カテゴリー: Article 4(1)(viii)

DIOR Successful in Blocking Trademark “zovladior”

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On December 28, 2021, the Japan Patent Office (JPO) sided with Christian Dior in a trademark opposition against TM Reg no. 6227664 for the word mark “zovladior” in classes 3, 5, 9, and 10 by finding a likelihood of confusion with a world-renowned fashion brand “Dior”.
[Opposition case no. 2020-900133]

“zovladior”

The opposed mark, “zovladior” in standard character, was sought for registration by a Japanese company to be used on cosmetics, perfume, soaps, and detergents in class 3, pharmaceutical preparations, dietary supplements, dietary beverages and foods, beverages, and foods for babies in class 5, eyeglasses and goggles, sunglasses in class 9, massage apparatus, esthetic massage apparatus, electric massage apparatus for household purposes in class 10 on January 30, 2019.

The JPO examiner granted protection of the opposed mark on January 30, 2020, and published for opposition on March 10, 2020.

Opposition by Christian Dior

To contend registration within a statutory period of two months counting from the publication date, Christian Dior Couture filed an opposition on May 8, 2020.

In the opposition, Christian Dior claimed the opposed mark shall be canceled in contravention of Article 4(1)(viii), (xi), (xv), (xix) of the Japan Trademark Law on the grounds that “zovladior” contains the mark “Dior”, an abbreviation of a world-renowned fashion brand “Christian Dior” and the opponent. If so, it is reasonable to consider the term “dior” as a prominent portion of the opposed mark that gives rise to the same sound and concept with the senior registered mark “Dior” owned by the opponent.

JPO decision

The Opposition Board of JPO admitted a substantial degree of reputation and popularity of “Dior” as an abbreviation of “Christian Dior” and the opponent in relation to fashion items including cosmetics, perfumes, watches, bags, women’s dresses, sunglasses.

On the grounds that 4 letters out of 9 are the same as the opponent’s mark “Dior”, the Board found there is a medium level of similarity between “zovladior” and “Dior.”

In view of a high degree of reputation and originality of the opponent mark, and close association between the opponent business and the goods in question, the Board has reason to believe relevant consumers with an ordinary care would conceive of the opponent at the sight of “zovladior” when used on goods in question.

If so, it is likely that the consumers would recognize a source of goods in question bearing the opposed mark from Christian Dior Couture or any entity systematically or economically connected with the opponent.

Based on the foregoing, the JPO sided with the opponent and decided to cancel the opposed mark in contravention of Article 4(1)(xv).

DIOR Failed to Cancel Trademark “DIORLV”

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The Japan Patent Office (JPO) did not side with Christian Dior Couture in a trademark opposition against TM Reg no. 6305075 for word mark “DIORLV” in class 25 by finding dissimilarity and unlikelihood of confusion with a world-renowned fashion brand “Dior”.

[Opposition case no. 2020-900352, Gazette issued date: November 26, 2021]

“DIORLV”

The opposed mark, “DIORLV” in standard character, was sought for registration by a Chinese individual to be used on underwear, coats, pajamas, swimsuits, raincoats, footwear, caps and hats, gloves, trousers, skirts, yoga shirts, yoga pants in class 25 on December 25, 2019.

The JPO examiner granted protection of the opposed mark on October 13, 2020, and published for opposition on November 4, 2020.

Opposition by Christian Dior

To contend registration within a statutory period of two months counting from the publication date, Christian Dior Couture filed an opposition on December 25, 2020.

In the opposition, Christian Dior asserted the opposed mark shall be canceled in contravention of Article 4(1)(viii), (xi), (xv), (xix) of the Japan Trademark Law on the grounds that the opposed “DIORLV” mark contains the term “Dior”, an abbreviation of a world-renowned fashion brand “Christian Dior” and the opponent. Besides, the opposed mark will be perceived as a combination of abbreviation of two famous brands, “Christian Dior” and “Louis Vuitton.” If so, it is reasonable to consider the term “DIOR” as a prominent portion of the opposed mark that gives rise to the same sound and concept with the senior registered mark “Dior” owned by the opponent.

