カテゴリー: Trademark Appeal

JPO Decision: Trademark “Dear U plus” dissimilar to “dear U”

Posted on

The Japan Patent Office (JPO) overturned the examiner’s refusal and granted registration of TM App no. 2023-99199 for wordmark “Dear U plus” by finding dissimilarity to earlier marks, “dear U” and “DEAR YOU”.
[Appeal Case no. 2024-13602, decided on December 12, 2024]

TM App no. 2023-99199

Fanplus, Inc. filled a trademark application for wordmark “Dear U plus” in standard character for use on goods and services in classes 9, 35, 41 and 42 with the JPO on September 6, 2023.

Article 4(1)(xi)

On June 3, 2024, the JPO examiner rejected the applied mark based on Article 4(1)(xi) of the Japan Trademark Law by citing earlier TM Reg nos. 6570375 “dear U” (classes 9, 38, 41, and 45) and 6756169 “DEAR YOU” (classes 20, 21, 24, 27, 29, 30, 35, and 43).

In the refusal, the examiner asserted that the word “plus” is often used in conjunction with a source indicator to represent that the quality of the goods or services offered is more advanced or improved than that of existing goods or services. Under the circumstances, relevant consumers would consider the word “plus” less distinctive in connection with the goods and services in question. Therefore, the “Dear U” element is dominant in the applied mark. If so, it is reasonable to conclude that the applied mark is aurally and conceptually similar to the cited marks.

JPO Appeal Board decision

The applicant filed an appeal against the examiner’s refusal with the JPO on August 23, 2024, and argued dissimilarity of mark.

The JPO Appeal Board found that the applied mark “Dear U plus” did not have a specific meaning and would be recognized as a whole, taking into account a visual configuration represented by the same font and a less redundant pronunciation.

In assessing similarity of mark, the Board held:

The applied mark is visually distinguishable from the cited marks because of the presence of the term “plus” and the difference between the letter “U” and “YOU”. Furthermore, there are differences in the upper and lower case of the words “Dear,” “dear,” and “DEAR”.

Aurally, even though the applied mark and the cited marks contain the same sound “dɪr-juː”, the whole sounds are distinguishable because the difference in the suffix sound “plʌs” makes the overall tone and nuance of respective mark significantly different.

The conceptual aspect does not have impact on the assessment as the applied mark has no specific meaning.

Based on the foregoing, the Board found both marks dissimilar and held that the examiner erroneously applied Article 4(1)(xi). Consequently, the JPO decided to overturn the examiner’s refection.

Top 10 Trademark News in Japan, 2024

Posted on

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

No Green Light to Kawasaki Green Color Mark

Posted on

On November 15, 2024, Kawasaki Heavy Industries, Ltd. dropped their nine-year fight with the Japan Patent Office (JPO) over a green color mark used on the Kawasaki motorcycles.

Narrow gate to color mark registration

On April 1, 2015, the JPO commenced registration of marks consisting solely of a color or colors. To date, 585 color marks have been filed with the JPO, and only 11 have been granted registration. This equates to a success rate of just 1.9%.

Kawasaki Green

On the very first day, Kawasaki Heavy Industries, Ltd., famous for sports and racing bikes in Japan, filed an application for a color mark consisting of light green (R105, G190, B40) represented on fuel tank as shown below in connection with motorcycles (cl.12).

[TM App no. 2015-30696]

JPO decision

As anticipated, the JPO examiner rejected the mark due to a lack of inherent and acquired distinctiveness on April 18, 2022 based on Article 3(1)(iii) of the Japan Trademark Law in seven years after the initial filing.

In the refusal decision, the examiner found from the produced evidence that Kawasaki has used the applied color on fuel tank of motorcycles since 1998, however, more than 70% of the Kawasaki motorcycles in average have a fuel tank painted in other color.

The results of the interview, which targeted men and women aged 16 to 79 who own motorcycles or a license to drive one, indicate that 54.7% of license holders and 67.5% of bike owners were able to recognize Kawasaki from the color. In this respect, the examiner had a view that the results were not persuasive to find acquired distinctiveness of the applied mark given Honda, Yamaha, Suzuki, and Kawasaki, the four major motorcycle manufacturers, have held a near monopoly of the market for years, and each manufacturer is known to have its own distinctive color.

