タグ: Supreme Court

JPO rejects “AIR NECKTIE” due to similarity to NIKE “AIR”

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The Japan Patent Office (JPO) dismissed an appeal filed by a Japanese individual who sought registration for use of the wordmark “AIR NECKTIE” on neckties in class 25 due to the similarity to NIKE “AIR.”
[Appeal case no. 2020-4106, Gazette issued date: February 26, 2021.]

AIR NECKTIE

The mark in question, consisting of two English words “AIR” and “NECKTIE”, and its transliteration in a Japanese katakana character (see below), was filed for use on ‘neckties’ in class 25 with the JPO on July 6, 2018 [TM Application no. 2018-88482].

TM App no. 2018-88482

AIR

The examiner raised her objection based on Article 4(1)(xi) of the Trademark Law by citing senior registration nos. 502137 and 4327964 for the mark “AIR” owned by NIKE Innovate C.V. (see below) which cover clothing, shoes, neckties, and other goods in class 25.

TM Reg no. 502137
TM Reg no. 4327964

Article 4(1)(xi) is a provision to prohibit registering a junior mark that is deemed identical with, or similar to, any senior registered mark.

Regardless of the arguments made on a written response to the office action by the applicant, the JPO examiner entirely rejected the “AIR NECKTIE” mark based on the ground.

On March 6, 2020, the applicant filed an appeal against the refusal with the JPO and disputed that the applied mark “AIR NECKTIE” is dissimilar to the cited mark “AIR.”

JPO decision

The JPO Appeal Board referred to the tests established by the Supreme Court ruling in 2008 to determine whether it is permissible to take out respective elements of the composite mark when assessing the similarity of two marks.

“Where a mark in dispute is recognized as a composite mark consisting of two elements or more, it is not permissible to assess the similarity of marks simply by means of taking out an element of the composite mark and then comparing such element with the other mark, unless consumers or traders are likely to perceive the element as a dominant portion indicating its source of origin of goods/service, or remaining elements truly lack inherent distinctiveness as a source indicator in view of sound and concept.”

Based on the tests, the Board found that it is permissible to take out a literal element “AIR” from the applied mark and compare it with the citations by stating the following grounds:

  1. The applied mark can be seen as a composite mark consisting of ‘AIR’ and ‘NECKTIE’ because of the space between two words.
  2. “NECKTIE” is unquestionably recognized as a generic term in connection with ‘neckties’ in class 25.
  3. Relevant consumers at the sight of neckties bearing the mark “AIR NECKTIE” would conceive the term “AIR” as a prominent source indicator.
  4. “AIR NECKTIE” does not give rise to any specific meaning in its entirety.
  5. The above facts suggest that “NECKTIE” lacks inherent distinctiveness in relation to the goods in question, and it would not play the role of source indicator of the applied mark in view of sound as well as concept.

Based on the foregoing, the Board affirmed the examiner’s rejection and decided that the applied mark “AIR NECKTIE” is similar to the cited marks as a whole given the remarkable similarity in sound and concept, even if the word “NECKTIE” differentiates two marks in appearance.

Court Case: Parallel imports of trademarked goods in Japan

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In a trademark dispute pertinent to parallel imports, on October 22, 2020, the Japan Tokyo District Court allowed the parallel import of “2UNDR” men’s underwear from Singapore into Japan.
[Court case no. Heisei30(Wa)35053]

2UNDR

Harris Williams Design Inc. (Harris), a Canadian corporation, is an owner of Japanese Trademark Registration no. 5696029 for the mark “2UNDR” over men’s underwear, clothing, and others in class 25 as well as Canadian Trademark Registration for the same mark, jointly with EYE IN THE SKY CO, Ltd., an exclusive distributor and licensee in Japan, sued Kabushiki Kaisha Bright, a Japanese company who imported and distributed 2,387 pcs of men’s underwear bearing the “2UNDR” mark as follows in Japan, for trademark infringement.

Defendant argued the goods in dispute were all purchased from a Singapore company M-Golf which was originally imported to Singapore under the license of another Canadian corporation owned by the CEO of Harris. If so, the import of the 2UNDR goods in Japan would not constitute trademark infringement and it is not prohibited the defendant from selling such goods in Japan as a parallel importer.