JPO decision

The Opposition Board of JPO admitted a substantial degree of reputation and popularity of “Dior” as an abbreviation of “Christian Dior” and the opponent in relation to fashion items, e.g., women’s dresses, bags, shoes, jewelry, glasses, watches, fountain pens, lighters.

In the meantime, the Board did not find the term “DIOR” as a prominent portion of the opposed mark. Based on the overall assessment of similarity, the Board held both marks dissimilarity by stating that:

  1. From appearance and pronunciation, “DIORLV” and “Dior” look sufficiently different with or without “LV” in the suffix position.
  2. Both marks are distinguishable in concept since “DIORLV” does not give rise to any specific meaning. “Dior” has a meaning of world-renowned fashion brand “Christian Dior.”

Given a low degree of similarity of the marks, it is unlikely that relevant consumers would recognize a source of goods in question bearing the opposed mark from Christian Dior Couture or any entity systematically or economically connected with the opponent.

Furthermore, the Board has no reason to believe the term “DIOR” of the opposed mark is separable from the term “LV” and independently plays a role in the source indicator. Accordingly, the opposed mark shall not be construed to contain a famous abbreviation of the opponent.

Based on the foregoing, the JPO dismissed the entire opposition and decided the opposed mark shall remain valid as the status quo.

Like a Jaguar, but not JAGUAR

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The Japan Patent Office (JPO) dismissed an opposition filed by Jaguar Land Rover Ltd. against trademark registration no. 6244325 for word mark “Like a Jaguar” on cosmetics and other goods in class 3 by finding dissimilarity and unlikelihood of confusion with “JAGUAR.”
[Opposition case no. 2020-900165, Gazette issued date: December 14, 2020]

Opposed mark

An opposed mark consists of the term “Like a Jaguar” in a gothic type and its transliteration in a Japanese katakana character as below.

The mark was filed by KOSE Corporation on May 10, 2019, for use on ‘cosmetics; soaps and detergents; dentifrices; perfume and flavor materials; incense; breath-freshening preparations; false nails; false eyelashes; cosmetic cotton wool; fabric softeners for laundry use; adhesives for affixing false eyelashes; adhesive paper; cotton sticks for cosmetic purposes’ in class 3.

JPO, going through substantive examination, admitted registration and published for post-grant opposition on April 28, 2020.

Apparently, KOSE uses the mark “Like a Jaguar” to represent a lipstick color for ‘ADDICTION The Lipstick Satin’ 008.

Captured from website – everglowcosmetics.com

Opposition by Jaguar Land Rover

Jaguar Land Rover Ltd. filed a trademark opposition on June 25, 2020, before the JPO and claimed that the opposed mark shall be canceled in contravention of Article 4(1)(viii), (xi), and (xv) of the Trademark Law by citing trademark registrations for its iconic logo consisting of the image of a leaping jaguar and the word “JAGUAR” (see below), which allegedly has been used on the opponent’s products since 1935.

Article 4(1)(viii) prohibits registration of trademarks that 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 the personal rights of a living individual.

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.

Article 4(1)(xv) provides that a mark shall not be registered where it is likely to cause confusion with other business entity’s well-known goods or services, to the benefit of a brand owner as well as users’ benefits.

Jaguar Land Rover argued that the opposed mark has been confusingly similar to the cited mark since the opposed mark “Like a Jaguar” gives rise to a meaning of ‘Similar to Jaguar’ in its entirety. Besides, given the mark “JAGUAR” has obtained a high level of popularity among relevant consumers as a source indicator of the opponent’s motorcars, apparels, fragrances, and other licensed goods, the consumers would notice the term “Jaguar” as a dominant portion of the opposed mark and thus confuse or misconceive it with the opponent consequently.

JPO decision

The Opposition Board did not admit a high level of popularity of the cited mark by stating that the opponent failed to produce sufficient evidence in an objective manner. According to the allegation, opponents sold more than 100,000 cars around the globe in 2019. But relevant evidence was not produced to demonstrate the sales. Due to this reason, it is unknown how many cars of the opponent were sold in Japan. Likewise, there was little evidence to show a high recognition of the cited mark in relation to goods other than cars.

Provided that the mark “JAGUAR” was found insufficiently famous for the opponent cars, the Board has no reason to believe that relevant consumers would see the term “Jaguar” of the opposed mark as a dominant source indicator. If so, both marks shall be assessed in their entirety.

