タグ: Japan Trademark Law

French fashion magazine “ELLE” Victorious in Trademark Opposition against “ELLEROSE”

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The Japan Patent Office (JPO) upheld an opposition filed by HACHETTE FILIPACCHI PRESSE, société anonyme (FR) and decided cancellation of Japanese trademark registration no. 6010765 for a composite mark containing “ELLROSE” due to a likelihood of confusion with a French fashion magazine “ELLE”.
[Opposition case no. 2018-900085, Gazette issued date: December 27, 2019]

ELLEROSE

Opposed mark, a composite mark consisting of three terms “ELLEROSE”, “STYLE UP”, “BODY SHAPE WEAR” aligned vertically in different font size and a silhouette of female lower body depicted in between ‘STYLE’ and ‘UP’ (see below), was applied for registration on July 25, 2017 for ‘underwear, socks, thermal supporters [clothing], waistbands, belts [clothing], special clothing for sports’ in class 25 by ELLEROSE Co., Ltd., a Japanese company. The JPO published opposed mark for registration on February 6, 2018.

ELLEROSE promoted the sales of women’s shapewear using the “STYLE UP” mark. Click here.

Opposition by ELLE

On April 6, 2018, just before the lapse of a two-months opposition period, HACHETTE FILIPACCHI PRESSE, société anonyme (hereinafter referred to as HFP), a French company responsible for the well-known women’s magazine ELLE, which had the largest readership of any fashion magazine in the world, with culturally specific editions published on six continents in the early 21st century, filed an opposition to “ELLEROSE”.

In the opposition, HFP contended that opposed mark shall be cancelled under Article 4(1)(xv) of the Japan Trademark Law, stating that relevant consumers are likely to confuse or misconceive opposed mark with HFP or any business entity systematically or economically connected with opponent due to high popularity of opponent’s fashion brand “ELLE” and close resemblance between opposed mark and “ELLE”.

Article 4(1)(xv)

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.

Board decision

The Board admitted “ELLE” has acquired a high degree of reputation and popularity among relevant consumers and traders as a source indicator of opponent in connection with magazine as well as fashion items based on the facts that (i) “ELLE japon” fashion magazine has been published in Japan since 1982. Annual circulation of the magazine was 940,000 in 2014, (ii) HSP has continuously promoted and licensed the ELLE mark on various fashion items since 1987. The number of licensees increased over 30. It turned over JPY 4.8billion (approx. USD 43million) in 2017.

Besides, the Board found that it is allowed to cut out and compare respective element of opposed mark with opponent mark “ELLE” in assessing similarity of both marks since the Board can’t identify any visual, conceptual or phonetic linkage between the elements to comprehend opposed mark as a whole. Given the elements of “STYLE UP”, “BODY SHAPE WEAR” and a silhouette of female lower body are less distinctive, there is reasonable ground to believe that relevant consumers shall be impressed with the term “ELLEROSE” and consider it a dominant part of opposed mark.

Averages consumers would easily notice the term “ELLEROSE” consists of “ELLE” and “ROSE” which is a familiar French term meaning ‘a garden plant with thorns on its stems and pleasant-smelling flowers’, and then conceive a famous fashion brand, ELLE from the term when used on goods in class 25.

Based on the foregoing, the Board concluded that, relevant traders or consumers are likely to confuse or misconceive a source of opposed mark with HFP or any entity systematically or economically connected with the opponent when used on goods in class 25 and declared cancellation based on Article 4(1)(xv).

SCOTT Bikes Failed Trademark Opposition against “PRESCOTT”

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

“PRESCOTT”

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

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

Opposition by SCOTT

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

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

Article 4(1)(viii) prohibits registration of trademarks which contain the representation or name of any person, famous pseudonym, professional name or pen name of another person, or famous abbreviation thereof.

