カテゴリー: Refusal appeal

Trademark dispute: “Ⓗ REWARDS” vs “REWARDS”

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In a recent decision, the Japan Patent Office (JPO) found that a junior mark consisting of Circled “H” and a word “REWARDS” is dissimilar to earlier trademark “REWARDS” and decided to overturn the examiner’s refusal.
[Appeal case no. 2024-1366, decided on August 6, 2024]

Applied mark

H WORLD HOLDINGS SINGAPORE PTE. LTD. filed a trademark application with the JPO on August 2, 2022. for a mark consisting of a circled “H” device and the word “REWARDS” (see below) in connection with various services of Classes 35 and 43.

Cited mark

On December 5, 2023, the JPO examiner decided to reject the applied mark due to a conflict with earlier TM Reg no. 5017950 for wordmark “REWARDS” in standard character for use on various services in classes 35 and 39 based on Article 4(1)(xi) of the Japan Trademark Law.

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

The applicant filed an appeal against the rejection with the JPO on January 25, 2024.

JPO decision

Astonishingly, the JPO Appeal Board found the applied mark is dissimilar to the cited mark by stating that:

The applied mark is composed of the alphabet “H” in circle and a word “REWARDS”. Despite the slight separation between “H” and “REWARDS”, as these letters are represented in the same typeface and alphabets in a horizontal line, it rather gives a coherent impression in appearance.

 Although the word “REWARDS” is an English word denoting the plural form of “REWARD,” in a coherent composition like the applied mark, the applied mark will be simply recognized as representing a coined word consisting of the words “H REWARDS.”

If so, the applied mark would give rise to a sound of ‘H REWARDS’, but no specific meaning as a whole.

Comparing the applied mark with the cited mark, regardless of the fact that both marks share the word “REWARDS,” two marks are visually distinguishable by virtue of the presence or absence of the circled letter “H”.

Likewise, both marks are distinguishable in sound because of the presence or absence of the initial component sound that remarkably alters the overall tone and nuance.

From a conceptual point of view, the applied mark does not give rise to a specific meaning, whereas the cited mark has a meaning of “ something given in exchange for good behavior or good work, etc.” There is no room to find conceptual similarity between the marks.

Based on the above findings, the Board noted that the applied mark is sufficiently distinguishable from the cited mark and unlikely to cause confusion with the cited mark when used in relation to the services in question.

Therefore, even though the services sought for registration by the applied mark are deemed similar to the service designated under the cited mark, given the applied mark is dissimilar to the cited mark, it is inappropriate to apply Article 4(1)(xi) of the Trademark Law.

Accordingly, the Board decided to overturn the examiner’s rejection and granted protection of the applied mark.

JPO decision: “PENINSULA HILLS” unlikely to cause confusion with “The Peninsula”

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The Japan Patent Office (JPO) reversed the examiner’s refusal and granted registration of the word mark “PENINSULA HILLS” written in Japanese Katakana characters in Classes 36 and 43, finding no likelihood of confusion with a world-renowned hotel “The Peninsula”.
[Appeal case no. 2023-4720, decided on July 25, 2024]

PENINSULA HILLS

CF-1 Co., Ltd. filed a trademark application with the JPO on January 7, 2022 for the word mark “PENINSULA HILLS” written in Japanese Katakana characters (see below) for use in, among other things, real estate services in Class 36 and hotel and restaurant services in Class 43 (TM App No. 2022-1353).

The Peninsula

The JPO examiner decided to reject the applied mark “PENINSULA HILLS” by finding a likelihood of confusion with a world-renowned hotel “The Peninsula” because the mark contains the term “PENINSULA”, which is highly recognized by consumers as an abbreviation of the luxury hotel, based on Article 4(1)(xv) of the Japan Trademark Law on December 6, 2022.

To contest the rejection, the applicant filed an appeal against the rejection with the JPO on March 3, 2023.

JPO Appeal Board decision

To my surprise, the JPO Appeal Board questioned a high degree of recognition of the hotel “The Peninsula” by stating that:

“The Peninsula Tokyo” is the only hotel commercially operated by The Hongkong Shanghai Hotels, Limited in Japan. If so, the number of users is quite limited. Even if there are hotels with the name “The Peninsula” operated by the company in foreign countries and then Japanese travelers may stay the hotels, it is insufficient to find a high recognition of the hotel to average consumers since there is no objective data regarding the number of users, its sales, and the ratio of Japanese users and sales.

