カテゴリー: Composite mark

Apple successful in a trademark opposition to block “PriPhone”

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Apple Inc. achieved a victory over trademark battle involving famous “iPhone”.
In a recent trademark opposition, case no. 2017-900319, the Opposition Board of Japan Patent Office (JPO) decided in favor of Apple Inc. to cancel trademark registration no. 5967983 for word mark “PriPhone” due to a likelihood of confusion with Apple’s famous “iPhone”.

“PriPhone”

Opposed mark “PriPhone” was filed by a Japanese business entity on December 26, 2016 by designating the goods of “mobile phones; smart phones; downloadable image and music files; telecommunication machines and apparatus; electronics machines, apparatus and their parts” in class 9.
The JPO admitted registration on July 28, 2017 and published for registration on August 22, 2017.

Apple’s Opposition

To oppose the registration, Apple Inc. filed an opposition against “PriPhone” on October 20, 2017.

In the opposition brief, Apple Inc. asserted the opposed mark shall be cancelled in violation of Article 4(1)(xv) of the Japan Trademark Law given a remarkable reputation of opponent mark “iPhone” since nearly a quarter of Japanese have favorably used iPhone as a personal device to connect with internet.
Apple argued the opposed registrant knowingly included famous “iPhone” trademark on the ground that the company promotes protective cases, covers for iPhone.

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 brand owner and consumers. Theoretically, Article 4(1)(xv) is applicable to the case where both marks are dissimilar, but likely to cause confusion among relevant consumers because of a related impression attributable to reputation of the well-known mark.

Board Decision

The Opposition Board admitted a remarkable degree of reputation and popularity of opponent trademark “iPhone” among general consumers which occupies the highest share (54.1% in 2012) of the smart phone market for past five years consecutively.

In the assessment of mark similarity, the Board found “PriPhone” would be perceived containing “iPhone” in the mark, provided that “iPhone”, as a coined word, is deemed a unique and famous trademark. Besides, in view of close connection between smart phones and the goods in question, similarity with respect to consumers, it is undeniable that relevant consumers with an ordinary care are likely to conceive “iPhone” from opposed mark when used on goods in question.

Based on the foregoing, the Board decided that relevant consumers are likely to confuse or misconceive a source of the opposed mark with Apple Inc. or any entity systematically or economically connected with the opponent.
If so, opposed mark shall be cancelled in violation Article 4(1)(xv) of the trademark law.

Trademark battle over slogan : Think different vs Tick different

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Swiss watch giant Swatch has failed to stop US tech giant Apple from registering “Think Different” as a trademark, which Swatch argued segues too closely to its own “Tick Different” trademark.

THINK DIFFERENT

Apple’s “THINK DIFFERENT” mark was used in its successful Emmy-award winning advertising campaign which ran for five years from 1997. The mark was also used on the box packaging for its iMac computers next to another trademark “Macintosh”.

Its applications to register “THINK DIFFERENT” were filed in Japan on February 24, 2016 for use in relation to various goods and services belonging to 8 classes like watches, clocks (cl.12) as well as online social networking services (cl.45), among other items. JPO admitted registration on September 12, 2017. Subsequently, the mark was published in the Official Gazette for opposition.

Tick different

By citing its own mark, Swatch filed an opposition against Apple’s “THINK DIFFERENT” mark based on Article 4(1)(xi) of the Japan Trademark Law and asserted a likelihood of confusion with Swatch “Tick different” mark when used in connection with all goods designated in class 14.

Swatch’s “Tick Different” mark was filed to JPO through the Madrid Protocol (IR no. 1279757) with priority date of July 16, 2015 and admitted national registration on July 15, 2016 by designating timepieces and chronometric instruments, namely chronometers, chronographs, clocks, watches, wristwatches, wall clocks, alarm clocks, among other items in class 14.

Swatch, having a worldwide presence and its corporate group owns a stable of Swiss watch brands, including Omega, Tissot and Swatch, has allegedly used the mark on mobile payment smart watches since 2015.

 

Opposition decision

Swatch argued that the two marks were highly similar due to the same syllabic structure and number of words. With the same ending and almost the same beginning, they are visually and aurally similar.

However, in decision grounds issued on June 6 2018, the Opposition Board of Japan Patent Office (JPO) found that when compared as wholes, the marks were more dissimilar than similar.

