Cancellation of Trademark Registration Filed with Malicious Intent

The Opposition Board of JPO declared cancellation of trademark registration No. 5778852 for the mark composed of a prancing horse design and term “Cavallino Lampanti” (Opposed mark) covering the goods in class 18 and 25 on the grounds that Opposed mark was registered with malicious intent to resemble a renowned horse emblem of opponent, Ferrari S.p.A., known for “cavallino rampante”, and free ride remarkable reputation bestowed on the opponent marks. [Opposition Case No. 2015-900335]

ferrari-opposition

In the opposition decision, the Board did not clearly admit similarity of the horse design depicted in both marks regardless of conceptual similarity, however, concluded the term “Cavallino Lampanti” of Opposed mark and a name “cavallino rampante” of Opponent mark are highly similar in both appearance and sound.

Besides, admittedly Opponent marks have been well known among general public in Italy even prior to an application date of Opposed mark. Opponent has promoted several goods belonging to class 18 and 25 e.g. bags, necktie, T-shirts, wallets, shoes to Japanese customers as well.

Based on the above facts, presumably an applicant of Opposed mark must have been acquainted with such circumstances and Opponent’s business. If so, it is not deniable to conclude that Opposed mark was filed with malicious intent to harm Opponent business and free ride valuable reputation bestowed on famous brand.

As a conclusion, the Board cancelled Opposed mark based on Article 4 (1) (xix) of the Trademark Law.

 

Article 4(1)(xix)

“No trademark shall be registered if the trademark is identical with, or similar to, a trademark which is well known among consumers in Japan or abroad as that indicating goods or services pertaining to a business of another person, if such trademark is used for unfair purposes (referring to the purpose of gaining unfair profits, the purpose of causing damage to the other person, or any other unfair purposes, the same shall apply hereinafter).”

 

Article 4(1)(xix) aims to prevent unauthorized entities from registering a well-known mark in foreign country even if the mark itself has not yet acquired high recognition in Japan to the extent relevant domestic consumers become aware of such situation in foreign country. The article plays a significant role in attacking a fraudulent trademark registration where it designates goods or services remotely associated with business of a famous brand owner.

1187hirai%e4%bf%ae%e6%ad%a3003_2Masaki MIKAMI – Attorney at IP Law (Japan)

MARKS IP LAW FIRM http://www.marks-iplaw.jp/

First to file rule – How to solve a conflict filed on the same date

The Japan Trademark Law follows “first to file” rule under which a registration is granted to the person who is first to file a trademark application, whether or not he or she began to use the mark before others.

 

Article 4 (1)(Xi) of the Trademark Law

“No trademark shall be registered if the trademark is identical with, or similar to, another person’s registered trademark which has been filed prior to the filing date of an application for registration of the said trademark, if such a trademark is used in connection with the designated goods or designated services relating to the said registered trademark, or goods or services similar thereto.”

 

Provided that a senior mark has yet to be registered at the time of a junior application, but expected in due course, Article 8(1) is applicable.

 

Article 8(1)

“Where two or more applications for trademark registration relating to identical or similar trademarks which are to be used in connection with identical or similar goods or services have been filed on different dates, only the applicant who filed the application for trademark registration on the earlier date shall be entitled to register the trademark in question.”

 

Article 4(1)(xi) and 8(1) provides a decisive solution to deal with conflicting marks filed in different dates based on the “first to file” rule.

 

What happens when conflicting marks are filed on the same date?

 

Article 8(2), (4) of the Trademark law stipulates that the JPO requests applicants to negotiate voluntarily to determine which party is entitled to be a registrant.

 

Article 8(2)

“Where two or more applications for trademark registration relating to identical or similar trademarks which are to be used in connection with identical or similar goods or services have been filed on the same date, only one applicant who is to be determined by consultations among the applicants who filed such applications shall be entitled to register the trademark in question.”

 

Given applicants failed to reach an agreement, the JPO conducts a lotteryto select either applicant for registration in accordance with Article 8(5).

The lottery is conducted using a lottery machine.

 

Article 8(5)

“Where no agreement is reached in the consultations held pursuant to paragraph (2) or no report is submitted within the designated time limit set forth in the preceding paragraph, only one applicant, selected by a lottery in a fair and just manner conducted by the Commissioner of the Patent Office, shall be entitled to register the trademark in question.”

 

This can offer us a valuable lesson.

Get good luck on your side to win a trademark registration in addition to complying with “first to file” rule!

 

Procedures for the public lottery can be seen at Trademark Examination Manual.

https://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/pdf/44-01.pdf

1187hirai%e4%bf%ae%e6%ad%a3003_2 Masaki MIKAMI – Attorney at IP Law (Japan)

The Japan Patent Office (JPO) has declared to modify the amounts of the individual fee payable with respect to Japan under Article 8(7) of the Madrid Protocol.

ITEMS Present(in Swiss francs) New Amounts(in Swiss francs)
Application or Subsequent Designation First Part: 92 for one class 108
70 for each additional class 82
Second Part: 229 for each class 269
Renewal 315 for each class 371

 

This change takes effect on December 14, 2016.

Therefore, these amounts will be payable where Japan:

(a)  is designated in an international application which is received, or is deemed to have been received under Rule 11(1)(c), by the Office of origin on or after that date;  or

(b)  is the subject of a subsequent designation which is received by the Office of the Contracting Party of the holder on or after that date, or is filed directly with the International Bureau of WIPO on or after that date;  or

(c)  has been designated in an international registration which is renewed on or after that date.

 

Japan was the 5th designated member.

