カテゴリー: Katakana

TM Race: Which is Registrable, “Virtual Marathon” or “Virtual Tokyo Marathon”?

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In a recent administrative decision, the Japan Patent Office (JPO) found the word mark “Virtual Marathon” lacks distinctiveness in relation to marathon races of class 41 although the JPO admitted registration of the word mark “Virtual Tokyo Marathon” in the same class.

[Appeal case no. 2022-001910, Decision date: December 12, 2022]

Virtual Marathon

During the COVID-19 pandemic when large gathering in person is not possible, many major running decided to go virtual around the globe.

On March 30, 2020, R-bies Co., Ltd., a Japanese company managing sports events and sports media, filed a word mark “Virtual Marathon” written in Japanese Katakana characters (see below) for use on various goods and services including marathon races in classes 9, 41, and 42.

Virtual Tokyo Marathon

Three months later, Tokyo Marathon Foundation filed a trademark application for the word mark “Virtual Tokyo Marathon” in standard character on various goods and services in classes 9, 35, 36, 38, 41, 42, and 45.

The JPO did not raise any objection to the Virtual Tokyo Marathon mark and granted protection on June 21, 2021.

Examiner’s Refusal

In the meantime, on April 7, 2021, the JPO examiner raised her objection to the Virtual Marathon mark due to a lack of inherent distinctiveness in relation to sports events and marathon races of class 41 by stating that the term “virtual marathon” is commonly used to indicate an organized event where participants run a full marathon in an individual place of their choice during a specific date range tracked on an app on their smartphones. If so, the mark “Virtual Marathon” shall not meet the requirements of Article 3(1)(iii) of the Japan Trademark Law. The applicant filed a written response and argued the distinctiveness of the mark, however, the examiner did not withdraw her objection and decided to reject the entire application on November 8, 2021.

R-bies Co., Ltd. filed an appeal to the refusal on February 8, 2022, and argued the inherent distinctiveness of the Virtual Marathon mark by citing a junior trademark application for the “Virtual Tokyo Marathon” mark that was considered distinctive in relation to the same goods and services (TM Reg no. 6420795).

JPO decision

The JPO Appeal Board affirmed the examiner’s findings by citing a lot of web articles pertinent to virtual marathon races organized in Japan.

Under the circumstance, the Board has a reason to believe that relevant consumers at the sight of the Virtual Marathon mark are likely to conceive of online footrace in which each participant goes out and runs the full marathon in their own time, not as a source indicator of sports event managed by R-bies Co., Ltd. or other specific entity.

Based on the foregoing, the Appeal Board upheld the examiner’s refusal and decided to reject the word mark “Virtual Marathon” in contravention of Article 3(1)(iii).

As a matter of interpretation of the Trademark Law, provided that “Virtual Marathon” is to be rejected under Article 3(1)(iii), “Virtual Tokyo Marathon” shall be rejected on the same ground as well unless Tokyo Marathon Foundation demonstrates acquired distinctiveness of the mark as a result of substantial use. I believe it is impossible because the Tokyo Marathon was never virtually started before registration.

JPO rejected “BAMBI MAMA&BABY” due to a conflict with “BAMBI”

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In a trademark appeal disputing the similarity between “BABMI MAMA&BABY” and “BAMBI”, the Japan Patent Office (JPO) affirmed the examiner’s refusal and decided to reject a junior mark “BAMBI MAMA&BABY” due to a conflict with earlier trademark registrations for word mark “BAMBI” owned by Disney Enterprises Inc.

[Appeal case: 2022-786, Decision date: September 7, 2022]

BAMBI

Bambi, a familiar name for a baby deer, has long been famous for a 1942 American animated film produced by Walt Disney.

Disney Enterprises Inc. has owned trademark registration for the wordmark “BAMBI” in various classes (including class 3) since 2008 in Japan (TM Reg no. 5127816). Bambi character design with “BAMBI” written in Japanese (see below) has been registered for five decades.

