タグ: malicious intention

BOND GIRL Score Win in Trademark Dispute

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The Japan Patent Office (JPO) declared invalidation of TM Reg no. 6267785 for “BOND GIRL” with a “BG” device mark in contravention of Article 4(1)(vii) of the Trademark Law.

[Invalidation case no. 2022-890013, decided on November 18, 2022]

Disputed mark

A disputed mark, consisting of the stylized word “BOND GIRL” and “BG” logo (see below), was filed with JPO for use on scissors, swords, hand tools, spoons, and forks in class 8 by a Japanese business entity on September 4, 2019, and registered on July 9, 2020.

Apparently, the applicant has used the disputed mark on multi-tools. Click here.

Invalidation petition by Danjaq, LLC

On March 1, 2022, Danjaq, LLC, the holding company responsible for the copyright and trademarks to the characters, elements, and other material related to James Bond on screen, filed a petition for invalidation and argued disputed mark shall be invalid in contravention of Article 4(1)(vii) of the Japan Trademark Law by citing world-famous cinematic heroine “BOND GIRL” in the James Bond film series “007”.

Article 4(1)(vii)

Article 4(1)(vii) of the Trademark Law prohibits any mark likely to cause damage to public order or morality from registration.

In the petition, Danjaq argued “BOND GIRL” has appeared as a love interest of James Bond in the movies for over 55 years since 1962. Due to frequent appearances in magazines, other public media, and various events pertinent to the Japes Bond movie, the name and sign of “BOND GIRL” has been well-known as a cinematic heroine in association with the film series “007”.

If so, it is presumed that the applicant intentionally applied the disputed mark with the aim to monopolize the term. Since the applicant does not have any legal interest with Danjaq, a legitimate owner of trademarks and copyrights pertaining to the 007 movies, it must impermissibly cause not only damage to public order but the disorder in domestic and foreign trade.

JPO decision

The Invalidation Board found, from the produced evidence, the cinematic heroine “Bond girl” has regularly attracted audiences through screens, magazines, and promotional events of the James Bond “007” movie. The sign “BONG GIRL” had further extensive marketing and licensing to companies in vastly different product categories, not only with products associated with motion pictures, e.g. nails, cosmetics, dolls, cards, calendars, and others. Relevant consumers at the sight of the disputed mark would conceive nothing but the cinematic heroine in the film. The Board, therefore, considered that “BOND GIRL” has become worldly famous as a cinematic heroine that appeared in the “007” film series.

The Board continued in analyzing efforts made by Danjaq to enhance the commercial value of “BOND GIRL” by means of trademark registrations in various jurisdictions and licensing to different product categories.

The Board paid attention that the applicant has referred to the James Bond films and the cinematic heroin “Bond girl” in advertisements to promote the BG multi-tools.

Based on the foregoing, the Board found it is impermissible for the applicant, unrelated to Danjaq, to monopolize the term on goods in question and decided to retroactively invalidate the disputed mark in contravention of Article 4(1)(vii) for the purpose of preventing damage to public order.

GUCCI Unsuccessful in Trademark Opposition

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On July 12, 2022, the Japan Patent Office (JPO) dismissed an opposition claimed by Italian fashion house Gucci against Japan Trademark Registration no. 6384970 for the mark “CUGGL” with a hand-painted line in pink by finding less likelihood of confusion with famous fashion brand “GUCCI”.

[Opposition case no. 2021-900284]

CUGGL

Opposed mark, consisting of the term “CUGGL” with a hand-painted line in pink, was applied for use on clothing, footwear, headwear, and apparel in class 25 by an individual on October 6, 2020.

The JPO granted protection of the opposed mark and published it for opposition on May 25, 2021.

Opposition by GUCCI

Italian high-end luxury fashion house, GUCCI filed an opposition with the JPO on July 26, 2021, and argued the opposed mark shall be canceled in contravention of Article 4(1)(vii), (xv), and (xix) of the Trademark Law due to similarity and likelihood of confusion with famous fashion brand “GUCCI”.

GUCCI claimed the opposed mark was sought with malicious intention to free-ride goodwill and reputation in a manner of hiding the lower part of the term “CUGGL” by a pink painted line to the extent consumers could recognize it as if “GUCCI”. In fact, the registrant promotes T-shirts bearing the opposed mark with the most part of the term hidden.

JPO Decision

The JPO Opposition Board admitted a remarkable degree of popularity and reputation of the opponent’s “GUCCI” mark.

In the meantime, the Board did not find a resemblance between “GUCCI” and “CUGGL” from visual, phonetic, and conceptual points of view. Due to a low degree of similarity of the mark, the Board had no reason to believe that relevant consumers would misconceive a source of goods in question bearing the opposed mark from GUCCI or any entity systematically or economically connected to the opponent.

Assuming a low degree of similarity of the mark and less likelihood of confusion, the Board can’t find a reasonable ground to admit the applicant had a malicious intention to free-ride goodwill and reputation of GUCCI and do harm to the opponent.

Based on the foregoing, the JPO dismissed the entire allegations and decided the opposed mark was valid.

BEYOND MEAT defeats “Beyond Meat Burger”

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The Japan Patent Office (JPO) sided with Beyond Meat Inc. and canceled TM Reg no. 6197193 for wordmark “Beyond Meat Burger” by free-riding on the business reputation of “BEYOND MEAT”.

