タグ: Japan Trademark Law

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.

HERMES Victory in trademark dispute against HAIRMES

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On July 26, 2023, the Japan Patent Office (JPO) sided with Hermes International in an invalidation trial against TM Reg no. 6275593 for the wordmark “HAIRMES” by finding the owner’s unjustified intention to free-ride and dilute the famous fashion brand “HERMES” and cause confusion.

[Invalidation case no. 2022-890082]

Disputed mark

Dog Diggin Designs, LLC applied a wordmark “HAIRMES” in standard character for use on beds for household pets; pillows for pets; pet cushions in class 20, and toys for pets in class 28 with the JPO on October 16, 2019. Apparently, the company promotes parody dog toys & dog beds, and other pet supplies.

https://www.dogdiggindesigns.com/

Hermes International filed a post-grant opposition against the disputed mark with the JPO on October 15, 2020, and argued the disputed mark shall be canceled in contravention of Article 4(1)(x), (xi), (xv), and (xix) of the Trademark Law because of the remarkable reputation and popularity of the HERMES brand in the fashion industry and a high degree of similarity between “HAIRMES” and “HERMES” likely to cause confusion among relevant consumers in Japan.

The JPO Opposition Board decided to dismiss the opposition by finding unlikelihood of confusion due to a low degree of similarity between the marks. Click here.

Invalidation action by Hermes

Hermes International filed an invalidation action with the JPO based on the same grounds on October 18, 2022, and repeatedly argued the owner must have had an intention to imitate and free-ride on reputation and goodwill of the famous fashion brand “HERMES” by making use of similar trade dress with Hermes packaging color and design in addition to similar HAIRMES mark.

JPO decision

The JPO Invalidation Board admitted that “HERMES” has been widely recognized as a luxury fashion brand and source indicator of Hermes International.

In the assessment of similarity of mark, the Board found both marks are dissimilar in sound and concept. However, these marks give a similar visual impression by sharing the first letter “H” and the four letter “RMES” in the latter half of respective word, which catches the attention of consumers. If so, the Board has a reason to believe there is a certain degree of similarity between the marks.

The Board paid attention to a fact that the owner promotes pet beds and pet toys bearing similar color and decoration to the iconic Hermes packaging. Based on the circumstances, the Board had a view that presumably the owner, knowing that the HERMES mark has been widely recognized among consumers in Japan, must have had an intention to free-ride or dilute reputation on HERMES.

Based on the foregoing, the Board found relevant consumers are likely to confuse the source of pet beds and toys bearing the disputed mark with Hermes International in view of close association with fashion items as well, and decided to invalidate the disputed mark entirely.

JPO Annual Report 2023

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The Japan Patent Office (JPO) released its 2023 Annual Report (in Japanese only) on July 28, 2023, which contains informative figures and statistics relating to IP applications in Japan and all other activities of the JPO.

Trademark applications filed in 2022

In the aftermath of the COVID-19 pandemic, the number of trademark applications in Japan decreased to 170,275 by 7.8 % in 2022. TM applications via Madrid Protocol also decreased to 19,769 by 1.6% compared to the previous year. Direct applications decreased to 150,506 by 8.5 %.

Pendency time for trademark prosecution

Since 2020, the first office action pendency, the average number of months from the date of application filing to the JPO examiner’s first office action, has been drastically getting shorter in a row. The first Action Pendency was 5.4 months in 2022.

Total pendency, the average number of months from the date of filing to registration in 2022 was 6.9 months, four months shorter than in 2020 (11.2 months).

The average number of months for trial is also getting shorter in 2022.

TM Appeal trial: 8.6 months / TM Opposition trial: 8.9 months / TM Invalidation trial: 10.0 months / TM Cancellation trial: 6.4months

TM applications to JPO by Foreign Companies/ Non-resident

44,911 trademark applications, which account for 26.4 % of the total, were filed by foreign companies or non-residents in 2022. The number of applications was decreased by 13 % since last year.

The statistic shows China was continuously leading the ranking with about 15,100 trademark applications in 2022, decreased by 25 % from the previous year.

Chrysler Wins Japan Trademark Invalidation Trial over “Jeeper”

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In a recent invalidation decision by the Japan Patent Office (JPO), Chrysler could finally achieve victory in a trademark dispute against “Jeeper”, regardless of their failed opposition in 2022.