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

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

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

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

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

JPO decision

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

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

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

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

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

San Miguel defeat in trademark dispute over ‘AGUA MIGUEL’

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In a recent trademark decision, the Opposition Board of Japan Patent Office (JPO) dismissed an opposition against TM Reg. no. 6104642 for word mark ‘AGUA MIGUEL’ filed by Philippines-based San Miguel Brewing International Ltd. who argued a likelihood of confusion with its famous beer brand ‘San Miguel’.
[Opposition case no. 2019-900077, Gazette issued on December 27, 2019]

Opposed mark – AGUA MIGUEL

Opposed mark ‘AGUA MIGUEL’ written in standard character was filed in the name of NIPPON BEER CO., LTD., a Japanese importer and wholesaler of beers and beverage from abroad.

The mark was filed to JPO on March 29, 2018 and, without confronting with office action from the JPO examiner, published for registration on January 8, 2019 over the goods of “mineral water” in class 32.

Opposition by San Miguel

On March 8, 2019, before the lapse of a two-months opposition period, San Miguel Brewing International Ltd. filed an opposition. In the opposition, San Miguel contended opposed mark shall be cancelled based on Article 4(1)(xv) of the Trademark Law.

Article 4(1)(xv) prohibits to register a trademark which is likely to cause confusion with a business of other entity.

Likelihood of confusion is a key criteria when assessing the similarity of trademarks. To establish whether there is likelihood of confusion, the visual, phonetic and conceptual similarity will be assessed as well as the goods and/or services involved. This assessment is based on the overall impression given by those marks, account being taken, in particular, of their distinctive and dominant components. A low degree of similarity between the goods or services may be offset by a high degree of similarity between the marks, and vice versa.

San Miguel argued opposed mark is likely to cause confusion with opponent’s beer brand ‘San Miguel’, which occupies 90% of the market share in Philippines and its reputation has been widely known in Asian countries including Japan. Opposed mark consists of terms ‘AGUA’ and ‘MIGUEL’. ‘AGUA’ is less distinctive in relation to mineral water since it means water in Spanish. If so, it is apparent that the portion of ‘MIGUEL’ relatively plays a dominant role of source indicator of opposed mark. Likewise, presumably relevant consumers would pay more attention to the term ‘Miguel’ from famous beer brand. In view of close association between mineral water and beers and resemblance between the marks, it is undeniable that relevant consumers are likely to confuse or misconceive opposed mark with San Miguel or any business entity systematically or economically connected with opponent.

Board decision

The Opposition Board found a low degree of similarity between ‘San Miguel’ and ‘AGUA MIGUEL’ from visual, phonetic and conceptual points of view. Even if the term ‘AGUA’ means water in Spanish, relevant consumers with an ordinary care at the sight of opposed mark would be unlikely to see the portion of ‘MIGUEL’ as a dominant part, but rather gasp opposed mark in its entirety.

The Board found a certain degree of popularity and reputation of beer brand ‘San Miguel’ among traders and beer drinkers, but, to my surprise, the Board questioned if the beer has been widely known among general consumers regardless of continuous domestic use of the mark in commerce since 1972, by stating that produced materials have no reference to actual sales performance in Japan. A mare fact of continuous use for the last 47 years is insufficient and non-objective to demonstrate famousness of the San Miguel beer brand in Japan.

Provided that opponent failed to demonstrate ‘San Miguel’ has been well-known for opponent’s beer among relevant consumers, the Board held that opposed mark is unlikely to cause confuse with opponent or any business entity systematically or economically connected with San Miguel in view of a remote resemblance between both marks. Thus, opposed mark shall not be revocable to Article 4(1)(xv) of the Trademark Law and dismissed the opposition entirely.

Empire Steak House loses to trademark its restaurant name in Japan IP High Court battle

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On December 26, 2019, the Japan IP High Court ruled to uphold a rejection by the Japan Patent Office (JPO) to International Registration no. 1351134 for the mark “EMPIRE STEAK HOUSE” in class 43 due to a conflict with senior trademark registration no. 5848647 for word mark “EMPIRE”. [Judicial case no. Reiwa1(Gyo-ke)10104]

EMPIRE STEAK HOUSE

The case was brought into the IP High Court after the JPO decided to dismiss an appeal (case no. 2018-650052) filed by RJJ Restaurant LLC (Plaintiff), an owner of IR no.1351134 for mark consisting of stylized-words “EMPIRE STEAK HOUSE” in two lines and a golden cow design (see below) on restaurant services; carry-out restaurant services; catering services in class 43.

