Consumers are unlikely to confuse or associate the mark “GOTHAM CITY” with Batman’s place of residence and DC Comics when used on apparels, bags and fashion accessories

The Appeal Board of Japan Patent Office (JPO) has cancelled an initial decision by JPO examiner to refuse the mark “GOTHAM CITY” with a logo, and ordered to grant protection for the mark by decision of March 14, 2017 [Appeal case no. 2016-9140].


Trademark in dispute

The mark in dispute consists of “GOTHAM CITY” written in alphabetical letters and Japanese characters as shown below.

Applicant filed the mark on April 17, 2015 to the JPO by covering goods of “key holders; fashion accessories” in class 14, “bags; pouches; vanity cases” in class 18, and “clothing; waistbands; belts” in class 25 [TM application no. 2015-37755].


Initial examination

JPO examiner initially refused the mark for confusion with DC comics, a US comic book publisher, or its affiliate pursuant to Article 4(1)(xv) of the Japanese Trademark Law since “GOTHAM CITY” is widely known as a fictitious city out of Batman from DC Comics.

Article 4(1)(xv) is a provision to prohibit any applied mark from being registered where relevant consumers or traders are likely to confuse or associate the mark with renowned sources other than applicant. It would suffice to apply the provision where consumers conceive goods or services with the mark derive from entities systematically or economically connected with the source even if relevant consumers believe the goods or services are not from the source.

It is not conditioned that renowned source indicator should be registered in advance, however, the indicator must obtain high degree of trademark awareness from the nature of things.

Article 4(1)(xv)

Article 4 Notwithstanding the preceding Article, no trademark shall be registered if the trademark:
(xv) is likely to cause confusion in connection with the goods or services pertaining to a business of another person


Appeal

Applicant filed an appeal against the refusal decision by examiner on June 21, 2016 and argued for registration of the mark in dispute.

Consequently, the Appeal Board decided in favor of applicant by stating its grounds as follows.

Distinctiveness/Awareness of GOTHAM CITY

The Board considers that the word “GOTHAM” is an unfamiliar or rarely known word in our society. Thus, the applied mark with a combination of “GOTHAM” and “CITY” and its pronunciation in Japanese characters is deemed an invented word in its entirety and does not give rise to any specific meaning at all.

In the meantime, ex-officio examination during the appeal trial revealed that the term of “GOTHAM CITY” corresponds to a fictitious city out of Batman which has been published by a US publisher, DC Comics, since 1939 as a work of comic book, movies, television programs in series worldwide. In view of high movie box office ranking to Batman movies and DVD series in Japan, it is no doubt that Batman becomes famous among the general public. But, when it comes to “GOTHAM CITY”, it just appears in texts to introduce contents of these movies and DVDs. Board could not find any fact to demonstrate the term is used at advertisement or promotional materials in a manner to attract attention to the public.

If so, the Board may admit a certain degree of awareness of the term “GOTHAM CITY” to represent a fictitious city out of Batman among movie fans. But it must be insufficient to admit the term is widely known among the public in general.

Remoteness with goods in dispute

Apparels, fashion accessories and bags. These goods in dispute for general consumers with an ordinary care are distinctively different from goods or services in the field of entertainment, movie and comics in light of remoteness of manufacturers/suppliers, location of transaction, distribution channels and usage/applications.

Conclusion

Based on the foregoing, the Board held that it is inadmissible to find the term “GOTHAM CITY” has obtained high degree of awareness among ordinary consumers in connection with apparels, bags and fashion accessories at the time of initial application as well as the time of the trial decision.

If so, relevant consumers and traders are less likely to conceive a source of goods with the mark in dispute from entities systematically or economically connected with DC Comics. Accordingly, the Board finds that it is quite unlikely to cause confusion between applicant and DC Comics.

Therefore, the refusal decision errored in applying Article 4(1)(xv) on the case and should be cancelled.


Trademark registration of Geographical names

The Trademark Examination Manual (TEM), official criteria released by JPO, sets forth issues relating to foreign geographical names (TEM 41.103.01).
TEM 41.103.01 provides that name of a city, sightseeing spot will be refused in principle on the grounds that it indicates the location where the goods are manufactured and sold (location of transaction) or the location of service, even though these names may not be directly perceived as the location of transaction in the mind of consumers.

It is noteworthy that TEP has no reference to a name of fictitious city.

Board decision implies name of fictitious city can be registered by unrelated entity to original work of art unless the city gets popular among the public in general as well.

MASAKI MIKAMI, Attorney at IP Law – Founder of MARKS IP LAW FIRM

3D shape of Zippo lighters registrable when a lighter lid open, but unregistrable when closed

In an appeal to the refusal decision against trademark application no. 2014-8964 for a three dimensional shape of box-type lighter in connection with lighters of class 34 filed by ZIPPO Manufacturing Company (US), the Appeal Board of Japan Patent Office (JPO), after stating the application impermissibly contains two 3D marks, namely Shape A with a lighter lid closed and Shape B with a lighter lid open, ruled as follows.