BAMBI MAMA&BABY

Langley Inc., a Japanese company, filed a trademark application for the wordmark “BAMBI MAMA&BABY” in standard character to be used on cosmetics; soaps and detergents; dentifrices; perfumes and flavor materials; false nails; false eyelashes in class 3 with the JPO on March 2, 2021.

In fact, Langley promotes skin care creams, skin milk, and supplements bearing the BAMBI MAMA&BABY mark. Click here.

Screen capture from https://bambiwater.jp/gold/mamababy/

The JPO examiner rejected the mark based on Article 4(1)(xi) of the Japan Trademark Law by citing TM Reg no. 5127816 “BAMBI” on October 14, 2021.

Langley filed an appeal against the refusal on January 19, 2022, and argued the dissimilarity of mark between “BAMBI” and “BAMBI MAMA&BABY”.

JPO Decision

The JPO Appeal Board found the literal elements of “MAMA&BABY” lacks distinctiveness in relation to the applied goods of class 3 because there are plenty of care products for babies and mothers by competitors on which the term “MAMA&BABY” has been used as a descriptive indication. In the meantime, the term “BAMBI”, famous for the Disney film, shall evidently give an impression of source indicator in the mind of relevant consumers.

If so, it is permissible to find the term “BAMBI” as a prominent portion of the applied mark, and thus compare the portion with the earlier mark in assessing the similarity of the mark.

Undoubtedly, the prominent portion of the applied mark is identical to the cited mark “BAMBI” from visual, phonetical, and conceptual points of view.

Being that TM Reg no. 5127816 designates the goods identical to the applied mark, there is no room to argue the dissimilarity of goods.

Based on the foregoing, the Board decided to dismiss the appeal and rejected “BAMBI MAMA&BABY” due to a conflict with the earlier registered mark “BABMI” based on Article 4(1)(xi).

NIVEA vs NYFEA

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On August 2, 2022, the JPO Opposition Board found “NYFEA” is dissimilar to “NIVEA” and unlikely to cause confusion with international skin care major Beiersdorf AG even when used on goods in class 3 including skin-care cream.

[Opposition case no. 2021-900350]

NYFEA

The opposed mark, consisting of a stylized word “NYFEA” (see below), was filed by a Chinese company, Shenzhen VKK Technology Co., Ltd for use on various goods in classes 3, 8, 9, 10, 11, 16, and 21 with the JPO on July 2, 2020.

The application designates cakes of toilet soap, cleansing milk for cosmetic purposes, detergents, beauty masks, nail varnish, dentifrices, perfume, and incense in class 3.

The JPO admitted registration of the NYFEA mark on June 15, 2021, and published for post-grant opposition on July 20, 2021.

Opposition by Beiersdorf AG

The German cosmetics giant, Beiersdorf AG filed an opposition against the NYFEA mark on September 21, 2021, and argued the opposed mark shall be canceled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law due to a conflict or likelihood of confusion with the world’s largest skincare brand “NIVEA”.

Beiersdorf alleged the NIVEA mark has been substantially used on skin-care creams in Japan since 1968. By virtue of effective advertising, sales promotion, and marketing for long years, NIVEA has acquired a remarkable degree of reputation and popularity among relevant consumers in Japan. As matter of fact, the mark “NIVEA” written in Japanese Katakana character is included in the famous trademark database managed by the JPO.

In view of the close resemblance between NIVEA and NYFEA, and the famousness of NIVEA, relevant consumers would confuse the source of the goods in class 3 bearing the opposed mark with the opponent.

JPO decision

To my surprise, the JPO negated the famousness of the NIVEA mark by stating “the opponent failed to produce sales amount, market share, and materials of promotional advertising in our jurisdiction at all. A mere allegation that the opponent promoted skin-care creams bearing the NIVEA mark for over five decades is insufficient to find a remarkable degree of the reputation of the opponent’s mark in Japan. Besides, the Board held a fact that the mark “NIVEA” written in Japanese Katakana character is included in famous trademark database would not affect the above finding. Being that the opponent did not prove a high degree of reputation and popularity of “NIVEA” at the time of filing and registration of the opposed mark with evidence, the Board had no reason to believe the opponent mark remains famous as a source indicator of skin-care goods by Beiersdorf AG.