EMPIRE STEAK HOUSE, one of the top steakhouses in New York City since 2010, has opened their first restaurant aboard on the first floor of the new Candeo Hotel in Roppongi, Tokyo (JPN) on October 17, 2017. To secure the restaurant name in Japan, RJJ Restaurant LLC applied for registration of disputed mark via the Madrid Protocol with a priority date of March 2, 2017 in advance of the opening.

Senior registered mark “EMPIRE”

The JPO rejected disputed mark by citing senior trademark registration no. 5848647 for word mark “EMPIRE” in standard character on grilled meat and sea foods restaurant services in class 43 based on Article 4(1)(xi) of the Trademark Law.

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

Senior registered mark was applied for registration on December 8, 2015 and registered on May 13 ,2016. Apparently, senior mark is actually used as a name of restaurant, “Dining Bar Empire”, located in the city of Ueda, Nagano Prefecture (JPN).

To contend against the decision, plaintiff filed an appeal to the IP High Court on July 19, 2019.

IP High Court Decision

Plaintiff argued the literal elements of disputed mark “EMPIRE STEAK HOUSE” shall be assessed in its entirety by citing web articles relating to applicant’s restaurant which referred to the restaurant as Empire Steak House in full. Like ‘Empire State Building’ and ‘Empire Hotel’, the term “EMPIRE” gives rise to unique meaning and plays a role of source indicator as a whole when used in combination with other descriptive word. Besides, disputed mark contains an eye-catching golden cow which attracts attention to relevant consumers. If so, it is evident that the JPO erred in assessing similarity of mark between “EMPIRE STEAK HOUSE” and “EMPIRE”.

The IP High Court, at the outset, mentioned the Supreme Court decision rendered in 2008 which established general rule to grasp a composite mark in its entirety in the assessment of similarity of mark.

“Where a mark in dispute is recognized as a composite mark consisting of two elements or more, it is not permissible to decide similarity of mark as a whole simply by picking out an element of the composite mark and then comparing such element with other mark, unless consumers or traders are likely to perceive the element as a dominant portion appealing its source of origin of goods/service, or remaining elements truly lack inherent ability to serve as a source indicator in view of sound and concept.”

Next, the court analyzed the configuration of disputed mark and found it is allowed to grasp a literal element “EMPIRE” of disputed mark as dominant portion in light of the criteria applied by the Supreme Court by stating that:

  1. A term “STEAK HOUSE” is commonly used to indicate steak restaurant even in Japan.
  2. Where the term is included in restaurant name, it sometimes happens that relevant consumers over leap the term to shorten the name.
  3. In restaurants, it becomes common practice to display cucina and foodstuffs to be served on signboard or advertisement. Likewise, there are many steak and grilled meat restaurants displaying cow design. If so, relevant consumers at the sight of disputed mark would perceive the cow design as a mere indication to represent foodstuffs at the restaurant.
  4. From appearance, given the configuration of disputed mark, respective element can be considered separable.

Finally, based on the above findings, the court dismissed plaintiff’s arguments and concluded the JPO was correctly assessing similarity of mark. Given dominant portion of disputed mark is identical with the cited mark “EMPIRE” and both marks designate the same or similar services in class 43, disputed mark shall be unregistrable under Article 4(1)(xi) of the Trademark Law.

Google successful in a trademark opposition against “ANDROID HOSPITAL”

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The Opposition Board of the Japan Patent Office (JPO) decided in favor of Google LLC to retroactively cancel trademark registration no. 6008625 for word mark “ANDROID HOSPITAL” due to a likelihood of confusion with Google’s famous trademark “ANDROID”.
[Opposition case no. 2018-900065, Gazette issued on November 29, 2019]

Opposed mark

SMAHOSPOTAL Co., Ltd., a Japanese business entity running smartphone repair shops, filed a trademark application for word mark “ANDROID HOSPITAL” written in Japanese Katakana character (see below) on smartphone repair or maintenance service in class 37 to the JPO on May 10, 2017.