The opposed mark gives rise to a meaning of ‘similar to a large spotted wild cat of South America’ and a pronunciation of ‘laɪk ə dʒæɡ.wɑːr’. The term “Like a” sufficiently differentiates the opposed mark from the cited mark in appearance, sound, and concept.

Based on the foregoing, the Board found relevant traders and consumers are unlikely to confuse or associate the opposed mark with the opponent or any business entity economically or systematically connected with Jaguar Land Rover when used on the goods in question. In conclusion, the opposed mark shall remain valid as the status quo.

The University of Oxford Failed in Opposition Against “OXFORD” mark

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The Japan Patent Office (JPO) dismissed an opposition filed by Oxford Limited against trademark registration no. 6164941 for composite mark comprised of term “OXFORD” and a square X symbol in class 25, 35,40 by questioning whether the term per se has been known as a source indicator of the University.
[Opposition case no. 2019-900303, Gazette issued date: October 13, 2020]

Opposed mark

Japanese trademark registration no. 6164941 for composite mark comprised of term “OXFORD” and a square X symbol colored in dark blue (see below), was filed on October 26, 2018, by Oxford Corporation Co., Ltd., a Japanese business entity tailoring custom-made suits, over clothing, footwear made in England in class 25, retail or wholesale services for clothing, footwear and other goods in class 35, and dressmaking, treatment or processing of cloth, clothing or fur, custom tailoring services, and others in class 40.

JPO granted to protect the opposed mark and published for registration on August 20, 2019.

Opposition

On October 18, 2019, Oxford Limited, a wholly-owned subsidiary of the University of Oxford, filed an opposition and claimed the Opposed mark shall be canceled in contravention of Article 4(1)(vii), (viii), (xi), (xv) and (xix) of the Trademark Law by citing its own marks (see below).

Oxford Limited argued that the University of Oxford is an extremely well-known university worldwide. It has been ranked in 5th and 3rd places in tables of top international higher education institutes. Besides, Oxford Limited has promoted and licensed commercial goods bearing trademarks of the University. In Japan, various licensed goods e.g. apparel, accessories, interiors, stationery, educational toys are distributed via Ingram Co., Ltd., an authorized broker.

Under the circumstances, there is no doubt that relevant consumers at the sight of the term “OXFORD” would conceive the University when used on goods and services in question. If so, the opposed mark shall be deemed similar to and likely to cause confusion with the cited mark since the term “OXFORD” per se plays a dominant role in identifying a source.

JPO Decision

The JPO Opposition Board admitted a high degree of the reputation of “University of Oxford” among the general public. In the meantime, the Board opined that it is questionable if the term “OXFORD” has acquired a substantial degree of popularity as a source indicator of the University from the produced evidence and totality of the circumstances in view of the fact that the term is also a geographical indication, namely, the capital of the county of Oxfordshire.

Based on the foregoing, the Board found relevant consumers would recognize the term “OXFORD” of the Opposed mark just to indicate ‘the capital of the county of Oxfordshire’. Meanwhile, the cited marks give rise to a sound and concept pertinent to the University. The figurative element of both marks is sufficiently distinguishable from appearance. There was a low level of visual, aural, and conceptual similarity between the marks to the extent that relevant consumers would be unlikely to confuse the Opposed mark with the University of Oxford. Therefore, the allegations are groundless and the Opposed mark shall remain valid as the status quo.

I am not convinced with the JPO’s finding of “the term OXFORD of the Opposed mark just to indicate ‘the capital of the county of Oxfordshire”. I firmly believe the term immediately reminds us of the University rather than the name of the capital of Oxfordshire.

LEGO Triumphs In ‘CATTYLEGO’ Trademark Battle at JPO

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LEGO eventually scored a win over PETSWEET CO., Ltd., a Taiwanese company, in a trademark dispute against ‘CATTYLEGO’ thanks to the JPO’s finding a likelihood of confusion with “LEGO” famous for toy brick.
[Invalidation case no. 2018-890084, Gazette issued date: September 25, 2020]

CATTY LEGO

PETSWEEY Co. (派斯威特國際有限公司), Ltd., a Taiwanese company, applied for trademark registration in Japan for the mark consisting of a word “CATTYLEGO” and rectangle device (see below) on June 15, 2016, over toy boxes and chests, dog kennels, fodder racks, pet cushions, pet house in class 20 and toys for pets in class 28.