[Opposition case no. 2020-900023, Gazette issued date: July 30, 2021]

Beyond Meat Burger

Opposed mark, consisting of a wordmark “Beyond Meat Burger” written in a Japanese katakana character (see below), was filed by a Japanese individual on July 23, 2018, for use on ‘meat products’ in class 29 and ‘clothing’ in class 25.

Subsequently, the applicant deleted the designated goods in class 29.

The mark was registered on November 15, 2019, and published for opposition on December 10, 2019.

BEYOND MEAT

Beyond Meat Inc., a US food processing company that specializes in providing plant-based meat, filed an opposition against the “Beyond Meat Burger” mark with the JPO on January 24, 2020, before the lapse of a two-month statutory period for the opposition.

In the opposition brief, Beyond Meat argued the opposed mark shall be canceled in contravention of Article 4(1)(xix) of the Japan Trademark Law.

Article 4(1)(xix) prohibits registering a trademark that is identical with, or similar to, another entity’s famous mark, if such trademark is aimed for unfair purposes, e.g. gaining unfair profits, or causing damage to the entity.

It is interpreted that the “famous mark” under the article does not require a high reputation among Japanese consumers. If domestic consumers recognize such a reputation in foreign countries, it will suffice.

Beyond Meat alleged that the “BEYOND MEAT” mark has been well known for plant-based meat substitutes by the opponent to meat distributors as well as US consumers (It should be noted that Beyond Meat has yet to launch the business in Japan as of now). It is obvious that the opposed mark is confusingly similar to “BEYOND MEAT”. Presumably, the opposed party must have filed the opposed mark with a fraudulent intention to prevent registration of the “BEYOND MEAT” mark in Japan and gain unjust enrichment by doing so.

JPO decision

The JPO Opposition Board admitted that the “BEYOND MEAT” mark has acquired a remarkable degree of reputation among US consumers as a source indicator of plant-based meat substitutes by Beyond Meat Inc. even before the application date of the opposed mark

The Board assessed the opposed mark is confusingly similar to “BEYOND MEAT”. Relevant consumers with an ordinary care would see the term “Beyond Meat” as a prominent portion of the opposed mark because the consumers get familiar with the English word “Burger.”

A fact that the opposed party initially designated ‘meat products’ implies the applicant’s intention to use the opposed mark on the goods that are closely associated with meat substitutes. If so, the Board had a reasonable ground to believe the opposed mark was filed with an intention to take advantage of goodwill and business reputation associated with Beyond Meat’s tradename and trademark.

Based on the foregoing, the JPO decided to retroactively cancel the opposed mark “Beyond Meat Burger” in contravention of Article 4(1)(xix).

Mattel failed in a trademark opposition to block “Salon BARBIES”

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JPO dismissed an opposition by Mattel, Inc. – maker of the world-famous Barbie doll – who claimed “Salon BARBIES” is likely to cause confusion or association with famous Barbie doll when used on restaurant and fan club services. [Opposition case no. 2016-900395]

Opposed mark

Opposed mark, TM Registration no. 5881203, was filed on March 10, 2016 by designating various services in class 35 and 43 including restaurant, accommodation club services, business management analysis and others.

JPO granted to register opposed mark with no finding of refusal grounds and published for registration on October 11, 2016.

Opposition

On December 12, 2016, Mattel, Inc., an American multinational toy manufacturing company, opposed an application to register the mark Salon BARBIES (see above).

In the opposition, Mattel cited two senior trademark registrations.

  • TM Registration no. 5383631 for word mark “BARBIE” in standard character (classes 9, 14, 18, 24, 25, 28, 35)
  • TM Registration no. 589632 for the BARBIE logo (classes 9, 15, 20, 21, 25, 28)

Mattel argued that Opposed mark is subject to cancellation in violation of Article 4(1)(xv) of the Trademark Law on the grounds that its BARBIE mark had acquired such fame that, upon seeing the opposed mark used on restaurant and fan club service, the average consumer would be led to infer the existence of a connection to the owner of the famous brand.

Besides, Opposed mark is objectionable in violation of Article 4(1)(xix) as well since it would presumably aim to dilute or do harm to remarkable prestige bestowed to BARBIE mark.

Board decision

The Opposition Board admitted BARBIE mark has acquired a high degree of popularity and reputation as a source indicator of dolls among relevant traders and consumers at the time of both the application and the grant of registration of Opposed mark.
In the meantime, the Board denied similarity of both marks in visual, phonetical and conceptual points of view.
Based on dissimilarity of the marks, the Board concluded relevant traders and consumers are unlikely to confuse or associate the services using Opposed mark with opponent or any business entity economically or systematically connected with Mattel.
Therefore, Opposed mark shall not be cancelled due to Article 4(1)(xv) of the Trademark Law.

Article 4(1)(xix) is applicable only where both marks are identical or similar.
Besides, from the totality of the circumstances, the Board found no fact and evidence to show or infer that Opposed mark was filed with malicious or fraudulent intent on the part of registrant to hinder the business of opponent. Thus, Opposed mark shall remain valid in light of Article 4(1)(xix) as well.