Shape A
Shape A can be easily perceived as a shape of box-type lighter with the lid closed in connection with the goods in dispute. Besides, as a matter of fact, similar lighters are commercially produced and distributed in general. If so, relevant traders and consumers at the sight of Shape A  are likely to conceive the shape as a mere indication of the lighter.  Thus, Shape A is objectionable based on Article 3(1)(iii) of the Trademark Law since the shape solely consists of a shape commonly used on lighters.

Even if Shape A corresponds to the 3D shape of “ZIPPO Brushed Chrome 200” substantially produced and promoted by applicant, it is questioned whether Shape A serves to function as a source indicator since presumably traders and consumers distinguish applicant’s lighters by the “ZIPPO” letter marked at the bottom of the lighter where the lid remains closed. Accordingly, Shape A is unregistrable based on Article 3(2) as well.

Shape B
Three dimensional shapes cited for refusal during initial examination are all related to box-type lighters with a lid closed. As long as there shows no reference to lighters with a lid open in the refusal decision, it should be construed that the initial examination just questioned Shape A, not B.

Since applicant amended to delete Shape A from the application, the initial decision lacks legal ground to refusal the applied mark of Shape B based on Article 3(1)(iii) accordingly.

As a conclusion, the Board admits to register the applied 3D mark consisting of Shape B in connection with lighters.
[Appeal case no. 2016-2368]


It is worthy to note that in an attempt to register 3D shape of goods, a hidden shape is considered an independent mark from the shape perceivable from appearance of the goods.
Besides, the JPO allowed to delete one of 3D marks depicted in the application document without detrimental effect to the applicant despite that the Trademark Law prohibits amendment of mark amounting to change its gist.

MASAKI MIKAMI, Attorney at IP Law – Founder of MARKS IP LAW FIRM

“WORLD SERIES OF FIGHTING” is less likely to cause confusion with “WORLD SERIES” owned by Major League Baseball Properties, Inc.

The Opposition Board of JPO (Japan Patent Office) dismissed an opposition claimed by Major League Baseball Properties, Inc., a US corporation managing trademark portfolio pertinent to US major league baseball, and determined to sustain trademark registration no. 5858151 for word mark “WORLD SERIES OF FIGHTING” [Opposition case no. 2016-900288].

WORLD SERIES OF FIGHTING

The mark in question consists of a standard character mark “WORLD SERIES OF FIGHTING” covering the goods of apparels, shoes, caps, underwear, uniforms and sportswear (class 25) and the service of entertainment or events relating to Mixed Martial Arts (class 41).

OPPOSITION by Major League Baseball Properties, Inc.

Major League Baseball Properties, Inc. filed an opposition based on the grounds that (i)WORLD SERIES OF FIGHTING” conflicts with senior trademark registrations for the mark “WORLD SERIES” owned by the opponent due to similarity between marks, (ii) there finds a likelihood of confusion with the source between marks because of high recognition of “WORLD SERIES” to indicate the annual championship of baseball games between the champions of the two major baseball leagues in the United States, the American League and the National League.

Similarity between marks

In evaluating the similarities between marks, the Board analyzed the similarity in the sight, sound and meaning of the marks.
The Board concluded “WORLD SERIES OF FIGHTING” is easily distinguishable from “WORLD SERIES” in appearance and pronunciation as a consequence of “FIGHTING” at the end of the mark in question. Besides, “WORLD SERIES OF FIGHTING” gives rise to meaning of a series of global events pertinent to martial art match. In the meantime, “WORLD SERIES” can be conceived to mean the championship games between major baseball leagues in the United States. Evidently, both marks are dissimilar from a conceptual point of view.
Accordingly, both marks are deemed dissimilar.

Likelihood of confusion

As long as both marks are distinctively dissimilar in the sight, sound and meaning as mentioned supra, relevant consumers at an ordinary care are unlikely to confuse or associate the source of the mark in question with the opponent when used on goods and services in dispute even if “WORLD SERIES” has become well-known for a source indicator of the opponent among consumers in Japan.

Accordingly, the Board concluded the opposition should be denied since it lacks grounds to be sustained.


I have no idea why the Board denied a likelihood of confusion between marks despite admitting a widespread reputation of “WORLD SERIES”.
As long as opposed mark contains a famous mark “WORLD SERIES” entirely, it should be cancelled on the goods of class 25 at least in view of similarity between goods in dispute.

