Japan: Trademark Law Revision Act of 2018 in force on June 9

The Japan Trademark Law Revision Act of 2018 (Act No. 33) passing congress on May 23, 2018, was promulgated on May 30 and becomes effective on June 9, 2018.

Revision act sets a high bar for requisite in dividing a trademark application under Article 10 (1) of the Trademark Law.

 

Article 10(1) of the Trademark Law – Dividing TM application

Dividing trademark application is beneficial to applicant who wants to maintain a prior-application right for every goods/services designated under initial application because division admits divided application to have retroactive effect as if it was filed on the same date with initial application.

Currently, applicant is allowed to divide trademark application as long as the application satisfies following requirements.

  1. Initial application is pending in examination, appeal, or re-examination (Parent application),
  2. Junior application (Child application) relates to the identical mark with Parent application,
  3. Child application designates goods/services within the scope of goods/services originally designated by Parent application, and
  4. Parent application deletes the divided goods/services from designation simultaneously at the time of filing Child application.

For your reference, old Article 10(1) provided that:

“An applicant for trademark registration may file one or more new applications with regard to part of an application which designates two or more goods or services as its designated goods or designated services, provided that the application for trademark registration is pending in examination, trial examination or retrial examination, or that a suit against a trial decision to refuse the application is pending in court.”

 

Additional requirement for divisional application

From June 9, 2018, in addition to the above, applicant is required to pay an official fee of Parent application.

Where applicant divides trademark application without paying official fee imposed on Parent application, the Japan Patent Office (JPO) does not allow retroactive effect to Child application. Namely, Child application is examined for registrability based on its actual filing date.

JPO decided to revise the article to prevent an entity with fraudulent intent from repeatedly dividing trademark application regardless of non-payment of official fee.


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

JPO sided with Apple Inc. over trademark battle between Mac and MacEdge

Apple Inc. has won a trademark opposition it lodged against GIGAZONE INTERNATIONAL CO., LTD., a Taiwanese company, over Japanese trademark registration no. 5877027 for word mark “MacEdge”.
[Opposition case no. 2016-900375, Gazette issued date: April 27, 2018]

OPPOSED MARK “MacEdge”

Opposed mark “MacEdge” (see below) was applied for trademark registration in Japan on March 10, 2016 by designating several accessories of computers in class 9.

The Japan Patent Office (JPO) admitted registration of the mark on August 8, 2016 and published the gazette under trademark registration no. 5877027 on September 27, 2016.

Apple “Mac” Computer and Operating system

In an opposition, Apple Inc. argued opposed mark violates Article 4(1)(xi) of the Japan Trademark Law based on famous Apple “Mac” computer and operating system which have been continuously distributed under various trademarks, e.g. MacBook, MacBook Air, MacBook Pro, iMac, Mac Pro, Mac mini, mac OS, Mac OS X, since 1984.

Article 4(1)(xv) provides that a mark shall not be registered where it is likely to cause confusion with other business entity’s well-known goods or services, to the benefit of brand owner and users’ benefits.

Apple Inc. pointed that MacEdge website operated by the opposed party (see below) is likely to cause confusion with opponent since the front page looks similar to that of Apple’s website and it refers to opponent products.

 

Board decision

The Opposition Board admitted a high degree of reputation and popularity of opponent trademark “Mac” in the field of personal computers. In the assessment of mark similarity, the Board found “MacEdge” could be perceived as a combination of “Mac” and “Edge” because of two capital letters of “M” and “E”. As long as the “Mac” trademark becomes famous as a source indicator of Apple Inc. in the field of personal computers, relevant consumers are likely to connect opposed mark with opponent since the term “Mac” in opposed mark is almost identical with Apple “Mac” trademark. In the meantime, the term “Edge”, a common English word, is less distinctive and does not give rise to any specific meaning in combination with “Mac”.

Based on the foregoing, the Board decided that relevant consumers who purchase accessories of computers are likely to confuse or misconceive a source of the opposed mark with Apple Inc. or any entity systematically or economically connected with the opponent.
If so, opposed mark shall be cancelled in violation Article 4(1)(xv) of the trademark law.


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

JPO refused to register 3D shape of Mitsubishi Electric’s spiral escalator

The Appeal Board of Japan Patent Office (JPO) disallowed registration of 3D shape of Mitsubishi Electric’s spiral escalator due to lack of inherent distinctiveness and secondary meaning in relation to escalators, class 7. [Appeal case no. 2017-6855]

Spiral escalator

Mitsubishi Electric Corporation first developed the spiral escalator in 1985, and has been the world’s first and sole manufacturer of spiral escalators. Spiral escalator is a special design type of escalator in the form of a spiral/helical with curved steps.
On May 3, 2016, Mitsubishi Electric filed a trademark application for 3D shape of spiral escalator (see below) by designating escalators in class 7 to the JPO [TM application no. 2016-23374].

The JPO examiner totally refused the application based on Article 3(1)(iii) of the Japan Trademark Law stating that the applied mark can be easily seen as a 3D shape of escalator and the shape does solely consist of a common configuration to achieve the basic function of escalator. If so, the applied mark lacks distinctiveness as a source indicator.

To dispute the refusal, Mitsubishi Electric filed an appeal on May 12, 2017.

Appeal Board’s decision

The Appeal Board, however, upheld the examiner’s decision on the ground and dismissed Mitsubishi’s allegation by stating that relevant consumers and traders shall conceive of an escalator designed to enhance its function or sensuousness at the sight of applied mark.

Acquired distinctiveness

Mitsubishi Electric also argued that even if the applied mark is deemed descriptive in relation to escalators, it shall be registrable based on Article 3(2) due to acquired distinctiveness of the mark because Mitsubishi Electric Spiral Escalators has achieved 100 % market share in the world and continuously used the 3D shape on escalators for more than three decades.

Article 3(2) is a provision to allow registration of applied mark if, as a result of substantial use of the mark in fact, consumers are able to connect the mark with a source indicator of designated goods or services.

Under the totality of the circumstances, the Appeal Board dismissed the allegation as well.

The Board found that regardless of 100 % market share in the category of spiral escalators, Mitsubishi Electric’s domestic supply record of 24 units in the last thirty years shall be a trivial quantity in comparison with total number of escalators in operation. Besides, questionnaire result rather shows a source of the applied mark is unknown to more than 60% of the questionee.

Based on the foregoing, the Board questioned whether applied mark has acquired distinctiveness through actual use in relation to escalators and consequently refused to register the mark based on Article 3(1)(iii) and 3(2) of the Trademark Law.


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