[Invalidation case no. 2022-890064, decided on July 5, 2023]

Disputed mark

The wordmark “Jeeper” was filed by a Japanese individual for use on various hand tools in class 8 with the JPO on January 27, 2020 (TM App no. 2020-8907).

Since the JPO admitted registration of the mark on November 17, 2020, and published it for a post-grant opposition on December 8, 2020, Fiat Chrysler Automobiles (FCA US) LLC filed an opposition on Jan 26, 2021.

In the opposition, FCA argued the mark shall be canceled in contravention of Article 4(1)(xi) and (xv) of the Trademark Law due to the remarkable reputation and popularity of “JEEP” as a source indicator of Chrysler vehicles and a high degree of similarity between the mark “Jeeper” and Chrysler “JEEP.”

Article 4(1)(xi) is a provision to refrain from registering a junior mark that is deemed identical with, or similar to, an earlier registered mark.

Article 4(1)(xv) provides that a mark shall not be registered where it is likely to cause confusion with other business entities’ well-known goods or services.

However, on April 6, 2022, the JPO Opposition Board dismissed the opposition by questioning the famousness of the “JEEP” mark among relevant consumers of hand tools and finding a low degree of similarity between the two marks (Opposition case no. 2021-900035).

Invalidation action by FCA US LLC

To contest the Opposition Board decision, FCA US LLC filed an invalidation action with the JPO on July 28, 2022, and repeatedly argued the mark “Jeeper” shall be invalid due to its similarity to and the likelihood of confusion with “JEEP” when used on the hand tools in class 8.

The applicant did neither file an answer nor respond to the invalidation claims at all.

JPO Decision

The JPO Trial Board admitted a high degree of reputation and recognition of the claimant’s trademark “JEEP” in connection with small 4WD cars. Besides, based on the facts that the JEEP mark has been used on T-shirts, backpacks, bags, mugs, lunch boxes, carabiners, key chains, spray bottles, containers, and cooler boxes, the Board found the JEEP mark has even become famous among consumers of goods other than automobiles.

Based on the above findings, the Board held that, by taking account of the famousness of the JEEP mark as a source indicator of the claimant’s small 4WD cars, the literal portion of “Jeep” shall play a prominent role in indicating the source of the disputed mark. If so, the disputed mark gives rise to the sound of “Jeep” and the meaning of “the claimant’s famous small 4WD cars” accordingly.

Bearing this in mind, the Board compared the prominent portion “Jeep” of the disputed mark with the claimant’s mark “JEEP” and found a close resemblance of both marks as a whole.

In assessing the likelihood of confusion, the Board held small 4WD cars are remotely associated with hand tools in class 8, however, the Board paid attention to the fact that camp items bearing the JEEP mark e.g., backpacks, mugs, carabiners, cooler boxes, etc., are closely associated with the goods in question.

Based on the foregoing, the Board found relevant consumers are likely to confuse a source of the goods in question bearing the disputed mark with the claimant and decided to invalidate the disputed mark based on Article 4(1)(xi) and (xv).

CASIO Successful in Registering 3D Shape of “G-SHOCK” Watch

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The Japan Patent Office (JPO) disaffirmed the examiner’s rejection and granted protection to the 3D shape of the Casio “G-Shock” watch by finding acquired distinctiveness as a result of substantial use over the past four decades.

[Appeal case no. 20212-11052, Gazette issued date: June 30, 2023]

CASIO “G-SHOCK” Watch

On April 28, 2021, Casio Computer Co., Ltd. filed a trademark application for the 3D shape of the first-released G-Shock, the DW-5000 (see below) to be used on ‘watches’ in class 14 with the JPO (TM application no. 2021-52961).

Rejection by JPO Examiner

On April 11, 2022, the JPO examiner rejected the 3D mark based on Article 3(1)(iii) of the Japan Trademark Law.

In the rejection, taking into consideration various decorations or patterns on the belt and case of wristwatches by other watchmakers (see below), the examiner considered the 3D shape of the applied mark lacks distinctiveness as a source indicator of wristwatch because relevant consumers and traders would recognize it simply represents a common shape of wristwatch adopted to enhance aesthetic function and psychological effect on the goods in question.

