カテゴリー: Refusal appeal

The Japan IP High Court Finds “EQ” Entitled to Trademark Registration Belonging to Mercedes Benz

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On July 3, 2019, the Japan IP High Court reversed a decision of the Japan Patent Office (JPO) finding that the company Daimler AG was entitled to registration of “EQ” for Motor vehicles in class 12, even though the term “EQ” by itself is descriptive for the goods.
[Case no. Heisei31(Gyo-ke)10004, Daimler AG vs the JPO Commissioner]

The EQ Application

The JPO has refused registration to an application for EQ in standard characters (word only, see below) on the basis that the mark was descriptive for the goods “Motor vehicles” in class 12 based on Article 3(1)(v) of the Trademark Law.

The article prohibits an applied mark from registering if it consists solely of a very simple and common mark. Trademark Examination Guidelines (TEG) stipulates that a mark consisting of one or two alphabetical letters is not eligible for registration under the article. Click here.

A mark consisting of two alphabetical letters is not capable of identifying the source of the goods due to a lack of distinctiveness because a combination of two alphabetical letters is limited on quantity and currently used to represent a model name of vehicle, e.g. BMW XS, TOYOTA Carina ED, Ferrari FX, Nissan GT-R.

Descriptive terms falling under the article are only capable for registration based on Article 3(2) if they have “acquired distinctiveness”, which means the term has taken on a meaning in the public view so that people see the term as a trademark identifying the goods rather than simply describing the goods.

In this regard, Daimler AG argued the EQ mark, a coined term originating from “Electric Intelligence” to appeal design, extraordinary driving pleasure, high levels of everyday suitability and maximum safety of electric car by Mercedes-Benz, has acquired distinctiveness since launching the brand at the Paris Motor Show in September 2016.

JPO Decision

However, the JPO dismissed the argument on the grounds that:

  1. Daimler has neither used the EQ mark by itself as a name of electric car nor produced evidences of its plan to sell electric car named “EQ”.
  2. Daimler uses the EQ mark in a stylized design in press releases. If so, it is questionable whether relevant consumers conceive the EQ mark in standard characters as a source indicator of Mercedes-Benz.
  3. According to the produced evidences, Daimler uses the EQ mark in combination with other literal elements, e.g. “Generation EQ Concept”, “Concept EQA”, “EQC”, “smart vision EQ for two”, “EQ POWER”, “EQ POWER+”.
  4. There are no actual domestic sales of the electric car using the applied mark during the past two years from the date Daimler launched the brand in fact.
  5. A combination of two alphabetical letters, “E” and “Q”, has been generally used as a mode name in association with vehicles, e.g. TOYOTA electric car “eQ”, HYUNDAI luxury sedan “EQ900”, Zhengzhou Nissan truck “EQ1060”, Laufenn tyre “S FIT EQ”, ALPINE car navigation “EX11Z-EQ”, SPECIALLIZED bicycle “ALIBI SPORT EQ”. If so, the EQ term shall not be eligible for monopoly by a specific entity any longer.

The Appeal Board of JPO also upheld the refusal.
[Appeal case no. 2018-650016]

To contest the administrative decision, Daimler AG filed an appeal to the IP High Court on January 15, 2019.

IP High Court Ruling

The court first found the EQ mark in standard characters is not eligible for registration under Article 3(1)(v) of the Trademark Law.

In the meantime, the court found Daimler has newly released, promoted, and used the EQ mark with a combination of “POWER” as a new brand concept of electric car by Mercedes-Benz. Given a space for single letter between “EQ” and “POWER”, relevant consumers at the sight of promotional materials, advertisements and car magazines pertinent to Mercedes-Benz’s new electric car brand would perceive “EQ” as a specific source indicator. Taking account of enormous number of circulation of magazines (approx. 230,000) and advertisements for users (170,000 per year), the court held the EQ mark has been well known for a source indicator of Daimler electric car among relevant consumers and traders even if the duration of actual use and sales amount are not sufficient by themselves.