The Japan Patent Office (JPO) registered the mark on December 2, 2016 (TM Registration no. 5902786) and published for opposition on January 10, 2017.

LEGO

LEGO Juris A/S, the world’s largest Danish toy manufacturer, filed an opposition against the mark ‘CATTYLEGO’ on the final day of a two-month duration for the opposition, and argued it shall be canceled in contravention of Article 4(1)(viii), (xi), (xv) and (xix) of the Japan Trademark Law, but in vain. Click here to read more about the opposition.

Subsequently, LEGO lodged a trademark invalidation trial with the JPO on October 31, 2018, based on the same grounds.

JPO Decision

The Invalidation Board did not question a high degree of reputation and popularity of the LEGO trademark as a source indicator of toy brick by finding consecutive promotion of LEGO bricks in Japan for more than five decades, annual sales amounting to over 8 billion yen (Approx. USD 74 million ), its remarkable share in the sector of kids toys, and almost half of preschools in Japan have adopted the bricks for educational purpose.

Given the remarkable reputation of the LEGO mark, the Board held relevant consumers/traders at the sight of the ‘CATTYLEGO’ mark would inevitably conceive the term “LEGO” as a dominant portion. If so, both marks may give rise to a similar sound and concept pertinent to “LEGO”.

The Board also affirmed toy brick and the goods in question are closely associated in view of suppliers, commercial channels, usage, consumers.

Consequently, by taking into consideration the totality of the circumstances, the Board found relevant consumers with an ordinary care would confuse or associate the goods in question bearing the ‘CATTYLEGO’ mark with LEGO or any entity systematically or economically connected with LEGO, and thus the mark shall be invalidated based on Article 4(1)(xv) of the trademark law.

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)

SCOTT Bikes Failed Trademark Opposition against “PRESCOTT”

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The Japan Patent Office (JPO) dismissed a trademark opposition claimed by SCOTT USA Inc. against trademark registration no. 6025819 for stylized word mark “PRESCOTT” on bicycles in class 12 by finding dissimilarity to “SCOTT”.
[Opposition case no. 2018-900134, Gazette issue date: December 27, 2019]

“PRESCOTT”

Opposed mark, stylized word mark “PRESCOTT” (see below), was filed by a Chinese individual to the JPO on June 19, 2017 by designating ‘electric bicycles, motorized bicycles, bicycles and accessories/structural parts, motorcycles’ in class 12.

The JPO admitted registration on March 9, 2018 and published for registration on April 3, 2018.

Opposition by SCOTT

To contend registration within a statutory period of two months counting from the publication date, SCOTT USA Inc. filed an opposition on June 1, 2018.

In the opposition brief, SCOTT USA Inc. asserted the opposed mark shall be cancelled in violation of Article 4(1)(viii), (xi) and (xix) of the Japan Trademark Law given a remarkable reputation of opponent mark “SCOTT” to indicate opponent’s mountain bicycles and close resemblance between a senior registration no. 2700543 “SCOTT” in class 12 and opposed mark.

Article 4(1)(viii) 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.

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

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

Scott, founded in 1958 in Sun Valley, Idaho, began as a manufacturer of aluminum ski poles before it branched out into a huge range of other sectors in the sporting goods industry. These days the brand produces bikes for a whole range of disciplines, but it cut its teeth with mountain bikes, introducing its first model way back in 1986. Nowadays, as the leading bike manufacturer in Europe, designing and fabricating an extensive line of high-quality mountain bikes, road bikes, kids bikes and urban city bikes, the SCOTT bikes have been ranked top mountain bicycles brands. In Japan, SCOTT USA has progressively promoted the SCOTT bikes through its subsidiary, SCOTT Japan since 2013. SCOTT Japan spent more than 20 million JP-Yen on advertisement annually.

SCOTT USA Inc. argued that these facts are sufficient to demonstrate “SCOTT” has acquired a high degree of reputation and popularity in the field of sports bicycles as an abbreviation or source indicator of opponent. Given the reputation, it is undeniable that applicant of opposed mark must have acquainted with opponent famous mark “SCOTT” before the filing. Besides, opponent mark “SCOTT” is actually used in an italic font (see below) on the bikes, which truly gives rise to a more resembled impression with opposed mark in the mind of consumers visually.

