JPO permits registration of trademark “Re+Cell” by denying similarity to a word mark “ReCell”

In a dispute over trademark similarity between “Re+Cell” and “ReCell”, the Appeal Board of Japan Patent Office (JPO) determined both marks are dissimilar in visual, phonetical, and conceptual point of view.

Re+Cell vs. ReCell

The mark in dispute, consisting of the letters “Re” and “Cell” locating “+” in between, was applied for registration on July 22, 2015 by designating goods of cosmetics (class 3) in the end.

JPO examiner refused the applied mark on the grounds of conflict with a senior trademark registration no. 5661464 for word mark “ReCell” in standard character covering goods of cosmetics, soaps, flagrances (class 3) and dietary supplements (class 5), effectively registered since April 4, 2014.Applicant filed an appeal against the refusal and contended dissimilarity of the marks.

Appeal

Appeal Board ruled in favor of applicant based on the following factual findings.

  1. Applied mark gives rise to a pronunciation of “ri-purasu-seru” or “re-puresu-seru” from appearance, but no specific meaning in its entirety.
  2. Cited mark gives rise to a pronunciation of “ri-seru” or “re-seru”. Respective term composing the mark means “microscopic structure containing nuclear and cytoplasmic material” and “a prefix used with the meaning ‘again’”, however, concept of the mark is unspecified as a whole.
  3. From appearance, both marks are sufficiently distinguishable due to presence or absence of “+”.
  4. Sound of both marks is clearly dissimilar in view of nature and number of the tone.
  5. As long as no specific meaning is conceived from both marks, the marks are conceptually dissimilar.

As a consequence, applied mark is deemed dissimilar to the cited mark and the Board withdrew the refusal. [Appeal case no. 2016-16102]

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

 

American heavy metal band, METALLICA failed in an opposition against trademark METALICA

In a recent Japan trademark opposition decision, the Opposition Board of JPO ruled that a word mark “METALICA” (Opposed mark) is unlikely to confuse with “METALLICA” well known for an American heavy metal band in connection with goods of class 9 and 14. [Opposition case no. 2016-900260]

Opposed mark

Opposed mark, solely consisting of a word “METALICA” written in a plain alphabetical letter, was filed on June 25, 2015 in the name of LG Electronics Incorporated, a Korean corporation, by designating various electronics, such as, smart phone, cell phones, personal digital appliance (PDA), audio stereo, music players of class 9 and watch, personal ornaments of class 14. JPO granted to register the mark on May 20, 2016 under TM registration no. 5851357.

 

Opposition

The Japan Trademark Law provides that anyone is entitled to file an opposition against new trademark registration within two months from the publication date of gazette under article of 43bis.

METALLICA filed an opposition against the mark “METALICA” by citing IR no. 858989 for a word mark of “METALLICA” covering goods of class 3, 6, 9, 14, 16, 25, and asserted to cancel Opposed mark based on article 4(1)(viii) and 4(1)(xv) of the Trademark Law.

 

Article 4(1)(viii)

Article 4(1)(viii) prohibits to register a mark containing the portrait of another person, or the name, famous pseudonym, professional name or pen name of another person, or famous abbreviation thereof (except those the registration of which has been approved by the person concerned). The article aims to protect personal right of living person or legal entity.

Opponent, METALLICA, a partnership corporation established by members of the band, alleged that Opposed mark “METALICA” can be conceived of the opponent or US famous heavy metal band due to identical appearance and pronunciation with “METALLICA”.

The Board dismissed the allegation of Article 4(1)(viii) by stating that “METALICA” does not contain “METALLICA” in a precise and strict sense.

 

Article 4(1)(xv)

Article 4(1)(xv) prohibits to register a mark which is likely to cause confusion in connection with the goods or services pertaining to a business of another person.

Opponent alleged relevant consumers are likely to confuse or misconceive goods with Opposed mark “METALICA” as goods from opponent in view of similarity of both marks and substantial reputation acquired among rock music fanatics.

The Board admits widespread reputation of “METALLICA” among traders and consumers relating to goods and service of rock music, such as music CD and music live performance. In the meantime, famousness of the mark “METALLICA” on any goods and service unrelated to music was denied.

In the assessment of similarity, the Board admitted both marks are deemed similar in appearance, sound, concept. However, the goods designated under Opposed mark are remotely associated with T-shirts, caps, posters, badges, music videos and goods or service related to American rock music of METALLICA’s interest.

Based on the forgoing, the Board concluded that “METALICA” is unlikely to confuse or misconceive with “METALLICA” in connection with goods of class 9 and 14.

