Violation of public order – ページ 3

Is Marie-Antoinette a name of French Queen consort or a trademark?

Posted on2019年2月16日2022年1月3日1 Comment

The Japan Patent Office (JPO) ordered to dismiss an invalidation trial against IR no. 1238820 for word mark “Marie-Antoinette” by finding the mark shall be irrevocable under Article 4(1)(vii) of the Trademark Law. [case no. 2017-68002]

Tempting Brands Netherlands B.V. (NL), filed an international registration for the mark over goods of “Bleaching preparations [deodorants] for cosmetic purposes; perfumery, essential oils, cosmetics, hair lotions; dentifrices; cosmetic soaps, soaps for personal use; douching preparations for personal sanitary or deodorant purposes [toiletries]” in class 3 and others in class 9, 18 and 25 on Dec. 5, 2014 claiming priority based on Benelux TM application dated Aug. 22, 2014, and designating Japan which granted registration of the mark on Feb. 10, 2017.

To challenge, an invalidation trail was filed against the mark. Claimant, a Japanese business entity asserted the mark shall be invalidated in violation of Article 4(1)(vii) of the Trademark Law on the grounds that the mark “Marie-Antoinette” written in a plain letter represents the late ill-fated queen consort of King Louis XVI of France who has been highly well-known as a symbolic queen of beauty among relevant public not only in France but also Japan and other countries. If so, it is extremely harmful to prestige of “Marie Antoinette” and social affections on the historical figure to admit an exclusive right on the name to any unrelated entity. It may inevitably offend public order and morals

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 provides “Name of a well-known or famous historical personage likely to free-ride on public measures derivative from the personage and damage the public interests in face” as an example to apply the article.

The Invalidation Trial Board decided the mark shall not be subject to the article due to the following reason.

It is unquestionable that “Marie-Antoinette” represents a name of queen consort of King Louis XVI of France and becomes famous in France as well as Japan. In the meantime, the Board could not see a fact that the name has been made use of for revitalization of local communities or tourism industry. If so, it is quite unlikely to happen that the mark could offend public order and morals when used on goods of class 3. Besides, the Board has no reason to believe registration of the mark would cause disrespect for France and French people as well as international fidelity. Besides, there finds no circumstances to conclude the mark is proscribed to use by other legislation and applicant apparently filed the mark with a malice or fraudulent intent to be blamed. Based on the foregoing, the international registration shall be deemed valid since the Board was unable to find out any relevant facts to apply the article on the case.

It is not freely allowed to use and register a name of historical personage as trademark. JPO rejected “Darwin” and “Monet” based on Article 4(1)(vii), but allowed registration of “Elvis”.

SEGWAY unsuccessful in opposing SWAGWAY mark

Posted on2018年12月9日2022年1月3日

The Japan Patent Office dismissed a trademark opposition claimed by an American manufacturer of two-wheeled personal transporters, Segway Inc. against trademark registration no. 5910587 for the Swagway mark in class 12 by finding less likelihood of confusion due to dissimilarity of mark. [Opposition case no. 2017-900114]

Opposed Swagway mark

Opposed mark “Swagway” in standard character was filed by a Chinese business entity on December 2, 2015 by designating the goods of “a two-wheeled, self-balancing personal transporter; automobiles; bicycles; airplanes; water vehicles; railway cars: accessories of aforementioned goods” in class 12.
Going thourgh a substantive examination, the JPO admitted registration on January 6, 2017 and published for opposition on February 7, 2017.

Segway’s Opposition

To oppose against registration of the Swagway mark, Segway Inc. filed an opposition on April 7, 2017.

In the opposition brief, Segway Inc. asserted the opposed mark shall be cancelled in violation of Article 4(1)(vii), (x), (xi), (xv) and (xix) of the Japan Trademark Law by citing the owned famous SEGWAY mark effectively registered over various types of vehicles in class 12 since 2002 (TM Reg. no. 4605474 etc.).
Article 4(1)(vii) prohibits any mark likely to offend public order and morals from registering.
Article 4(1)(x) prohibits to register a trademark which is identical with, or similar to, other entity’s well-known mark over goods or services closely related with the entity’s business.
Article 4(1)(xi) is a provision to refrain from registering a junior mark which is deemed identical with, or similar to, any senior registered mark.
Article 4(1)(xv) prohibits to register a trademark which is likely to cause confusion with a business of other entity.
Article 4(1)(xix) prohibits to register a trademark which is identical with, or similar to, other entity’s famous mark, if such trademark is aimed for unfair purposes, e.g. gaining unfair profits, or causing damage to the entity.

Board Decision

The Opposition Board admitted a certain degree of reputation and popularity of opponent SEGWAY mark in relation to a two-wheeled, self-balancing personal transporter, however, negated similarity of mark between SEGWAY and Swagway totally. The Board assessed, from appearance, difference at the 2nd and 3rd letters gives rise to a distinctive impression in the mind of relevant consumers provided that both marks merely consist of six or seven letters in its entirety. The difference also produces a distinctive impression in sound of the 1st syllable. Besides, both marks are evidently dissimilar in meaning given they are not dictionary words per se.
Based on it, the Board dismissed allegations of Article 4(1)(x) and (xi).

The Board questioned, as long as both marks are distinctively dissimilar, whether relevant consumers are likely to associate or confuse the source of opposed mark with Segway Inc. even if opposed mark is used on a two-wheeled, self-balancing personal transporter.
From the evidences produced by opponent, the Board was unable to find any fact to cause confusion with, or to presume malicious intention to do harm to opponent’ good will and business. If so, it is questionable whether relevant consumers or traders are likely to confuse or misconceive a source of the opposed mark with Segway Inc. or any entity systematically or economically connected with the opponent.
Based on the foregoing, the Board dismissed allegations of Article 4(1)(vii), (x) and (xix) as well.