In the assessment of similarity, the Board found both marks are distinguishable in appearance because of differences in the second and third letters, “YE” and “IV” among five letters in total. Likewise, the difference in the second sound would give rise to a distinctive impression in view of a few phonetic compositions of three sounds in total. Both marks are incomparable to the concept.

Based on the foregoing, the Opposition Board found no reasonable ground to cancel the opposed mark in contravention of Article 4(1)(xi) and (xv) and decided to dismiss the opposition entirely.

Olympic Lose Trademark Race with Olimple

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In a trademark opposition disputing the similarity and the likelihood of confusion between “Olympic” and “Olimple”, the JPO did not side with the IOC (International Olympic Committee).

[Opposition case no. 2021-900173]

Olimple

The opposed mark, consisting of the term “Olimple” written in the alphabet and the Japanese katakana character (see below), was applied with the Japan Patent Office (JPO) on January 28, 2020, for use on facial skin care gel, cosmetics, soaps, and other goods in class 3 by Olimple Co., Ltd.

The JPO granted protection on February 2, 2021, and published for opposition on March 9, 2021.

The applicant promotes medicated skin care gel for men bearing the Olimple mark.

Image credit: olimple.jp

Opposition by IOC

Opponent, IOC claimed the opposed mark shall be canceled in contravention of Article 4(1)(vi), (vii), (xi) and (xv) of the Japan Trademark Law by citing earlier International Registration no. 1128501 for wordmark “OLYMPIC” covering various goods and services in class 3 and other classes.

IOC argued a close resemblance between “OLYMPIC” and “Olimple” by stating:

  1. Both marks share four of the seven letters. Besides, the two letters at the end of the word, “le” and “IC” looks similar.
  2. The third letters “I” and “Y” of both marks are pronounced as “li” accompanied by the second letter “L”.
  3. Being that consumers are accustomed to several terms with a prefix of “OLYMP”, e.g., “OLYMPISM”, “OLYMPIAN” in connection with “OLYMPIC”, they will see the literal element “Olimp” as a dominant portion of the opposed mark.
  4. If so, relevant consumers are likely to confuse the opposed mark with “OLYMPIC” when used on goods in question.

JPO decision

The JPO did not question the famousness of the OLYMPIC mark as a source indicator of the IOC. However, the Opposition Board negated the similarity between “Olimple” and “OLYMPIC” on the following grounds.

  1. The term “Olimple” shall be deemed as a coined word because it is not a word that appeared in a language dictionary and does not give rise to any specific meaning in relation to the goods in question.
  2. There is a remarkable difference in the presence or absence of Japanese katakana characters. In addition to the difference between upper- and lower-case letters after the second letter, there are distinctions in the third letter “i” and “Y”, the sixth letter “l” and “I”, and the letters “e” and “C” at the end. In the configuration of the relatively short seven-letter alphabet, both marks are sufficiently distinguishable by appearance.
  3. Phonetically, both marks are unlikely to cause confusion as a whole because of a clear difference in the fourth and fifth sounds.
  4. It is obvious that both marks are dissimilar in concept.

The Board did not find a reason to believe relevant consumers would misconceive the source of the opposed mark merely because of close attention to the literal portion of “OLYMP” and “Olimp”, and its similarity.

Based on the foregoing, the JPO dismissed the entire allegations and decided on July 13, 2022, that the opposed mark shall remain valid as the status quo.

SUPERMAN defeated in trademark battle by SUPER M.E.N.

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On April 7, 2022, the Opposition Board of the Japan Patent Office (JPO) dismissed a trademark opposition filed by Warner Bros against TM Reg no. 6375288 for the wordmark “SUPER M.E.N.” and found the mark is dissimilar to “Superman.”

[Opposition case no. 2021-900257]

“SUPER M.E.N.”

