classic’, the Board found the term “El Clasico” would be conceived as a coined word in its entirety. Furthermore, the Board could not identify any fact that the term is commonly used to represent a specific nature or quality in connection with the services in question.

Based on the foregoing, the Board concluded the refusal shall be disaffirmed since the examiner erroneously found the applied mark “El Clasico”.

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.

Is “MAHARAJA” a generic term in relation to Indian restaurants?

Posted on

On July 8, 2020, the Japan IP High Court affirmed the JPO’s rejection in a trademark dispute over the “MAHARAJA” mark for Indian restaurant services in class 43. [Judicial case no. Reiwa2(Gyo-ke)10022]

Disputed mark

The disputed mark prominently consists of “Maharaja” with stylization in red (see below).

The mark was filed by MAHARAJA.CO., LTD, on December 25, 2017, designating the services of providing Indian cuisine; providing alcoholic beverages, tea, coffee, or juices; providing hotel accommodation in class 43 [TM application no. 2017-168406].

The applicant allegedly opened the first “Maharaja” Indian restaurant at Shinjuku (Tokyo) in 1968 and now operates the “Maharaja” restaurants at some places in Japan.

JPO decision

The Japan Patent Office (JPO) rejected the disputed mark in contravention of Article 4(1)(xi) of the Japan Trademark Law by citing the following senior registrations.

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

The JPO found that the stylized “Maharaja” term, due to its position, larger font, and color, dominates the perception of the disputed mark. If so, the disputed mark obviously gives rise to the same sound and meaning with the Citations. “MAHARAJA” means the head of one of the royal families that used to rule parts of India (Collins English Dictionary). Because of a high degree of phonetic and conceptual similarity, the mere difference in appearance is not sufficient to neutralize the similarity.

Besides, it is unquestionable that the disputed mark designates identical or similar services with the Citations.

For the reader’s reference, I had better explain that the Citations are respectively co-existing on similar services of providing Indian cuisine; providing alcoholic beverages in the same class. It is because these were filed just after the implementation of Servicemark in 1992 and the Trademark Law exceptionally secured for registration to protect the existing business status even if similar marks are filed by other entities on the condition that business owners apply for registration within a statutory period for the implementation.

To contest the JPO decision [Appeal case no. 2019-4961], the applicant appealed to the IP High Court on February 19, 2020.

IP High Court ruling

Applicant argued that since “MAHARAJA” has become a generic term in relation to Indian restaurant services, relevant consumers would find the appearance of the “MAHARAJA” mark rather than sound and meaning as a material clue to distinguish such restaurants. To bolster the argument, the applicant referred to the fact that 14 (fourteen) restaurants managed by an entity other than the applicant provide Indian foods using tradename “MAHARAJA” in Japan.

Given relevant consumers are accustomed to seeing the term “MAHARAJA” in close connection with Indian foods, it would likely be a generic term in relation to the service in question. If so, the aural and conceptual elements of generic term shall not be taken into consideration in assessing the similarity of the mark. The JPO errored in finding the background of the case appropriately.

The court, however, did deny the applicant’s allegation, stating that the on-line database of NTT telephone directory (town page) shows 2162 Indian restaurants exist in Japan as of 2017. It means more than 2,100 Indian restaurants use a tradename other than “MAHARAJA”. Under the circumstances, the court would not find a reasonable reason to believe “MAHARAJA” has become a generic term in relation to the service.

Even though there are plenty of Indian restaurants under the tradename of “MAHARAJA” in Japan as the applicant argues, the court would not be convinced if relevant consumers distinguish such restaurants simply by means of the visual elements of a mark (tradename). Because the court finds it commercial practice for shop owners to modify the font and color of mark (tradename) depending on its place and venue.

Based on the foregoing, the court decided that the JPO did not error in finding similarity of the mark and dismissed the appeal entirely.