タグ: Article 4(1)(xi)

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.

Toyota vs. Renault: Battle of the Brands

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In a trademark opposition between Toyota Motor Corporation (JAPAN) and Renault SAS (FRANCE), the Opposition Board of Japan Patent Office (JPO) dismissed the opposition against trademark registration no. 5932825 for word mark “WIGO”.

 

WIGO vs. TWINGO

Renault opposed to register the word mark “WIGO” designating automobiles in class 12 by Toyota based on Article 4(1)(xi), (xv) of the Trademark Law by citing his senior trademark registration no. 2710075 for Renault’s car brand “TWINGO”.

TOYOTA WIGO is mini hatchback from Toyota.

RENAULT TWINGO is small city car from Renault.

Assessment of trademark similarity

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.

In assessing trademark similarity under Article 4(1)(xi), the Board considered opposed mark “WIGO” is deemed a coined word since it does not give rise to any specific meaning as well as “TWINGO”. Besides, both marks are evidently distinguishable in appearance and pronunciation. If so, the Board found that it is groundless to conclude “WIGO” is similar to “TWINGO” from visual, phonetic and conceptual aspect.

 

Likelihood of confusion

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.
Theoretically, Article 4(1)(xv) is applicable to the case where a mark in question is deemed dissimilar to well-known brand, but is still likely to cause confusion because of a high degree of popularity and reputation of the brand.

The Board concluded it remains unclear whether Renault TWINGO has become famous in automobiles from totality of the circumstances and evidence.
Provided that TWINGO does not obtain remarkable reputation in relation to automobiles as a source indicator of Renault car, WIGO is unlikely to cause confusion with Renault TWINGO because both marks are considerably dissimilar.

[Opposition case no. 2017-900193]

Trademark Dispute ROOT vs ROOTS

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The Japan Patent Office (JPO) decided in a trademark opposition that ROOT is dissimilar to ROOTS in appearance, pronunciation and meaning.
[Opposition case no. 2017-900326, Gazette issue date: June 29, 2018]

Opposed mark

Opposed mark consists of the square root design and a word “ROOT” (see below). It was applied for registration on February 9, 2017 by designating bags in class 18 and retail or whole sale services in relation to bags and clothing in class 35.
JPO granted registration in August 4, 2017 (TM registration no. 5969604).

Opposition

Opponent, Roots Corporation, a Canadian business entity, filed an opposition against opposed mark based on a self-owned senior trademark registration no. 5947860 for the work mark “ROOTS” (see above) in class 35 for on-line retail or wholesale services in relation to bags and clothing.

Opponent argued opposed mark shall be canceled in violation of Article 4(1)(xi) of the Trademark Law because “ROOT” and “ROOTS” are confusingly similar.

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.

 

Board decision

The Opposition Board of JPO negated similarity between the ROOT mark and ROOTS, stating that:

“From appearance, both marks are distinguishable since opponent mark does not contain the square root device and “S” in the suffix position. Besides there exist differences in font design and case sensitivity. 
Regarding pronunciation of the marks, opposed mark gives rise to a sound of “ruːt”. In the meantime, opponent mark sounds “ruːts”. Given the short sound of three syllables, a different pronunciation in the suffix position is not in any way ignorable. If so, both marks can be phonetically distinctive. 
Conceptually, opposed mark gives rise to a meaning of the square root. Meanwhile, opponent mark can be perceived as a word to mean the parts of plant that grow under the ground or ancestor. Hence, both marks are distinctive in concept as well.”

Based on the foregoing, the Board concluded that it is unlikely to consider relevant consumers at the sight of opposed mark would connect a word “Root” adjacent to the square root device with opponent mark. Therefore, the Board dismissed opposition and allowed opposed mark to survive.

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.

