Is Polaroid Photo Frame trademarked?

In a recent decision, the Appeal Board of Japan Patent Office (JPO) admitted trademark registration for the Polaroid Photo Frame design mark (see below) in relation to services of photo printing, digital on-demand printing, processing of photographic films, photographic retouching (class 40).
[Appeal case no. 2017-9599, Gazette issue date: June 28, 2018]

 

Polaroid Photo Frame

Disputed mark (see below), apparently looking like Polaroid Photo Frame, was filed in the name of PLR IP Holdings, LLC, the ex-owner of the Polaroid brand and related intellectual property, by covering services of photo printing, digital on-demand printing, processing of photographic films, photographic retouching under class 40 on June 24, 2015.

As a result of substantive examination by the JPO examiner, disputed mark was refused due to a lack of inherent distinctiveness based on Article 3(1)(vi) of the Trademark Law.

Article 3(1)(vi) is a comprehensive provision to prohibit any mark lacking inherent distinctiveness from being registered.

Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered, unless the trademark:
(vi)
 is in addition to those listed in each of the preceding items, a trademark by which consumers are not able to recognize the goods or services as those pertaining to a business of a particular person.

 

Appeal Board decision

The Appeal Board sided with applicant and overruled examiner’s refusal decision by stating that the Board could not detect actual use of the applied design as a representation of shape or quality in connection with the designated services.

Besides, it is questionable to conclude that disputed mark, a combination of White Square and black rectangle, solely consists of a very simple and common sign. If so, the Board considers disputed mark is capable of serving as a source indicator so that consumers may distinguish the source with the clue of disputed mark.

Based on the foregoing, the Board admitted trademark registration of the Polaroid Photo Frame device mark in class 40.


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

Google victorious in trademark dispute for YouTube icon

The Trial Board of Japan Patent Office (JPO) recently upheld Google’s invalidation petition against TM Reg. no. 5665763 for the “Video Blog” mark in combination with figurative element (see below) due to similarity to YouTube icon and a likelihood of confusion with Google business.
[Invalidation case no. 2017-890005, Gazette issue date: July 27, 2018]

TM Registration no.5665763

Opposed mark, consisting of two words “Video Blog” in English and Japanese in two lines, and figurative elements depicted in between the words, was applied for registration on August 13, 2013 in respect of broadcasting services for internet in class 38.

Without confronting with a refusal during substantive examination, opposed mark was registered on April 25, 2014.

Petition for invalidation

Japan Trademark Law provides a provision to retroactively invalidate trademark registration for certain restricted reasons specified under Article 46 (1).

Google Incorporated filed a petition for invalidation against opposed mark on January 25, 2017. Google argued it shall be invalidated due to a conflict with famous YouTube icon (see below) and a likelihood of confusion with Google business when used on internet broadcasting services in class 38 based on Article 4(1)(x) and (xv) of the Trademark Law.

Board decision

The Board admitted that YouTube icon has acquired a high degree of popularity and reputation as a sign to play movies and TV shows on YouTube or an icon to start up YouTube application among relevant consumers of broadcasting service for internet.

In assessment of the similarity between two marks, at the outset the Board found that the words “Video Blog” of opposed mark in itself lack distinctiveness as a source indicator in relation to the designated service. If so, the figurative element of opposed mark plays key role as a source indicator. It is unquestionable that the figurative element is highly similar to Youtube icon. Besides, in view of Google’s business portfolio, it is highly predictable that Google launches broadcasting or news distributing business.

Users of Google services are also likely to receive internet broadcasting services.

Based on the foregoing, the Board concluded that, from totality of circumstances and evidences, relevant traders or consumers are likely to confuse or misconceive a source of opposed mark with Google or any entity systematically or economically connected with the opponent and declared invalidation based on Article 4(1)(x) and (xv).


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

Trademark Battle: SPEC vs. SPECK

In a trademark opposition filed by Samsonite IP Holdings S.à.r.l., an owner of IR no. 1024440 for the mark “SPECK”, against Japanese TM Reg. no. 5980195 for the mark “SPEC”, the Opposition Board of Japan Patent Office (JPO) dismissed the opposition.
[Opposition case no. 2017-900373, Gazette issue date: July 27, 2018]

“SPEC”

Opposed mark “SPEC” was filed by SPEC CORPORATION, a Japanese business entity on September 3, 2015 by designating the goods of audio speakers; audio amplifiers; audio players; CD players; audio equipment to be connected with internet” in class 9.
The JPO admitted registration on September 15, 2017 and published for registration on October 10, 2017.