Parallel imports

Parallel imports involve the import and distribution of genuine trademarked goods by parties other than the trademark owner or their agent. In contrast to counterfeit products, products that are the subject of parallel imports were produced abroad with the consent of the trademark owner.

The plaintiffs contended the defendant’s act would be anything but permissible since M-Golf has been restricted under trademark license to export the licensed goods out of Singapore. Besides, when the defendant purchased the disputed goods, M-Golf was no longer an authorized distributor in Singapore. Therefore, defendant goods would never be construed the genuine products as a matter of law.

Supreme Court Ruling

In the “Fred Perry Case” decision ruled on February 27, 2003, the Japan Supreme Court established the criteria to determine whether parallel imports shall constitute trademark infringements, by relying on ‘functional theory’:

  1. Is the trademark affixed on the goods, which the alleged infringer wishes to import, by the trademark owner or with its consent in the country of export?
  2. Is the party who owns trademark right in the country of export also an owner of Japanese trademark right for the same mark or closely associated with the owner so that the trademark affixed in the country of export could indicate the same source with a registered mark in Japan?
  3. Is the owner of Japanese trademark right, directly or indirectly, effectively in control of the quality of imported goods with the trademark which is sought to be enforced so that the imported goods would be estimated virtually identical in view of quality with the goods placed on the market under the same trademark by the owner in Japan?

Given the answer to the above three tests is yes, the essential function of a trademark, namely “source indicator” and “quality assurance”, would not be harmed by virtue of parallel imports in fact. In this respect, parallel imports shall be permissible even if the defendant’s act nominally constitutes trademark infringement.

Tokyo District Court Decision

In line with the criteria, the Tokyo District Court found that answer to the first test is “yes” because the 2UNDR mark was originally affixed on the disputed goods under a license of Harris in Canada. The territorial restriction imposed on a licensee and termination of license agreement would be irrelevant to the test.

Unquestionably, the answer to the second test is “yes” since Harris is the sole owner of Japanese trademark registration and Canadian trademark registration for the 2UNDR mark. If so, both marks indicate the same source of origin as a matter of course.

As for the third test, the court could not find a reasonable ground to believe that territorial restriction is beneficial to assure the quality of men’s underwear by taking into consideration such goods would neither easily decline quality nor damage during shipment. Besides, there seems no difference in quality between the defendant’s imported goods and the plaintiff’s 2UNDR goods distributed in Japan. Therefore, the court held the case satisfies the third test as well.

Based on the foregoing, the court decided the defendant’s act to import and distribute the disputed goods in Japan would not adversely affect the essential function of the 2UNDR mark owned by plaintiffs and thus permissible as parallel imports under the Trademark Law.

Click here to read the full decision

Fashion Designer Lost Trademark Dispute Over His Name

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On July 29, 2020, the Japan IP High Court ruled to dismiss an appeal by Kabushiki Kaisha Soloist, founded by Takahiro Miyashita, a Japanese fashion designer, who contested a decision by the Japan Patent Office (JPO) to deny trademark registration for a compound mark consisting of “TAKAHIROMIYASHITA” and “TheSoloist.” under Article 4(1)(viii) of the Trademark Law.
[Judicial case no. Reiwa2(Gyo-ke)10006]

TAKAHIROMIYASHITATheSoloist.

Disputed mark (see below) was filed by Kabushiki Kaisha Soloist, founded by Takahiro Miyashita, on September 21, 2017, covering various fashion items in class 14, 18, and 25. [TM application no. 2017-126259]

In 2010, immediately after starting a company ‘Kabushiki Kaisha Soloist’, Takahiro Miyashita allegedly has launched his new brand “TAKAHIROMIYASHITATheSoloist.” and used the disputed mark on clothing, sandals, sunglass, eyewear, accessories designed by him since then and the disputed mark has become famous for his fashion brand. Consequently, relevant consumers and traders would not associate the disputed mark with any individual other than him.

Refusal decision by JPO

The Japan Patent Office (JPO) refused the mark in contravention of Article 4(1)(viii) of the Trademark Law, on the ground that the disputed mark contains a full name of private individual named “Takahiro Miyashita”. It is obvious that there are several Japanese people with the same name.

Article 4(1)(viii)

Article 4(1)(viii) of the Trademark Law prohibits registration of trademarks which contain the representation or name of any person, famous pseudonym, professional name or pen name of another person, or famous abbreviation thereof for the purpose of protecting personal rights of a living individual. Notwithstanding the provision, the article is not applicable where the applicant of the disputed mark produces the written consent of the person.

