カテゴリー: Trade dress

Top 10 Trademark News in Japan, 2024

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As the year 2024 comes to an end, it is a good time to share the top 10 trademark news in Japan by counting the total number of likes on the Linkedin “Like” Button.

1: Japan IP High Court said No to registering the color of Hermes packaging

The Japan IP High Court ruled to dismiss Herme’s appeal against the JPO decision that rejected Hermes packaging color due to a lack of inherent and acquired distinctiveness.

Japan IP High Court said No to registering the color of Hermes packaging.

2: Can a ‘Letter of Consent’ guarantee successful trademark registration in Japan?

The revised Japan Trademark Law will come into effect on April 1, 2024, introducing the “Letter of Consent” as a means to overcome conflicts with earlier trademark registrations.

Can a ‘Letter of Consent’ guarantee successful trademark registration in Japan?

3: COCO vs. KOKO

In a recent administrative decision, the Japan Patent Office (JPO) found that the trademarks “CoCo” and “koko” are dissimilar and unlikely to cause confusion.

COCO vs. KOKO

4: CHANEL defeated in Trademark Opposition against “COCOCHI”

The Japan Patent Office (JPO) handed a loss to Chanel SARL in trademark opposition against TM Reg no. 6674710 for the “COCOCHI” mark by finding unlikelihood of confusion with “COCO”.

CHANEL defeated in Trademark Opposition against “COCOCHI”

5: ZARA Unsuccessful Opposition against TM “LAZARA”

On April 22, 2024, the Japan Patent Office (JPO) dismissed an opposition filed by Industria de Diseño Textil, SA (INDITEX), owner of the fashion brand “ZARA”, against TM Reg no. 6699667 for word mark “LAZARA” in classes 25 due to dissimilar marks and unlikelihood of confusion with “ZARA”.

ZARA Unsuccessful Opposition against TM “LAZARA”

6: CHANEL Lost in Trademark opposition against “COCOBABY”

The Japan Patent Office (JPO) did not side with CHANEL in an opposition against TM Reg no. 6650252 for wordmark “COCOBABY” in class 25 by finding dissimilarity of mark between “COCOBABY” and “COCO”.

CHANEL Lost in Trademark opposition against “COCOBABY”

7: Trademark Dispute: Chateau Mouton Rothschild vs MOUTON

The Japan Patent Office (JPO) declared invalidation of TM Reg no. 6090508 for wordmark “MOUTON” in classes 35 and 43 due to a likelihood of confusion with famous mark “Mouton” as a source indicator of Chateau Mouton Rothschild, one of the most famous wine estates in the world.

Trademark Dispute: Chateau Mouton Rothschild vs MOUTON

8: Hermes Victory with Invalidating Birkin Lookalike Design

The Japan IP High Court has ruled in favor of Hermes in a dispute over the validity of Design Reg no. 1606558 by finding a likelihood of confusion with Hermes.

Hermes Victory with Invalidating Birkin Lookalike Design

9: Trademark dispute: VALENTINO GARAVANI vs GIANNI VALENTINO

In a trademark opposition claimed by Valentino S.p.A. against TM Reg no. 6550051 for the GIANNI VALENTINO mark, the Japan Patent Office (JPO) decided to cancel the registration due to a conflict with earlier IR no. 975800 for the VALENTINO GARAVANI mark.

Trademark dispute: VALENTINO GARAVANI vs GIANNI VALENTINO

10: Japan IP High Court gives Green Light to 3D “Godzilla” shape as Trademark

On October 30, 2024, the Japan IP High Court disaffirmed the administrative decision by the Japan Patent Office (JPO) not to register the 3D shape of the eponymous character from the film “Shin Godzilla” as a trademark.

Japan IP High Court gives Green Light to 3D “Godzilla” shape as Trademark

Japan IP High Court Decision: 3D shape of Stokke “TRIPP TRAPP” high chair Unprotectable under Copyright Law

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On September 25, 2024, the Japan IP High Court dismissed an appeal by Peter Opsvik AS and Stokke AS who had claimed copyright protection for their award-winning, best-selling children’s chair, “TRIPP TRAPP.”