If so, opposed mark “PRESCOTT” shall be revocable because it contains a famous trademark name “SCOTT” without permission of opponent and looks confusingly similar to opponent’s famous mark when used on sports bicycles in fact. It is obvious that the applicant aims to gain unfair profits by free-riding opponent famous trademark.

JPO decision

The Opposition Board denied a certain degree of reputation and popularity of opponent trademark “SCOTT” in connection with mountain bicycles by stating that the produced evidences have no reference to sales amount and total number of participants to promotional events of the SCOTT bikes in Japan. 20 million JP-Yen (approx. USD182,000) for advertising expenses would be anything but a sufficient amount to prove famous bicycle brands.

Even if it is true that SCOTT sold more than 420,000 bicycles in European market in 2010 and achieved the largest market share in the high-end sports bicycles in ten EU countries, e.g. Germany, Norway, Sweden, the Board considers it insufficient to find a high degree of reputation among consumers in specific country in EU from the produced evidences.

In the assessment of mark, the Board held “PRESCOTT” and “SCOTT” are totally dissimilar from visual and phonetical points of view. Unless the Board finds a term “SCOTT” becomes famous in relation to the goods in question, there is no reason to see it as the dominant portion of opposed mark.

Based on the foregoing, the Board decided opposed mark shall not be cancelled on the grounds of Article 4(1)(viii), (xi) and (xix).

I often see the case like this where the JPO gives an unfavorable decision to famous brand owner. One reason is just due to insufficient production of evidences to show its famousness outside of Japan. Provided that Japanese consumers recognize such circumstance in foreign countries, the brand shall be broadly protected under the Japan Trademark Law.

Fashion Designer in trademark fight over his name

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On August 7, 2019, the Japan IP High Court ruled to dismiss an appeal by Ken Kikuchi, a Japanese jewelry designer, who contested a decision by the Japan Patent Office (JPO) to deny trademark registration for a composite mark consisting of a word “KEN KIKUCHI” with an eagle device under Article 4(1)(viii) of the Trademark Law.
[Judicial case no. Heisei31(Gyo-ke)10037]

KEN KIKUCHI

Disputed mark (see below) was filed by Ken Kikuchi on May 23 ,2017 covering various goods in class 14, 18 and 25 including jewelry and accessories. [TM application no. 2017-69467]

Since 2000, Ken Kikuchi allegedly has been designing and manufacturing affordable elaborate silver jewelry under the brand of his name “KEN KIKUCHI”. As a result of business expansion (14 brick-and-mortar stores in Japan, 4 stores in foreign counties) and advertisements from television, magazines, the designer’s name has acquired better reputation in the industry.

Refusal decision by JPO

The Japan Patent Office (JPO) refused the mark based on Article 4(1)(viii) of the Trademark Law, on the ground that the literal element of disputed mark can be perceived to identify a private individual named “Ken Kikuchi”. According to white pages, evidently there exist several Japanese people with the same name. If so, disputed mark shall not be allowed for registration since it contains a name of living person per se.

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. 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.

The Appeal Board of JPO also sided with the examiner’s refusal on the same ground. [Appeal case no. 2018-7529]

To contest the administrative decision, the designer filed an appeal to the IP High Court on March 25, 2019

IP High Court Ruling

The court dismissed the allegation entirely, by stating that:

  1. “KEN” and “KIKUCHI” are both commonly used names to Japanese people.
  2. Literal elements of disputed mark shall be perceived as a name of person even if the name is written in alphabet, given it has become popular to write a full name on the passport, credit card and others in alphabet.
  3. Article 4(1)(viii) shall be construed to comprehend a name of person written in alphabet.
  4. It is not relevant to consider reputation of disputed mark in applying the article since it aims to protect personal rights of a living individual.
  5. Irrespective of the fact that a person named “Ken Kikuchi” surely exists, applicant failed to prove consent from the person.