Therefore, the Board has no reason to believe that the term “PENINSULA” is widely recognized by consumers in Japan as an abbreviation for the hotels managed by the company.

In a global assessment of the likelihood of confusion, the Board found the applied mark is dissimilar to the cited mark “The Peninsula”.

The applied mark and the cited mark differ significantly in appearance due to the difference in the number of letters and the presence of the word “HILLS”. Furthermore, the difference in the number of syllables and the presence of the sound “HILLS” make the pronunciations easily distinguishable. Therefore, the relevant consumers and traders will be able to distinguish between the two marks are will consider them to be dissimilar because of the clear difference in the overall impression.

Given no high recognition of the hotel “The Peninsula” and low degree of similarity to the applied mark, the Board finds no reason to believe the applied mark may cause confusion with the cited mark when used in relation to the services in question.

In view of the foregoing, the Board held that the examiner had errored in applying Article 4(1)(xv), and decided to grant protection to the applied mark.

Cobra Golf Scores Win in an Attempt to Register Mark “MIM”

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In a recent decision, the Japan Patent Office (JPO) Appeal Board sided with Cobra Golf Incorporated, represented by MARKS IP LAW FIRM, and disaffirmed the examiner’s rejection by finding dissimilarity between TM Reg no. 6208087 and Cobra’s mark “MIM” for use on golf clubs.
[Appeal case nos. 2023-16540, decided on July 9, 2024]

Cobra Golf “MIM”

Cobra Golf Incorporated, one of the leasing US golf club and golf equipment manufacturer, applied for registration of wordmark “MIM” in standard character with the JPO on December 7, 2020 for use on golf clubs in class 28 (TM App no. 2020-151063).

Cobra Golf uses the mark on their golf irons produced with a new innovative “MIM” technology which stands for ‘Metal Injection Molding’.

The JPO examiner rejected the mark in contravention of Article 4(1)(xi) of the Trademark Law due to a conflict with an earlier trademark registration no. 6208087 for a composite mark consisting of the word “MIZKAN MUSEUM” with a device that can be seen as the word “MIM” (see below) in class 21 on June 30, 2023.

Marks IP Law Firm, on behalf of Cobra Golf, filed an appeal with the JPO on September 29, 2023, arguing that the cited mark is dissimilar to the word mark “MIM” because the figurative element of the cited mark would not be considered as a word “MIM” due to its stylization, but rather as a design consisting of a vertical line in between two “M” letters representing an initial letter of “MIZKAN” and “MUSEUM” respectively.

JPO decision

The JPO Appeal Board found that the cited mark would not give rise to a pronunciation of “MIM” from the figurative element by stating that:

There is a slight possibility that the building-like figures on the left and right sides of the upper part of the cited mark will be perceived as the letter “M” from appearance. However, the Board considers that the relevant consumers are unlikely to find so because of the considerable stylization. The vertical line between the letters, combined with the fact that it is of a shorter length than the letters, will also not be identified as the letter “I.”

It is therefore reasonable to conclude that the upper part of the cited mark would never be immediately recognized as representing the word “MIM” as a whole. Rather, the relevant consumers would recognize it only as a representation of a design with no specific meaning in its entirety.

Given the upper part of the cited mark has neither sound nor meaning, both marks, when considered globally, are easily distinguishable from visual, phonetical and conceptual points of view and unlikely to cause confusion when used on goods in class 28.

Based on the foregoing, the Board held that the examiner errored in applying Article 4(1)(xi) and decided to grant registration of Cobra’s mark “MIM”.

Trademark dispute: “SOFTWEAR” vs “SOFTWAIR”

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In an appeal trial disputing similarity between wordmark “SOFTWEAR” and “SOFTWAIR”, the JPO reversed the examiner’s rejection due to the error in finding dissimilarity of two marks.
[Appeal case no. 2023-20831, decided on April 24. 2024]

SOFTWEAR

DuPont Safety & Construction, Inc., a US corporation, sought registration of wordmark “SAFTWEAR” in standard character for use on blankets, gloves, masks, protection masks, protective suits for medical use in class 10 with the JPO on August 22, 2022.

SOFTWAIR

The JPO examiner rejected the applied mark due to a conflict with TM Reg no. 6719284 for wordmark “SOFTWAIR” in standard character owned by Air Wair International Ltd based on Article 4(1)(xi) of the Japan Trademark Law.