 

“SPECK”

Samsonite IP Holdings S.à.r.l., operating as a wholly-owned subsidiary of Samsonite International S.A., a travel luggage company, owns international TM registration no. 1024440 for the mark “SPECK” over the goods of “Protective carrying cases for portable electronic listening devices and music players, namely, MP3 players, and for global positioning systems (GPS devices), mobile and cellular telephones, and portable media players” in class 9 and it has become effective in Japan since 2012.

As a result of acquisition of Speck Products, a leading U.S. designer and distributor of slim protective cases for personal electronic devices, Samsonite extends its brand portfolio beyond its traditional strength in travel luggage products.

 

Opposition – SPEC vs. SPECK

On December 11, 2017, Samsonite IP Holdings S.à.r.l. filed an opposition and cited senior registered mark “SPECK”.
In the opposition brief, Samsonite asserted opposed mark shall be cancelled in violation of Article 4(1)(xi) of the Japan Trademark Law.
Article 4(1)(xi) is a provision to refrain from registering a junior mark which is deemed identical with, or similar to, any senior registered mark.

 

Board decision

The Opposition Board negated similarity of mark between SPEC and SPECK, stating that:

“From appearance, both marks are distinguishable by means of a fact that opposed mark does not contain “K” in the suffix position since such difference shall not be negligible in the configuration consisting of small number of letters, four or five. Conceptually, opposed mark can be perceived as a word to mean specification. Meanwhile, opponent mark does not give rise to any specific meaning. Hence, both marks are dissimilar in concept.
It is doubtless that both marks give rise to the same sound, however, distinctive gap in appearance and concept may cause consumers to recognize them as a different source indicator. If so, both marks are unlikely to cause confusion and thus deemed dissimilar.”

Based on the foregoing, the Board decided opposed mark is not subject to Article 4(1)(xi), and admitted registration as a status quo.


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

Aston Villa lost trademark battle over rampant lion emblem

In a trademark battle over rampant lion emblem, the Japan Patent Office (JPO) dismissed an opposition filed by Aston Villa Football Club Limited, one of the oldest and most successful football clubs in English football, holding that relevant consumers are unlikely to consider the opposed rampant lion device mark (see below) confusingly similar to Aston Villa’s club badge.
[Opposition case no. 2017-900318, Gazette issued date: June 29, 2018]

Rampant lion device mark

Opposed mark, consisting of a rampant lion device facing left, thrusting out its tongue, and extending its tail vertically, was filed on February 7, 2017 by designating clothing, shoes, sportswear and sports shoes in class 25 and other two classes (12 and 35).
JPO admitted trademark registration on July 28, 2017 [TM registration no. 5966695] and published it for opposition on August 22, 2017.

Trademark Opposition

Aston Villa Football Club Limited opposed registration based on Article 4(1)(xi) of the Trademark Law, asserting that opposed mark is confusingly similar to Aston Villa’s senior IR registration no. 1296488 effective in Japan for the mark of opponent’s club badge (see below).

Article 4(1)(xi) is a provision to refrain from registering a junior mark which is deemed identical with, or similar to, any senior registered mark.

Where opposed mark is considered similar to opponent mark and designated goods of opposed mark is identical with or similar to that of opponent mark, opposed mark shall be retroactively cancelled in violation of Article 4(1)(xi). In this regard, since IR no. 1296488 covers clothing, footwear, replica shirts, football boots, polo shirts, shoes for sports etc. in class 25, similarity of goods is undisputable in the case.

Board decision

The Opposition Board denied similarity between the marks on the grounds that:

  1. Regardless of similarity in basic configuration of a rampant lion facing left, there exist some distinctive features in depiction of head, tongue, ear, and tail as well as length of the legs.
  2. Rampant lion has been frequently used in heraldry. Therefore, relatively the lion design will not be a material factor in the assessment of mark similarity.
  3. Opponent mark can be perceived as a crest combining “AVFC” and rampant lion design.
  4. In the meantime, opposed mark shall not give rise to a meaning of crest, and relevant consumers with an ordinary care can easily discriminate both marks from appearance due to such distinctive features and overall impression.

Accordingly, JPO sided with opposed mark and decided it shall not be cancelled based on Article 4(1)(xi) in relation to opponent mark.


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