In a decision dated September 12, 2019, the Japan IP High Court affirmed the Japan Patent Office’s (JPO) determination to refuse registration for the STATE EXPRESS 555 “SIGNATURE” cigarette package design due to a conflict with senior Trademark Registration No. 4658792 for word mark “SIGNATURE”.
[Court case no. Heisei31(Gyo-ke)10020]
STATE EXPRESS 555 “SIGNATURE” cigarette package design
CTBAT International Company Limited, a joint investment of subsidiaries of China National Tobacco Corporation and British American Tobacco and incorporated in Hong Kong, filed a trademark application for device mark representing cigarette package design (see below) by designating cigarette, tobacco, electronic cigarette and others in class 34 on November 28, 2016 (TM application No. 2016-134074).
It the center, “No. 555 STATE EXPRESS” is written in three lines inside a circle. “SIGNATURE” is written independently on the upper side of the design.
Senior trademark “SIGNATURE”
The JPO examiner refused registration by citing a senior Trademark Registration No. 4658792 for word mark “SIGNATURE” in standard character overt the goods of cigarette in class 34 owned by PT Gudang Garam TBK, one of Indonesia’s leading cigarette manufacturers, best known for its kretek clove cigarettes, headquartered in Kediri, Indonesia, which was acquired by Philip Morris in 2005.
PT Gudang Garam TBK has used the registered mark as a cigarette sub-brand of Gudang Garam.
CTBAT filed an appeal against the JPO examiner’s refusal and argued dissimilarity between the marks, but in vain. [Appeal case no. 2018-002007]
Subsequently, CTBAT appealed to the IP High Court and demanded cancellation of the administrative decision to refuse registration for plaintiff’s mark.
CTBAT argued the term ‘SIGNATURE’ lacks distinctiveness in relation to cigarette because several cigarette manufacturers, e.g. Dunhill, Camel, Davidoff, W.O.Larsen, have been using it as a qualitative term to indicate the cigarette has a specific feature of symbolic brand.
Besides, plaintiff’s mark contains distinctive terms, “No. 555 STATE EXPRESS”, which has acquired a certain degree of popularity of the cigarette brand through substantial use for more than 100 years. If so, it is unlikely that relevant consumers and traders would recognize the term “SIGNATURE” on the upper side as a source indicator in itself.
IP High Court Ruling
The court dismissed the allegation entirely, by stating that:
- From overall appearance of plaintiff’s mark, the term “SIGNATURE” shall not be perceived to combine with other figurative and literal elements.
- From the produced evidences, it is unclear if “No. 555 STATE EXPRESS” and “555” has acquired a certain degree of popularity because the cigarette brand has never been distributed in Japan so far.
- It is questionable that relevant Japanese consumers fully understand the term “SIGNATURE” and associated words, “Signature model”, “Signature Blends” have a qualitative or descriptive meaning in connection with cigarette.
- It has been often seen that a sub-brand is used on cigarette package separable from its main brand.
- The court finds the cited mark is used as a source indicator (sub-brand) on its cigarette package as well.
- Given the term “SIGNATURE” does not inseparably combine with other elements of plaintiff’s mark, it shall be permissible to cut out the portion and assess similarity of both marks based on the portion as long as it does meet with trade practice.
Based on the foregoing, the IP High Court sided with the JPO and upheld the refusal decision.