[Court case no. Reiwa5(ne)10111]

TRIPP TRAPP

In 2021, Peter Opsvik AS and Stokke AS, as co-plaintiffs, initiated legal proceedings against Noz Corporation at the Tokyo District Court on the grounds of copyright infringement and the Unfair Competition Prevention Law.

The plaintiffs have asserted that Noz Hopple’s “Choice Kids” and “Choice Baby” chairs (see below right) are liable for copyright infringement and prohibited under the Unfair Competition Prevention Law in relation to their iconic “TRIPP TRAPP” high chair (see below left), and sought damages in the amount of 14 million JPY (approximately 98,000USD) in the complaint.

However, the Tokyo District Court did not rule in favor of the plaintiffs in a decision on the merits, rendered on September 28, 2023 [Reiwa3(wa)31529].

To contest, the plaintiffs filed an appeal with the IP High Court, requesting the cancellation of the District Court decision.

IP High Court decision

The IP High Court found that the distinctive shape of “TRIPP TRAPP” perse has played a significant role in identifying the source of the plaintiff’s chair. However, the court questioned resemblance between the “TRIPP TRAPP” chair and the defendant chairs by globally taking account of their respective appearances and overall impressions.

Pertinent to a legal protection to the “TRIPP TRAPP” chair under the Copyright Law, the court held that:

In determining appropriate protection for creative works on the shape of utility articles, it is necessary to pay due attention to the purposes, nature, and content of rights provided by the Copyright Law and the Design Law in Japan.

To the extent that creative expression on utility articles is visible and causes aesthetical effect in the mind of consumers, it will not require protection under the Copyright Law since the Design Law takes an initiative to provide sufficient protection for such expression.

Based on these points, it is reasonable to conclude that creative shape of utility articles is protectable under the Copyright Law only where it contains an independent part that is an object of aesthetic appreciation apart from its practical function or when the entire article is deemed to have been created exclusively for the purpose of aesthetic appreciation.

The court has an opinion that the unique features of the “TRIPP TRAPP” chair are mainly serving to realize the practical function as a height adjustable children’s chair and aim to achieve basic function of chair as a whole. Therefore, it is difficult to separate the features apart from basic function of the plaintiff’s product as a chair. In other words, even if the plaintiff’s chair gives rise to an aesthetic effect in the mind of consumers as a whole, the unique feature of the chair is not an object of independent aesthetic appreciation apart from its practical function as a chair.

Obviously, there is no evidence to find that the plaintiff’s chair was made exclusively for the purpose of aesthetic appreciation.

Besides, the defendant’s chairs do not have the unique function of the plaintiff’s product. Due to a clear distinction in overall impression of respective products, the IP High Court believes the defendant was not liable for copyright infringement consequently.

Hermes Victory with Invalidating Birkin Lookalike Design

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The Japan IP High Court has ruled in favor of Hermes in a dispute over the validity of Design Reg no. 1606558 by finding a likelihood of confusion with Hermes.
[Court case no. Reiwa5(Gyo-ke)10113, decided on February 19,2024]

Design Registration no. 1606558

Plaintiff, Toms and Collective Co., Ltd applied a 3D shape of bag (see below) with the JPO on August 23, 2017 (Design App no. 2017-18064). The JPO, as a result of substantive examination, granted protection of the design on May 18, 2018.

Defendant, Hermes International filed an invalidation action with the JPO on January 13, 2023 and claimed the design registration shall be invalidated in contravention of Article 5(ii) of the Japan Design Law.

Article 5(ii) provides a design that has a risk of causing confusion with goods of another person’s business may not be registered.

Hermes referred to three trademark registrations that are relevant to the 3D shape of Birkin bags (TM Reg no. 5438059) and two “H” logos (TM Reg nos. 4672965 and 5864813) in class 18. They argued that the disputed design is likely to cause confusion with Hermes when used on bags due to the famousness of the registered marks and the resemblance between the disputed design and Hermes’ marks.