According to the WIPO Statistics Database, June 2016, the numbers of designations made in Madrid applications for Japan from the top 20 origins in 2015 is 13,533.

It was followed by the Switzerland (13,071) and Australia (11,993).

The most designated member was China, the only country to exceed 20,000 designations.

It has become a routine to obtain trademark registrations in Japan by means of Madrid Protocol.

1187hirai%e4%bf%ae%e6%ad%a3003_2

Masaki MIKAMI – Attorney at IP Law (Japan)

Can Slogans be Trademarks?

Properly marketed slogans, product phrases and other types of taglines serve to build a brand identity in the minds of consumers. Such slogans become instantly synonymous with the brand, reflecting the company’s products and values in one short statement, and thus worthy of trademark registration.

Brand owners should seek to protect and enforce their rights using trademark law.

 

The question is can slogans be registered as a trademark?

In order to be registered as a trademark, slogans or taglines will have to fulfil the usual criteria for trademark registration, in that it must:

  • Be ‘distinctive’: if the trademark is too descriptive of the goods or services or any characteristics of them, the JPO will likely object to your trademark.

  • Be available for registration in your chosen class, i.e. the same or a similar slogan must not have been already registered in the same or similar group of your chosen goods/services;

 

Distinctiveness of Slogans

Trademark Guideline pertinent to Article 3(1)(vi) of the Trademark Law stipulates a standard for slogans.

For a trademark composed of merely terms indicating advertisement of chosen goods/services or corporate philosophy or management policy;

(1)   Where an applied trademark is recognized to indicate advertisement of chosen goods/services or corporate philosophy or management policy in a commonly-used method, such mark is not registrable based on Article 3(1)(vi). In the meantime, where an applied trademark can be recognized not only as advertisement of chosen goods/services or corporate philosophy or management policy but also as a coined word, such mark is deemed distinctive.

(2)   In determining whether the applied trademark is recognized just as advertisement of chosen goods/services, it is judged by taking a concept generated from the entire mark, connection with the chosen goods/services, actual commercial transaction, configuration of the mark, etc. into consideration comprehensively.

(a)     Circumstances in which a trademark is recognized to indicate just advertisement of chosen goods/services

(Factors)

  • The mark indicates explanations of the goods/services;
  • The mark indicates characteristics and superiority of the goods/services;
  • The mark briefly indicates quality and characteristics of the goods/services;
  • The mark consists of words commonly used for advertisement of goods/services (However, it is not required that example suggests actual use of the chosen goods/services for advertisement).

(b)     Circumstances in which a trademark recognizes something other than advertisement of goods/services

 (Factors)

  • The mark is not recognized to have a direct or specific meaning in relation to the chosen goods/services.
  • Whereas an applicant uses the applied trademark for a certain period of time as a mark which distinguishes its goods/services from those of others, a third party does not use the words identical with or similar to the applied trademark as advertisement.

(3)   In determining whether the applied trademark is recognized just as corporate philosophy or management policy, it is judged by comprehensively taking a concept generated from the entire goods/services, connection with the chosen goods/services, actual commercial transaction, configuration of the mark, etc. into consideration

(a)     Circumstances in which the trademark is recognized just as corporate philosophy or management policy

(Factors)

  • The mark describes characteristics and superiority of a company;
  • The mark is described with words commonly used to indicate corporate philosophy or management policy.

(b)     Circumstances in which the trademark is recognized something other than corporate philosophy or management policy

(Factors)

  • Whereas an applicant uses the applied mark for a certain period of  time as a mark which distinguishes its goods/services from those of others, a third party does not use the words identical with or similar to the applied mark as corporate philosophy or management policy.

It is this distinctive requirement that can often pose the greatest hurdle for brand owners seeking to register their slogans as trademarks.

 

Precedent cases

JPO has rejected following slogans due to lack of distinctiveness based on above criteria.

“KEEP THE LIFE LINE”
“ECO-STYLE”
“TOTAL CAR LIFE”
“TECHNOLOGY FOR A HEALTHY WORLD”

 

1187hirai%e4%bf%ae%e6%ad%a3003_2  MASAKI MIKAMI – Attorney at IP Law

The Appeal Board overruled examiner decision to negate inherent distinctiveness of a mark consisting of landscape painting.

Applied mark consists of a landscape painting depicting trees, pond and semicircular wooden bridge on the precincts of a shrine as shown below.

 2014-20654

Initial refusal by JPO examiner

At initial examination, examiner rejected the applied mark based on Article 3(1)(vi) of the Trademark Law since it is apparent that average consumers with an ordinary care of apparel in class 25 recognize the mark merely indicating landscape painting of a traditional shrine and are unlikely to conceive the mark as a source indicator by taking into account of circumstance that landscape design is commonly printed on apparels, T-shirts.

Article 3(1)(vi) – Requirements for trademark registration

Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered, unless a trademark by which consumers are not able to recognize the goods or services as those pertaining to a business of a particular person.

Board decision 

In the meantime, the Appeal Board admitted inherent distinctiveness of the landscape painting on the grounds that mandatory survey failed to reveal a fact to convince the applied mark itself is used on T-shirt in general.

Thus, even if it becomes common to print landscape design on T-shirts admittedly, as long as the applied landscape has not been used on apparel too often, it is rather reasonable to conclude that the applied mark is deemed inherently distinctive as a source indicator of apparel. Consequently, the examiner decision should be overruled [Fufuku2015-7412].

 

In my opinion, it is doubtful whether average consumers at a glance of apparel are able to distinguish a landscape painting serving as source indicator from non-distinctive landscape paintings. Furthermore, with respect to the landscape in question, similar landscape can be seen often at historical shrines or temples in our country.