Opposed mark was published for registration on January 30, 2018 without confronting with office action from the JPO examiner.

Opposition by Google LLC

On March 14, 2018, Google LLC filed an opposition against “ANDROID HOSPITAL”.

Google argued that opposed mark shall be cancelled in violation of Article 4(1)(xv) of the Trademark Law on the grounds that relevant consumers would confuse or associate opposed mark, containing Google’s trademark “ANDROID” famous for Google’s Linux-based open source operating system for mobile devices, with opponent when used on the designated service in question.

Article 4(1)(xv) prohibits to register a trademark which is likely to cause confusion with a business of other entity.

Board Decision

The Board admitted that ANDROID has acquired a high degree of popularity and reputation as a source indicator of Google’s operating system for mobile devices at the time of both initial filing and registration of opposed mark.

In the assessment of similarity, the Board found it is likely that the average consumers would pay a considerable attention to the term “ANDROID” of opposed mark from its configuration because the initial portion of a mark is better remembered and generally considered to be the dominant portion of the mark. If so, a certain degree of similarity exists between two marks.

Even though “ANDROID” is a dictionary word having a meaning of ‘a robot with a human appearance’, it would anything but mean to negate novelty of the term in relation to OS for mobile devices. Besides, the designated service in question and OS for mobile devices are both related to smartphone. Given ‘smartphone repair or maintenance service’ includes ‘repair and maintenance service for Android smartphones’ as a matter of course and these are purchased or consumed by the same consumers (the general public), the Board considers opponent business and the service in question are closely associated.

Based on the foregoing, the Board concluded that, from totality of circumstances and evidences, relevant traders and consumers are likely to confuse or misconceive a source of opposed mark used in relation to the service (class 37) with Google or any entity systematically or economically connected with the opponent and declared cancellation based on Article 4(1)(xv).

Happiness Diamond makes Chopard Happy Diamonds unhappy

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Swiss manufacturer and retailer of luxury watches, jewelry and accessories, CHOPARD INTERNATIONAL S.A. failed in their attempt to stop the registration of a word mark “Happiness Diamond” at the Japan Patent Office.
[Opposition case no. 2019-900134, Gazette issue date: November 29, 2019]

HAPPINESS DIAMOND

Opposed mark (TM Registration no. 6118600), consisting of two words “Happiness Diamond” in standard character, was applied for registration on November 26,2018 for jewelry, accessories, watches in class 14 by Happiness and D Co., Ltd., a Japanese company.

At an initial application, applicant requested the JPO to expedite substantive examination. In accordance with the request, JPO examiner put a priority on the mark and admitted to grant registration in two months subsequent to substantive examination.

Accelerated Examination

JPO applies the accelerated examination system to trademark application on the condition that the application meets the following condition.

  1. Applicant/licensee uses or will use applied mark on one of designated goods/services at least, and there exists an urgency to registration, e.g. unauthorized use by third parties
  2. All designated goods/services are actually or shortly used by applicant/licensee, or
  3. Applicant/licensee uses or will use applied mark on one of designated goods/services at least, and all the goods/services are designated in accordance with a standard description based on Examination Guidelines for Similar Goods and Services.

Accelerated examination system enables applicant to obtain examination results in less than two months on average, which is six months shorter than regular examination nowadays.

Opposition by Chopard

On April 26, 2019, before the lapse of a two-months opposition period, CHOPARD INTERNATIONAL S.A., a Swiss manufacturer and retailer of luxury watches, jewelry and accessories, filed an opposition to opposed mark.

Opponent (CHOPARD) claimed that the opposed mark “Happiness Diamond” shall be retroactively cancelled under Article 4(1)(x), (xi), (xv), (xix) of the Japan Trademark Law in relation to all designated goods in class 14 by citing an owned senior international registration no. 446502 for word mark “Happy Diamonds” covering ‘Mechanical hand-winding and self-winding watches; electric and electronic watches; chronometers; jewelry; jewelry watches; all these goods adorned with diamonds’ in class 14, which has been effectively registered in Japan since September 24, 2010.