Invalidation decision by JPO

On September 4, 2023, the JPO Trial Board decided to invalidate the disputed mark by stating that:

  1. As there is a remarkable gap between the disputed design and 3D shape of Birkin bags, the Board has no reason to find a likelihood of confusion with TM Reg no. 5438059.
  2. The Board questions whether the “H” logo for TM Reg no. 4672965 (H1 mark) has become famous as a source indicator of Hermes. Therefore, the disputed design would not cause confusion with H1 mark.
  3. Meanwhile, Meanwhile, the plaintiff admits that the ‘H’ logo for TM Reg no. 5864813 (H2 mark) has become famous for identifying Hermes. The padlock in the disputed design bears a resemblance to the H2 mark that has been used on the buckles of Hermes bags. As a result, relevant consumers are likely to confuse the bags with Hermes upon seeing the disputed design, particularly the padlock.

IP High Court decision

On October 11, 2023, the Plaintiff filed an appeal with the IP High Court and requested the cancellation of the invalidation decision made by JPO.

In the lawsuit, Plaintiff argued that the padlock should not be considered a prominent element of the design, as it is merely an accessory to the disputed design that represents a shape of the bag as a whole.

Screenshot taken from https://annecoquine.com/

The judge stated that any partial shape of the entire design is subject to assessment in adapting Article 5(ii). It is unrelated to the “prominent element” used to assess design similarity under Article 3(1)(iii) of the Design Law.

The judge also addressed that it is irrelevant to consider whether Plaintiff promotes bags representing the disputed design but without the padlock.

Based on the foregoing, the court dismissed all allegations and invalidated the disputed design due to a likelihood of confusion with Hermes.

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

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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.

Failed trademark opposition by HERMES against HAIRMES

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On December 1, 2021, the Japan Patent Office (JPO) dismissed an opposition filed by Hermes International against TM Reg no. 6275593 for the wordmark “HAIRMES” due to dissimilarity to and the unlikelihood of confusion with the famous fashion brand “HERMES”.
[Opposition case no. 2020-900266]

Opposed mark

Dog Diggin Designs, LLC applied a wordmark “HAIRMES” in standard character for use on beds for household pets; pillows for pets; pet cushions in class 20, and toys for pets in class 28 with the JPO on October 16, 2019.

The JPO examiner granted protection of the opposed mark on July 28, 2020, and published for opposition on August 18, 2020.

Apparently, Dog Diggin Designs promotes parody dog toys & dog beds, and other pet supplies.

https://www.dogdiggindesigns.com/

Opposition by Hermes

To oppose against registration within a statutory period of two months counting from the publication date, Hermes International filed an opposition against the opposed mark on October 15, 2020.

Hermes argued the opposed mark shall be canceled in contravention of Article 4(1)(x), (xi), (xv), and (xix) of the Trademark Law because of the remarkable reputation and popularity of the HERMES brand in the fashion industry and a high degree of similarity between “HAIRMES” and “HERMES” likely to cause confusion among relevant consumers in Japan.

JPO decision


The JPO Opposition Board admitted “HERMES” has been widely recognized as a luxury fashion brand and source indicator of Hermes International.

In the meantime, the Board negated similarity between the marks by stating that:

From the appearance, the difference of “AI” and “E” in the middle of a respective word would suffice for relevant consumers to distinguish them.
Phonetically, “HERMES” is easily distinguishable from “HAIRMES” because of the difference in the first and second given both marks just consist of four sounds respectively.
Conceptually, the opposed mark does not give rise to any specific meaning. Meanwhile, “HERMES” has a meaning of a Greek god of commerce, eloquence, invention, travel, and theft who serves as herald and messenger of the other gods and ‘luxury fashion brand.’ If so, both marks give rise to a different impression in the mind of relevant consumers.

Based on a low degree of similarity between the marks, the Board denied a likelihood of confusion as well.