The earlier mark covers not only shoes, sports shoes, but also clothing in class 25.

DuPont filed an appeal against the examiner’s rejection on December 7, 2023 and argued that the examiner had errored in assessing similarity between the mark “SOFTWEAR” and “SOFTWAIR”.

JPO decision

The JPO Appeal Board found the applied mark “SOFTWEAR” is not a word included in common dictionaries. Even tough respective term “SOFT” and “WEAR” has its meaning, there is no reason to believe the mark give rise to any specific meaning as a whole.

Likewise, the cited mark “SOFTWAIR” would not have a specific meaning in its entirety. But it should note that the Board found the cited mark has three pronunciations, ‘sɔft weər’, ‘sɔft waɪr ’ and  ‘sɔft ueia’.

From appearance, in spite that they consist of the same kind (alphabet) and number of characters, two marks are clearly distinguishable, because of the difference of two characters “EA” and “AI” in the middle of the eight-character composition.

Even if two marks have the same pronunciation of ‘sɔft weər’, when compared with ‘sɔft waɪr ’ and  ‘sɔft ueia’, the difference in the middle of the entire five or six sounds would result in a clear distinction in the overall tone and feeling.

Conceptually, it is unable to compare since both marks do not give rise to a specific meaning at all.

Based on the above findings, the Board held that even if the applied mark has the same pronunciation with one of the sounds of the cited mark, other two sounds are sufficiently distinguishable to the sound of the applied mark. Besides, both marks are not comparable in conception, and clearly distinguishable in appearance. When taking into consideration the impressions and memories given in mind of consumers by two marks, there is no risk of confusion as to the origin of the goods, and thus the Board has a reason to believe “SOFTWEAR” is dissimilar to “SOFTWAIR”.

Therefore, the examiner errored in finding similarity of the marks and applying Article 4(1)(xi). Accordingly, the rejection shall be overturned.

Is Mr. Benjamin Brown around?

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The Japan Patent Office (JPO) reversed the examiner’s rejection to TM App no. 2022-13396 for word mark “Benjamin Brown” in classes 25 and 28 based on Article 4(1)(viii) of the Trademark Law by stating the mark would not be completely identical with a full name of the person “Benjamin Brown” alive.

[Appeal case no. 2023-4642, decided on November 9, 2023]

Benjamin Brown

Japanese company, Kabushiki Kaisha Pmang, filed trademark application for a word mark “Benjamin Brown” for use on various goods in class 25 and 28, especially golf wear, shoes and other gold items, with the JPO on February 7, 2022.

On December 19, 2022, the JPO examiner rejected the mark in contravention of Article 4(1)(viii) of the Japan Trademark Law since “Benjamin Brown” corresponds to a full name of person, an Israeli professor, researcher of Judaism and Jewish thought, lecturer at the Department of Jewish thought at Hebrew University.

Article 4(1)(viii)

Article 4(1)(viii) is a provision to prohibit registration of trademark that contains the representation or name of any person, famous pseudonym, professional name, or pen name of another person, or famous abbreviation thereof.

Notwithstanding the provision, the article is not applicable where the applicant could obtain a written consent from the person.

The Supreme Court of Japan ruled the article has aimed to protect personality rights of a living individual. Therefore, the article is not applicable when the person is no longer alive.

The applicant filed an appeal against the rejection on March 20, 2023 and argued that registration of the mark “Benjamin Brown” in relation to goods of classes 25 and 28 would never cause damages of personal right to Israeli professor at Hebrew University.

JPO Appeal Board decision

The Appeal Board found that the applied mark “Benjamin Brown” shall be conceived as a coined word in its entirety. Relevant consumers are unlikely to associate it with a full name of particular person.

It is uncertain if “Benjamin Brown” is a full name of the professor or alive (!). Besides, the Board can’t find any reason to believe that his name has been highly recognized among consumers in Japan.

If so, the applied mark shall not be subject to Article 4(1)(viii). Since the examiner made an error in applying the article, it should be cancelled in due course, the Board decided.

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

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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).

Japan IP High Court Decision to A Position Mark of Dr. Martens’ Yellow Welt Stitch

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On August 10, 2023, the Japan IP Hight Court ruled to dismiss an appeal by Airwair International Limited to the JPO’s rejection against a position mark for Dr. Martens’ Yellow Welt Stitch.

