Trademark Dispute over Pendant Lamp Shade

In a decision to the invalidation trial claimed by LUIS POULSEN A/S, a Danish company, the Trial Board of Japan Patent Office (JPO) upheld the petition and invalidated TM registration no. 5643726 for a combination mark containing the pendant lamp shade design (see below) in violation of Article 4(1)(xix) of the Trademark Law.
[Invalidation case no. 2017-890003, Gazette issue date: September 28, 2018]

 

Disputed mark

Disputed mark, consisting of a literal element “R&M Interior Store”, “R&M” logo in the shape of shield and the pendant lamp shade design (see below), was filed on June 14, 2013 by a Japanese business entity, designating wholesale or retail services for lighting apparatus and others in class 35.

Going through substantive examination, the JPO admitted registration on January 17, 2014. Three years after the registration, LUIS POULSEN A/S filed an invalidation action against disputed mark on January 4, 2017.

 

Invalidation trial

During the invalidation trial, LUIS POULSEN A/S argued disputed mark shall be invalidation based on Article 4(1)(xix) since the applicant filed the mark, confusingly similar to trademark registration no. 5825191 for 3D mark in the shape of unique pendant lamp shade (see below) well-known for “PH5” created by a Danish designer Poul Henningsen, with a malicious intention to damage claimant.

According to supporting evidence produced to the trial, “PH5” lamp was originally designed in 1958. It has been promoted for sale in the marketplace of Japan since 1976. More than 500,000 lamps have been produced and sold around the globe. To bolster its reputation, LUIS POULSEN submitted a written declaration by Danish Ambassador to Japan. Besides, 3D shape of “PH5” lamp shade is successfully registered by finding acquired distinctiveness as a result of substantial use and uniqueness finally to serve as a source indicator (TM Registration no. 5825191).


Article 4(1)(xix)
 prohibits to register a trademark which is identical with, or similar to, other entity’s famous mark, if such trademark is aimed for unfair purposes, e.g. gaining unfair profits, or causing damage to the entity.

 

Board decision

The Board found that:

  1. 3D shape of “PH5” lamp has become famous as a source indicator of LUIS POULSEN among relevant domestic consumers well before the filing date of disputed mark as a result of continuous marketing activities in Japan since 1976.
  2. In the assessment of trademark similarity, it is unquestionable that the pendant lamp shade design depicted in disputed mark closely resembles “PH5”. From overall appearance, relevant consumers and traders will conceive the portion of the pendant lamp shade design plays a dominant role in disputed mark.
  3. The fact that applicant promoted similar lamp shade as “reproduct” or “generic product” of “PH5” convinces us that applicant has been aware of prospective controversy and causing damage to business interest of LUIS POULSEN.

Based on the above findings, the Board concluded that applicant filed a similar mark to “PH5” well-known for a pendant lamp shade of LUIS POULSEN with a malicious intention to gain unfair profits or cause damage to claimant. Thus, disputed mark shall be invalidated in violation of Article 4(1)(xix) of the Trademark Law.


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

Apple successful in a trademark opposition to block “PriPhone”

Apple Inc. achieved a victory over trademark battle involving famous “iPhone”.
In a recent trademark opposition, case no. 2017-900319, the Opposition Board of Japan Patent Office (JPO) decided in favor of Apple Inc. to cancel trademark registration no. 5967983 for word mark “PriPhone” due to a likelihood of confusion with Apple’s famous “iPhone”.

“PriPhone”

Opposed mark “PriPhone” was filed by a Japanese business entity on December 26, 2016 by designating the goods of “mobile phones; smart phones; downloadable image and music files; telecommunication machines and apparatus; electronics machines, apparatus and their parts” in class 9.
The JPO admitted registration on July 28, 2017 and published for registration on August 22, 2017.

Apple’s Opposition

To oppose the registration, Apple Inc. filed an opposition against “PriPhone” on October 20, 2017.

In the opposition brief, Apple Inc. asserted the opposed mark shall be cancelled in violation of Article 4(1)(xv) of the Japan Trademark Law given a remarkable reputation of opponent mark “iPhone” since nearly a quarter of Japanese have favorably used iPhone as a personal device to connect with internet.
Apple argued the opposed registrant knowingly included famous “iPhone” trademark on the ground that the company promotes protective cases, covers for iPhone.

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 consumers. Theoretically, Article 4(1)(xv) is applicable to the case where both marks are dissimilar, but likely to cause confusion among relevant consumers because of a related impression attributable to reputation of the well-known mark.

Board Decision

The Opposition Board admitted a remarkable degree of reputation and popularity of opponent trademark “iPhone” among general consumers which occupies the highest share (54.1% in 2012) of the smart phone market for past five years consecutively.

In the assessment of mark similarity, the Board found “PriPhone” would be perceived containing “iPhone” in the mark, provided that “iPhone”, as a coined word, is deemed a unique and famous trademark. Besides, in view of close connection between smart phones and the goods in question, similarity with respect to consumers, it is undeniable that relevant consumers with an ordinary care are likely to conceive “iPhone” from opposed mark when used on goods in question.