Opposed mark, consisting of the word “SUPER M.E.N.” written in alphabets and Japanese Katakana character (see below) was applied with the JPO on February 7, 2020, for use on various goods in classes 5,9,10,25,28 and services in classes 35, 45 (TM App no. 2020-14074) by Dr. Nakamatsu, a famous Japanese inventor.

The JPO granted protection on March 29, 2021, and published for opposition on April 27, 2021.

Dr. Nakamatsu promotes unique face shields bearing the SUPER M.E.N. mark to help prevent the spread of COVID-19. According to the advertisement, “M.E.N.” suggests ‘mouth, eye, and nose’ and ‘face mask; festival mask’ (The term “omen” is the exact word to mean it in Japanese).

Image credit: Dr.NakaMats.Com.

Opposition by Warner Bros

Opponent, Warner Bros. Entertainment Inc. claimed the opposed mark “SUPER M.E.N.” shall be canceled in contravention of Article 4(1)(xi) of the Japan Trademark Law by citing earlier trademark registrations for a fictional superhero “Superman” in relation to visor caps; cap peaks of class 25 and toy masks; carnival masks; costume masks; theatrical masks of class 28.

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.

Warner Bros argued that the opposed mark gives rise to a meaning of ‘multiple SUPERMAN’ from its configuration. Besides, in view of resembled appearance and pronunciation between the marks, relevant consumers of the goods in question are likely to associate the opposed mark with the superhero “SUPERMAN” and confuse the source of origin of these goods.

JPO decision

The JPO Opposition Board found the opposed mark is pronounced as “super-men”, however, it does not give rise to any specific meaning at all.

By virtue of the difference between the letters “E” and “A” and the katakana character, both marks can be sufficiently distinguishable by appearance.

In phonetical comparison between “super-man” and “super-men”, relevant consumers would be unlikely to confuse each sound when pronounced in view of a few phonetic compositions of four sounds in total and distinction in the sound of “ma” and “me”.

There is no doubt both marks are dissimilar in concept because the opposed mark does not give rise to any meaning similar to ‘a fictional superhero’.

Based on the above findings, the Board held that “SUPER M.E.N.” and “SUPERMAN” are obviously dissimilar from visual, phonetic, and conceptual points of view.

In a conclusion, the JPO dismissed the entire allegations of Warner Bros and allowed registration of the opposed mark.

Patagonia Inc Failed in Registering “PATAGONIA”

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On December 15, 2021, the Japan Patent Office (JPO) affirmed the examiner’s rejection to protect a wordmark “PATAGONIA” for seafood in class 29 and dismissed an appeal filed by Patagonia Inc. due to a lack of distinctiveness.

[Appeal case no. 2020-16786]

“PATAGONIA”

An American clothing company that markets and sells outdoor clothing, Patagonia Incorporated, filed a divided-trademark application for wordmark “PATAGONIA” in standard character on goods of ‘fresh, chilled or frozen edible aquatic animals (not live); blue mussels, not live; oysters, not live; processed seafood products; soups’ in class 29 on August 19, 2019 (TM Application no. 2019-110730).

The JPO examiner rejected the mark in contravention of Articles 3(1)(iii) and 4(1)(xvi) of the Japan Trademark Law on August 24, 2020.

The examiner asserted “PATAGONIA” refers to a geographical region that encompasses the southern end of South America and is a popular tourist destination for nature-lovers and adventure-seekers. Since Patagonia travel guides often have contents of Patagonia’s seafood, it is likely that relevant consumers and traders at the sight of seafood bearing the wordmark “PATAGONIA” with ordinary care would conceive the goods from the Patagonia region and see it as an indication of the origin of seafood.

If so, whenever the mark is used on seafood, not from the Patagonia region, it inevitably misleads the quality of goods.

Appeal by Patagonia Inc.