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 stop registration of opposed mark, CHOPARD has to prove “Happy Diamonds” is similar to “Happiness Diamond”. Even if both marks are deemed dissimilar, CHOPARD is still able to win the case by demonstrating likelihood of confusion resulting from fame of CHOPARD “Happy Diamonds”.

Board Decision

To my surprise, the Board held “Happiness Diamond” is sufficiently dissimilar to “Happy Diamonds” by stating that:

  1. From appearance and pronunciation, both marks, consisting of two words, are unlikely to cause confusion given the difference on the first word “Happiness” and “Happy”.
  2. Besides, both marks do not give rise to any specific meaning. If so, it is incomparable in concept.
  3. Thus, from the totality of the circumstances, relevant consumers would neither associate nor connect opposed mark with “Happy Diamonds”.

The Board questioned whether CHOPARD “Happy Diamonds” has acquired a sufficient degree of reputation and popularity among relevant consumers in Japan to be protectable under Article 4(1)(xv) of the Trademark Law in view of produced evidences although opponent alleged its first use dates back to 1976. If so, it is unlikely that relevant consumers confuse or misconceive a source of the opposed mark with CHOPARD or any entity systematically or economically connected with the opponent.

Consequently, opposed mark is not subject to Article 4(1)(x), (xi), (xv) and (xix), and remains valid as a status quo.

Trademark Dispute – SNOOPY vs. SNOOPY COUNSELOR

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The Appeal Board of Japan Patent Office (JPO) held “SNOOPY COUNSELOR” is unlikely to cause confusion with “SNOOPY”, one of the most iconic and beloved comic-strip character by Charles M. Schulz, the pet beagle of the hapless Peanuts character Charlie Brown when used in connection with psychological counseling services.
[Appeal case no. 2019-8241, Gazette issued date: November 29, 2019]

SNOOPY COUNSELOR

Veriteworks Inc., a Japanese company, filed a trademark application for work mark “SNOOPY COUNSELOR” written in Japanese Katakana character (see below) by designating ‘psychological counseling instruction; arranging, conducting and organization of counseling seminars’ (class 41) and ‘psychological counseling’ (class 44) to the JPO on August 14, 2018.

Refusal by JPO examiner

The JPO examiner refused the mark under Article 4(1)(xv) of the Japan Trademark Law by stating that the mark contains a term “SNOOPY” which has been famous as a fictional character, the pet beagle of Charlie Brown in the comic strip Peanuts by Charles M. Schulz. The character has long been licensed for use on merchandise by Peanuts Worldwide LLC and considerable licensed goods in addition to comics have been distributed in Japan by its licensee, Sony Creative Products Inc. so far.

If so, relevant consumers and traders are likely to connect and associate the mark with services from Peanuts Worldwide LLC or its licensee and thus confuse its source of origin.

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.

To contend, applicant filed an appeal against the refusal on June 20, 2019.

Appeal Board’s decision

The Appeal Board reversed the examiner’s refusal and admitted applied mark “SNOOPY COUNSELOR” to registration by finding that:

  1. It is unquestionable that “SNOOPY” has been well-known for a character, the pet beagle of Charlie Brown in the comic strip Peanuts by Charles M. Schulz. However, the Board has an opinion that it is unclear from the produced materials and information whether relevant consumers connect or associate the licensed goods and services pertinent to “SNOOPY” with any specific business entity.
  2. From appearance, the term “SNOOPY” of applied mark can be perceived as a dominant portion given “COUNSELOR” lacks distinctiveness in relation to the designated services in class 41 and 44. If so, both marks remarkably resemble from visual and phonetic aspects.
  3. Since it is also unknown whether Peanuts Worldwide LLC is likely to engage in its licensing business on psychological counseling, the Board considers relatedness with the services in question is incomparable and relatively low.
  4. Provided that relevant consumers are unlikely to perceive the “SNOOPY” as a source indicator of Peanuts Worldwide LLC or its licensees, even if both marks resemble, the Board finds applied mark “SNOOPY COUNSELOR” would not cause confusion with goods or services from Peanuts Worldwide LLC or its licensees.