As to Hermes’ allegation that Dog Diggin Designs must have an unjustified intention to free-ride the reputation of HERMES by promoting pet supplies with a similar package design and color to Hermes, the Board found irrelevant to the case since the opposed mark does not contain such figurative element. Ironically, the opposed mark “HAIRMES” rather serves to prevent confusion even if used on similar package design and color, the Board held.

https://www.dogdiggindesigns.com/

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

Hermès beat Birkin Bag Imitator for Trademark Infringement

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On December 17, 2020, the Japan IP High Court upheld awards for JPY2,900,000 for damages suffered by Hermès in relation to a trademark infringement and passing-off case regarding the Birkin Bag imitations.
[Court case no. Reiwa2(Ne)10040]

Hermès Birkin Bag

HERMES INTERNATIONAL, a French luxury fashion house, has owned Japanese trademark registration no. 5438059 for the 3D shape of the “Birkin” bag in connection with handbags of class 25 since 2011 by successfully demonstrating acquired secondary meaning as a specific source indicator of Hermès’ luxury bags.

The iconic Birkin bag was firstly created for Jane Birkin in 1984. It is known for its superior craftsmanship and jaw-dropping price tag, with standard models starting around JPY1,000,000. Its annual sales figures exceed 3,000 in 1998, 8,000 in 2003, and 17,000 in 2009.

Birkin Bag Imitations

Hermes sued Kabushiki Kaisha Tia Maria at the Tokyo District Court for violating its trademark right and the unfair competition prevention law by allegedly promoting 100 or more Birkin look-alike bags (see below) in Japan with a price tag of JPY27,300 from August 2010 to February 2018.

Court decision

On June 3, 2020, the Tokyo District Court decided in favor of HERMES INTERNATIONAL and awarded damages for trademark infringement and passing-off in the amount of JPY2,900,000.
[court case no. Heisei31(wa)9997]

In the decision, the Tokyo District Court found that Hermès Birkin Bag has acquired distinctiveness and become remarkably famous as a source indicator of Hermès’ luxury bags by 2009.

Besides, the court held that defendant’s goods constitutes an infringement of the 3D shape of the “Birkin” bag trademark since both are confusingly similar in view of the following aspects:
(a) a distinctive three-lobed flap design with keyhole-shaped notches to fit around the base of the handle, (b) a dimpled triangular profile, (c) a closure which consists of two thin, horizontal straps designed to fit over the flap, with metal plates at their end that fit over a circular turn lock, (d) a padlock which fits through the center eye of the turn lock and (e), typically, a key fob affixed to a leather strap, one end of which is affixed to the bag by wrapping around the base of one end of the handle.

Screen capture of TIA MARIA’s website (http://tiamaria.zf.shopserve.jp/SHOP/V1172S.html)

The court measured damages to recover (i) defendant’s actual sales of infringing bags (JPY2,730,780) by subtracting appropriate variable cost (40% of the offered price) for JPY1,638,468, (ii) “mental suffering” caused by an infringement for JPY1,000,000, and (iii) reasonable attorney fee for JPY260,000.

The district court decision was challenged by the defendant before the High Court to set aside or vary it, however, the IP High Court dismissed the appeal entirely and sided with HERMES INTERNATIONAL.

To read a full text of the IP High Court decision (Japanese only), click here.

JPO protects 3D shape of cherry design bottle for soy sauce dispenser

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In a recent administrative decision, the Japan Patent Office (JPO) found 3D shape of cherry design bottle is inherently distinctive in relation to soy sauce dispensers in class 21 even without secondary meaning.
[Appeal case no. 2019-7188, Gazette issue date: March 27, 2020]

3D shape of cherry design bottle

RISU Co., Ltd. filed a trademark application for three-dimensional shape of soy sauce bottle featuring cherry designs (see below) in relation to say sauce dispensers of class 21 on July 20, 2017 (TM Application no. 2017-96914).

From appearance, the 3D shape does not differentiate from an ordinary soy sauce dispenser except cherry designs in red encircling a clear cylindrical plastic bottle.

As a matter of fact, RISU Co., Ltd. has produced various plastic products for home use as well as cherry patterned table top condiment containers.

