Adidas successful in invalidating three bones device mark

In a trademark invalidation appeal, case no. 2017-890017, the Trial Board of Japan Patent Office (JPO) decided in favor of Adidas AG to retroactively null trademark registration no. 5799460 for three bones device mark (see below) due to a likelihood of confusion with Adidas’ famous 3-stripe design.

Disputed mark

Disputed mark was filed on May 1, 2015 by a Japanese business entity, designating the goods of clothing for pets in class 18 and registered on October 16, 2015.

Subsequently after the registration, Adidas AG filed an opposition against disputed mark on November 26, 2015. Since it ended in vain, Adidas AG challenged inadequacy of the decision and registration by means of invalidation trial.

Invalidation trial

During the invalidation trial, Adidas AG argued a likelihood of confusion between Adidas’ famous 3-stripe design and disputed mark because of a high degree of popularity and reputation of 3-stripe design as a source indicator of Adidas sportswear and sports shoes, visual resemblance between the marks, and close relatedness of its consumers and commodity goods.

Board decision

The Board found that:

  1. Adidas’ 3-stripe design has acquired a substantial degree of reputation well before the filing date of disputed mark as a result of continuous marketing activities in Japan since 1971.
  2. Three bones device mark visually resembles with 3-stripe design by taking account of the same graphical representations allocating three trapezoids in different length in parallel to be seen it constituting a triangle in overall appearance.
  3. It becomes apparent that distributors of sports gears, apparels, bags, and shoes also deal with clothing for pets nowadays.

Based on the above findings, the Board concluded that consumers who are accustomed to the circumstance, are likely to confuse clothing for pets using disputed mark with Adidas’ famous 3-stripe design or misconceive a source from any entity systematically or economically connected with Adidas AG. Thus, disputed mark shall be invalidated in violation of Article 4(1)(xv) of the Trademark Law.


It should be noteworthy that a decision to dismiss opposition is not appealable under the Japan Trademark Law. If opposed party wants to argue the decision, there is no way other than invalidation trial.

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

JPO refused to register word mark “ROMEO GIGLI” due to lack of consent from Italian fashion designer

In a recent decision, the Appeal Board of Japan Patent Office (JPO) refused to register trademark application no. 2015- 100245 for a red-colored word mark “ROMEO GIGLI” in gothic script (see below) designating goods of Class 24 and 25 on the grounds that applicant failed to obtain a consent from Italian fashion designer, Romeo Gigli, based on Article 4(1)(viii) of the Trademark Law.[Case no. 2017-3558]

Disputed mark was filed on October 16, 2015 in the name of ECCENTRIC SRL, an Italian legal entity, by designating following goods in Class 24 and 25.

Class 24:

“woven fabrics; elastic woven material; bed and table linen; towels of textile; bed blankets; table cloths of textile; bed covers; bed sheets; curtains of textile or plastic; table napkins of textile; quilts”

Class 25:

“clothing; T-shirts; shirts; jumpers; trousers; pants; jackets; skirts; jeans; neckties; overcoats; coats; belts; gloves; mufflers; sweat suits; underwear; swimsuits; headgear; hats; caps; footwear; special footwear for sports”

 

Article 4(1)(viii)

On December 9, 2016, JPO examiner refused the mark based on Article 4(1)(viii) of the Trademark Law.

Article 4(1)(viii) is a provision to prohibit registration of trademarks which contain the representation or name of any person, famous pseudonym, professional name or pen name of another person, or famous abbreviation thereof. Notwithstanding the provision, the article is not applicable where the applicant of disputed mark produces the written consent of the person.

The Supreme Court of Japan has ruled the article shall be interpreted to protect personal rights of a living individual. In line with the Supreme Court ruling, Trademark Examination Manuals (TEM) set forth that the article is applicable not only to natural persons (including foreigners) and corporations but also associations without capacity. Familiar name of foreigners falls under the category of “abbreviation” if its full name contains middle name(s) unknown to Japanese consumer.

Click here to access TEM on the JPO website.

Finding that disputed mark just consists of an individual name of famous fashion designer, Romeo Gigli, the examiner raised an objection based on Article 4(1)(viii) unless ECCENTRIC SRL obtains a consent from the designer.

 

APPEAL

The applicant filed a notice of appeal with the Appeal Board, a body within JPO responsible for hearing and deciding certain kinds of cases including appeals from decisions by JPO Examiners denying registration of marks, on March 9, 2017 and contended against the refusal decision by examiner.

During the appeal trial, ECCENTRIC SRL argued inadequacy of the decision by demonstrating following facts.

  • ECCENTRIC SRL is a legitimate successor of trademark rights owned by Romeo Gigli as a consequence of mandatory handover resulting from bankruptcy of company managed by Romeo Gigli irrespective of his intention. Under the circumstance, it is almost impossible to obtain a written consent from him.
  • In the meantime, ECCENTRIC SRL has already obtained trademark registrations for the word mark “ROMEO GIGLI” in several jurisdictions.
  • Besides, ECCENTRIC SRL is a current registrant of Japanese TM registration no. 2061302 for identical wordmark in Class 4,18,21 and 26.
  • There has been no single complaint from consumers, traders or Romeo Gigli in person.

ECCENTRIC SRL alleged that the above facts shall amount to having obtained an implicit consent from Romeo Gigli in fact. Thus, disputed mark shall be allowed for registration even without a written consent in the context of purpose of the article.

The Appeal Board dismissed the appeal, however, and sustained the examiner’s decision by saying that trademark registrations in foreign countries shall not be a decisive factor in determining registrability of disputed mark under Article 4(1)(viii) in Japan. Absence of complaint from Romeo Gigli shall not be construed that he has consented to register his name in the territory of Japan explicitly or implicitly.