Accordingly, the examiner held the applied mark shall not be registrable under Article 3(2) of the Japan Trademark Law.

Kawasaki filed an appeal against the examiner’s rejection on July 19, 2022 and argued acquired distinctiveness of the color “green” to indicate a source of the Kawasaki motorcycles. After two years of dispute with the JPO Appeal Board, Kawasaki voluntarily withdrew the appeal on November 15, 2024.

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

Posted on

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.
[Judicial case no. Riewa6(Gyo-ke)10047]

GODZILLA

Godzilla, a science-fiction monster spawned from the waste of nuclear tests that resembles an enormous bipedal lizard was released in Japanese film in 1954. The character has since become an international pop culture icon. After the original 1954 cinematic masterpiece, Godzilla has appeared in more than 30 films spanning seven decades and several eras produced by Toho Co., Ltd.

https://godzilla.com/blogs/movies

On July 29, 2016, the film “Shin Godzilla (Godzilla Resurgence)” produced by Toho was theatrically released as a 31st film of Godzilla trilogy. The film grossed $79 million worldwide, making it the highest-grossing live-action Japanese film of 2016. It received 11 Japan Academy Prize nominations and won seven, including Picture of the Year and Director of the Year.

https://godzilla.com/blogs/movies

Toho Co. filed a trademark application with the JPO for the 3D shape of Godzilla’s fourth form in the film “Shin Godzilla”, the final evolutionary form of the character appearing in the film, as a trademark for use in stuffed toys, figures, dolls and toys of class 28 on September 29, 2020 (TM App no. 2020-120003).

The JPO examiner, however, rejected the 3D mark based on Article 3(1)(iii) of the Trademark Law due to a lack of distinctiveness in relation to the goods. The JPO Appeal Board also dismissed an appeal on the same ground and held that the 3D shape has not acquired distinctiveness because of insufficient use of the 3D mark in relation to the goods in question (Appeal case no. 2021-11555).

On May 10, 2024, Toho filed an appeal to the IP High Court and called for the JPO decision to be revoked.

IP High Court decision

The IP High Court affirmed the findings of the JPO to reject the 3D shape due to a lack of inherent distinctiveness in relation to the goods in question.

In the meantime, the court found that the JPO errored in applying Article 3(2) and assessing the acquired distinctiveness of the 3D mark by stating that:

  1. Toho has produced and distributed 30 films in the “Godzilla” series over a 69-year period from 1954 to 2023, and although the shape of the “Godzilla” character in these films changed slightly, the basic shape of the character was largely the same, and the form of the Godzilla character with its countless folds and complex rocklike texture is distinctive among other monster characters of the same type.
  2. The applied mark represents the 3D shape of Godzilla’s fourth form in the film “Shin Godzilla”, the final evolutionary form of the character appearing in the film. It has the same features with the monster appeared in the previous “Godzilla” films. It is obvious that the basic shape of the “Godzilla” character has been widely recognized among general public to indicate a monster character produced by Toho even before the release of the film “Shin Godzilla”.
  3. Even if the term “use” under Article 3(2) of the Trademark Law should be limited to actual use of a sign strictly identical with the applied mark, in determining whether a consumer has come to “recognize the goods bearing the applied mark to indicate a specific source” under the article, it should be reasonable or rather necessary to consider the influence of the entire “Godzilla” films including “Shin Godzilla” on consumers’ recognition to the applied 3D mark.
  4. The interview conducted in September, 2021, targeting 1,000 interviewees of men and women aged 15 to 69 nationwide, showed an extremely high level of recognition, namely, 64.4% answered “Godzilla” or “Shin Godzilla” to the open-ended responses (70.8% among men).

“Uber Finish” Causes No likelihood of confusion with “Uber”?

