Disputed mark

PECO Co., Ltd., a Japanese business entity working on the health benefits of the human-animal bond, filed a trademark application for word mark “NYAN TUBER” written in Japanese Katakana character (see below) on pet-related services in class 35 and 42 to the JPO on April 3, 2017.

“Nyan” is the sound cats make in Japan. Cats don’t make the same sounds in other countries. In the United States, it sounds like meow. In Germany, it’s miau; and, in France, it’s miaou.

So, “NYAN TUBER” easily reminds Japanese consumers of a person who frequently uploads videos of cats to ‘YouTube’.

The disputed mark was registered on November 24, 2017 (TM Registration no. 5999063).

Invalidation petition by Google

On October 24, 2018, Google LLC filed a petition for invalidation and alleged among others the disputed mark shall be invalidated in contravention of Article 4(1)(vii),(x),(xi),(xv),(xix) of the Trademark Law due to similarity to, or a likelihood of confusion with “YouTuber”

Google argued “YouTuber” has become famous as an indication closely associated with Google’s well-known online video sharing services ‘YouTube’. Because of it, relevant consumers and traders at sights of the disputed mark would connect or associate it with ‘YouTuber’.

YOU TUBER

According to recent polls, becoming a YouTuber or vlogger becomes the most popular career goal for Japanese children and teenagers.

TOP 5 JOBS BOYS WANT (2019)
1. Youtuber/Vlogger, 2. Soccer player, 3. Baseball player, 4. Driver, 5. Policeman

PECO counterargued that it becomes usual for YouTubers to use him/her YouTube name “___Tuber”. If so, relevant consumers at the sight of “NYAN TUBER” videos would just consider the disputed mark represents the video or a person who uploaded it and never conceive the mark as a source indicator of Google or YouTube.

Invalidation Board decision

The JPO Invalidation Board did not question a high degree of popularity and reputation of “YouTube” as a source indicator of Google’s online video sharing services.

In the meantime, the Board found “YouTuber” would be recognized as a generic term to represent ‘a person who creates and uploads videos on the YouTube online video sharing service’ by referring to some dictionaries. In fact, Google does not register the term over any goods and services at all, and thus the Board denied the famousness of “YouTuber” as a source indicator of Google’s service.

With regard to the assessment of the similarity between “YouTuber” and “NYAN TUBER”, the Board found that both marks are dissimilar as a whole even though they have partially the same in the suffix. The difference in the prefix, “NYAN” and “YOU” substantially gives rise to a distinctive impression from appearance, sound, and concept as a whole in the minds of relevant consumers. Accordingly, both marks would be anything but confusingly similar.

Based on the foregoing, the Board dismissed Google’s allegations entirely and declared validation of the disputed mark.

TM Registration no.5665763

Opposed mark, consisting of two words “Video Blog” in English and Japanese in two lines, and figurative elements depicted in between the words, was applied for registration on August 13, 2013 in respect of broadcasting services for internet in class 38.

Without confronting with a refusal during substantive examination, opposed mark was registered on April 25, 2014.

Petition for invalidation

Japan Trademark Law provides a provision to retroactively invalidate trademark registration for certain restricted reasons specified under Article 46 (1).

Google Incorporated filed a petition for invalidation against opposed mark on January 25, 2017. Google argued it shall be invalidated due to a conflict with famous YouTube icon (see below) and a likelihood of confusion with Google business when used on internet broadcasting services in class 38 based on Article 4(1)(x) and (xv) of the Trademark Law.

Board decision

The Board admitted that YouTube icon has acquired a high degree of popularity and reputation as a sign to play movies and TV shows on YouTube or an icon to start up YouTube application among relevant consumers of broadcasting service for internet.

In assessment of the similarity between two marks, at the outset the Board found that the words “Video Blog” of opposed mark in itself lack distinctiveness as a source indicator in relation to the designated service. If so, the figurative element of opposed mark plays key role as a source indicator. It is unquestionable that the figurative element is highly similar to Youtube icon. Besides, in view of Google’s business portfolio, it is highly predictable that Google launches broadcasting or news distributing business.

Users of Google services are also likely to receive internet broadcasting services.

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