Unless applicant produces evidence regarding a consent from Romeo Gigli otherwise, disputed mark shall be refused to register based on Article 4(1)(viii) of the Trademark Law.

According to the JPO database, ECCENTRIC SRL filed an appeal against the Board decision to the IP High Court in November 2017. The Court decision will be rendered within a couple of months.


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

 

IP High Court admitted high reputation of Red Bull mark in relation to automobiles as well

In a lawsuit disputing similarity of red-colored bull device marks, the IP High Court nullified the JPO decision in favor of Red Bull GmbH known for Red Bull energy drink, and ruled to invalidate TM registration no. 5664585 (Disputed Mark) on the ground that it is likely to cause confusion with the Red Bull Mark.
[Case no. Heisei29(Gyo-ke)10080,  Judgement date: December 25, 2017]

Disputed Mark, filed on October 4, 2013 by designating various goods for automobiles in class 1,3,4 and 5, e.g. detergent additives to gasoline, was registered on April 18, 2014 by a Korean distributor dealing with goods related to automobiles. Prior to the appeal to the IP High Court, Red Bull was unsuccessful to attack Disputed Mark in an opposition and invalidation trial.

The Court concluded that relevant traders and consumers at the sight of designated goods using Disputed Mark would likely connect it with famous Red Bull Mark, and consequently misbelieve the source of the goods from Red Bull, an entity economically related to Red Bull, or a paerner authorized to use Red Bull Mark in business based on the following findings.

Trademark similarity

Both marks are visually confusing irrespective of differences in detail since the marks share basic configuration of depicting a left-pointing horned red bull in a vibrant motion over yellow and warm color of background. Besides, Disputed Mark gives rise to a meaning of a red-colored jumping bull and Red Bull Mark does a meaning of a red-colored rushing bull. If so, it is obvious that both marks are almost identical or similar in concept. Therefore, Disputed Mark is deemed substantially similar to Red Bull Mark.

High reputation of Red Bull Mark

Red Bull Mark, as a source indicator of plaintiff, becomes well-known not only in the field of energy drinks but also among traders and consumers of goods related to automobiles. Admittedly, it has acquired a high degree of reputation.

Consumers

Consumes of automobile goods are not limited to car enthusiast. They can be purchased by the general consuming public. Plaintiff has distributed various types of goods relating to automobiles and car race with Red Bull Mark for promotional purpose under the scheme of trademark license. It is undeniable that most of the public with an ordinary care are neither precisely familiar with trademark and brand in detail, nor always mindful to manufacturer and source indicators in the selection of goods.


It is noteworthy that the Court admitted high reputation of Red Bull Mark in the field of automobiles as well even if it evidently represents one of sponsors for car racing team

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

Royal Copenhagen successful in removing FLORA DANICA on bags and apparels

The Opposition Board of Japan Patent Office (JPO) decided to cancel trademark registration no. 5681437 for word mark “FLORA DANICA” covering various types of bags in class 18, apparels and shoes in class 25 as a consequence of opposition trial raised by ROYAL COPENHAGEN AS, one of Europe’s oldest porcelain manufacturers in Denmark.
[Opposition case no. 2014-900278]

Trademark Opposition

Opposed mark was filed by a Danish corporation on January 23, 2014. Without receiving any office action from the JPO examiner, it was smoothly granted registration on May 30, 2014. Upon payment of registration fee on June 19, 2014, it was published for opposition on July 29, 2014.

On the very final day of statutory period to file an opposition (two months from the publication provided under Article 43bis of the Trademark Law), ROYAL COPENHAGEN challenged to an opposition disputing validity of opposed mark due to a likelihood of confusion with renowned Flora Danica porcelain, made 1790-1803 at the Royal Copenhagen Porcelain Manufactory, decorated with botanical drawings of Denmark’s flora.

The opposition relied on Article 4(1)(xv) of the Trademark Law to prohibit a junior mark likely to cause confusion with other business entity’s well-known goods or services from being registered to the benefit of brand owner and users’ benefits.

Article 4(1)(xv)

Trademark Examination Guidelines set forth factors to be taken into consideration in the assessment of a likelihood of confusion under the article.

  • The degree of similarity between the trademark as applied and the other entity’s mark;
  • The degree to which the other entity’s trademark is well known;
  • Whether the other entity’s trademark consists of a coined word or contains a distinctive feature;
  • Whether the other entity’s trademark is used as a house mark;
  • Whether there is the possibility of proximity in business as a result of diversified management;
  • Whether there is any relationship between goods, services or goods and services;
  • Whether there is any commonality between the consumers of goods, etc. and other actual states of transactions.

Click here to access the guidelines.

Board decision

In the disputed opposition, the Board found that “FLORA DANICA” has acquired a high degree of population and reputation among relevant traders and consumers as a source indicator of ceramic products manufactured by ROYAL COPENHAGEL and remained the status quo continuously.

The Board assessed both marks are deemed unquestionably identical or similar. Besides, both opposed goods in classes 18, 25 and ceramic products are all closely related to daily life, and consumers are likely to show strong preference for design and fashion of goods in selection of these goods. ROYAL COPENHAGEN deals with handkerchiefs, scarfs, perfumes, cuffs, wallets, aprons, bags as well.

Base on the foregoing, the Board concluded that relevant traders and consumers of the goods in question are likely to confuse or associate the goods using Opposed mark with opponent or any business entity economically or systematically connected with ROYAL COPENHAGEN. Thus, Opposed mark is subject to cancellation due to Article 4(1)(xv) of the Trademark Law.


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