タグ: trademark appeal

Cobra Golf Scores Win in an Attempt to Register Mark “MIM”

Posted on

In a recent decision, the Japan Patent Office (JPO) Appeal Board sided with Cobra Golf Incorporated, represented by MARKS IP LAW FIRM, and disaffirmed the examiner’s rejection by finding dissimilarity between TM Reg no. 6208087 and Cobra’s mark “MIM” for use on golf clubs.
[Appeal case nos. 2023-16540, decided on July 9, 2024]

Cobra Golf “MIM”

Cobra Golf Incorporated, one of the leasing US golf club and golf equipment manufacturer, applied for registration of wordmark “MIM” in standard character with the JPO on December 7, 2020 for use on golf clubs in class 28 (TM App no. 2020-151063).

Cobra Golf uses the mark on their golf irons produced with a new innovative “MIM” technology which stands for ‘Metal Injection Molding’.

The JPO examiner rejected the mark in contravention of Article 4(1)(xi) of the Trademark Law due to a conflict with an earlier trademark registration no. 6208087 for a composite mark consisting of the word “MITZKAN MUSEUM” with a device that can be seen as the word “MIM” (see below) in class 21 on June 30, 2023.

Marks IP Law Firm, on behalf of Cobra Golf, filed an appeal with the JPO on September 29, 2023, arguing that the cited mark is dissimilar to the word mark “MIM” because the figurative element of the cited mark would not be considered as a word “MIM” due to its stylization, but rather as a design consisting of a vertical line in between two “M” letters representing an initial letter of “MIZKAN” and “MUSEUM” respectively.

JPO decision

The JPO Appeal Board found that the cited mark would not give rise to a pronunciation of “MIM” from the figurative element by stating that:

There is a slight possibility that the building-like figures on the left and right sides of the upper part of the cited mark will be perceived as the letter “M” from appearance. However, the Board considers that the relevant consumers are unlikely to find so because of the considerable stylization. The vertical line between the letters, combined with the fact that it is of a shorter length than the letters, will also not be identified as the letter “I.”

It is therefore reasonable to conclude that the upper part of the cited mark would never be immediately recognized as representing the word “MIM” as a whole. Rather, the relevant consumers would recognize it only as a representation of a design with no specific meaning in its entirety.

Given the upper part of the cited mark has neither sound nor meaning, both marks, when considered globally, are easily distinguishable from visual, phonetical and conceptual points of view and unlikely to cause confusion when used on goods in class 28.

Based on the foregoing, the Board held that the examiner errored in applying Article 4(1)(xi) and decided to grant registration of Cobra’s mark “MIM”.

Trademark battle: FORTNITE vs FORTNIGHT

Posted on

In an invalidation trial against TM Reg no. 6389929 for word mark “FORTNIGHT” in classes 9, 16, 28, 35, 41 and 43, the Japan Patent Office (JPO) did not rule in favor of Epic Games, Inc. due to an unlikelihood of confusion with “FORTNITE”.
[Invalidation case no. 2023-890068, decided on May 9, 2024]

FORTNIGHT

A Japanese company sought registration of word mark “FORTNIGHT” in standard character for use on various goods and services in classes 9, 16, 28, 35, 41 and 43 (including games) with the JPO on June 4, 2018 (TM App no. 2028-79647).

The JPO examiner rejected the mark due to a likelihood of confusion with famous game software and distribution platform “FORTNITE” managed by Epic Games, Inc.

However, the JPO Appeal Board disaffirmed the rejection by stating that there is no reason to find “FORTNITE” has been widely recognized among relevant consumers to indicate Epic business and the applicant deleted games from designation. If so, it is unlikely that relevant consumers would not confuse the source of goods and service bearing “FORTNIGHT” with Epic’s “FORTNITE”.

The mark “FORTNIGHT” was registered on June 8, 2021.

Invalidation action by Epic Games, Inc.

Epic Games, Inc. is an American video game development and distribution company, widely known for the success of “Fortnite”, a free multiplayer online video game first released in 2017, and its game marketplace. On August 10, 2021, Epic filed a post-grant opposition against TM Reg no. 6389929 “FORTNIGHT” on August 10, 2021, but the opposition was unsuccessful (Opposition case no. 2021-900304).