The Board, after considering all the pleadings, evidence and submissions, concluded because of the conceptual, visual and aural dissimilarities of the marks, the Board was persuaded that the average consumer would conceive they are, overall, more dissimilar than similar.

Consequently, JPO ruled that as Swatch’s opposition failed on all grounds, the “THINK DIFFERENT” mark registration from Apple will remain with the status quo.
[Opposition case no. 2017-900376]

Google victorious in trademark dispute for YouTube icon

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The Trial Board of Japan Patent Office (JPO) recently upheld Google’s invalidation petition against TM Reg. no. 5665763 for the “Video Blog” mark in combination with figurative element (see below) due to similarity to YouTube icon and a likelihood of confusion with Google business.
[Invalidation case no. 2017-890005, Gazette issue date: July 27, 2018]

 

TM Registration no.5665763

Opposed mark, consisting of two words “Video Blog” in English and Japanese in two lines, and figurative elements depicted in between the words, was applied for registration on August 13, 2013 in respect of broadcasting services for internet in class 38.

Without confronting with a refusal during substantive examination, opposed mark was registered on April 25, 2014.

Petition for invalidation

Japan Trademark Law provides a provision to retroactively invalidate trademark registration for certain restricted reasons specified under Article 46 (1).

Google Incorporated filed a petition for invalidation against opposed mark on January 25, 2017. Google argued it shall be invalidated due to a conflict with famous YouTube icon (see below) and a likelihood of confusion with Google business when used on internet broadcasting services in class 38 based on Article 4(1)(x) and (xv) of the Trademark Law.

Board decision

The Board admitted that YouTube icon has acquired a high degree of popularity and reputation as a sign to play movies and TV shows on YouTube or an icon to start up YouTube application among relevant consumers of broadcasting service for internet.

In assessment of the similarity between two marks, at the outset the Board found that the words “Video Blog” of opposed mark in itself lack distinctiveness as a source indicator in relation to the designated service. If so, the figurative element of opposed mark plays key role as a source indicator. It is unquestionable that the figurative element is highly similar to Youtube icon. Besides, in view of Google’s business portfolio, it is highly predictable that Google launches broadcasting or news distributing business.

Users of Google services are also likely to receive internet broadcasting services.

Based on the foregoing, the Board concluded that, from totality of circumstances and evidences, relevant traders or consumers are likely to confuse or misconceive a source of opposed mark with Google or any entity systematically or economically connected with the opponent and declared invalidation based on Article 4(1)(x) and (xv).

Aston Villa lost trademark battle over rampant lion emblem

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In a trademark battle over rampant lion emblem, the Japan Patent Office (JPO) dismissed an opposition filed by Aston Villa Football Club Limited, one of the oldest and most successful football clubs in English football, holding that relevant consumers are unlikely to consider the opposed rampant lion device mark (see below) confusingly similar to Aston Villa’s club badge.
[Opposition case no. 2017-900318, Gazette issued date: June 29, 2018]

 

Rampant lion device mark

Opposed mark, consisting of a rampant lion device facing left, thrusting out its tongue, and extending its tail vertically, was filed on February 7, 2017 by designating clothing, shoes, sportswear and sports shoes in class 25 and other two classes (12 and 35).
JPO admitted trademark registration on July 28, 2017 [TM registration no. 5966695] and published it for opposition on August 22, 2017.

Trademark Opposition

Aston Villa Football Club Limited opposed registration based on Article 4(1)(xi) of the Trademark Law, asserting that opposed mark is confusingly similar to Aston Villa’s senior IR registration no. 1296488 effective in Japan for the mark of opponent’s club badge (see below).

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.

Where opposed mark is considered similar to opponent mark and designated goods of opposed mark is identical with or similar to that of opponent mark, opposed mark shall be retroactively cancelled in violation of Article 4(1)(xi). In this regard, since IR no. 1296488 covers clothing, footwear, replica shirts, football boots, polo shirts, shoes for sports etc. in class 25, similarity of goods is undisputable in the case.