[Court case no. Reiwa 5(Gyo-ke)10003]

Dr. Martens’ Yellow Welt Stitch

Airwair International Limited, a UK company, applied a position mark consisting of a yellow stitching around the perimeter of footwear on the outer sole edge (see below) for use on leather shoes and boots in class 25 with the JPO on June 12, 2018 (TM App no. 2018-77608).

Allegedly, first use of the position mark on the Dr. Martens “1460” boots has dated back to 1960 in UK. Leather shoes and boots bearing the yellow welt stitch have been continuously distributed in Japan by the applicant or a local subsidiary (Dr. Martens Japan) via company store (61 shops at present) and major shoes retailers since 1985. Recent annual sales for Dr.  Martens’ shoes in Japan exceed 6 billion Japanese yens and over 460,000 pairs. Airwair has routinely monitored and taken legal actions against lookalikes of shoes bearing the yellow welt stitch and been successful in stopping distribution of following shoes.

According to the brand awareness survey that targeted a total of 1,019 men and women aged from 15 to 59, 30.7% of the interviewees who have purchased leather shoes and boots could answer Dr. Martens at the sight of black leather shoes with the yellow welt stitch and 37.6% selected Dr. Martens from multiple choice.

On August 23, 2022, The JPO Appeal Board decided the yellow stitching of Dr. Martens does not possess its own distinctive character by stating that relevant consumers would not see the stitch as a source indicator, but as a mere decoration. The Board also negated acquired distinctiveness of the position mark based on the fact that a majority of frequent users of the goods in question could not connect the stitch with Dr. Martens. Accordingly, the Board sustained the examiner’s rejection (Appeal case no. 2021-2446).

Airwair filed an appeal against the JPO Appeal Board decision and argued inherent and acquired distinctiveness of the Dr. Martens’ yellow welt stitch in relation to leather shoes and goods.

IP High Court decision

Inherent distinctiveness

The Court paid attention to the circumstance that plenty of leather shoes and boots have been manufactured by means of the Goodyear Welted Method for long years and the thread stitched to attach the upper to the sole has often identical or similar color to the upper and sole. If so, in relation to yellow-colored shoes, a yellow stitch would be anything but distinctive.

Bearing in mind that the applied mark does not specify a color of the upper and the sole, the judge had a view that it is allowed to assess inherent distinctiveness of the position mark in relation to the shoes with a yellow thread, upper and sole and any colors.

Based on the foregoing, the Court found the position mark lacks inherent distinctiveness in relation to leather shoes and boots and shall be unregistrable based on Article 3(1)(iii) of the Trademark Law.

Acquired distinctiveness

The Court questioned relevance of the brand awareness survey that excluded consumers who had not purchased either leather shoes or boots in the past year. However, by taking account of an expert opinion that points out 15% shall be sufficient to admit distinctiveness of trade dress as a source indicator especially in fashion industry and the survey revealed there were over four times as many interviewees who selected Dr. Martens than Timberland (7.9%) from multiple choice, the judge ruled Dr. Martens’ yellow welt stitch has acquired a certain degree of recognition as a sign that the black leather shoes originate from the Airwair company.

In the meantime, the Court held there is doubt if the position mark would play a role in indicating its source even when used on a yellow or similar colored outsole or welt. As a matter of fact, Airwair has not taken actions against shoes having non-black outsoles and welts.

Given the applied mark does not restrict a color of shoes, a fact that Dr. Martens’ yellow welt stitch has played a role of source indication in relation to black leather shoes and boots is insufficient to find acquired distinctiveness of the appled mark and admit registration under Article 3(2) of the Trademark Law.

Obviously, the Court opens a gate to register Dr. Martens’ yellow welt stitch provided that a position mark consists of yellow stich and black upper and welt.

Shangri-La Unsuccessful in Trademark Opposition Over “Shangri-La Golf”

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The Japan Patent Office (JPO) dismissed an opposition claimed by Shangri-La Hotels against TM Reg no. 6610570 for the mark “Shangri-La-Golf” in class 35 due to dissimilarity between “Shangri-La” and “Shangri-La-Golf”.

[Opposition case no. 2022-900465, decided on July 26, 2023]

Opposed mark

A Japanese individual filed a stylized word mark “Shangri-La-Golf” (see below) for use on retail and wholesale services in relation to woven fabrics, beddings, clothing, footwear, and personal articles in class 35 with the JPO on June 22, 2020.