On August 22, 2023, Epic filed an invalidation action and claimed that the mark “FORTNIGHT” should be invalidated in contravention of Article 4(1)(xv) and (xix) of the Japan Trademark Law.

Epic repeatedly argued “FORTNIGHT” has a high degree of similarity to “FORTNITE” from visual, phonetical and conceptual points of view. Taking account of famous online game “FORTNITE” among game users and close relation between online games and the goods and services in question, relevant consumers are likely to confuse “FORTNIGHT” with “FORTNITE”.

Given that the initial filing designated the game in question, it is presumed that the company had knowledge of the well-known online game software “FORTNITE” and aimed to benefit from its reputation.

JPO decision

The JPO Invalidation Board found that “FORTNITE” has been widely recognized to indicate video games of Epic among consumers and traders in video game industry. However, given that the launch of the video games in Japan precedes the application date of the mark “FORTNIGHT” by three months, such recognition would be limited to the industry.

With regard to the similarity of the marks, the Board stated, “Although “FORTNIGHT” and “FORTNITE” share the same sound, they are distinguishable in appearance, and the concepts are not comparable. In assessing the overall impression, the Board has a reason to find a low degree of similarity between the marks.”

In light of the aforementioned findings, the Board determined that relevant consumers are unlikely to confuse the source of the goods and services in question bearing the mark “FORTNIGHT” with “FORTNITE.”

Furthermore, there is no evidence to suggest that the applicant had any malicious intention of free-riding on or damaging Epic’s online video games “FORTNITE.”

Consequently, the Board dismissed the invalidation action and declared the validity of TM Reg. No. 6389929.

P&G Unsuccessful attempt to register 3D shape of SK-II bottle

Posted on

In an attempt to register TM App no. 2020-1611 for 3D mark representing a bottle shape of the SK-II Facial Moisturizing Lotions, the Japan Patent Office (JPO) upheld the examiner’s rejection and dismissed the appeal filed by The Procter & Gamble Company (P&G).
[Appeal case no. 2022-6, decided on May 9, 2024]

SK-II

P&G filed a trademark application for 3D bottle shape of the SK-II cosmetic lotions (see below) in class 3 with the JPO on February 14, 2020 (TM App no. 2020-1611).

SK-II is a Japanese-based multinational beauty brand with premium skincare solutions sold in East Asia, North America, Europe, and Australia, launched in the early 1980s.

Allegedly, domestic sales of the “SK-II” facial treatment essence (moisturizing lotions) contained in the applied 3D mark were approximately JPY 10 billion to 16.5 billion in each of the fiscal years from 2016 to 2020.

Article 3(1)(iii)

The JPO examiner rejected the 3D mark based on Article 3(1)(iii) of the Japan Trademark Law due to a lack of inherent distinctiveness.

Article 3(1)(iii) is a provision to prohibit registration of any mark that is descriptive in relation to designated goods and service. Trademark Examination Guideline (TEG) refers to 3D bottle shape of goods as an example subject to the article.

Where trademark is merely recognized as the shapes of designated goods (including shape of packages), it is evaluated just to indicate the “shape” of the goods. Moreover, the same principle shall apply to cases where a trademark is recognized as part of the shapes of designated goods (including their packages).

Article 3(2)

P&G argued acquired distinctiveness of the 3D mark as a result of substantial use. However, the examiner rejected the argument, stating that since the applied mark has been consistently used with the word mark “SK-II” on every bottle, there is no reason to believe that the 3D shape perse has played a role in identifying the source of the cosmetics.
Therefore, the applied mark shall not be registrable based on Article 3(2) of the Trademark Law due to a lack of acquired distinctiveness.

JPO decision

The JPO Appeal Board found the applied mark should be rejected in accordance with Article 3(1)(iii) due to the prevalence of cylindrical bottles in the contexts of cosmetics and other industries.