 

Board decision

The Opposition Board denied similarity between the marks on the grounds that:

  1. Regardless of similarity in basic configuration of a rampant lion facing left, there exist some distinctive features in depiction of head, tongue, ear, and tail as well as length of the legs.
  2. Rampant lion has been frequently used in heraldry. Therefore, relatively the lion design will not be a material factor in the assessment of mark similarity.
  3. Opponent mark can be perceived as a crest combining “AVFC” and rampant lion design.
  4. In the meantime, opposed mark shall not give rise to a meaning of crest, and relevant consumers with an ordinary care can easily discriminate both marks from appearance due to such distinctive features and overall impression.

 

Accordingly, JPO sided with opposed mark and decided it shall not be cancelled based on Article 4(1)(xi) in relation to opponent mark.

Straight Wings Emblem Trademark Battle

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In a recent trademark decision regarding straight wings emblem on automobiles, the Opposition Board of Japan Patent Office (JPO) dismissed an opposition filed by BENTLEY MOTORS LIMITED and ASTON MARTIN LAGONDA LIMITED against trademark registration no. 5962270 for a combined mark consisting of “M78 86” and straight wings device due to unlikelihood of confusion.
[Opposition case no. 2017-900293, Gazette issued date: May 17, 2018]

TM registration no. 5962270

Disputed mark (see below) was applied for registration on December 8, 2016 by designating automobiles and other goods in class 12.

Tsubuyara Productions CO., Ltd, a Japanese company, famous for the creator of Ultraman (Japanese Superhero) is a co-applicant of disputed mark.

A month after the filing, during the Press Conference held at Tokyo Auto Salon 2017, Toyota’s new M78 x 86 concept car was unveiled. Toyota, as a car supplier collaborating with Ultraman, aimed to make people “feel like Ultraman”.

“86” is a name for Toyota sports coupe. “M78” comes from Nebula M78, a home world of Ultraman, thirteen million light years away from the earth.

Disputed mark was created to represent the collaboration between Toyota and Tsuburaya.

Opposition

JPO granted registration of the mark on July 7, 2017.

To oppose the mark, Bentley, the most sought after luxury car brand in the world, and Aston Martin, iconic luxury British sports car manufacturer, filed an opposition on the grounds that disputed mark is likely to cause confusion with opponents’ business due to close resemblance and famousness of opponent mark based on Article 4(1)(x), (xi), (xv), (xix) of the Trademark Law.

Article 4(1)(x) prohibits to register a trademark which is identical with, or similar to, other entity’s well-known mark over goods or services closely related with the entity’s business.
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)(xv) prohibits to register a trademark which is likely to cause confusion with a business of other entity.
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.

Board decision

The Opposition Board admitted a certain degree of popularity and reputation of Opponent emblem as a source indicator of opponent’s business among relevant consumers in the fields of automobiles, however, totally negated similarity of both marks from the perspective of appearance, pronunciation, and concept. Besides, finding that relevant consumers with an ordinary care would pay particular attention to the mark in procuring expensive goods, such as cars, the Board held that a mere graphical resemblance of straight wings is insufficient to find a likelihood of confusion since even opponents are co-existing in peace regardless of the similar straight wings.
Based on the foregoing, the Board concluded that there is no likelihood of confusion between the marks and allowed the “M78 86” straight wings mark valid.

JPO sided with Apple Inc. over trademark battle between Mac and MacEdge

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Apple Inc. has won a trademark opposition it lodged against GIGAZONE INTERNATIONAL CO., LTD., a Taiwanese company, over Japanese trademark registration no. 5877027 for word mark “MacEdge”.
[Opposition case no. 2016-900375, Gazette issued date: April 27, 2018]

OPPOSED MARK “MacEdge”

Opposed mark “MacEdge” (see below) was applied for trademark registration in Japan on March 10, 2016 by designating several accessories of computers in class 9.

The Japan Patent Office (JPO) admitted registration of the mark on August 8, 2016 and published the gazette under trademark registration no. 5877027 on September 27, 2016.

Apple “Mac” Computer and Operating system

In an opposition, Apple Inc. argued opposed mark violates Article 4(1)(xi) of the Japan Trademark Law based on famous Apple “Mac” computer and operating system which have been continuously distributed under various trademarks, e.g. MacBook, MacBook Air, MacBook Pro, iMac, Mac Pro, Mac mini, mac OS, Mac OS X, since 1984.

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 brand owner and users’ benefits.

Apple Inc. pointed that MacEdge website operated by the opposed party (see below) is likely to cause confusion with opponent since the front page looks similar to that of Apple’s website and it refers to opponent products.