On December 7, 2020, Patagonia Inc. filed an appeal against the rejection and argued the term “Patagonia” is frequently accompanied by “region” or “sea” when used to indicate the origin of seafood because Patagonia is neither a nation nor a specific province but is a region comprising of all southerly Chile and Argentina. Being that the applied mark “PATAGONIA” has acquired a substantial degree of reputation and popularity in connection with apparel as a source indicator of Patagonia Inc., relevant consumers would rather conceive of a famous apparel brand at the sight of seafood bearing the mark “PATAGONIA.”

Besides, it is questionable if relevant consumers are familiar with the Patagonian Sea as an origin of seafood available in Japan.

JPO decision

The JPO Appeal Board found the mark “PATAGONIA” lacks distinctiveness in connection with the goods in question by stating that fish and seafood from the Patagonian Sea have been imported to Japan over the past three decades. The term “Patagonia” perse or its transliteration written in Japanese Katakana character has been used to indicate the origin of the goods. Under the circumstances, it is unquestionable that relevant consumers at the sight of seafood bearing the mark “PATAGONIA” would see it as an indication of the origin of the goods.

The Board did not question the famousness of the “PATAGONIA” mark in connection with outdoor-related goods. However, the Board denied the distinctiveness of the mark in relation to seafood even though Patagonia Inc. has promoted seafood for sale in Japan since 2016 because the mark in question is not used, but “PATAGONIA PROVISIONS”.

Based on the foregoing, the Board dismissed the entire allegations and decided to reject the mark in contravention of Article 3(1)(iii).

BEYOND MEAT defeats “Beyond Meat Burger”

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The Japan Patent Office (JPO) sided with Beyond Meat Inc. and canceled TM Reg no. 6197193 for wordmark “Beyond Meat Burger” by free-riding on the business reputation of “BEYOND MEAT”.

[Opposition case no. 2020-900023, Gazette issued date: July 30, 2021]

Beyond Meat Burger

Opposed mark, consisting of a wordmark “Beyond Meat Burger” written in a Japanese katakana character (see below), was filed by a Japanese individual on July 23, 2018, for use on ‘meat products’ in class 29 and ‘clothing’ in class 25.

Subsequently, the applicant deleted the designated goods in class 29.

The mark was registered on November 15, 2019, and published for opposition on December 10, 2019.

BEYOND MEAT

Beyond Meat Inc., a US food processing company that specializes in providing plant-based meat, filed an opposition against the “Beyond Meat Burger” mark with the JPO on January 24, 2020, before the lapse of a two-month statutory period for the opposition.

In the opposition brief, Beyond Meat argued the opposed mark shall be canceled in contravention of Article 4(1)(xix) of the Japan Trademark Law.

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

It is interpreted that the “famous mark” under the article does not require a high reputation among Japanese consumers. If domestic consumers recognize such a reputation in foreign countries, it will suffice.

Beyond Meat alleged that the “BEYOND MEAT” mark has been well known for plant-based meat substitutes by the opponent to meat distributors as well as US consumers (It should be noted that Beyond Meat has yet to launch the business in Japan as of now). It is obvious that the opposed mark is confusingly similar to “BEYOND MEAT”. Presumably, the opposed party must have filed the opposed mark with a fraudulent intention to prevent registration of the “BEYOND MEAT” mark in Japan and gain unjust enrichment by doing so.

JPO decision

The JPO Opposition Board admitted that the “BEYOND MEAT” mark has acquired a remarkable degree of reputation among US consumers as a source indicator of plant-based meat substitutes by Beyond Meat Inc. even before the application date of the opposed mark

The Board assessed the opposed mark is confusingly similar to “BEYOND MEAT”. Relevant consumers with an ordinary care would see the term “Beyond Meat” as a prominent portion of the opposed mark because the consumers get familiar with the English word “Burger.”

A fact that the opposed party initially designated ‘meat products’ implies the applicant’s intention to use the opposed mark on the goods that are closely associated with meat substitutes. If so, the Board had a reasonable ground to believe the opposed mark was filed with an intention to take advantage of goodwill and business reputation associated with Beyond Meat’s tradename and trademark.

