The opposition board of JPO decided to partially cancel trademark registration no. 5807881 for RED TAB position mark (shown in below) covering goods in Class 25 owned by EDWIN KK on the grounds that the registration fails to conform to the requirements provided in the main paragraph of Article 3 (1) of the Trademark Law.
The position mark in dispute was filed on April 1, 2015 by designating the goods of “Trousers; long trousers; short trousers; jogging pants; sweat pants; ski pants; nightwear; pajamas; Japanese sleeping robes; underwear; drawers and underpants; panties, shorts and briefs; clothes for sports” in class 25 and registered on November 20, 2015 as it is.
In filing a position mark, it is mandatory to specify position of the mark in connection with goods applicant seeks to register.
Disputed registration specifies the mark as follows.
The trademark for which registration is sought (hereinafter referred to as the “trademark”) is a Position mark in which a position affixed to the trademark is specified, the trademark is affixed to the upper left part of a back pocket of trousers, and consists of a red rectangular tab figure in which Alphabetic characters of “EDWIN” are indicated. Incidentally, description of only a pocket and a tab figure is an enlarged drawing of a portion for obviously describing a mark affixed to the position. Further, broken lines represent one of the shapes of goods, and do not represent a component constituting the trademark.
The main paragraph of Article 3 (1) requires an applied trademark should be either currently in use or planned to use. Opponent, EVISU JAPAN LIMITED, did not contend this respect at an initial opposition brief, however, the Board raised the ground as a result of ex-officio examination in accordance with Article 43-9 (1) of the Trademark Law.
The Opposition Board notified the ground and ordered EDWIN to respond it if unacceptable. But EDWIN did not respond to the notification.
Based on the foregoing, the Board concluded:
it cannot be conceived the mark is used in “Night gowns; Negligees; Japanese sleeping robes; bathrobes; other nightwear of which trousers have no back pocket; undershirts; corsets; chemises; slips; brassieres; petticoats; other underwear of which trousers have no back pocket; anoraks; karate suits; sports over uniforms; kendo outfits; judo suits; headbands; wind-jackets; wristbands; other cloths for sports of which trousers have no back pocket“, of the designated goods, and it cannot be recognized that the mark is a trademark to be used in connection with goods pertaining to the business of the applicant, and hence the mark does not meet the requirements of the main paragraph of Article 3(1) of the Trademark Law.
Evidently, this is a first cancellation to position mark which becomes registrable under the New Trademark Law effective from April 1, 2015.
MASAKI MIKAMI, Attorney at IP Law – Founder of MARKS IP LAW FIRM