Posted on

In an appeal trial against the examiner’s refusal to TM App no. 2023-19561 for word mark “Uber Finish”, the Japan Patent Office (JPO) decided to reverse the refusal by finding unlikelihood of confusion with trademark “Uber”.
[Appeal case no. 2024-4656, decided on September 3, 2024]

Uber Finish

A Japanese individual filed a trademark application for wordmark “Uber Finish” in standard character for use on adult dating services and others of class 45 in the field of adult entertainment business with the JPO on February 24, 2023.

Uber

On January 4, 2024, the JPO examiner rejected the mark on following grounds.

Article 4(1)(viii)

The examiner pointed out that the applied mark “Uber Finish” contains the term “Uber” that is identical with a famous abbreviation of the global company Uber Technologies Inc.
Provided that the applicant has not obtained an approval to register the applied mark in Japan from the company, it is not registrable under Article 4(1)(viii) of the Trademark Law.

Article 4(1)(xv)

Unquestionably, the term “Uber” is identical with a famous mark “Uber” that has been used by the global company Uber Technologies Inc. on ride-sharing services and food delivery services prior to the filing of the applied mark. Accordingly, it is not registrable under Article 4(1)(xv) of the Trademark Law because relevant consumers of the service in question are likely to confusion a source of the services bearing the applied mark “Uber Finish” with Uber Technologies or other business entity systematically or economically connected with Uber.

The applicant filed an appeal against the refusal on March 18, 2024 and argued registrability of the applied mark.

JPO decision

To my surprise, the JPO Appeal Board denied famousness of the mark “Uber” as an abbreviation of Uber Technologies Inc., even though they admitted the company has operated ride-hailing and food delivery services in the name of “Uber Taxi” and “Uber Eats”.

Based on the above finding, the Board found the applied mark does not contain a famous abbreviation of the company name, Uber Technologies Inc. Therefore, the examiner erroneously applied Article 4(1)(viii) to the case.

The Board found the mark “Uber Finish” and “Uber” dissimilar by stating that:

“From appearance, the marks share the word “Uber” at the beginning of the word, but the difference in the word “Finish” that follows makes them different words as a whole, and therefore, it is easy to distinguish them.
Although the four sounds of “Uber” at the beginning of the word may be common, the difference in the sound of “Finish” at the end of the word makes the overall tone and impression different, so it is easy to distinguish two marks.
A conceptual comparison is neutral as neither “Uber Finish” not “Uber” have any clear meaning.
Taking a global account of visual and aural distinctions, average consumers would consider them as different trademarks to indicate a different source respectively.”

Besides, the business managed by Under Technologies Inc. is remotely associated with the services in question, namely, adult entertainment services. If so, relevant consumers with an ordinary care are unlikely to confuse a source of services bearing the applied mark with Uber Technologies Inc. In this respect, the examiner made an error in applying Article 4(1)(xv).

Consequently, the Board decided to overturn the examiner’s refusal and grant registration of the applied mark.

JPO found “Arounds” dissimilar to “AROUND” as trademark

Posted on

The Japan Patent Office (JPO) reversed examiner’s rejection to TM App no. 2023-100274 “Arounds” in classes 9, 35, 41 and 42 by finding dissimilarity of mark to earlier IR no. 873694 “AROUND” in class 9.
[Appeal case no. 2024-7308, decided on August 13, 2024]

Arounds

Funny Side Up, Inc. filed a trademark application for wordmark “Arounds” in standard character for use on goods in class 9 and services in classes 35, 41, and 42 with the JPO on September 7, 2023.

The applicant uses the mark to indicate an online platform for a lifestyle exchange community.

AROUND

On February 14, 2024, the JPO examiner rejected the mark “Arounds” in contravention of Article 4(1)(xi) of the Japan Trademark Law due to a conflict with earlier IR no. 873694 for wordmark “AROUND” in class 9.

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

The applicant filed an appeal against the rejection with the JPO on April 30, 2024 and argued dissimilarity of mark between “Arounds” and “AROUND”.

JPO decision

The JPO Appeal Board found the examiner errored in finding similarity of mark and decided to reverse the rejection.