The examiner negated the acquired distinctiveness of the 3D shape of “G-Shock”, the DW-5000 regardless of continuous use on Casio’s wristwatches for 40 years on the grounds that:

  1. On the goods, catalogs, and advertisements, wordmarks “CASIO” and “G-SHOCK” have been constantly used as well.
  2. The “G-Shock” wristwatch collection has a lot of models that have a different appearance from the applied 3D shape.
  3. The market research that targeted a total of 1,100 men and women aged over 16 resulted in 55.52% of the interviewees answering “Casio” or “G-Shock” to an open-ended question when shown the 3D shape of the DW-5000. The percentage is insufficient to admit the 3D shape per se has acquired distinctiveness as a source indicator.
A screen shot from casio.com

On July 15, 2022, Casio filed an appeal against the rejection and disputed the acquired distinctiveness.

JPO Appeal Board decision

The Appeal Board affirmed the examiner’s finding in applying Article 3(1)(iii) of the Trademark Law.

In the meantime, the Board paid attention to the fact 66.27% of the interviewees selected “Casio” or “G-Shock” to a closed-ended question, where it mentions G-Shock along with other close competitors.

Provided that more than 60% of consumers associate the 3D shape with Casio or G-Shock, and the shape has the reputation as a representative model of the G-Shock with its unique shock-resistance form, the Board has a reason to believe the 3D shape per se has acquired a substantial degree of recognition among relevant consumers and played a role in source indicator of Casio’s wristwatches. If so, the examiner errored in applying Article 3(2) of the Trademark Law.

Based on the foregoing, the Board decided to cancel the examiner’s rejection and admitted registration of the applied mark exceptionally based on Article 3(2).

VOLVO Fails Trademark Opposition against VOLVOX

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The Japan Patent Office (JPO) dismissed a trademark opposition filed by Volvo Trademark Holding AB against TM Reg no. 6602236 for the mark “VOLVOX” due to the dissimilarity of the mark and unlikelihood of confusion with “VOLVO”.

[Opposition case no. 2022-900449, Gazette issued date: June 30, 2023]

Opposed mark

The opposed mark (see below) was filed in the name of VOLVOX Co., Ltd. for use on advertising and publicity services in class 35 with JPO on March 4, 2022.

The JPO granted protection of the opposed mark on August 8, 2022, and published it for post-grant opposition on August 25, 2022.

Opposition by VOLVO

Volvo Trademark Holding AB filed an opposition against the opposed mark on October 25, 2022, before the lapse of a two-month statutory period counting from the publication date and claimed the opposed mark shall be canceled in contravention of Article 4(1)(x), (xi) and (xv) of the Japan Trademark Law by citing earlier TM Reg no. 4729933 for wordmark “VOLVO” in standard character covering advertising and publicity services in class 35 and others.

VOLVO argued the literal element of the opposed mark “VOLVOX” is confusingly similar to “VOLVO” from visual, aural, and conceptual points of view by taking account of the remarkable reputation of “VOLVO” as a source indicator of VOLVO cars. If so, it is likely that relevant consumers confuse a source of the service in question bearing the opposed mark with the opponent.

JPO decision

The Board admitted that the “VOLVO” mark has acquired a substantial degree of reputation and popularity as a source indicator of VOLVO cars among relevant consumers.

However, the Board negated the similarity between “VOLVO” and “VOLVOX” by stating:

“The opposed mark gives rise to a sound of ‘vol-voks’ and a meaning of ‘freshwater green algae of the genus’. In the meantime, the cited mark has the sound of ‘Volvo’ and the meaning of ‘brand name of automobiles manufactured and sold by VOLVO’. The difference arising from the presence of the letter “X” and figurative elements would be anything but visually negligible. Likewise, both marks are aurally distinguishable due to the difference in the number of sounds and sound structure. Conceptually, there is no doubt to cause confusion because of clear distinction in respective meaning.”

By taking into consideration a lower degree of similarity between the marks, the Board found that relevant consumers are unlikely to associate and confuse the opposed mark with VOLVO even when used on services in question.

Based on the foregoing, the Board dismissed the opposition entirely and decided that the opposed mark “VOLVOX” shall remain valid as the status quo.