Notably, the court also negated fact-finding by JPO regarding ordinary use of the term EQ in association with vehicles by stating that since competitors use the term in a tight combination with other literal elements, they can be simply perceived as a mode name. If so, such use shall not be construed to negate acquired distinctiveness of the EQ mark by Daimler.

Based on the foregoing, the court ruled the EQ mark is entitled to trademark registration based on Article 3(2) of the Trademark Law and reversed a decision by the JPO on that account.

JPO decision: TESLA is dissimilarly pronounced to Tesla

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In a recent appeal decision over trademark dispute, the Appeal Board of Japan Patent Office (JPO) overturned the Examiner’s refusal and held the stylized TESLA mark is dissimilarly pronounced to a senior trademark registration for the “Tesla” word mark.

[Appeal case no. 2017-650037, Gazette issue date: February 22, 2019]

 

Stylized TESLA mark

U.S. electric automaker Tesla, Inc. (formerly Tesla Motors, Inc.) filed an application with the Japan Patent Office to register stylized TESLA mark as a trademark for “Articles of clothing, namely, t-shirts, shirts, jackets, hats; headgear, namely, sports hats, caps, sun visors.” in class 25 and “Providing financial services relating to automobiles, namely, automobile financing and lease-purchase financing; financing services for the purchase and leasing of motor vehicles; lease-purchase financing; credit services, namely, providing financing for motor vehicles; providing financial advice in the field of motor vehicles.” in class 36.

 

Senior TM registration for “Tesla”

Going through substantive examination by the JPO examiner, applied mark was completely refused registration based on Article 4(1)(xi) of the Trademark Law due to a conflict with a senior trademark registration no. 5533558 for word mark “Tesla” in standard character for clothing, caps and foot wears in class 25 owned by a Korean individual.

There is 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 examiner makes a decision if a mark is similar (at least to some extent) with the earlier mark and if there is a likelihood of confusion for the consumers.

Applicant filed an appeal against the refusal on June 30, 2017 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:

From appearance, both marks are sufficiently distinguishable because the 2nd and last letter of applied mark are too indecipherable to be perceived as a specific term in its entirety.

As long as applied mark does not give rise to any specific sound and meaning as a whole, applied mark is incomparable with cited mark “Tesla” in the aspects of pronunciation and connotation.

Based on the foregoing and criterion to assess similarity of mark, the Board is of a view that the stylized TESLA mark shall be dissimilar to senior registration for the word mark “Tesla” even if the designated goods are deemed identical or similar in class 25.

Is GRAND HOME dissimilar or similar to GRAN HOME?

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In a recent appeal trial over trademark dispute, the Appeal Board of Japan Patent Office (JPO) overturned the Examiner’s determination and held that a word mark “GRAND HOME” is dissimilar to, and unlikely to cause confusion with a senior trademark registration for the “GRAN HOME” mark in connection with construction, reform or repair service for residential homes and buildings.

[Appeal case no. 2017-13251, Gazette issue date: November 30, 2018]

GRAND HOME

Kabushiki Kaisha GRAND HOME, a Japanese business entity filed a trademark application for a word mark “GRAND HOME” in standard character covering services of reform, repair, maintenance, cleaning and construction for residential homes and buildings in class 37 on May 17, 2016 [TM application no. 2016-53226].

Going through substantive examination by the JPO examiner, applied mark was completely refused registration based on Article 4(1)(xi) of the Trademark Law due to a conflict with senior trademark registration no. 5534717 for word mark “GRAN HOME” written in Japanese character(katakana) for the same services in class 37.

There are basic rules that the examiner is checking when evaluating the similarity between the marks:

  • visual similarity
  • aural similarity
  • conceptual similarity

and taking into account all these three aspects examiner makes a decision if a mark is similar (at least to some extent) with the earlier mark and if there is a likelihood of confusion for the consumers.