In its decision, the Board noted that a considerable amount of sales had been made to date and that advertising and promotional activities had been conducted at a considerable expense. The SK-II cosmetics bearing the 3D mark have been extensively advertised through a variety of channels, including magazine advertisements, TV commercials, events, and other campaign activities. They have also been widely covered by the web media and other media outlets.

In the meantime, the Board pointed out the use of distinctive words, such as “SK-II”, “SECRET KEY II”, “MAX FACTOR” etc., on the bottle of the CK-II facial moisturizing lotions. In this respect, there is no sufficient evidence and material featuring the 3D mark so that consumers at the sight of advertisements can consider the bottle shape as a source indicator.

Besides, P&G did not produce evidence of brand awareness survey to demonstrate acquired distinctiveness of the bottle shape. The registration of the same mark in other jurisdictions, such as the United Arab Emirates and South Korea, does not have any binding power in Japan when it comes to evaluating distinctiveness.

Based on the above findings, the Board concluded that the 3D mark per se has not acquired distinctiveness and should not apply Article 3(2).

Trademark dispute: “SOFTWEAR” vs “SOFTWAIR”

Posted on

In an appeal trial disputing similarity between wordmark “SOFTWEAR” and “SOFTWAIR”, the JPO reversed the examiner’s rejection due to the error in finding dissimilarity of two marks.
[Appeal case no. 2023-20831, decided on April 24. 2024]

SOFTWEAR

DuPont Safety & Construction, Inc., a US corporation, sought registration of wordmark “SAFTWEAR” in standard character for use on blankets, gloves, masks, protection masks, protective suits for medical use in class 10 with the JPO on August 22, 2022.

SOFTWAIR

The JPO examiner rejected the applied mark due to a conflict with TM Reg no. 6719284 for wordmark “SOFTWAIR” in standard character owned by Air Wair International Ltd based on Article 4(1)(xi) of the Japan Trademark Law.

The earlier mark covers not only shoes, sports shoes, but also clothing in class 25.

DuPont filed an appeal against the examiner’s rejection on December 7, 2023 and argued that the examiner had errored in assessing similarity between the mark “SOFTWEAR” and “SOFTWAIR”.

JPO decision

The JPO Appeal Board found the applied mark “SOFTWEAR” is not a word included in common dictionaries. Even tough respective term “SOFT” and “WEAR” has its meaning, there is no reason to believe the mark give rise to any specific meaning as a whole.

Likewise, the cited mark “SOFTWAIR” would not have a specific meaning in its entirety. But it should note that the Board found the cited mark has three pronunciations, ‘sɔft weər’, ‘sɔft waɪr ’ and  ‘sɔft ueia’.

From appearance, in spite that they consist of the same kind (alphabet) and number of characters, two marks are clearly distinguishable, because of the difference of two characters “EA” and “AI” in the middle of the eight-character composition.

Even if two marks have the same pronunciation of ‘sɔft weər’, when compared with ‘sɔft waɪr ’ and  ‘sɔft ueia’, the difference in the middle of the entire five or six sounds would result in a clear distinction in the overall tone and feeling.

Conceptually, it is unable to compare since both marks do not give rise to a specific meaning at all.

Based on the above findings, the Board held that even if the applied mark has the same pronunciation with one of the sounds of the cited mark, other two sounds are sufficiently distinguishable to the sound of the applied mark. Besides, both marks are not comparable in conception, and clearly distinguishable in appearance. When taking into consideration the impressions and memories given in mind of consumers by two marks, there is no risk of confusion as to the origin of the goods, and thus the Board has a reason to believe “SOFTWEAR” is dissimilar to “SOFTWAIR”.

Therefore, the examiner errored in finding similarity of the marks and applying Article 4(1)(xi). Accordingly, the rejection shall be overturned.

Trademark dispute: “CLUB MOET” vs “Moët & Chandon”

Posted on

The Japan Patent Office (JPO) cancelled trademark registration no 6687666 due to a likelihood of confusion with ‘Moët’, which is known as an abbreviation for the world-famous ‘Moët & Chandon’ champagne.
[Opposition case no. 2023-900130, decided on February 29, 2024]

CLUB MOET

Opposed mark, consisting of words “CLUB” and “MOET” combined with a rose design (see below), was filed on June 27, 2021 for use on restaurant services in class 43 by a Japanese individual.

