Opposed mark

Opposed mark, outlined letters of “GRILL Swiss” on a red background, was applied for use on various goods and services in classes 29, 30, and 43 without any geographical restriction of the origin of respective goods and services on April 9, 2019, by Ginza Grill.

The opposed mark has been used on a Western food restaurant in Ginza, Tokyo since 1947.

The JPO granted protection of the mark and published for opposition on April 27, 2021.

Opposition by Choco Swiss

Choco Swiss filed an opposition against the “GRILL Swiss” mark in contravention of Article 4(1)(xvi) of the Trademark Law.

Article 4(1)(xvi) is a provision to prohibit the registration of a trademark that is likely to mislead as to the quality of the goods or services.

The Trademark Examination Guideline (TEG) provides an example that the “SWISSTEX” mark for use on watches shall be unregistrable based on the article. It should be noted that the mark can be registered in the event that the goods are amended to Swiss-made watches.

Opponents claimed the opposed mark “GRILL Swiss” caused a misunderstanding of the quality of following goods in class 30 when used on non-Swiss foods.

Aromatic preparations for food, not from essential oils; Tea; Coffee [roasted, powdered, granulated, or in drinks]; Prepared coffee and coffee-based beverages; Cocoa [roasted, powdered, granulated, or in drinks]; Prepared cocoa and cocoa-based beverages; Ice; Confectionery; Bread and buns; Sandwiches; Steamed buns stuffed with minced meat [Chuka-manjuh]; Hamburgers [sandwiches]; Pizzas; Hot dog sandwiches; Meat pies; Seasonings [other than spices]; Spices; Unroasted coffee beans; Cereal preparations; Chocolate spread; Chinese stuffed dumplings [Gyoza, cooked]; Chinese steamed dumplings [Shumai, cooked]; Sushi; Fried balls of batter mix with small pieces of octopus [Takoyaki]; Boxed lunches consisting of rice, with added meat, fish or vegetables; Ravioli; Cooked rice; Cooked curry rice; Cooked curry rice with fried pork, rice with hashed meat; omelet with a filling of ketchup‐seasoned fried rice; Instant confectionery mixes; Pasta sauce; Husked rice; Husked oats; Husked barley; Gluten for food; Flour.

Opponents argued the opposed mark uses the word “Swiss” in a prominent manner, which indicates Switzerland. Besides, the white-outlined letters on a red background give consumers an impression of Switzerland because of the same color as the Swiss flag. Therefore, if the opposed mark is used on non-Swiss foods including Swiss confectionary, a famous origin of chocolate, relevant consumers would inevitably misunderstand as if the goods bearing the opposed mark were originally manufactured and sold in Switzerland.

JPO Decision

The Opposition Board found both words “GRILL” and “Swiss” are less distinctive as a source indicator in relation to the goods in question equivalently. Being that the term “GRILL Swiss” would not give rise to any specific meaning, the Board held the literal element of the opposed mark is a coined word. If so, it is unlikely that relevant consumers consider the word “SwiSS” of the opposed mark as an indication to represent a specific quality of the goods including confectionery.

Based on the above findings, the Board decided the opposed mark contains a coined word within the red device and it would not represent the quality (place of production, place of sale, etc.) of the goods in question. If so, the opposed mark shall not be canceled in contravention of Article 4(1)(xvi) and remains valid as the status quo.

WENGER

Wenger, the Swiss company, has owned international registration no. 1002196 for the cross mark (see below) for use on backpacks of class 18 and others goods in Japan since November 5, 2010.

SWISSWIN

TravelPlus International (TI) distributed “SWISSWIN” brand backpacks adorned with a logo evoking the Swiss flag which consists of a cross surrounded by a square in Japan. According to the court decision, an affiliated company of TI has produced the Wenger bags as an OEM vendor.   

IP High Court ruling

The IP High Court dismissed the appeal entirely and issued a decision addressing the interpretation of similar marks evoking the Swiss flag that is unregistrable under the Trademark Law.

1. Evaluation of color difference on cross design

TI argued color difference shall be a crucial factor in this case based on Article 4(1)(iv) of the Japan Trademark Law that prohibits registration of an identical or similar mark to the Red Cross.

However, the judge denied the allegation by stating that any cross design dissimilar to the Red Cross can be registrable under the article. If so, it does not make sense to find the color difference on cross designs that would materially affect the similarity of the marks. Both marks should be assessed in their entirety by taking account of other elements as well.

2.  Assessing figurative element except for cross design

TI argued both marks should be assessed similarly on the assumption that the square plays a dominant role of source indicator based on Article 4(1)(i). Any mark identical or similar to a foreign national flag is unregistrable under the article. If so, it should not be allowed to claim trademark infringement based on the cross design which is undoubtedly similar to the Swiss flag.

However, the judge dismissed the allegation and reiterated its stance that in finding similarity of the mark, both marks should be assessed in their entirety, not only with the square but also the cross, since both marks just consist of these elements.