Applicant filed an appeal against the refusal on September 6, 2017 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:

  1. From appearance, both marks are distinguishable because of a difference in literal elements. Applied mark consists of alphabetical letters. Meanwhile, the earlier mark consists of Japanese character.
  2. Having compared the sound of applied mark “ɡrænd hoʊm” and earlier mark “ɡræn hoʊm”, there evidently exists a difference in the middle sound. The difference shall not be negligible from overall sound composition as long as the sound “D” in the middle of applied mark is pronounced in a clear and intelligible manner. If so, both marks are aurally distinctive.
  3. Applied mark gives rise to a meaning of ‘large house’. In the meantime, the earlier mark “GRAN HOME” does not give rise to any specific meaning. Hence, both marks are dissimilar from conceptual point of view.
  4. Based on the foregoing, it is unlikely that relevant consumers confuse or misconceive a source of “GRAND HOME” with the earlier mark “GRAN HOME”.

POLO BCS defeated in trademark battle with POLO RALPH LAUREN

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In a ruling on the merits of whether or not an applied mark “POLO HOME / BRITISH COUNTRY SPIRIT” is likely to cause confusion with a world-famous trademark “POLO” by the fashion house Ralph Lauren, the Japan IP High Court sided with the JPO and ruled in favor of Ralph Lauren on December 10, 2018.

[Court case no. H30(Gyo-ke)10067]

 

“POLO HOME / BRITISH COUNTRY SPIRIT”

POLO BCS Co., Ltd., plaintiff of the case, is a Japanese business entity, promoting apparel products bearing trademarks of “POLO BRITISH COUNTRY SPIRIT”, “POLO BCS”, and “POLO HOME”.

 

POLO BCS filed a trademark registration for the mark “POLO HOME / BRITISH COUNTRY SPIRIT” as shown in below on January 5, 2015 by designating clothing and other goods in class 25. [TM application no. 2015-305]

 

In fact, POLO BCS, a registrant of the word mark “POLO” on class 25 in Japan since 1997 (TM registration no. 1434359 and 2721189), granted trademark license to Ralph Lauren in the year of 1987 and since then continuously allows RL to use the mark “POLO” in Japan.

 

JPO decision

The Japan Patent Office (JPO) rejected the applied mark based on Article 4(1)(xv) of the Trademark Law on June 3, 2016. The refusal relies on a prominent portion of the mark “POLO” is likely to cause confusion with RALPH LAUREN when used on apparel products, being that “POLO” becomes remarkably well-known for an abbreviation of POLO RALPH LAUREN among relevant consumers with an ordinary care.

Article 4(1)(xv) is a provision to prohibit any mark from being 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.

POLO BCS filed an appeal against the refusal on August 16, 2016, but its attempt resulted in failure [Appeal case no. 2016-12344].
To contest the JPO decision, POLO BCS appealed to the IP High Court filed immediately.

 

IP High Court decision

The court admitted a high degree of reputation and popularity of Ralph Lauren and “POLO” as an abbreviation of Polo Ralph Lauren in connection with apparel products by taking account of following fact findings.

  1. The first collection for Polo brand was launched in the US by a designer Mr. Ralph Lauren in 1967.
  2. Annual sales of Ralph Lauren exceed 7 billion USD in 2013 around the globe.
  3. In 1976, Ralph Lauren launched Polo brand and shops in Japan.
  4. According to brand perception survey of 900 randomly selected Japanese consumers ages 20 to 69 conducted in 2010, 81.8% of consumers recognize Ralph Lauren.
  5. Annual sales of 26.7 billion JPY in Japan (fiscal year 2008) accounts for 6% of global sales of Ralph Lauren.

 

Besides, the court found close similarity between applied mark and “POLO” by Ralph Lauren given a tiny font size of “BRITISH COUNTRY SPIRIT” in the configuration of applied mark and less distinctiveness of the word “HOME” in relation to apparel for home use.