Board decision

The Opposition Board admitted a high degree of reputation and popularity of opponent trademark “Mac” in the field of personal computers. In the assessment of mark similarity, the Board found “MacEdge” could be perceived as a combination of “Mac” and “Edge” because of two capital letters of “M” and “E”. As long as the “Mac” trademark becomes famous as a source indicator of Apple Inc. in the field of personal computers, relevant consumers are likely to connect opposed mark with opponent since the term “Mac” in opposed mark is almost identical with Apple “Mac” trademark. In the meantime, the term “Edge”, a common English word, is less distinctive and does not give rise to any specific meaning in combination with “Mac”.

Based on the foregoing, the Board decided that relevant consumers who purchase accessories of computers are likely to confuse or misconceive a source of the opposed mark with Apple Inc. or any entity systematically or economically connected with the opponent.
If so, opposed mark shall be cancelled in violation Article 4(1)(xv) of the trademark law.

Trademark Opposition: “HP” versus “HP MAKER”

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In a trademark dispute between “HP” and “HP MAKER”, the Japan Patent Office (JPO) dismissed an opposition filed by Hewlett-Packard, an American multinational information technology company, holding that there is no likelihood of confusion when the “HP MAKER” mark is used on the service of website creation.
[Opposition case no. 2017-900253, Gazette issued date: March 19, 2018]

HP MAKER

Oppose mark, consisting of “HP MAKER” in standard character, was filed on November 16, 2015 by designating website-related services, e.g. “Creation and maintenance of web sites for others; computer programming” in class 42. JPO permitted registration of the opposed mark on April 25, 2017 [TM registration no. 5948103].

Opponent contended that relevant consumers of the web-related services are likely to cause confusion the opposed mark “HP MAKER” with Hewlett-Packard or any business entity systematically or economically connected with opponent since trademark “HP” has already become famous among not only relevant consumers of computers but also general public in Japan as an abbreviation of Hewlett-Packard. If so, opposed mark shall be cancelled on the basis of Article 4(1)(x) and (xv) of the Japan Trademark Law.

Board decision

The Opposition Board admitted a high degree of reputation and popularity of the “HP” mark in connection with computer-related goods as a source indicator of opponent and its business, however, questioned such reputation prevails in the services of class 42 from totality of the circumstances and evidences provided by opponent.
Besides, finding that “HP” is also known as an abbreviation of homepage, the Board held opposed mark “HP MAKER” rather gives rise to a meaning of “person or tool to create homepage” from its configuration in the minds of relevant consumers with an ordinary care when used on the website-related services in dispute.
Based on the foregoing, the Board concluded that there is no likelihood of confusion between the marks and allowed the “HP MAKER” mark to remain valid.

Trademark registration for Kikkoman’s Soy sauce 3D Bottle

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In October 11, 2016, Kikkoman Corporation, the world’s leading producer of soy sauce, filed an application for trademark registration at the Japan Patent Office (JPO) for the following three-dimensional colored mark for soy sauce in class 30.

Red-capped Kikkoman soy sauce dispenser

Iconic red-capped Kikkoman soy sauce dispenser was introduced in 1961 and has been in continuous production ever since. It was developed by Kenji Ekuan, a Japanese Navy sailor former naval academy student who dedicated his life to design when he left the service. Its unique shape took three years and over a hundred prototypes to perfect, but the teardrop design and dripless spout have become a staple of restaurant condiments all around the world. The bottle’s design hasn’t changed over the past 50 years.

JPO Examination/Acquired distinctiveness

The JPO examiner initially notified her refusal due to a lack of inherent distinctiveness in relation to say sauce.

In a response to the office action, Kikkoman argued acquired distinctiveness of the 3D bottle arising from uniqueness of its shape and substantial use for over five decades.

According to news release from Kikkoman, over 500 million of the bottles have been sold since the design was first introduced and distributed in approximately a hundred countries worldwide. Red-capped Kikkoman soy sauce dispenser has already been registered as 3D mark in US, EU, Ukraine, Norway, Russia, Australia.

In March 30, 2018, the JPO granted trademark registration based on Article 3(2) of the Trademark Law by finding acquired distinctiveness of the 3D color mark as a source indicator of Kikkoman.
[TM Registration No. 6031041]