Article 4(1)(vii)

GEOGRAPHICAL INDICATION BOURBON LOSES TRADEMARK OPPOSITION

Posted on2019年5月3日2022年1月3日

In a recent decision, the Japan Patent Office (JPO) has dismissed the opposition filed by Distilled Spirits Council of the United States (DISCUS), a US non-profit organization which represents the interests of producers and traders of spirit drinks, including Bourbon whiskey, against trademark registration no. 5927252 for the word mark “ROYCE’ BOURBON” for bourbon whiskey in class 33.

[Opposition case no. 2017-900181, Gazette issued on March 29, 2019]

ROYCE’ BOURBON

Opposed mark (see below) is a combination of “ROYCE” with apostrophe and “BOURBON” written in a plain roman type.

ROYCE’ BOURBON was filed in January 25, 2016 by a Japanese confectionery company, ROYCE’ Confect Co., Ltd., headquartered in Hokkaido, for bourbon whiskey in class 33.

JPO, going through substantive examination, admitted registration and published for opposition on April 4, 2017.

TRADEMARK OPPOSITION

On June 2, 2019, before the lapse of a two-months opposition period, DISCUS filed an opposition, arguing that the word ‘BOURBON’ in the mark applied for would allow consumers to establish a link between the geographical indication Bourbon and “bourbon whiskey”. Therefore, the use and registration of the mark by unrelated entity to Bourbon County, Kentucky (USA) would dilute and exploit the reputation of the geographical indication [Bourbon]. Opposed mark shall be prohibited from registration based on Article 4(1)(vii) of the Trademark Law as well as Article 4(1)(xvi) since the mark is likely to offend public order and cause misconception in quality.

BOARD DECISION

The Board admitted Bourbon is an indication of origin/geographical indication from the United States to represent an American Whiskey produced mainly in the southern part of Kentucky State. However, the Board considered opposed mark shall neither offend public order nor cause misconception in quality, stating that:

To the extent opposed mark just covers “bourbon whiskey”, appropriate use of the mark would not disorder fair deal and international trade practice. If so, the Board finds no clue to conclude the applicant adopted the mark with intentions to free ride the reputation of the geographical indication [Bourbon].

Likewise, as long as the Bourbon denomination may be used only for products manufactured in Kentucky by regulations, the designated goods “bourbon whisky” is unquestionably from the US. If so, opposed mark ROYCE’ BOURBON would not cause qualitative misconception in the minds of relevant consumers in relation to “bourbon whiskey” at all.

Based on the foregoing, the Board decided opposed mark shall not be objectionable under Article 4(1)(vii) and (xvi), and granted registration a status quo.

PUMA Triumphs in Trademark Battle over Iconic Jumping Cat Logo

Posted on2019年4月28日2022年1月3日1 Comment

After eight years of prolonged dispute, PUMA SE could achieve a victory over trademark battle involving famous its iconic jumping cat logo. The Japan IP High Court has overturned decisions by the Japan Patent Office (JPO) which said that a trademark application for a jumping cat-like creature was unlikely to cause confusion with an iconic jumping cat logo owned by sportswear brand Puma.

[Judgment of 26 March 2019 in Case H29(Gyo-ke)10206 and 10207]

PUMA Jumping Cat Logo

PUMA SE (former “Puma AG Rudolf Dassler Sports”), branded as PUMA, is a Germany-based multinational outfit that is famous for manufacturing one of the most sophisticated sportswear and athletic shoes in the world.

Its iconic jumping cat logo (see below), designed in 1967, has been undoubtedly one of the most famous brand logos in the world.

Single cat device

A Japanese individual filed a trademark for the single cat device (see below) on April 12, 2008 by designating T-shirts and caps in class 25. JPO registered the marks on February 25, 2011.

[TM Registration no. 5392943]

[TM Registration no. 5392944]

Opposition / Invalidation Trial

On May 27, 2011, PUMA SE filed an opposition against the mark based on Article 4(1)(xv) of the Trademark Law and asserted relevant consumers or traders are likely to confuse or misconceive a source of the single cat device mark with PUMA or a business entity systematically or economically connected with PUMA when used on designated goods in class 25 because of a high reputation and close resemblance between PUMA jumping cat logo and single cat device.

Article 4(1)(xv) provides that a mark shall not be 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.

The Opposition Board admitted a high degree of popularity and reputation of the jumping cat logo in relation to sportswear as well as apparel, including T-shirts and caps, as a source indicator of PUMA SE, however, the Board dismissed the opposition due to the dissimilarity of the marks (Opposition case nos. 2011-900191 and -900192).

Subsequently, PUMA SE requested for an invalidation trial and sought to annul the mark based on Article 4(1)(xii) and (xv) of the Trademark Law on February 25, 2016, the final deadline of five years from registration. However, the Invalidation Trial Board totally dismissed PUMA’s allegations on the same grounds (Trial case nos. 2016-890014 and -890015).

To challenge the validity of the administrative decisions, PUMA appealed to the IP High Court.

IP High Court ruling

After eight years of prolonged dispute, the IP High Court set aside the administrative decisions and ruled in favor of PUMA, represented by an attorney, MASAKI MIKAMI of MARKS IP LAW FIRM.

In the ruling, the Court pointed out a fact that designated goods, T-shirts and caps in question have a close association with sportswear and apparel of PUMA’s great interest in the aspect of usage, purpose and consumers/traders. Both goods are purchased by general consumers. Besides, the Court confirmed PUMA jumping cat logo has unquestionably acquired a high degree of popularity and reputation among relevant consumers and traders with an ordinary care even before a filing date of disputed mark. It is true that there exists visual difference between PUMA jumping cat logo and disputed marks, however, admittedly overall impression of both marks is too similar in appearance. Disputed marks do not give rise to any specific meaning and pronunciation. In the meantime, the cited mark gives rise to a meaning and pronunciation of famous sports brand “PUMA”. If so, the Court assumes the difference in sound and concept shall be less obvious on the case.
By taking above facts into considerations, the Court affirmed relevant consumers of T-shirts and caps (class 25) are likely to associate the goods with PUMA and thus confuse its source with PUMA or a business entity systematically or economically connected with PUMA SE.

Based on the foregoing, the Court annulled the Board decisions and ruled to invalidate disputed marks based on Article 4(1)(xv).

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”.

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) 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.