Plaintiff argued to consider the fact that RL has used the “POLO” mark in Japan under license from plaintiff. But the court negated the argument stating that such fact would not mean consumers recognize the mark as a source indicator of plaintiff. In addition, plaintiff argued originality and fame of the word “POLO” as a source indicator of Ralph Lauren by citing Polo Game, organizations for the game, e.g. US POLO ASSOCIATION, HURLINGHAM POLO, and a generic name of Polo shirts. Court considered such circumstances would mean less originality of the mark “POLO”, but never deny fame of the mark as a source indicator of Ralph Lauren as long as consumers doubtlessly connect it with Ralph Lauren.

Based on the foregoing, the IP High Court concluded it is obvious that relevant consumers are likely to confuse or misconceive a source of the applied mark with Ralph Lauren or any entity systematically or economically connected with RL when used on clothing in class 25.

“Teddy Bear” versus “Rose Teddy Bear”

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The Appeal Board of Japan Patent Office (JPO) ruled that senior trademark registrations for the mark “Teddy Bear” in standard character over goods of trees, flowers, dried flowers, plants, seedlings, saplings in class 21 is unlikely to cause confusion with a junior mark “Rose Teddy Bear” in plain letters even if the mark is used on rose and rose bushes in class 21. [Appeal case no. 2017-18006, Gazette issue date: October 26, 2018]

 

Senior registrations for the “Teddy Bear” mark

“TEDDY BEAR”, a children’s toy, made from soft or furry material, which looks like a friendly bear, has its origin after Teddy, nickname for Theodore Roosevelt who was well known as a hunter of bears.

In Japan, name of the toy bear has been registered in the name of Nisshin OilliO Group. Ltd. on various goods in class 29, 30, 31 and 32 since 1986.

 

Junior application for “Rose Teddy Bear”

Junior mark for “Rose Teddy Bear” was applied for registration by a French company on August 10, 2016 over goods of rose, rose trees and other items relating to rose in class 31.

JPO examiner rejected junior mark due to a conflict with the “Teddy Bear” mark based on Article 4(1)(xi) of the Trademark Law on September 5. 2017.

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.

To seek for registration, applicant filed an appeal against the refusal on December 5, 2017.

 

Appeal Board decision

The Appeal Board set aside a refusal on the grounds that:

(1) From appearance and pronunciation, the term of “Rose Teddy Bear” shall be recognized as one mark in its entirety.
(2) Relevant consumers and traders are likely to conceive the term as a coined word since it does not give rise to any specific meaning as a whole.
(3) Therefore, the refusal based on the assumption that literal portions of “Teddy Bear” in junior mark plays a dominant role made a factual mistake and shall be cancelled consequently.

It seems that the Board decision is not consistent with the Trademark Examination Guidelines (TEG) criteria.

[Chapter III, Part 10 of TEG]
A composite trademark having characters representing an adjective (characters indicating the quality, raw materials, etc. of goods or characters indicating the quality of services, the location of its provision, quality, etc.) is judged as similar to a trademark without the adjective as a general rule.

In this respect, as long as the junior mark designates rose in class 21 and the term “Rose” in the mark further impresses the concept of rose in mind of consumers, the portion of “Rose” should be considered descriptive in relation to designated goods. Otherwise, any combined mark composed of registered mark and a generic term pertinent to the designated goods is deemed dissimilar to the registered mark.

I suppose the Board signaled a narrower scope of right where trademark has evidently its origin from other entity or meaning unrelated to senior registrant.