It is noteworthy that the JPO denied a likelihood of confusion between “SNOOPY COUNSELOR” and “SNOOPY” regardless of finding famousness of “SNOOPY” as an iconic and beloved comic-strip character.

Acquired distinctiveness for 3D shape of OMRON digital thermometer

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The Japan Patent Office recently admitted trademark registration for a three-dimensional shape of digital thermometers ‘MC-670’ and ‘MC-681’ manufactured by Omron Healthcare Co., Ltd. by finding acquired distinctiveness in relation to thermometers (cl.10) under Article 3(2) of the Japan Trademark Law.
[Appeal case no. 2019-10386, Gazette issued date: October 29, 2019]

3D shape of the Omron digital thermometer

Omron Healthcare Co., Ltd. filed a trademark solely consisting of three-dimensional shape of its digital thermometers ‘MC-670’ and ‘MC-681’ (see below) in relation to thermometers in class 10 on August 28, 2018.
[TM application no. 2018-108289]

JPO examiner entirely rejected the application on the ground that in general pen-shape digital thermometers have a similar configuration with the applied mark. If so, it is unlikely that relevant consumers and traders conceive the shape as a source indicator of the goods. Hence, the mark is subject to 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, Omron filed an appeal on August 6, 2019.

Appeal Board’s decision – Acquired Distinctiveness

The Appeal Board affirmed examiner’s rejection of the 3D shape based on lack of distinctiveness. In the meantime, the Board granted protection of the 3D shape by finding acquired distinctiveness under Article 3(2).

Article 3(2) of the Trademark Law

Notwithstanding the preceding paragraph, a trademark that falls under any of items (iii) to (v) of the preceding paragraph may be registered if, as a result of the use of the trademark, consumers are able to recognize the goods or services as those pertaining to a business of a particular person.

Allegedly Omron has continuously used the 3D shape on its digital thermometers ‘MC-670’ and ‘MC-681’ since November 2004. Omron holds top-ranked market share (43.9%) of digital thermometers in Japan. ‘MC-670’ and ‘MC-681’ have been sold more than 4million sets over the last decade and maintains the 2nd market share (8.7%) in 2018.

The Board took a favorable view of the package design to appeal its 3D shape in an impression and conspicuous manner (see below), advertisements and award-winning.

According to the produced interview report, 60% of the interviewees (total of one thousand people who have digital thermometer or use it more than once a year ranging in age from 20 to 69) associated the shape with Omron or its digital thermometers.

Since Omron has been aggressive to stop competitors using resembled shape on their thermometers, the Board considered that the 3D shape is distinguishable to achieve its role as a source indicator consequently even if the “OMRON” mark is represented on the thermometers.

Based on the above findings, the Board held that the 3D shape would be conceived as a source indicator of Omron thermometers and thus registrable based on the acquired distinctiveness under Article 3(2).
[TM Registration no. 6197317]

JAGUAR LAND ROVER Lost Trademark Opposition over Jaguar Logo

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The Opposition Board of the Japan Patent Office (JPO) held a junior trademark registration no. 6104905 for a composite mark comprised of “JAGTEC” and feline device is neither similar to, nor likely to cause confusion with senior trademark registrations for leaping jaguar logo owned by Jaguar Land Rover Ltd. when used on automobiles in class 12.
[Opposition case no. 2019-900064, Gazette issued date: October 25, 2019]

Opposed mark

Opposed mark (see below) was applied for registration on March 29, 2018 by designating automobiles and its structural parts in class 12, and published for registration on January 8, 2019 without confronting any office action from the JPO examiner.

Opposition by Jaguar Land Rover

Jaguar Land Rover Ltd. filed an opposition on February 28, 2019 before the JPO and claimed that opposed mark shall be cancelled based on Article 4(1)(xi) and (xv) of the Trademark Law by citing trademark registrations for its iconic jaguar logos (see below) which include the image of a leaping jaguar, accompanied by the word “jaguar”, which the opponent claims to be used over 75 years old.