The JPO examiner rejected the mark due to a likelihood of confusion with famous mark “Moët” in connection with alcoholic beverages based on Article 4(1)(xv) of the Trademark Law on January 14, 2022. To contest the decision, the applicant filed an appeal with the JPO and claimed to cancel the examiner’s rejection.

On March 16, 2023, the JPO Appeal Board disaffirmed the examiner’s rejection and found that the mark would not contain the term “MOET” visually because of a rose design in between “M” and “ET”. If so, relevant consumers are unlikely to associate the mark with “Moët & Chandon” even if the term “MOET” has acquired a certain degree of recognition as an abbreviation of world-famous “Moët & Chandon” champaign. [Appeal case no. 2022-5881]

Accordingly, the Board granted protection of the mark and published for a post-grant opposition on April 17, 2023.

MHCS – OPPOSITION

On May 31, 2023, MHCS, the producer of the famous Moët & Chandon champagne, sought cancellation of the opposed mark in contravention of the same article, and claimed the opposed mark is likely to cause confusion with “Moët & Chandon” when used on restaurant service in class 43.

MHCS argued that the combination of literal elements and the rose design can be considered to represent the term ‘MOET’, as the rose design resembles a stylised letter ‘O’. As ‘CLUB’ lacks distinctive character in relation to restaurant service, the term ‘MOET’ should be considered a significant portion as a source indicator.

If so, relevant consumers are likely to associate or misconnect the restaurant using the opposed mark with “Moët & Chandon” due to the high degree of reputation and popularity of the mark “MOET” as an abbreviation of the world-famous champaign, as well as the close resemblance between the opposed mark and “MOET”.

JPO decision

The JPO Opposition Board ruled in favor of MHCS, stating that both ‘Moët & Chandon’ and its abbreviation ‘Moët’ have gained significant recognition as a leading champagne brand distributed by MHCS.

The Board determined that the rose design’s outline is almost circular and can be substituted with the letter ‘O’. Therefore, the combination of the literal elements and the rose design will be identified as the term ‘MOET’ in its entirety.

The difference between ‘MOET’ and ‘Moët’ is insignificant. The term ‘CLUB’ lacks distinctiveness in relation to the service in question. Therefore, the Board has reason to find a high degree of similarity between the opposed mark and ‘Moët’.

Besides, there is a certain degree of association between champagne and restaurant services.

Based on the foregoing, the Opposition Board decided that found relevant consumers are likely to confuse a source of restaurant using the opposed mark with MHCS or any business entity that is economically or systematically connected with the opponent. As a result, the opposed mark was cancelled in contravention of Article 4(1)(xv).

Hummel Victory in Appeal to Overcome Rejection against Chevron Position Mark

Posted on

The Japan Patent Office (JPO) Appeal Board disaffirmed the examiner’s rejection and granted registration of TM App nos. 2018-133121 and 2018-133123 for a position mark consisting of chevron devices in relation to jackets and pants (trousers) of class 25 by finding inherent distinctiveness of the position marks.
[Appeal case nos. 2022-13211, 2022-13212 decided on December 20, 2023]

Hummel Chevron Position Mark

Hummel Holding AS filed two position marks with the JPO (TM App nos. 2018-133121, 2018-133123) on October 25, 2018. TM App no. 2018-133121 consists of 15 chevron devices positioned in series from shoulder to sleeve (see below left), and designates long-sleeved jackets in class 25. TM App no. 2018-133123 consists of 21 chevron devices positioned in series from waist to hem (see below right), and designates pants and trousers in class 25.

JPO Examination

On May 25, 2022, the JPO examiner rejected both marks based on Article 3(1)(vi) of the Japan Trademark Law by stating that:

In fashion industry, there are plenty of jackets and pants with decorations aiming to enhance aesthetic effect of the goods and attract consumers.  Under the circumstances, relevant consumers at the sight of pants or jackets bearing the position mark would not see it as a source indicator, but as a pattern for decorative or functional indication.