Trademark dispute for XXXX

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In a recent trademark appeal trial to seek dismissal of examiner’s refusal, the Appeal Board of Japan Patent Office (JPO) set aside the refusal and allowed registration of TM Application no. 2017-21396 for the XXXX mark because of dissimilarity to a senior registration for “XXXX” mark.
[Appeal case no. 2018-5881, Gazette issue date: October 26, 2018]

 

Applied mark

The mark in dispute (see below left) was applied for registration in the name of Mitsukoshi Isetan, Japan’s largest department store group, on February 22, 2017 by designating goods of clothing; belts in class 25 and retail or wholesale services for clothing, bags and pouches, handkerchief and hair ornaments in class 35.

 

Cited TM registration for “XXXX”

The JPO examiner refused the applied mark due to a conflict with senior TM registration no. 4147840 for the mark “XXXX” (see above right) based on Article 4(1)(xi) of the 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.

Cited mark has been registered since 1998 over goods of clothing, garters, sock suspenders, suspenders [braces], waistbands, belts for clothing, footwear, clothes for sports, special footwear for sports in class 25.

Applicant filed an appeal against the decision on April 27, 2018 and disputed dissimilarity of the marks.

 

Appeal Board decision

The Appeal Board sided with the applicant and negated similarity of both marks by stating that:

Applied mark shall be seen to represent a certain geometric figure. It appears that cited mark represents four alphabetical letters of “X” in line. It means there finds distinguishable gap between geometric figure and alphabetical letters from appearance.
Applied mark does not give rise to any specific pronunciation. In the meantime, cited mark shall have pronunciations of “eks eks eks eks” and “four eks”. Likewise, both marks are sufficiently distinguishable in pronunciation.
Besides, as long as both marks do not give rise to any specific meaning, it is not feasible to compare them in concept.
In view of above aspects, it unlikely happens confusion between the marks and thus deemed dissimilar.

 

Based on the foregoing, the Board decided applied mark is not subject to Article 4(1)(xi), and admitted registration.

Is Polaroid Photo Frame trademarked?

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In a recent decision, the Appeal Board of Japan Patent Office (JPO) admitted trademark registration for the Polaroid Photo Frame design mark (see below) in relation to services of photo printing, digital on-demand printing, processing of photographic films, photographic retouching (class 40).
[Appeal case no. 2017-9599, Gazette issue date: June 28, 2018]

 

Polaroid Photo Frame

Disputed mark (see below), apparently looking like Polaroid Photo Frame, was filed in the name of PLR IP Holdings, LLC, the ex-owner of the Polaroid brand and related intellectual property, by covering services of photo printing, digital on-demand printing, processing of photographic films, photographic retouching under class 40 on June 24, 2015.

As a result of substantive examination by the JPO examiner, disputed mark was refused due to a lack of inherent distinctiveness based on Article 3(1)(vi) of the Trademark Law.

Article 3(1)(vi) is a comprehensive provision to prohibit any mark lacking inherent distinctiveness from being registered.

Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered, unless the trademark:
(vi)　is in addition to those listed in each of the preceding items, a trademark by which consumers are not able to recognize the goods or services as those pertaining to a business of a particular person.

 

Appeal Board decision

The Appeal Board sided with applicant and overruled examiner’s refusal decision by stating that the Board could not detect actual use of the applied design as a representation of shape or quality in connection with the designated services.

Besides, it is questionable to conclude that disputed mark, a combination of White Square and black rectangle, solely consists of a very simple and common sign. If so, the Board considers disputed mark is capable of serving as a source indicator so that consumers may distinguish the source with the clue of disputed mark.

Based on the foregoing, the Board admitted trademark registration of the Polaroid Photo Frame device mark in class 40.

JPO refused to register 3D shape of Mitsubishi Electric’s spiral escalator

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The Appeal Board of Japan Patent Office (JPO) disallowed registration of 3D shape of Mitsubishi Electric’s spiral escalator due to lack of inherent distinctiveness and secondary meaning in relation to escalators, class 7. [Appeal case no. 2017-6855]

Spiral escalator

Mitsubishi Electric Corporation first developed the spiral escalator in 1985, and has been the world’s first and sole manufacturer of spiral escalators. Spiral escalator is a special design type of escalator in the form of a spiral/helical with curved steps.
On May 3, 2016, Mitsubishi Electric filed a trademark application for 3D shape of spiral escalator (see below) by designating escalators in class 7 to the JPO [TM application no. 2016-23374].