The Supreme Court of Japan has ruled the article shall be interpreted to protect the personal rights of a living individual. In line with the Supreme Court ruling, Trademark Examination Manuals (TEM) set forth that the article is applicable not only to natural persons (including foreigners) and corporations but also associations without capacity.

On January 29, 2019, the Appeal Board of JPO decided to affirm the examiner’s refusal on the same ground. [Appeal case no. 2019-1138]

To contest the administrative decision, the applicant filed an appeal to the IP High Court.

IP High Court Ruling

The court dismissed the allegation entirely, by stating that:

  1. Even though the disputed mark contains literal elements unrelated to the name of a living person, Article 4(1)(viii) is still applicable since relevant consumers would conceive the literal portions of “TAKAHIROMIYASHITA” as a name of a Japanese person.
  2. It is indisputable that there are several Japanese with the same name as Takahiro Miyashita and some of their names are written in different Chinese characters.
  3. The applicant failed to prove that he obtained consent from them.
  4. Alleged facts that the founder of the applicant has become famous as a fashion designer and because of it, relevant consumers and traders are unlikely to connect the disputed mark with any individual other than the designer would be construed irrelevant in applying Article 4(1)(viii).

Based on the foregoing, the IP High Court sided with the JPO and upheld the refusal decision.

Click here to see the Court’s official ruling (Japanese only)

Japan IP High Court sided with Apple Inc. in “CORE ML” trademark dispute

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On May 20, 2020, the Japan IP High Court denied the JPO decision and sided with Apple Inc. by finding the “CORE ML” mark is dissimilar to senior trademark registration no. 5611369 for word mark “CORE” in connection with computer software of class 9.
[Case no. Reiwa1(Gyo-ke)10151]

CORE ML

Apple Inc. filed a trademark application for word mark “CORE ML” in standard character by designating computer software in class 9 on November 6, 2017 (TM App no. 2017-145606).

Apple’s Core ML is its own framework for Machine Learning used across Apple products for performing fast prediction or inference with easy integration of pre-trained machine learning models on the edge, which allows you to perform real-time predictions of live images or video on the device.

JPO decision

The Japan Patent Office (JPO) rejected “CORE ML” in contravention of Article 4(1)(xi) of the Trademark Law due to a conflict with senior trademark registration no. 5611369 for word mark “CORE” in standard character over electronic machines, computer software, and other goods in class 9 owned by Seiko Holdings Corporation.

Article 4(1)(xi) is a provision to prohibit from registering a junior mark that is deemed identical with, or similar to, any senior registered mark.

In the decision, the JPO stated applied mark apparently consists of two words, “CORE” and “ML”. The term “CORE”, a familiar English word meaning ‘a central and foundational part’, would play a role of source indicator in connection with the goods in question. In the meantime, “ML” is a descriptive term since it is commonly used as an abbreviation of ‘Machine Learning’ in the computer software industry. If so, it is permissible to select the term “CORE” as a dominant portion of applied mark and compare it with the cited mark “CORE”.

To contend against the decision, Apple Inc. filed an appeal to the IP High Court.

IP High Court ruling

The IP High Court, at the outset, referred to the Supreme Court ruling in 2008 which established the criterion to grasp a composite mark in its entirety in the assessment of similarity of the mark.

“Where a mark in dispute is recognized as a composite mark consisting of two elements or more, it is not permissible to assess the similarity of mark simply by means of taking out an element of the composite mark and then comparing such element with the other mark, unless consumers or traders are likely to perceive the element as a dominant portion indicating its source of origin of goods/service, or remaining elements truly lack inherent distinctiveness as a source indicator in view of sound and concept.”

Based on the criteria, the court found that applied mark shall be assessed in its entirety on the following grounds:

  1. “CORE” would be merely recognized as a term to mean ‘a central and foundational part’ in connection with goods in question.
  2. It is unlikely that relevant consumers at the sight of “CORE ML” used on computer software conceive the term “ML” as an abbreviation of ‘machine learning’. If so, “ML” would not give rise to any specific meaning.
  3. The above facts suggest that “CORE” would never play a dominant role and “ML” shall not be considered less distinctive than “CORE” as a source indicator in view of the concept.
  4. From appearance and sound, there is no reasonable ground to believe “CORE” and “ML” shall be recognized individual and separable.