Adidas Fails in Trademark Battle over Adidas Trefoil Logo

Posted on2018年5月4日2022年1月3日

The Opposition Board of Japan Patent Office (JPO) held in an opposition filed by Adidas AG (Opponent) that trademark registration no. 5897540 for the XIAT device mark (Opposed mark) shall remain as valid as ever and entirely dismissed Adidas’ claims in the opposition based on Adidas Trefoil logo.
[Opposition case no. 2017-900038, Gazette issued on March 30, 2018]

Opposed mark

Opposed mark (see below) was applied for registration on June 10, 2016 by designating apparels and shoes of class 25 in the name of a Chinese business entity and published for registration on November 18, 2016 without confronting with office action from the JPO examiner.

Adidas Trefoil logo

Adidas AG, opponent, filed an opposition on February 9, 2017 and claimed that opposed mark shall be cancelled in violation of Article 4(1)(vii) and 4(1)(xv) of the Japan Trademark Law due to a conflict with Adidas Trefoil logo (see below).

Article 4(1)(vii)

Article 4(1)(vii) prohibits any mark likely to offend public order and morals from registering.

Trademark Examination Guidelines set forth examples to apply the article, e.g. trademarks generally considered contrary to the international faith, trademarks whose registration is utterly unacceptable for lack of social reasonableness in the background to the filing of an application for trademark registration.

Given a high degree of reputation and popularity of Adidas Trefoil logo, Adidas asserted, applicant must have been aware of the trefoil logo and filed opposed mark with a malicious intention to impermissibly cause the disorder in domestic and foreign trade

Article 4(1)(xv)

Article 4(1)(xv) prohibits to register a trademark which is likely to cause confusion with a business of other entity.

Adidas argued that the figurative element of opposed mark evidently gives rise to a same impression with the Trefoil logo in view of basic configurations consisting of two or three laurel leaves intersected by two or three stripes in parallel.

Besides, applicant has filed more than 253 trademark applications during the past 18 months. Some of them were refused by the JPO due to a conflict with famous mark.
Below mark is also subject to opposition contested by Adidas AG.

By taking into account famousness of the Trefoil logo, visual resemblance between the marks, and free-riding on opponent reputation and goodwill, relevant consumers are likely to cause confusion with Adidas at the sight of apparels or shoes using opposed mark.

Opposition Board decision

The Opposition Board admitted a high degree of reputation and popularity to the iconic Adidas Trefoil logo in relation to sport shoes, sportswear, sports gear at the time of initial filing and registration of opposed mark.

In the meantime, the Board negated similarity and likelihood of confusion between the marks, stating that opposed mark never gives rise to a meaning and pronunciation of trefoil. From visual point of view, it is sufficiently distinguishable from the Trefoil logo. Fact that opposed mark happens to closely resemble a portion of the Trefoil logo is of little significance since Adidas Trefoil logo has acquired remarkable reputation in its entirety. If so, the Board feels it is unlikely that relevant consumers can perceive opposed mark as a cutout from the Trefoil logo.

Besides, even if it becomes suspicious whether applicant has a bona fide intention to use opposed mark, it is not objectionable under Article 4(1)(xv) since the Board finds both marks are dissimilar to the extent that there exists less likelihood of confusion.

Due to less likelihood of confusion between the marks, the Board is unable to foresee a circumstance to offend public order and morals from registering opposed mark and give harmful effect to the international faith.

Based on the foregoing, the Board concluded opposed mark shall not subject to Article 4(1)(vii) as well as (xv) and granted registration a status quo.

ENRICO COVERI failed to remove “COVERI” from trademark registration

Posted on2017年10月21日2022年1月3日

The Opposition Board of Japan Patent Office (JPO) held in an opposition filed by Enrico Coveri Società a Responsabilità Limitata (Opponent) that trademark registration no. 5874843 for a word mark “COVERI” (Opposed mark) shall remain as valid as ever and dismissed claims in the opposition entirely.
[Opposition case no. 2016-900368]

Opposed mark (see below) was applied for registration on November 27, 2015 by designating various kinds of goods in class 25 including apparels and shoes, and published for registration on September 20, 2016without any office action from the JPO examiner.

Opponent claimed that the opposed mark “COVERI” shall be cancelled on the basis of Article 4(1)(vii), (viii), (x), (xi), (xv) and (xix) of the Japan Trademark Law by citing senior trademark registrations for word mark “ENRICO COVERI”, a name of the late Italian fashion designer, in class 18, 24 and 25.

In the opposition decision, the Board concluded that “ENRICO COVERI” and “COVERI” are both dissimilar in appearance, pronunciation and concept.

Besides, the Board did not admit a high degree of popularity and recognition to “ENRICO COVERI” among relevant public in Japan because of insufficient evidence to demonstrate amount of sales, number of stores and expenditure for promotion and advertisement (Opponent has just produced some photographs or articles appeared in fashion magazines).

Based on the fact finding, the Board concluded that opposed mark was not filed in a malicious intent to do harm to the designer’s fame, and “COVERI” shall not be deemed as an abbreviation of “ENRICO COVERI”. Therefore, there finds less likelihood of confusion between “COVERI” and “ENRICO COVERI” even if both marks are used on apparels or shoes.

It is highly advisable to an owner of high-end or luxurious brand, consisting of two or more alphabetical words, to have each word registered as well for the purpose of preventing free-riding and enjoying a broader scope of protection against use by others.