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 3D shape of escalator and the shape does solely consist of a common configuration to achieve the basic function of escalator. If so, the applied mark lacks distinctiveness as a source indicator.

To dispute the refusal, Mitsubishi Electric filed an appeal on May 12, 2017.

Appeal Board’s decision

The Appeal Board, however, upheld the examiner’s decision on the ground and dismissed Mitsubishi’s allegation by stating that relevant consumers and traders shall conceive of an escalator designed to enhance its function or sensuousness at the sight of applied mark.

Acquired distinctiveness

Mitsubishi Electric also argued that even if the applied mark is deemed descriptive in relation to escalators, it shall be registrable based on Article 3(2) due to acquired distinctiveness of the mark because Mitsubishi Electric Spiral Escalators has achieved 100 % market share in the world and continuously used the 3D shape on escalators for more than three decades.

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.

Under the totality of the circumstances, the Appeal Board dismissed the allegation as well.

The Board found that regardless of 100 % market share in the category of spiral escalators, Mitsubishi Electric’s domestic supply record of 24 units in the last thirty years shall be a trivial quantity in comparison with total number of escalators in operation. Besides, questionnaire result rather shows a source of the applied mark is unknown to more than 60% of the questionee.

Based on the foregoing, the Board questioned whether applied mark has acquired distinctiveness through actual use in relation to escalators and consequently refused to register the mark based on Article 3(1)(iii) and 3(2) of the Trademark Law.

Never trademark “BON GOÛT” in food-service business

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The Appeal Board of the Japan Patent Office (JPO) decided to register a term of “bon goût” in relation to various foods of class 30 and restaurant service of class 43 by finding that the term is deemed a coined word to relevant public in Japan.
[Appeal case no. 2017-7985]

“BON GOÛT”

Disputed mark (see below), written in a common font design, was filed in December 14 by designating various foods of class 30, e.g. buns and breads, confectioneries, hamburgers, pizza, hot dogs, spices, noodles, pasta, coffee, tea, and restaurant service, rental of cooking apparatus and microwave ovens and others of class 43 in the ultimate.

Lack of distinctiveness

JPO examiner entirely refused the mark due to lack of distinctiveness based on Article 3(1)(iii) of the Trademark Law. In refusal decision, examiner asserted the term of “bon goût” is a French term to mean “good taste” in English.

If so, relevant consumers and traders are likely to conceive the term in association with quality of goods and services.

Besides, given the mark is written in a common font design, it shall be objectionable under Article 3(1)(iii) since the mark is solely composed 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.

 

Appeal Board decision

In the meantime, the Appeal Board overruled examiner’s rejection and granted registration of “bon goût”.

The Board admitted the terms of “bon” and “goût” are French words meaning good and taste respectively by referring to French dictionary, but, in contrast, considered a combined word of “bon goût” is unfamiliar to Japanese public with an ordinary care.
If so, disputed mark shall be deemed a coined word in its entirety and relevant consumers are unlikely to conceive any specific meaning from the mark.

Besides, the Board held, as a result of ex officio examination, there found no circumstance to convince “bon goût” is ordinarily used as a mere descriptive indication in food-service business.

Consequently, it is groundless to reject the trademark “bon goût” based on Article 3(1)(iii) since it does not give rise to any descriptive meaning in relation to the goods and services in question.

This case gives us a lesson.
Descriptive term in foreign language has a potential risk to be registered in Japan if we are unfamiliar to the term.