Article 3(1)(vi) is a provision to comprehensively prohibit from registering any mark lacking inherent distinctiveness.

Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered, unless the trademark:

(vi)　is in addition to those listed in each of the preceding items, a trademark by which consumers are not able to recognize the goods or services as those pertaining to a business of a particular person.

Hummel Holding AS filed an appeal against the rejection on August 23, 2022 and argued inherent distinctiveness of the position marks.

JPO Appeal Board decision

The Appeal Board found that respective mark would be far from a common or descriptive device as a whole.

In relevant industries, competitors often provide jackets and pants bearing their brand on the same position with the Hummel Chevron mark. If so, consumers are also accustomed to distinguishing a source of the goods by means of devices depicted on the position.

Bearing in mind that the applicant has been extensively and continuously using the position marks on their jackets and pants, presumably the marks have become famous as a source indicator of the applicant among relevant consumers.

Besides, the Board could not find any evidence of a common use of the chevron device on the same position as a decorative or functional indication.

Based on the foregoing, the Board held that relevant consumers would recognize the position marks as a source indicator. If so, the examiner made an error in finding distinctiveness of respective mark. Therefore, the Board disaffirmed the examiner’s rejection and decided in favor of Hummel Holding AS consequently.

Is Mr. Benjamin Brown around?

Posted on

The Japan Patent Office (JPO) reversed the examiner’s rejection to TM App no. 2022-13396 for word mark “Benjamin Brown” in classes 25 and 28 based on Article 4(1)(viii) of the Trademark Law by stating the mark would not be completely identical with a full name of the person “Benjamin Brown” alive.

[Appeal case no. 2023-4642, decided on November 9, 2023]

Benjamin Brown

Japanese company, Kabushiki Kaisha Pmang, filed trademark application for a word mark “Benjamin Brown” for use on various goods in class 25 and 28, especially golf wear, shoes and other gold items, with the JPO on February 7, 2022.

On December 19, 2022, the JPO examiner rejected the mark in contravention of Article 4(1)(viii) of the Japan Trademark Law since “Benjamin Brown” corresponds to a full name of person, an Israeli professor, researcher of Judaism and Jewish thought, lecturer at the Department of Jewish thought at Hebrew University.

Article 4(1)(viii)

Article 4(1)(viii) is a provision to prohibit registration of trademark that contains 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 could obtain a written consent from the person.

The Supreme Court of Japan ruled the article has aimed to protect personality rights of a living individual. Therefore, the article is not applicable when the person is no longer alive.

The applicant filed an appeal against the rejection on March 20, 2023 and argued that registration of the mark “Benjamin Brown” in relation to goods of classes 25 and 28 would never cause damages of personal right to Israeli professor at Hebrew University.

JPO Appeal Board decision

The Appeal Board found that the applied mark “Benjamin Brown” shall be conceived as a coined word in its entirety. Relevant consumers are unlikely to associate it with a full name of particular person.

It is uncertain if “Benjamin Brown” is a full name of the professor or alive (!). Besides, the Board can’t find any reason to believe that his name has been highly recognized among consumers in Japan.

If so, the applied mark shall not be subject to Article 4(1)(viii). Since the examiner made an error in applying the article, it should be cancelled in due course, the Board decided.

JPO decision to trademark dissimilarity, Unbelievable or Believable?

Posted on

On November 9, 2023, the JPO Appeal Board reversed the examiner’s rejection to TM Application no. 2021-98849 for word mark “ADEAM/ICHI” by finding dissimilarity to earlier trademark registrations for word mark “ICHI”.
[Appeal case no. 2022-19409]

Earlier TM registrations “ICHI”

Following trademarks have been effectively registered since 2015 at the latest.

  • TM Reg no. 4736544 (soaps and detergent, incense, cosmetics in class 3)
  • TM Reg no. 5756228 (clothing, waistbands, belts [clothing] in class 25)
  • TM Reg no. 5991461 (bags and pouches, wallets, umbrella, walking sticks in class 18)

Junior mark “ADEAM/ICHI”

On August 6, 2021, FOXY Corporation filed a word mark consisting of “ADEAM” with larger roman-font and “ICHI” with smaller gothic-font in two lines (see below) for use on various goods and services in classes 3,14,16,18,24,25, and 35.