  • Assessment of the applied mark

The term “Arounds” is neither present in dictionaries nor immediately recognizable as a specific word. Therefore, the mark “Arounds” just has a sound of “Arounds”, but not any specific meaning from its component letters.

  • Assessment of the earlier mark

It is obvious that the average consumers will recognize the cited mark, comprised of the English word “AROUND”, has a sound of “AROUND” and a meaning of ‘positioned or moving in or near a place’ from its constituent letters.

  • Comparison of two marks

From appearance, two marks share the same term “Around” at the beginning. However, the term “AROUND”, a commonly known English word among consumers, has been rarely represented or used in the plural form. If so, the Board has a reason to believe that, on account of the presence of a letter “s” at the end of the applied mark, relevant consumers will consider two marks represent different words and thus it is possible for the consumers to visually distinguish them.

Because of aural difference in the bottom sound of “z” or “d”, it causes a discernible distinction in the overall tone and nuance so that the consumers can distinguish the sound of two marks.

Regarding conceptual comparison, the cited mark gives rise to a clear meaning, whereas the applied mark does not have any specific meaning. Therefore, there is no risk of confusion from a conceptual point of view.

Given relevant consumers can distinguish both marks from appearance and sound, and there is no likelihood of confusion in concept, the Board has a reason to believe that the applied mark “Arounds” is dissimilar to the cited mark “AROUNDS” even if when used on the same or similar goods in class 9.

  • Conclusion

Based on the foregoing, the Board decided to overturn the examiner’s rejection and granted registration of the applied mark.

Trademark dispute: “Ⓗ REWARDS” vs “REWARDS”

Posted on

In a recent decision, the Japan Patent Office (JPO) found that a junior mark consisting of Circled “H” and a word “REWARDS” is dissimilar to earlier trademark “REWARDS” and decided to overturn the examiner’s refusal.
[Appeal case no. 2024-1366, decided on August 6, 2024]

Applied mark

H WORLD HOLDINGS SINGAPORE PTE. LTD. filed a trademark application with the JPO on August 2, 2022. for a mark consisting of a circled “H” device and the word “REWARDS” (see below) in connection with various services of Classes 35 and 43.

Cited mark

On December 5, 2023, the JPO examiner decided to reject the applied mark due to a conflict with earlier TM Reg no. 5017950 for wordmark “REWARDS” in standard character for use on various services in classes 35 and 39 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 identical with, or similar to, any senior registered mark.

The applicant filed an appeal against the rejection with the JPO on January 25, 2024.

JPO decision

Astonishingly, the JPO Appeal Board found the applied mark is dissimilar to the cited mark by stating that:

The applied mark is composed of the alphabet “H” in circle and a word “REWARDS”. Despite the slight separation between “H” and “REWARDS”, as these letters are represented in the same typeface and alphabets in a horizontal line, it rather gives a coherent impression in appearance.

 Although the word “REWARDS” is an English word denoting the plural form of “REWARD,” in a coherent composition like the applied mark, the applied mark will be simply recognized as representing a coined word consisting of the words “H REWARDS.”

If so, the applied mark would give rise to a sound of ‘H REWARDS’, but no specific meaning as a whole.

Comparing the applied mark with the cited mark, regardless of the fact that both marks share the word “REWARDS,” two marks are visually distinguishable by virtue of the presence or absence of the circled letter “H”.

Likewise, both marks are distinguishable in sound because of the presence or absence of the initial component sound that remarkably alters the overall tone and nuance.

From a conceptual point of view, the applied mark does not give rise to a specific meaning, whereas the cited mark has a meaning of “ something given in exchange for good behavior or good work, etc.” There is no room to find conceptual similarity between the marks.

Based on the above findings, the Board noted that the applied mark is sufficiently distinguishable from the cited mark and unlikely to cause confusion with the cited mark when used in relation to the services in question.

Therefore, even though the services sought for registration by the applied mark are deemed similar to the service designated under the cited mark, given the applied mark is dissimilar to the cited mark, it is inappropriate to apply Article 4(1)(xi) of the Trademark Law.

Accordingly, the Board decided to overturn the examiner’s rejection and granted protection of the applied mark.

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 “MIZKAN 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).