JPO refused to register word mark “ROMEO GIGLI” due to lack of consent from Italian fashion designer

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In a recent decision, the Appeal Board of Japan Patent Office (JPO) refused to register trademark application no. 2015- 100245 for a red-colored word mark “ROMEO GIGLI” in gothic script (see below) designating goods of Class 24 and 25 on the grounds that applicant failed to obtain a consent from Italian fashion designer, Romeo Gigli, based on Article 4(1)(viii) of the Trademark Law.[Case no. 2017-3558]

Disputed mark was filed on October 16, 2015 in the name of ECCENTRIC SRL, an Italian legal entity, by designating following goods in Class 24 and 25.

Class 24:

“woven fabrics; elastic woven material; bed and table linen; towels of textile; bed blankets; table cloths of textile; bed covers; bed sheets; curtains of textile or plastic; table napkins of textile; quilts”

Class 25:

“clothing; T-shirts; shirts; jumpers; trousers; pants; jackets; skirts; jeans; neckties; overcoats; coats; belts; gloves; mufflers; sweat suits; underwear; swimsuits; headgear; hats; caps; footwear; special footwear for sports”

 

Article 4(1)(viii)

On December 9, 2016, JPO examiner refused the mark based on Article 4(1)(viii) of the Trademark Law.

Article 4(1)(viii) is a provision to prohibit registration of trademarks which contain the representation or name of any person, famous pseudonym, professional name or pen name of another person, or famous abbreviation thereof. Notwithstanding the provision, the article is not applicable where the applicant of disputed mark produces the written consent of the person.

The Supreme Court of Japan has ruled the article shall be interpreted to protect personal rights of a living individual. In line with the Supreme Court ruling, Trademark Examination Manuals (TEM) set forth that the article is applicable not only to natural persons (including foreigners) and corporations but also associations without capacity. Familiar name of foreigners falls under the category of “abbreviation” if its full name contains middle name(s) unknown to Japanese consumer.

Click here to access TEM on the JPO website.

Finding that disputed mark just consists of an individual name of famous fashion designer, Romeo Gigli, the examiner raised an objection based on Article 4(1)(viii) unless ECCENTRIC SRL obtains a consent from the designer.

 

APPEAL

The applicant filed a notice of appeal with the Appeal Board, a body within JPO responsible for hearing and deciding certain kinds of cases including appeals from decisions by JPO Examiners denying registration of marks, on March 9, 2017 and contended against the refusal decision by examiner.

During the appeal trial, ECCENTRIC SRL argued inadequacy of the decision by demonstrating following facts.

  • ECCENTRIC SRL is a legitimate successor of trademark rights owned by Romeo Gigli as a consequence of mandatory handover resulting from bankruptcy of company managed by Romeo Gigli irrespective of his intention. Under the circumstance, it is almost impossible to obtain a written consent from him.
  • In the meantime, ECCENTRIC SRL has already obtained trademark registrations for the word mark “ROMEO GIGLI” in several jurisdictions.
  • Besides, ECCENTRIC SRL is a current registrant of Japanese TM registration no. 2061302 for identical wordmark in Class 4,18,21 and 26.
  • There has been no single complaint from consumers, traders or Romeo Gigli in person.

ECCENTRIC SRL alleged that the above facts shall amount to having obtained an implicit consent from Romeo Gigli in fact. Thus, disputed mark shall be allowed for registration even without a written consent in the context of purpose of the article.

The Appeal Board dismissed the appeal, however, and sustained the examiner’s decision by saying that trademark registrations in foreign countries shall not be a decisive factor in determining registrability of disputed mark under Article 4(1)(viii) in Japan. Absence of complaint from Romeo Gigli shall not be construed that he has consented to register his name in the territory of Japan explicitly or implicitly.

Unless applicant produces evidence regarding a consent from Romeo Gigli otherwise, disputed mark shall be refused to register based on Article 4(1)(viii) of the Trademark Law.

 

According to the JPO database, ECCENTRIC SRL filed an appeal against the Board decision to the IP High Court in November 2017. The Court decision will be rendered within a couple of months.