The JPO examiner rejected the mark in contravention of Article 4(1)(xi) of the Japan Trademark Law by citing earlier trademark registrations for wordmark “SHANGRI-LA”.

However, as a result of the JPO Appeal Board’s decision that found dissimilar to “SHANGRI-LA”, the mark could be registered on September 6, 2022.

Opposition by Shangri-La Hotels

Shangri-La International Hotel Management Ltd filed an opposition against the opposed mark on November 11, 2022 and argued the opposed mark shall be canceled in contravention of Article 4(1)(vii), (viii), (x), (xi), (xv), and (xix) of the Japan Trademark Law due to a remarkable degree of recognition of the cited mark “Shangri-La” and close resemblance between the opposed mark and “Shangri-La”.

JPO decision

The JPO Opposition Board questioned a remarkable degree of recognition of the cited mark among relevant public in Japan by stating that the produced evidence is insufficient to find such recognition objectively.

As for appearance, sound and meaning of the opposed mark, the Board found

“The opposed mark consists of “Shangri”, “La”, and “Golf” written in the same font and size, and tightly united by a hyphen (-). Visually, there is no reason to find respective element perse independently plays a role in source indicator of the opposed mark. Besides, the sound arising from the opposed mark as a whole can be pronounced easily.

Even if the term “Golf” has the meaning of a kind of ball game, it is reasonable to find that the term would not be recognized as directly indicating a descriptive meaning or specific quality of the services in question. Relevant consumers would see the opposed mark as a whole.

Therefore, the opposed mark shall be assessed in its entirety and give rise to a pronunciation of “Shangri-La-Golf” and no specific meaning.”

Based on the above finding, the Board decided the opposed mark “Shangri-La-Golf” is dissimilar to the cited mark “Shanri-La” because there is visual and phonetical distinction between the marks by virtue of the term “Golf” and the opposed mark does not give rise to a meaning related to ‘a remote usually idyllic hideaway’.

Accordingly, the Board found the opposition baseless and decided the opposed mark remains as the status quo.

Audemars Piguet Unsuccessful Challenge of TM Registration for Iconic Shape of “ROYAL OAK” Timepiece

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On June 8, 2023, the Japan Patent Office (JPO) dismissed an appeal filed by Audemars Piguet Holding SA, a Swiss luxury watchmaker, and affirmed the examiner’s rejection of TM App no. 2020-20319 for a device mark representing AP’s iconic “ROYAL OAK” watch collection by finding a lack of inherent and acquired distinctiveness. [Appeal case no. 2021-013234]

Audemars Piguet “ROYAL OAK” Watch Collection

On February 26, 2020, Audemars Piguet Holding SA (AP) filed a trademark application for the shape of the flagship watch collection “ROYAL OAK” (see below) to be used on ‘watches’ in class 14 with the Japan Patent Office (JPO) [TM application no. 2020-20319].

The mark consists of a dial with tapisserie pattern and hour markers, minute track, date window, an octagonal bezel with 8 hexagonal screws, case, crown, and a lug of the famed “ROYAL OAK” watch collections.

On July 1, 2021, the JPO examiner rejected the applied mark due to a lack of inherent distinctiveness based on Articles 3(1)(iii) of the Japan Trademark Law by stating that relevant consumers would simply recognize it as a generic shape of a wristwatch, not a specific source indication. Besides, from the produced evidence, the examiner did not find the shape per se has acquired nationwide recognition as a source indicator of AP’s watches.

Appeal against the examiner’s rejection by AP

AP filed an appeal against the rejection on October 1, 2021, and alleged inherent distinctiveness as well as acquired distinctiveness of the shape in relation to watches.

AP argued the shape shall be considered inherently distinctive by virtue of a combination of three unique features, namely, (i) an octagonal bezel, (ii) 8 hexagonal screws, and (iii) tapisserie pattern on the surface of a dial. It is inappropriate for the examiner to negate the distinctiveness of the applied mark based on similar watches by third parties that imitate “ROYAL OAK” collections.

Allegedly, “ROYAL OAK” luxury watches have been promoted for sale in Japan since 1972. Annual sales exceed JPY 8 billion on average in the past six years. Each year, AP spent more than JPY400 million on advertisement and promotion in Japan. As a result of the substantial use of the shape on famous AP watches over four decades, even if the shape inherently lacks distinctiveness, it has acquired a significant role as a source indication.