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

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

Jaguar Land Rover claimed that , inter alia, opposed mark, consisting of a leaping feline device and literal element starting from “JAG”, looks confusingly similar to the cited marks from visual, oral, and conceptual points of view. Besides, the goods in question is identical with that of cited marks. If so, opposed application “for the contested goods would be recognized as uniquely and unmistakably identifying or suggesting a connection to opponent , and thus relevant consumers are likely to confuse or misconceive opposed mark with a famous car brand “JAGUAR”.

Opposition decision

To my surprise, the Opposition Board pointed out that Jaguar Land Rover alleged the leaping jaguar logo has been used since 1938 and well-acquainted with relevant consumers though, it is questionable whether cited marks have acquired a substantial reputation as a result of consecutive use from the produced evidences.

Besides, the Board flatly negated similarity between opposed mark and cited marks respectively.

By taking into consideration uncertain famousness of cited marks and low degree of similarity between the marks, the Board concluded relevant traders and consumers are unlikely to confuse or associate opposed mark with opponent or any business entity economically or systematically connected with Jaguar Land Rover even when used on automobiles. Based on the foregoing, opposed mark shall not be cancelled under Article 4(1)(xi) and (xv) of the Trademark Law.

JPO finds “CLUB MOET KYOTO” and “Moët & Chandon” likely to cause confusion

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The Opposition Board of the Japan Patent Office (JPO) sided with MHCS, the producer, inter alia, of the famous Moët & Chandon champagne, and decided to cancel trademark registration no. 6030384 for word mark “CLUB MOET KYOTO” due to a likelihood of confusion with “Moët & Chandon”.

CLUB MOET KYOTO

Opposed mark, a word mark “CLUB MOET KYOTO” written in standard character, was filed on November 14, 2017 by designating restaurant service of class 43 in the name of a Japanese business entity having its principal place of business at Kyoto. It appears the applicant owns hostess bar and opposed mark is actually used as a name of the bar. See here.

Immediately after filing the application, applicant requested the JPO to accelerate examination of opposed mark. In accordance with the request, the JPO rushed to a decision and admitted registration on March 23, 2018.

MHCS – OPPOSITION

MHCS, as a holder of the Japanese trademark “MOET”, sought to retroactively cancel the registration of opposed mark, on the grounds that the mark was likely to cause confusion with “Moët & Chandon” when used on restaurant service in class 43 under Article 4(1)(xv) of the Japan Trademark Law.

Likelihood of confusion is a key criteria when assessing the similarity of trademarks. To establish whether there is likelihood of confusion, the visual, phonetic and conceptual similarity will be assessed as well as the goods and/or services involved. This assessment is based on the overall impression given by those marks, account being taken, in particular, of their distinctive and dominant components. A low degree of similarity between the goods or services may be offset by a high degree of similarity between the marks, and vice versa.

MHCS argued that a term “MOET” of opposed mark shall playa a dominant role as a source indicator since both “CLUB” and “KYOTO” are devoid of distinctive character in relation to restaurant service. If so, relevant consumers may misconceive “Moët & Chandon” from opposed mark when used on the service in question by taking its prestigious reputation of “Moët” as an abbreviation of world-famous champagne into consideration.

OPPOSITION DECISION

The JPO Opposition Board decided in favor of MHCS, finding that both “Moët & Chandon” and its abbreviation “Moët” have acquired substantial reputation as a top ranking champagne brand distributed by MHCS. It is unlikely that relevant consumers would conceive “Moët” as a surname of foreigners. If so, the term is anything but a dictionary word, rather a coined word. Besides, both marks are confusingly similar, due to visual, phonetic and conceptual similarities, since the literal elements “CLUB” and “KYOTO” of opposed mark are devoid of distinctive character in relation to the service in question, as well as close association between champagne and restaurant service for which protection was sought based on the fact that MHCS once opened restaurant in the year 2014.

Based on the above considerations, the Opposition Board cancelled trademark registration of opposed mark in its entirety, finding there to be likelihood of confusion between “Moët & Chandon” and the trademark applied for.
[Opposition case no. 2018-900152, Gazette issued date: October 25, 2019]