Based on the foregoing, the court pointed out the JPO erred in finding applied mark appropriately and decided that the applied mark “CORE ML” is deemed dissimilar to the cited mark “CORE” as a whole given the remarkable difference in sound and appearance, even if both marks resemble in concept.

Empire Steak House loses to trademark its restaurant name in Japan IP High Court battle

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On December 26, 2019, the Japan IP High Court ruled to uphold a rejection by the Japan Patent Office (JPO) to International Registration no. 1351134 for the mark “EMPIRE STEAK HOUSE” in class 43 due to a conflict with senior trademark registration no. 5848647 for word mark “EMPIRE”. [Judicial case no. Reiwa1(Gyo-ke)10104]

EMPIRE STEAK HOUSE

The case was brought into the IP High Court after the JPO decided to dismiss an appeal (case no. 2018-650052) filed by RJJ Restaurant LLC (Plaintiff), an owner of IR no.1351134 for mark consisting of stylized-words “EMPIRE STEAK HOUSE” in two lines and a golden cow design (see below) on restaurant services; carry-out restaurant services; catering services in class 43.

EMPIRE STEAK HOUSE, one of the top steakhouses in New York City since 2010, has opened their first restaurant aboard on the first floor of the new Candeo Hotel in Roppongi, Tokyo (JPN) on October 17, 2017. To secure the restaurant name in Japan, RJJ Restaurant LLC applied for registration of disputed mark via the Madrid Protocol with a priority date of March 2, 2017 in advance of the opening.

Senior registered mark “EMPIRE”

The JPO rejected disputed mark by citing senior trademark registration no. 5848647 for word mark “EMPIRE” in standard character on grilled meat and sea foods restaurant services in class 43 based on Article 4(1)(xi) of the Trademark Law.

Article 4(1)(xi) is a provision to prohibit from registering a junior mark which is deemed identical with, or similar to, any senior registered mark.

Senior registered mark was applied for registration on December 8, 2015 and registered on May 13 ,2016. Apparently, senior mark is actually used as a name of restaurant, “Dining Bar Empire”, located in the city of Ueda, Nagano Prefecture (JPN).

To contend against the decision, plaintiff filed an appeal to the IP High Court on July 19, 2019.

IP High Court Decision

Plaintiff argued the literal elements of disputed mark “EMPIRE STEAK HOUSE” shall be assessed in its entirety by citing web articles relating to applicant’s restaurant which referred to the restaurant as Empire Steak House in full. Like ‘Empire State Building’ and ‘Empire Hotel’, the term “EMPIRE” gives rise to unique meaning and plays a role of source indicator as a whole when used in combination with other descriptive word. Besides, disputed mark contains an eye-catching golden cow which attracts attention to relevant consumers. If so, it is evident that the JPO erred in assessing similarity of mark between “EMPIRE STEAK HOUSE” and “EMPIRE”.

The IP High Court, at the outset, mentioned the Supreme Court decision rendered in 2008 which established general rule to grasp a composite mark in its entirety in the assessment of similarity of mark.

“Where a mark in dispute is recognized as a composite mark consisting of two elements or more, it is not permissible to decide similarity of mark as a whole simply by picking out an element of the composite mark and then comparing such element with other mark, unless consumers or traders are likely to perceive the element as a dominant portion appealing its source of origin of goods/service, or remaining elements truly lack inherent ability to serve as a source indicator in view of sound and concept.”

Next, the court analyzed the configuration of disputed mark and found it is allowed to grasp a literal element “EMPIRE” of disputed mark as dominant portion in light of the criteria applied by the Supreme Court by stating that:

  1. A term “STEAK HOUSE” is commonly used to indicate steak restaurant even in Japan.
  2. Where the term is included in restaurant name, it sometimes happens that relevant consumers over leap the term to shorten the name.
  3. In restaurants, it becomes common practice to display cucina and foodstuffs to be served on signboard or advertisement. Likewise, there are many steak and grilled meat restaurants displaying cow design. If so, relevant consumers at the sight of disputed mark would perceive the cow design as a mere indication to represent foodstuffs at the restaurant.
  4. From appearance, given the configuration of disputed mark, respective element can be considered separable.