Based on the foregoing, the JPO decided to retroactively cancel the opposed mark “Beyond Meat Burger” in contravention of Article 4(1)(xix).

Trademark Dispute over “RED HOT”

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The Japan Patent Office (JPO) dismissed trademark opposition against wordmark “REDHOT” written in Katakana character opposed by The French’s Food Company LLC who owns senior trademark “REDHOT” and “FRANK’S REDHOT” in class 30.

[Opposition case no. 2020-900289, Gazette issued date: June 25, 2021]

Opposed mark “REDHOT”

Opposed mark, consisting of the word “REDHOT” written in Japanese Katakana character (see below), was filed by Kentucky Fried Chicken Japan (KFC) for use on fried chicken, meat, processed meat products, and other goods in class 29 and hamburgers, hot dog sandwiches, bread rolls, and other goods except for seasonings and spices in class 30 with the JPO on November 6, 2018 (TM Application no. 2018-142676).

KFC Japan has begun selling the “Red Hot Chicken”, red and white pepper with a touch of habanero, giving it a crisp, spicy flavor and the taste of domestic chicken in limited quantities since 2004.

FRANK’S REDHOT

The French’s Food Company LLC, an owner of the #1 brand of hot sauce “Frank’s RedHot” in America, filed an opposition on November 2, 2020.

Opponent argued that the opposed mark shall be canceled in contravention of Article 4(1)(xi) and (xv) because of similarity to senior TM Reg nos. 4723565 and 5523112 for wordmark “REDHOT” on seasonings and spices in class 30 (Citation 1), and a likelihood of confusion with TM Reg no. 5523111 for wordmark “FRANK’S REDHOT” (Citation 2) which has become famous as a source indicator in connection with hot sauce as a result of substantial and continuous use since 1920.

JPO decision

The Opposition Board of JPO found that Article 4(1)(xi) shall not be applicable to the opposed mark.

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

Since the designated goods, seasonings and spices, of the opposed mark are deemed dissimilar to any other goods belonging to class 30. In so far as respective goods in question are dissimilar, the opposed mark shall not be subject to the article even though the mark is identical with Citation 1.

The Board questioned whether the mark “FRANK’S REDHOT” has acquired a certain degree of reputation and popularity among relevant consumers in Japan by taking account of the produced evidence. The mere fact that the opponent’s hot sauces get to be a popular choice at specific dining restaurants is insufficient to support the famousness of Citation 2 in Japan.

Besides, relevant consumers would be easily able to distinguish the opposed mark with “FRANK’S REDHOT” by means of the distinctive term “FRANK’S” of Citation 2.

Given the low degree of similarity and unproven famousness as a source indicator of the opponent, the Board concluded it is unlikely that relevant consumers would confuse the source of goods bearing the opposed mark with the opponent or Citation 2 from the totality of circumstances, and thus dismissed the opposition entirely.

“MONA LISA” May Smile At You

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In a recent decision, the Japan Patent Office (JPO) disaffirmed the examiner’s refusal and accepted for registration of the world-famous painting, ‘Mona Lisa’ by Leonardo da Vinci.
[Appeal case no. 2020-9377, Gazette issued date: May 28, 2021]

“MONA LISA”

Disputed mark, consisting of a wordmark “MONA LISA” written in a Japanese katakana character (see below), was filed by a Japanese company, Negibito Co., Ltd on February 20, 2019, for use on ‘edible live aquatic animals; edible unprocessed seaweeds; fresh vegetables; fresh fruits; live mammals, fish [not for food], birds and insects and other goods in class 32.

Apparently, the company uses the disputed mark on specially grown scallions with a high sugar content of more than 20 degrees to be sold at JPY10,000 (USD92) for one stalk!

Article 4(1)(vii)

JPO examiner raised her objection by stating that since “MONA LISA” has been known for the world-famous painting, ‘Mona Lisa’ by Leonardo da Vinci, it shall contravene the generally accepted sense of morality or the international faith if registered. Accordingly, the disputed mark shall be rejected in contravention of Article 4(1)(vii) of the Japan Trademark Law.