Based on the foregoing, the Board decided that relevant consumers 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

Japan IP High Court: Cancellation of trademark right due to inappropriate use by licensee

The IP High Court ruled on September 26, 2018 to totally cancel TM Reg. No. 1809362 for the mark “TOP-SIDER” on the ground that use of the registered mark by licensee is likely to cause confusion with goods from a business entity other than trademark owner.
[Case no. Heisei30(Gyo-ke)10053]

TM Registration – “TOP-SIDER”

Registered mark in question, consisting of the word “TOP-SIDER” written in plain Gothic font (see below), was registered in 1985 over the goods of clothing, coats, shirts and others in class 25 and  has been validly renewed over three decades .

Licensee’s Use

Mizujin  Co., Ltd, a  non-exclusive licensee of the registered mark in question, used “TOP-SIDER” logo on T-shirts (see below).

Sperry Top-Sider

Sperry Top-Sider LLC, a US business entity, famous for “Sperry Top-Sider” deck shoes, filed a cancellation trial against the registration based on Article 53 of the Japan Trademark Law and argued that above use by Mizujin shall be inappropriate since it is likely to cause confusion with “Sperry Top-Sider”.

Cancellation trial based on Article 53

JPO sided with Sperry and decided to entirely cancel the registration. To contend, trademark owner appealed to the IP High Court and alleged cancellation of the decision.

Article 53 of the Trademark Law provides that trademark right is subject to cancellation if use of the mark by licensee causes confusion with respect to another’s business and trademark owner is liable for failure to supervise with an ordinary care.

IP High Court decision

The IP High Court upheld the JPO decision, stating that:

  1. Apparently from totality of the circumstances, trademark owner must have noticed above use by Mizujin.
  2. ”TOP-SIDER” logo contains figurative elements to be seen as cloud and yacht, and looks quite similar to the Sperry mark.
  3. “Sperry Top-Sider” logo has become well-known for Sperry’s deck shoes among traders and general consumers.
  4. Since T-shirts and shoes are offered for sale to wear at same apparel shops, they are closely related with each other in view of sales channel as well as consumers.
  5. Thus, the Court finds that above use by licensee is likely to cause confusion with respect to Sperry business on deck shoes.

It is noteworthy that trademark owner is entitled to grant a licensee the right to use registered mark, however, by doing so , it enhances a risk to lose trademark right if he is careless to supervise the licensee’s inappropriate use and cause confusion.

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

Apple Inc. Lost Trademark Opposition to “SMAPPLE” in Japan

The Japan Patent Office dismissed a trademark opposition claimed by the U.S. tech giant, Apple Inc. against trademark registration no. 5987344 for word mark “SMAPPLE” in class 9 and 37 by finding less likelihood of confusion with Apple.
[Opposition case no. 2018-900006]

“SMAPPLE”

Opposed mark “SMAPPLE” was filed by a Japanese business entity on March 13, 2017 by designating mobile phones in class 9 and repair or maintenance service of mobile phones in class 37.
Going through substantive examination, the JPO admitted registration on September 15, 2017 and published for registration on November 7, 2017.

Apple’s Opposition

To oppose against registration, Apple Inc. filed an opposition on January 5, 2018.

In the opposition brief, Apple Inc. asserted the opposed mark shall be cancelled in violation of Article 4(1)(xv) of the Japan Trademark Law given a remarkable reputation of opponent mark “APPLE” in the business field of computers, smart phones, tablets, and any related business.
Apple argued the first two letters of “SM” is descriptive in connection with repair and maintenance service since it is conceived as an abbreviation of “service mark”, to my surprise. In addition, as long as the term “SMAPPLE” is not a dictionary word, relevant consumers at the sight of the term are likely to consider that the opposed mark consists of “SM” and “APPLE”.

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 consumers. Theoretically, Article 4(1)(xv) is applicable to the case where both marks are dissimilar, but likely to cause confusion among relevant consumers because of a related impression attributable to reputation of the well-known mark.

Board Decision

The Opposition Board admitted a remarkable degree of reputation and popularity of opponent trademark “Apple” in the business field to manufacture and distribute computers, smart phones, audio devices and mobiles phones etc., however, gave a negative view in relation to repair or maintenance service of mobile phones by taking account of insufficient evidences Apple Inc. produced to the Board.

Besides, in the assessment of mark similarity, the Board found “SMAPPLE” and “Apple” are totally dissimilar since they are sufficiently distinguishable in visual, phonetic, and conceptual point of view. The Board also questioned Apple’s argument the first two letters of “SM” does imply a meaning of service mark. If so, it is not permissible to separate a element of “APPLE” from the opposed mark. The mark shall be compared in its entirety. As long as “APPLE” is a familiar English term among relevant public to mean a round fruit with red or green skin and a whitish inside, the term shall not be deemed a coined word.

Based on the foregoing, the Board decided that relevant consumers are unlikely to confuse or misconceive a source of the opposed mark with Apple Inc. or any entity systematically or economically connected with the opponent.


I feel the opposed mark rather gives rise to a connotation of “smart apple”, than “service mark” and “apple”.
“Service mark” is not commonly used in our daily life unless he or she has a knowledge of IP law (LOL).

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