Finally, based on the above findings, the court dismissed plaintiff’s arguments and concluded the JPO was correctly assessing similarity of mark. Given dominant portion of disputed mark is identical with the cited mark “EMPIRE” and both marks designate the same or similar services in class 43, disputed mark shall be unregistrable under Article 4(1)(xi) of the Trademark Law.

JPO refused to register word mark “ROMEO GIGLI” due to lack of consent from Italian fashion designer

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In a recent decision, the Appeal Board of Japan Patent Office (JPO) refused to register trademark application no. 2015- 100245 for a red-colored word mark “ROMEO GIGLI” in gothic script (see below) designating goods of Class 24 and 25 on the grounds that applicant failed to obtain a consent from Italian fashion designer, Romeo Gigli, based on Article 4(1)(viii) of the Trademark Law.[Case no. 2017-3558]

Disputed mark was filed on October 16, 2015 in the name of ECCENTRIC SRL, an Italian legal entity, by designating following goods in Class 24 and 25.

Class 24:

“woven fabrics; elastic woven material; bed and table linen; towels of textile; bed blankets; table cloths of textile; bed covers; bed sheets; curtains of textile or plastic; table napkins of textile; quilts”

Class 25:

“clothing; T-shirts; shirts; jumpers; trousers; pants; jackets; skirts; jeans; neckties; overcoats; coats; belts; gloves; mufflers; sweat suits; underwear; swimsuits; headgear; hats; caps; footwear; special footwear for sports”

 

Article 4(1)(viii)

On December 9, 2016, JPO examiner refused the mark based on Article 4(1)(viii) of the Trademark Law.

Article 4(1)(viii) is a provision to prohibit registration of trademarks which contain the representation or name of any person, famous pseudonym, professional name or pen name of another person, or famous abbreviation thereof. Notwithstanding the provision, the article is not applicable where the applicant of disputed mark produces the written consent of the person.

The Supreme Court of Japan has ruled the article shall be interpreted to protect personal rights of a living individual. In line with the Supreme Court ruling, Trademark Examination Manuals (TEM) set forth that the article is applicable not only to natural persons (including foreigners) and corporations but also associations without capacity. Familiar name of foreigners falls under the category of “abbreviation” if its full name contains middle name(s) unknown to Japanese consumer.

Click here to access TEM on the JPO website.

Finding that disputed mark just consists of an individual name of famous fashion designer, Romeo Gigli, the examiner raised an objection based on Article 4(1)(viii) unless ECCENTRIC SRL obtains a consent from the designer.

 

APPEAL

The applicant filed a notice of appeal with the Appeal Board, a body within JPO responsible for hearing and deciding certain kinds of cases including appeals from decisions by JPO Examiners denying registration of marks, on March 9, 2017 and contended against the refusal decision by examiner.

During the appeal trial, ECCENTRIC SRL argued inadequacy of the decision by demonstrating following facts.

  • ECCENTRIC SRL is a legitimate successor of trademark rights owned by Romeo Gigli as a consequence of mandatory handover resulting from bankruptcy of company managed by Romeo Gigli irrespective of his intention. Under the circumstance, it is almost impossible to obtain a written consent from him.
  • In the meantime, ECCENTRIC SRL has already obtained trademark registrations for the word mark “ROMEO GIGLI” in several jurisdictions.
  • Besides, ECCENTRIC SRL is a current registrant of Japanese TM registration no. 2061302 for identical wordmark in Class 4,18,21 and 26.
  • There has been no single complaint from consumers, traders or Romeo Gigli in person.

ECCENTRIC SRL alleged that the above facts shall amount to having obtained an implicit consent from Romeo Gigli in fact. Thus, disputed mark shall be allowed for registration even without a written consent in the context of purpose of the article.

The Appeal Board dismissed the appeal, however, and sustained the examiner’s decision by saying that trademark registrations in foreign countries shall not be a decisive factor in determining registrability of disputed mark under Article 4(1)(viii) in Japan. Absence of complaint from Romeo Gigli shall not be construed that he has consented to register his name in the territory of Japan explicitly or implicitly.

Unless applicant produces evidence regarding a consent from Romeo Gigli otherwise, disputed mark shall be refused to register based on Article 4(1)(viii) of the Trademark Law.

 

According to the JPO database, ECCENTRIC SRL filed an appeal against the Board decision to the IP High Court in November 2017. The Court decision will be rendered within a couple of months.