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

Trademark Examination Guidelines 42.107.05 provides seven criteria to take into consideration to determine if a mark, consisting of valuable cultural products (works of art), shall contravene the article.

(i) Famousness of the cultural products
(ii) Recognition of the cultural products among citizens or local residents
(iii) State of use of the cultural products
(iv) Relationship between the state of use of the cultural products and the designated goods or services
(v) Background, purpose, and reason for filing an application
(vi) Relationship between the cultural products and the applicant
(vii) Authorized entity that manages and owns the cultural products (if any)

The applicant filed an appeal against the refusal on July 3, 2020.

JPO Appeal Board decision

The Appeal Board assessed seven criteria pertinent to the works of art “MONA LISA” in accordance with the Trademark Examination Guideline.

The Board admitted a remarkable degree of recognition and reputation of “MONA LISA” among the general public in Japan as the world-famous painting by Leonardo da Vinci.

In the meantime, the Board questions if the goods in question are closely related to works of art and art exhibitions that the term “MONA LISA” has been used.

Besides, the Board found that the term is not used to promote or develop certain regions associated with the painting in relation to the goods in question.

Based on the foregoing, the Board held that it is unlikely that registration of the disputed mark would constitute a genuine and sufficiently serious threat to a fundamental interest of society when used in connection with the goods in class 32. Therefore, the disputed mark “MONA LISA” shall not be refused on the basis of the public policy exception provided for in Article 4(1)(vii) of the Trademark Law.

JPO found Italian word “Panetteria” distinctive in relation to restaurant service

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In a recent administrative decision, the Appeal Board of the Japan Patent Office (JPO) disaffirmed the examiner’s refusal and found “Panetteria ARIETTA” and “ARIETTA” are dissimilar by virtue of distinctiveness of the term “Panetteria.”

[Appeal case no. 2020-9688, Gazette issued date: May 28, 2021]

Panetteria ARIETTA

FOOD ENGINEERING DESIGN INC., a Japanese commercial bakery and restaurant, filed a trademark registration for word mark consisting of the term “Panetteria ARIETTA” in a gothic type and its transliteration written in a Japanese katakana character (see below) for use on confectionery and bread in class 30 and restaurant service in class 43 on January 15, 2019 [TM App no. 2019-8176].

The applicant has used the applied mark as a shop name on bakeries located in Tokyo.

ARIETTA

The JPO examiner raised her objection on the ground that the applied mark is deemed similar to senior trademark registration no. 5106118 for word mark consisting of the term “ARIETTA” and its transliteration written in a Japanese katakana character (see below) on restaurants and other services in class 43.

In the refusal decision dated May 7, 2020, the examiner asserted the term “Panetteria” is an Italian word meaning ‘bakery’ and thus lacks distinctiveness in relation to bread and restaurant service. If so, other term “ARIETTA” of the applied mark would play a dominant role of its source indicator. Accordingly, the examiner rejected the applied mark in contravention of Article 4(1)(xi) of the Japan Trademark Law.

The applicant filed an appeal against the refusal on July 10, 2020.

JPO Appeal Board decision

The Appeal Board questioned whether an Italian word “Panetteria” is commonly used as a descriptive indication in relation to restaurant service in Japan. The Board found the term as well as its meaning is not familiar among the general public. Under the circumstance, the examiner errored in assessing distinctiveness of the word. A mere fact that the term “Panetteria” appears in an Italian language dictionary is insufficient to conclude a portion of the term “ARIETTA” per se plays a role of source indicator of the applied mark.

Provided that relevant consumers would not conceive any specific meaning from the term “Panetteria”, the Board held the applied mark “Panetteria ARIETTA” and cited mark “ARIETTA” are obviously dissimilar as a whole from visual, phonetic, and conceptual points of view.

Based on the foregoing, the JPO Appeal Board disaffirmed the examiner’s rejection and decided to register the applied mark accordingly.