JPO Appeal Board decision

In the decision, the Board held “There are plenty of wristwatches placed in the marketplace by many watchmakers that have a similar shape to the dial, bezel, case, crown, and lug of the applied mark (see below examples). Therefore, the shape, even if it does not contain hands and strap, is unlikely to indicate the origin of goods and distinguish them from competitors”. If so, the examiner’s findings are adequate and the Board did not find any error in applying Article 3(1)(iii) of the Trademark Law on the case.

Besides, the Board questioned if the shape per se has played a role in the source indication of AP’s watches regardless of admitting the presence of “ROYAL OAK” watches in the market for long years on the following grounds.

  1. Number of official stores, 11 is by no means numerous.
  2. The evidence did not suggest any transaction of wristwatches using the applied mark (namely, a watch without strip and hands)
  3. AP did not submit objective evidence to support the sales of “ROYAL OAK” watches
  4. Since AP did not make clear the market share of “ROYAL OAK” watches, it is impossible to compare them with competitors’ watches.
  5. Publications and internet articles pertinent to the “ROYAL OAK” watches always features literal elements “ROYAL OAK”, “AP” or “AUDEMARS PIGUET”.
  6. AP did not produce a market survey to demonstrate how many consumers can identify a source of the wristwatch from the applied mark.

Based on the foregoing, the Board found the applied mark has not acquired a certain degree of recognition as a source indicator of a specific entity among relevant consumers in relation to watches under Article 3(2), and decided to refuse the shape of AP’s “ROYAL OAK” watches.

JPO Appeal Board Rejects Hermes Packaging Colors

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On April 25, 2023, the JPO Appeal Board dismissed an appeal filed by HERMES INTERNATIONAL, a French luxury fashion house, and upheld the examiner’s rejection of TM App no. 2018-133223 for a color mark of Hermes box due to lack of inherent and acquired distinctiveness.

[Appeal case no. 2021-13743]

Color mark of Hermes box

On October 25, 2018, HERMES INTERNATIONAL filed a trademark application for its iconic packaging colors, orange and brown (see below), as a color mark to be used on various goods in class 3, 14, 16, 18, and retail services in class 35 with the Japan Patent Office (JPO) [TM application no. 2018-133223].

On July 9, 2021, the JPO examiner rejected the applied mark based on Articles 3(1)(iii) and 3(1)(vi) of the Japan Trademark Law by stating that colors per se would not have any distinctive character. It has been inherently selected to produce aesthetic function or psychological effect on all goods and services. Because of this reason, relevant consumers at the sight of goods or services bearing the applied combination of colors, orange and brown are unlikely to recognize it as a source indicator.

Appeal against the examiner’s rejection by Hermes

Hermes filed an appeal against the rejection on October 8, 2022, and argued inherent distinctiveness as well as acquired distinctiveness of the color mark.

In addition to the evidence regarding the substantial use of Hermes box for the past six decades, in order to bolster the acquired distinctiveness of the packaging color per se, Hermes conducted market research that targeted men and women in their 30s to 50s with incomes JPY10,000,000 and above residing in 9 prefectures. According to the research report, 36.9% of the interviewees answered Hermes when shown three boxes in different shapes with the color mark. 43.1% chose Hermes from the ten options.

JPO Appeal Board decision

The Appeal Board did not find any error in the examiner’s findings. The Board held “Colors are selected to enhance the impression and aesthetics of goods and services. Some colors are obtained naturally or inevitably to ensure the function of goods or services. Therefore, colors are not recognized to indicate the origin of goods or services and distinguish them from competitors.

The Board finds no particular reason to treat the case differently in the circumstances that competitors have used similar combinations of colors including orange and brown in the relevant industries. If so, the examiner’s findings are adequate and would not error in applying Article 3(1)(iii) and (vi) of the Trademark Law.

With respect to the acquired distinctiveness of Hermes box, the Board questioned the relevance of the market research to the issue by stating that relevant consumers of the goods and service in question shall not be restricted to “men and women in their 30s to 50s with incomes JPY10,000,000 and above”. Presumably, 43.1% would be much lower if general consumers nationwide are included in the research. If so, it would be anything but unreasonable to find the applied mark has yet to acquire distinctiveness among relevant consumers.

Based on the foregoing, the Board accordingly upheld the examiner’s rejection and decided to refuse the color mark of the Hermes box under Article 3(1)(iii) and (vi) as well as 3(2) of the Trademark Law.

Hermes is entitled to file an appeal to the IP High Court by August 23, 2023.