Changes in rules and processes to serve JPO documents from July 3, 2023

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From July 3, 2023, the JPO documents will be served to foreign registrants by publication in the event of the suspension of international mail service for six months or more, by virtue of the Japan Trademark Law Revision Act promulgated on June 14, 2023.

Under the current provisions for serving documents (Article 191 of the Patent Law, Article 77(5) of the Trademark Law), where a foreign registrant has not assigned a case to a local attorney, the JPO serves documents relating to the case by registered airmail or other means directly to the registrant.

However, due to the global spread of the Coronavirus and the situation in Ukraine, international postal services in some countries and regions have been suspended for a long period of time, making it impossible to send documents and hampering the progress of examination proceedings as shown below.

  • A refusal decision by the JPO examiner takes longer times to become final and binding due to the delay in serving the decision, and because of it, where a new application similar to the application awaiting refusal is filed, decisions on examinations of later applications may not be made.
  • Suspension of the appeal process due to the delay in the delivery of a duplicate written request for appeal.

In order to avoid such delays in examination or trial, the Revision Act allows the JPO to serve documents by publication in the event that the international mail service has not worked for more than six months.

In this respect, it is advisable for foreign registrants to assign every IP file to a local attorney just in case. The JPO would never serve by publication as long as a Japanese attorney has been assigned.

Service by publication takes effect with the lapse of 20 days.

It may happen that a refusal or cancellation decision made by the JPO becomes unappealable even if the foreign registrant has no way of knowing it due to international mail suspension.

The JPO plans to post relevant information on every case served by publication on the JPO website from now on. Click here.

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.

Japan: Trademark Law Revision Act promulgated on June 14, 2023

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The Japan Trademark Law Revision Act of 2023 (Act No. 51) passed Congress on June 7 and was promulgated on June 14. Hot topics of the revision are:

1. An individual can register his/her name as a trademark to the extent that it has acquired a substantial degree of recognition among relevant consumers of the designated goods or services

Current law provides that the name of a person is unregistrable if there is another person of the same name unless obtaining his/her consent (Article 4(1)(viii)).

Current – Article 4(1)(viii)

Trademark shall not be registered if the mark contains the portrait of another person, or the name, famous pseudonym, professional name, or pen name of another person, or famous abbreviation thereof (except those the registration of which has been approved by the person concerned)

By virtue of the revision, in the event that the name of a person has been widely recognized as a source indicator of his/her business, the individual can register his/her name without the consent of another person of the same name.

Revision – Article 4(1)(viii)

Trademark shall not be registered if the mark contains the portrait of another person, or the full name of another person (limited to that has been widely recognized as a result of actual use on goods or services of the person’s business), the name, famous pseudonym, professional name or pen name of another person, or famous abbreviation thereof (except those the registration of which has been approved by the person concerned), or the name of another person that would not meet with requirements specified by government ordinance.

It should note above revision does not apply to the name of a company (legal entity). A company can’t register its name without the consent of another company of the same name if exists.

 2. A mark can be registered even if it is subject to Article 4(1)(xi) which prohibits registration of any mark identical or similar to earlier trademark registration, on the condition that the earlier trademark owner gives consent and there is no likelihood of confusion with the earlier mark as a matter of fact.

For long years, the JPO has not considered, in the course of trademark examination, consent from earlier trademark owners as a pass to open the gate for registration.

Due to a rigid examination practice, the applicant and earlier trademark owner, regardless of mutual agreement to give consent to trademark registration in Japan and other jurisdictions, were all the way obliged to temporally transfer their trademark right to either party and then take action to assign it back after the JPO granted registration of the applied mark.

By virtue of the revision, the applicant can overcome the refusal based on a conflict with earlier trademark registration in Japan by filing a letter of consent from the earlier trademark owner and the JPO examiner believes the co-existence of both marks would not cause confusion.

New – Article 4(4)

Trademark shall not be rejected under Article 4(1)(xi) provided that the applicant obtains consent from the owner of the cited mark under the article and it is unlikely to cause confusion with the cited owner and its exclusive or non-exclusive licensee when used on goods or services designated under the application.

It should note the JPO still has the discretion to reject or cancel trademark registration even after the filing of a letter of consent where they find a likelihood of confusion or actual confusion (Article 52-2).

When does the revised act come into force?

The revised act is set to become effective from April 1, 2024.