MASAKI MIKAMI, Attorney at IP Law, Founder of MARKS IP LAW FIRM

 

Famous hotel brand “RITZ” successful in invalidating “RITZ MARCHE”

Invalidation trial

The Japan Trademark Law contains provision for invalidation of trademark registration by means of inter partes trial in Article 46 as a remedy to questionable ex-officio examination of the Japan Patent Office (JPO).
Statistically, approximately 100 invalidation petitions were filed to the JPO in each of the past five years. Nearly 40 percentages of them ended successfully in an invalidation of registered mark in question on average.

[Trademark invalidation trial]

Year Number of cases Disposition of trial
Invalidation Dismissal Withdrawal
2015 100 37 58 19
2014 115 38 32 15
2013 96 37 53 10
2012 118 44 76 16
2011 112 38 57 9

RITZ v. RITZMARCHE

Ritz Hotel Ltd., a world famous hotel management company, petitioned for invalidation of trademark registration no. 5594878 for a word mark “RITZMARCHE” (written in Katakana letter) covering “retail services or wholesale services for foods and beverages” in class 35 pursuant to Article 46 of the Trademark Law on the following grounds.

  1. Consumers are likely to confuse or associate the mark in dispute with Ritz Hotel due to remarkable reputation bestowed on famous hotel brand, “RITZ”.
  2. “RITZMARCHE” is deemed confusingly similar to senior trademark registrations owned by Ritz Hotel Ltd.

[Marks in dispute]

Ground 1 corresponds to on Article 4(1)(xv) of the Trademark Law to prohibit any mark likely to cause confusion with a business of another entity from being registered.

Ground 2 rests on Article 4(1)(xi) to bar registration of a junior mark which conflicts with any senior trademark registration due to similarity of both marks and goods/services.

It becomes a common practice to raise several grounds in an invalidation petition. Combination of Article 4(1)(xv) and 4(1)(xi) is a standard tactic in trademark dispute involving a famous brand. Theoretically, Article 4(1)(xv) can’t be applied unless Article 4(1)(x) is inapplicable to the case. Article 4(1)(xi) is useful to the extent the marks as well as goods/services in question are identical or similar. In the meantime, Article 4(1)(xv)   targets a wider territory where consumers are likely to confuse the source of origin between marks. In other words, Article 4(1)(xv) becomes helpful only where both marks are dissimilar, or goods/services in question are deemed dissimilar. Due to a wider protection to Article 4(1)(xv), a petitioner who claims the article is required to prove high recognition and substantial use of an opposing mark accordingly.

It is of no matter that JPO renders an invalidation decision simply based on Article 4(1)(xi) without reference to Article 4(1)(xv).

On the Ritz case, the JPO Trial Board held to invalidate registered mark “RITZMARCHE” on the grounds of Article 4(1)(xi).


Board decision

In the assessment of similarity, the Board considered a term “MARCHE” is less distinctive or inherently descriptive in connection with “retail services or wholesale services for foods and beverages” of class 35 since the term itself means “market” in French. Besides it can be seen often as a sign to indicate a place where merchants provide foods or beverages directly to consumers in Japan. Meanwhile, average consumers with an ordinary care are unlikely to perceive any descriptive meaning from the term of “RITZ”. Therefore, in the configuration of disputed mark “RITZMARCHE”, it should be allowed to extract the term “RITZ” as a prominent part of the mark.

In comparing the Katakana letter of “Ritz” with alphabetical term “RITZ” of cited marks, both have same sound. Their meaning is incomparable since both don’t give rise to specific meaning. Both terms are different in appearance, however, it becomes commercially routine to write alphabetical names in Katakana letters for purpose of representing pronunciation of the terms in fact. Based on the foregoing, the Board concluded that “RITZMARCHE” and Ritz Hotel registered marks containing a term of “RITZ” are confusingly similar as a whole, by taking into consideration of relevant factors in commerce relevant to disputed goods/services. The Board also held that “retail services or wholesale services for foods and beverages” in class 35 is considered similar to food products in class 30 designated under the citations.
[Invalidation case no. 2016-890033]

The Board didn’t refer to Article 4(1)(xv) although Ritz Hotel argued famousness of cited mark “RITZ” with enormous amount of evidential materials as mentioned reason.
If Ritz Hotel has filed the invalidation action solely based on Article 4(1)(xv), the JPO must have admitted famousness of the mark “RITZ” and invalidated “RITZMARCHE” likewise.


NEW TRADEMARK EXAMINATION GUIDELINE

In April 2017, the JPO announced new trademark examination guideline [Revision 13].
The guideline aims to reflect recent judicial decisions and non-traditional trademarks. Inter alia, Article 4(1)(xi) is hot topic due to its significance as a key provision pertinent to assessment of mark similarity. From now on, it is more likely that the JPO admits an argument of prominent part of trademark than before, even if the mark consists of other words or figurative elements.
I suppose, the RITZ case is timely ruled in line with New Guideline.

MASAKI MIKAMI, Attorney at IP Law – Founder of MARKS IP LAW FIRM