Article 3(1)(iii)

The JPO examiner rejected registration of the 3D mark on the ground that relevant consumers would not conceive the shape as a source indicator in relation to soy sauce dispensers since there exists similar goods depicting decorative patterns and colors to aim at attracting their attentions. The mark merely represents a shape of designated goods in a common manner and thus is not eligible for registration based on Article 3(1)(iii) of the Trademark Law.

Article 3(1)(iii) is a provision to prohibit any mark from registering where the mark solely consists of elements just to indicate, in a common manner, the place of origin, place of sale, quality, raw materials, efficacy, intended purpose, quantity, shape (including shape of packages), price, the method or time of production or use.

To dispute the refusal, applicant, applicant filed an appeal on June 3, 2019.

Appeal Board’s decision

The Appeal Board disaffirmed examiner’s rejection of the 3D shape by stating that:

Figurative elements depicted on a clear plastic cylindrical bottle would be rather perceived as a distinctive device created on a cherry motif, than a decoration for the purpose of enhancing function or aesthetic appeal of goods in question. If so, the 3D shape per se is deemed to play a role of source indicator sufficiently. It is obvious that examiner errored in finding distinctiveness of the 3D shape.

Thus, the 3D mark is eligible for registration in connection with soy sauce dispensers of class 21 even without finding secondary meaning because of inherent distinctiveness of the shape.

JPY 71 Million Damages Award Against Design Copycat of BAO BAO ISSEY MIYAKE

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In a civil legal battle involving design copycat of luxurious “BAO BAO” bags designed by ISSEY MIYAKE, a Japanese fashion designer, the Tokyo District Court sided with ISSEY MIYAKE and found infringement under the Unfair Competition Prevention Act on June 18, 2019.
[Judicial case no. H29(Gyo-wa)31572]

BAO BAO ISSEY MIYAKE

Issey Miyake’s innovative and unique bag designs under the brand of “BAO BAO” since 2010 earned it accolades and wide recognition in the fashion world. Its most prominent design is crafted with a tessellating triangular structure that shifts as it’s moved to create new three-dimensional forms. Capturing a seamless fusion of geometric shapes and fluid silhouettes, the designs are often a kaleidoscope of color. Most of the pieces consist of rectangular equilateral triangle.

Disputed bags

Defendant, Largu Co., Ltd. began to promote following women’s shoulder bags, pouches, backpacks and tote bags under the brand of “Avancer” from 2016. Defendant copied tessellating triangular structure on disputed bags likewise. Most of the pieces are not rectangular equilateral triangle.

Defendant sold these goods for JPY 1,000 ~ 6,000. It was far cheaper than BAO BAO ISSEY MIYAKE – sometimes up to one-thirteenth.

Court decision

In the judgment, at the outset, the court assessed whether the geometric shapes of tessellating triangular structure shall play a role of source indicator protectable under the Unfair Competition Prevention Act. The judge found the shape of plaintiff’s goods has a distinctive and different feature from other women’s bags by taking account of produced evidences. Its unique and innovative design, inter alia, creating various three-dimensional forms when used, apparently gives unusual impression to consumers. If so, the prominent design consisting of triangular structure shall be protectable under the Unfair Competition Prevention Act.

Besides, the court found the triangular structure of plaintiff’s goods obtained a certain degree of popularity and reputation as a source indicator of BAO BAO ISSEY MYAKE by the time defendant launched disputed bags in 2016.

In assessing a likelihood of confusion, the court dismissed defendant’s counterargument on different shape of triangle by stating that disputed goods give rise to a same visual effect with BAO BAO ISSEY MIYAKE by means of creating various three-dimensional forms when used. Price difference is not a material factor to negate a likelihood of confusion as long as consumers conceive BAO BAO ISSEY MIYAKA at the sight of disputed bags.

After significant litigation, the trade dress suit ended with an injunction barring all future sales of the copied designs and a hefty damages award, JPY 71,068,000 under the Unfair Competition Prevention Act.

In the meantime, the court dismissed plaintiff’s allegation of copyright infringement on the ground that plaintiff’s goods are rather suitable for industrial design. In fact, plaintiff’s goods are produced in quantity at factory. If so, it shall be unprotectable under the Copyright Law.