The JPO examiner rejected the applied mark due to a conflict with the earlier TM registrations for the mark “ICHI” owned by other entity based on Article 4(1)(xi) of the Japan Trademark Law on September 6, 2022.

Subsequently, the applicant filed an appeal against the rejection on December 1, 2022 and disputed dissimilarity of mark.

JPO Appeal Board decision

To my surprise, the Appeal Board found the applied mark is dissimilar to the cited marks and decided to cancel the examiner’s rejection by stating that:

Since the term “ICHI” of the applied mark is placed just beneath the term “ADEAM” in the middle about a quarter of the font size, from appearance, the term “ADEAM” occupies a large portion of the applied mark in its entirety. Thus, relevant consumers would have an impression that the term “ADEAMN” is considered as a dominant portion to identify a source of goods and service.

Besides, the term “ADEAM” is apparently a coined word. The term “ICHI” also does not give rise to a clear meaning. Therefore, conceptually there is no particular difference in assessing distinctiveness of respective term.

The Board has no reason to believe that relevant consumers would focus only on the portion “ICHI” of the applied mark as a source indicator by separating the dominant element “ADEAM”.

If so, it shall not be permissible to compare the literal portion “ICHI” of the applied mark with the cited marks.

In this respect, the examiner made an error in applying Article 4(1)(xi).

Based on the foregoing, the Board granted registration of the applied mark

JPO decided trademark “MONO” dissimilar to “MONO+”

Posted on

In a trademark appeal disputing similarity between “MONO” and “MONO+”, the Appeal Board of the Japan Patent Office (JPO) reversed the examiner’s rejection and found both marks dissimilar and unlikely to cause confusion.

[Appeal case no. 2023-6307, decided on November 1, 2023]

MONO+

Onoya Inc. filed a mark “MONO+” (see below) for use on retail or wholesale services for furniture, joinery fittings, flowers [natural] and trees, kitchen equipment, cleaning tools and washing utensils in class 35 with the JPO on September 11, 2021.

The JPO examiner rejected the mark due to a conflict with earlier TM Reg no. 4533103 for wordmark “MONO” in standard character on goods of food wrapping plastic film for household purposes; garbage bags of paper or plastic for household purposes; hygienic hand tools of paper; towels of paper; table napkins of paper; hand towels of paper; handkerchiefs of paper in class 16 based on Article 4(1)(xi) of the Japan Trademark Law.

Article 4(1)(xi) is a provision to prohibit registration of a junior mark that is deemed identical with, or similar to, an earlier registered mark.

There is criterion that the examiner is checking when assessing the similarity between the marks:

  • visual similarity
  • aural similarity
  • conceptual similarity

and taking into account all these three aspects examiner makes a decision if a mark is similar (at least to some extent) with the earlier mark and if there is a likelihood of confusion for the consumers.

JPO Appeal Board decision

The Board found the applied mark “MONO+” gives rise to a sound of “mono-plus”, but it has no specific meaning in view of overall appearance and a meaning of respective word “MONO” and “+”.

As for the cited mark, the Board held the term “MONO” is not a foreign word familiar among relevant consumers in Japan. Thus, it has a sound of “mono”, but no specific meaning.

Comparing both marks, although they share the same appearance in that both contain the word “MONO”, they are sufficiently distinguishable because, by virtue of the presence or absence of the “+” symbol at the end, it is conceived both marks represent different words as a whole.  

Phonetically, they start with the same sound “mono”, but the overall tone and impression are different with or without the sound “plus” at the end. Due to the reason, both sounds can be distinguishable.

It is meaningless to compare the concept of both marks because neither does give rise to a specific meaning.

If so, from the totality of visual, aural, and conceptual points of view, the Board has no reason to believe that relevant consumers are likely to confuse the source of the services in class 35 bearing the applied mark with the earlier mark.

Based on the foregoing, the Board found both marks are dissimilar regardless of similarity in goods and services, and decided to cancel the rejection and granted protection of the applied mark.