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

LEGO lost a trademark battle in Japan over the mark CATTYLEGO

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LEGO has lost a trademark battle it lodged against PETSWEET Co., Ltd., a Taiwanese company, over its registration of the mark “CATTYLEGO” in Japan.
[Opposition case no. 2017-900077, Gazette issued date: Feb 23, 2018]

 

OPPOSED MARK “CATTYLEGO”

PETSWEEY Co., Ltd., a Taiwanese company, applied for trademark registration in Japan for the mark consisting of a word “CATTYLEGO” and rectangle device (see below in right) on June 15, 2016 by designating toys for pets in class 28. Apparently, PETSWEET Co., Ltd. promotes various categories of cat toys, e.g. Cat Tree, Cart Playground as you can review by accessing their website.

The Japan Patent Office (JPO) admitted registration of the mark on November 15, 2016 and published the gazette under trademark registration no. 5902786 on January 10, 2017.

 

LEGO Trademark

LEGO Juris A/S, the world’s largest Danish toy manufacturer, filed an opposition against the mark CATTYLEGO on the final day of a two-month duration for opposition.

LEGO argued that the mark CATTYLEGO shall be cancelled due to a conflict with the famous LEGO trademark (see above in left) based on Article 4(1)(viii), (xi), (xv) and (xix) of the Trademark Law.

 

 

BOARD DECISION

The Opposition Board admitted a high degree of reputation and population of the LEGO trademark as a source indicator of opponent in relation to brick toys by taking account of consecutive promotion of LEGO bricks in Japan for more than five decades, annual sales amount over 8 billion yens (Approx. USD 74 million ), its remarkable share in the sector of kids toys, and almost half of preschools in Japan have adopted the bricks for educational purpose.

In the meantime, the Board negated similarity between the CATTYLEGO mark and the LEGO trademark, stating that it is unconvincing to consider “CATTY” descriptive from overall appearance of the opposed mark. If so, opposed mark is unlikely to giver rise to any meaning and pronunciation in association with LEGO bricks or opponent.

Based on the foregoing, the Board concluded opposed mark shall not subject to Article 4(1)(xi) so long as both marks are dissimilar.

Board also found less likelihood of confusions due to a remote association between toys for pets and brick toys (for kids) in view of different manufacturers, consumers, usage, commercial channel for these goods as well as dissimilarity of the marks.

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. A term of “Person” is construed to include a legal entity as well as individual. It is obvious that opposed mark contains “LEGO” which corresponds to an abbreviated name of opponent. However, it is noteworthy that the Board, in adopting the article, dismissed opponent’s allegation by stating that opponent failed to demonstrate the use of the LEGO trademark in a manner that relevant consumers would conceive it as an abbreviation of opponent’s name.

No Violation of the US President’s Personality Rights

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The Appeal Board of Japan Patent Office (JPO) admitted trademark registration for a mark consisting of jigsaw puzzles design and “TA TRUMP” (see below), saying that it does not violate personality rights of Mr. Donald John Trump, the President of the United States.

 

MARK IN QUESTION

A Japanese individual filed a trademark application for the mark consisting of jigsaw puzzles design and a word of “TA TRUMP” (see below) on November 23, 2016 by designating “psychology education cards” in class 16.

JPO examiner refused the mark on the grounds that it comprises a famous abbreviation of Mr. Donald John Trump, the President of the United States and presumably the applicant would not obtain consent from him.

 

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. 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 ruled the article has aimed to protect personality rights of a living individual. A diminutive of foreign celebrity falls under the category of “abbreviation” even if his/her full name is not so familiar among Japanese citizen.

 

To contest the refusal, the applicant filed an appeal on August 11, 2017.

 

Appeal Board

In the decision rendered on January 10, 2018, the Appeal Board overruled the refusal and admitted registration of the mark in question by stating that:

  1. “TRUMP” has been known as an English term meaning playing cards among the public in Japan.
  2. In the meantime, “TRUMP” admittedly corresponds to a surname of Mr. Donald John Trump and it becomes evident he is a well-known person as the 45th President of the United States to be called “President Trump”.
  3. Overall appearance of the applied mark easily reminds us of a kind of playing card back designs.
  4. If so, the term of “TRUMP” depicted in the mark shall not be considered to suggest President Trump at all.
  5. Based on the foregoing, accordingly it is groundless to refuse the mark based on Article 4(1)(viii).