Under Armour Lost Trademark Battle Against AGEAS in Japan

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The Opposition Board of the Japan Patent Office (JPO) dismissed an opposition filed by Under Armour Incorporated, an American sporting goods manufacturer which supplies athletic and casual apparel, as well as footwear, against trademark registration no. 5924494 for the “H” device mark designating apparels, footwear, headgear, gloves, cycling wears in class 25.
[Opposition case no. 2017-900163, Gazette issue date:  February 23, 2018]

Under Armour logo

In an opposition, Under Armour claimed trademark registration no. 5924494 violates Article 4(1)(x), (xi), (xv) and (xix) of the Japan Trademark Law by citing a senior trademark registration no. 4701254 for the Under Armour logo (see below in left). Cited registration has been effectively registered since 2003 by designating clothing, footwear, sportswear, sports shoes in class 25.

Opposed mark

Opposed mark was applied for trademark registration on August 26, 2016 in the name of AGEAS INC. (USA) covering various goods in class 25 (see above in right).

Without any refusal notice from the JPO, opposed mark was granted for registration on January 16, 2017, and published in gazette for opposition on March 21, 2017.

Subsequently, Under Armour filed an opposition in May.

 

Opposition grounds

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.

To sum up, Under Armour wins if the Under Armour logo is considered confusingly similar to opposed mark. Meanwhile, even if the Under Amour logo obtains a high degree of popularity and reputation among relevant public in Japan, the opposition is overruled as long as both marks are dissimilar and unlikely to cause confusion.

 

Board decision

The Opposition Board admitted a high degree of popularity and reputation of the Under Armour logo as a source indicator of opponent among relevant consumers in the fields of sports.

In the assessment of mark appearance, the Board concluded:

“It is apparent that respective mark gives rise to a diverse visual impression in the mind of consumers because of different configuration. Opposed mark can be perceived as a device deriving from ‘H’. In the meantime, the cited mark as a device consisting of ‘U’ and upside-down ’U’. Besides, from phonetical and conceptual points of view, there exists no element to find similarity of the marks. Based on the foregoing, both marks shall be less likely to cause confusion due to a remarkable degree of visual difference.”

 

As a conclusion, the Board decided opposed mark is not subject to Article 4(1)(x), (xi), (xv) and (xix) of the Trademark Law, and admitted to continue a status quo.

Appeal Board reversed examiner’s rejection in the BOB trademark dispute

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In an administrative appeal disputing trademark similarity between TM registration no. 5719997 for word mark “BOB” and a junior application no. 2016-49394 for the “bob” device mark represented as below, the Appeal Board of the Japan Patent Office decided that both marks are deemed dissimilar and reversed examiner’s rejection.
[Appeal case no. 2017-10420, Gazette issued date: January 26, 2018]

 

TM Registration no. 5719997

The cited mark, consisting of a word “BOB” in standard character, was registered on November 21, 2014 by designating various items of furniture in class 20.

 

Junior Application no. 2016-49394

Applied junior mark consists of the following “bob” device mark.

It was applied for registration on May 5, 2016 by designating furniture in class 20.

As a result of substantive examination by the JPO examiner, applied mark was rejected due to a conflict with the cited mark based on Article 4(1)(xi) of the Trademark Law.
Subsequently, the applicant filed an appeal against the rejection and disputed dissimilarity of both marks.

 

Board decision

In the decision, the Appeal Board held that:

applied mark is a device in dark brown, consisting of two circles protruding upward on the left side, a circle connected with the two circles in line, and wavy lines underneath.

From appearance, even if it may happen the circle design is recognized as a stylized design of “bob”, the Board opines that the design is unlikely to be considered as alphabetical letters due to a remarkable extent of stylization or abstraction. Thus, it is reasonable to conclude that applied mark shall not give rise to any specific pronunciation and meaning.

Based on the foregoing, in the assessment of trademark similarity, the Board decided that:

Obviously, both marks are distinguishable in appearance. As long as applied mark does not give rise to a specific pronunciation and meaning, it is meaningless to compare the pronunciation and meaning of both marks. Consequently, the Board finds no ground to affirm examiner’s rejection from visual, phonetic, and conceptual point of view.

Astonishingly, JPO considered the bob device mark is unreadable.