Japan IP High Court Decision to A Position Mark of Dr. Martens’ Yellow Welt Stitch

Posted on

On August 10, 2023, the Japan IP Hight Court ruled to dismiss an appeal by Airwair International Limited to the JPO’s rejection against a position mark for Dr. Martens’ Yellow Welt Stitch.

[Court case no. Reiwa 5(Gyo-ke)10003]

Dr. Martens’ Yellow Welt Stitch

Airwair International Limited, a UK company, applied a position mark consisting of a yellow stitching around the perimeter of footwear on the outer sole edge (see below) for use on leather shoes and boots in class 25 with the JPO on June 12, 2018 (TM App no. 2018-77608).

Allegedly, first use of the position mark on the Dr. Martens “1460” boots has dated back to 1960 in UK. Leather shoes and boots bearing the yellow welt stitch have been continuously distributed in Japan by the applicant or a local subsidiary (Dr. Martens Japan) via company store (61 shops at present) and major shoes retailers since 1985. Recent annual sales for Dr.  Martens’ shoes in Japan exceed 6 billion Japanese yens and over 460,000 pairs. Airwair has routinely monitored and taken legal actions against lookalikes of shoes bearing the yellow welt stitch and been successful in stopping distribution of following shoes.

According to the brand awareness survey that targeted a total of 1,019 men and women aged from 15 to 59, 30.7% of the interviewees who have purchased leather shoes and boots could answer Dr. Martens at the sight of black leather shoes with the yellow welt stitch and 37.6% selected Dr. Martens from multiple choice.

On August 23, 2022, The JPO Appeal Board decided the yellow stitching of Dr. Martens does not possess its own distinctive character by stating that relevant consumers would not see the stitch as a source indicator, but as a mere decoration. The Board also negated acquired distinctiveness of the position mark based on the fact that a majority of frequent users of the goods in question could not connect the stitch with Dr. Martens. Accordingly, the Board sustained the examiner’s rejection (Appeal case no. 2021-2446).

Airwair filed an appeal against the JPO Appeal Board decision and argued inherent and acquired distinctiveness of the Dr. Martens’ yellow welt stitch in relation to leather shoes and goods.

IP High Court decision

Inherent distinctiveness

The Court paid attention to the circumstance that plenty of leather shoes and boots have been manufactured by means of the Goodyear Welted Method for long years and the thread stitched to attach the upper to the sole has often identical or similar color to the upper and sole. If so, in relation to yellow-colored shoes, a yellow stitch would be anything but distinctive.

Bearing in mind that the applied mark does not specify a color of the upper and the sole, the judge had a view that it is allowed to assess inherent distinctiveness of the position mark in relation to the shoes with a yellow thread, upper and sole and any colors.

Based on the foregoing, the Court found the position mark lacks inherent distinctiveness in relation to leather shoes and boots and shall be unregistrable based on Article 3(1)(iii) of the Trademark Law.

Acquired distinctiveness

The Court questioned relevance of the brand awareness survey that excluded consumers who had not purchased either leather shoes or boots in the past year. However, by taking account of an expert opinion that points out 15% shall be sufficient to admit distinctiveness of trade dress as a source indicator especially in fashion industry and the survey revealed there were over four times as many interviewees who selected Dr. Martens than Timberland (7.9%) from multiple choice, the judge ruled Dr. Martens’ yellow welt stitch has acquired a certain degree of recognition as a sign that the black leather shoes originate from the Airwair company.

In the meantime, the Court held there is doubt if the position mark would play a role in indicating its source even when used on a yellow or similar colored outsole or welt. As a matter of fact, Airwair has not taken actions against shoes having non-black outsoles and welts.

Given the applied mark does not restrict a color of shoes, a fact that Dr. Martens’ yellow welt stitch has played a role of source indication in relation to black leather shoes and boots is insufficient to find acquired distinctiveness of the appled mark and admit registration under Article 3(2) of the Trademark Law.

Obviously, the Court opens a gate to register Dr. Martens’ yellow welt stitch provided that a position mark consists of yellow stich and black upper and welt.