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

TM Cancellation – Violation of public order based on high levels of consumer recognition in China

In an opposition claimed by Advanced Optronic Devices (ASIA) Co., Ltd, a Hong Kong corporation, JPO decided to cancel TM registration no. 5740919 designating LED lightning apparatus in class 11 (Opposed mark), registered on February 13, 2015, owned by a Chinese corporation resided in Qingdao City, Shandong Province due to violation of public order and standards of decency based on facts that Opposed mark is almost identical with Cited mark well-known for a source indicator of AOD group, inter alia, among relevant Chinese traders and consumers  of LED products, and it is likely that neighboring opposed owner has noticed Cited mark in advance.[Opposition Case no. 2015-900154, May 26, 2017]

Trademark Law prohibits to register a mark filed by unauthorized entity if Japanese consumers are acquainted with the mark becoming famous in foreign countries.  This case is noteworthy chiefly for cancelling a mark famous among Chinese consumers.

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

Japan TM applications rose by 9.9 % to 161,859 in 2016 for fourth straight year

New trademark applications filed to JPO in 2016

According to the Japan Patent Office (JPO) Status Report 2017, the number of trademark applications filed in 2016 increased by 9.9 % from the previous year to 161,859. The number has been increasing in a row since 2013. [Chart 1]

[Chart 1]


International registration filed to JPO as the office of origin

In 2016, the number of international applications filed to register trademarks which designated the JPO as the office of origin under the Madrid Protocol System, meaning the number of international applications filed to register trademarks under Article 68 (2) of the Trademark Act, increased by 10.3 % from the previous year to 2,379. [Chart 2]

[Chart 2]


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

Famous sportswear brand “PUMA” unsuccessful in setting aside registration of “KUMA” mark

In a recent Japan trademark opposition decision, the Opposition Board ruled that famous PUMA logo for sportswear was dissimilar to the “KUMA” mark with bear design for goods in class 25, so as to cause confusion.

In the case, Opposition case no. 2016-900308, the Board was faced with considering whether the KUMA device mark of Applicant for “clothing; headgears; T-shirts; sportswear; sports shoes” in class 25 was confusingly similar to Opponent’s famous PUMA logo for “sportswear”.

In concluding that confusion was unlikely, the Board stated that two “key considerations” in making such a determination were famousness of Opponent’s mark and the similarity between the trademarks. With regard to the former factor, the Board admitted remarkable reputation and famousness of the PUMA logo among relevant public in Japan. The Board nonetheless reached its conclusion of dissimilarity – most likely on the fact that difference in the first letter generates distinctive impression in the mind of consumers since “KUMA” means bears (wild animals) in Japanese.

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

“MAMAS & PAPAS” failed in an opposition to invalidate trademark registration for the mark “PAPA’S&MAMA’S”.

The Opposition Board of Japan Patent Office issued a decision denying the opposition filed by MAMAS & PAPAS HOLDINGS LIMITED, a UK-based retailer and manufacturer supplying prams, pushchairs, baby products, furniture and maternity wear, and declared to sustain trademark registration no. 5853559 for the mark “PAPA’S&MAMA’S” in Class 18 and 44. [Opposition case no. 2016-900270]


Opposed mark

Opposed mark was filed by PAPA’S&MAMA’S Co. Ltd., designating goods of bags and pouches in class 18 and services of aesthetician services, beauty care and hairdressing in class 44 on March 15, 2016 and granted for protection on May 27 of the year.


 Opponent

MAMAS & PAPAS HOLDINGS LIMITED alleged to cancel the registration due to violation of Article 4(1)(xi) and 4(1)(xv) of the Japan Trademark Law in an opposition by citing his senior registered marks of “MAMAS & PAPAS”.


Opposition

The Opposition Board dismissed an opposition based on Article 4(1)(xi) by stating the ground as follows.

 Sound

Five sounds of opposed mark among 9 sounds in total are identical with opponent mark, however, overall pronunciations are clearly distinguishable due to reverse order of “PAPA” and “MAMA” so that both marks are deemed dissimilar in verbal point of view.

Meaning

Admittedly, both marks may give rise to a meaning of father and mother from word of “PAPA” and “MAMA” respectively. But difference coming from possessive form and plural form inevitably causes non-negligible gap in connotation as a whole.

Appearance

Likewise, both marks are deemed comparatively dissimilar in visual point of view by taking into consideration of reverse order of “PAPA” and “MAMA”, possessive form and plural form.

Conclusion

Taking account of fact that opponent mark has not acquired remarkable reputation as well, the Board decided to conclude both marks are unlikely to cause confusion in the mind of consumers and thus entirely dissimilar.


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