Partial revision of the Japan Trademark Law in force on May 27, 2019

Partial revision of the Japan Trademark Law which aims to amend the Article 31 (1) was promulgated on May 17, 2019 and takes effect on May 27, 2019.

 

Non-exclusive license for famous mark owned by public entity

Existing Trademark Law permits to register a mark which is identical with, or similar to, a famous mark representing (i) the nation, (ii) a local government, (iii) an agency thereof, (iv) a non-profit organization undertaking a business for public interest, or (v) a non-profit activity for public interest [Article 4(1)(vi)], provided that an applicant of the mark corresponds with the public entity from (i) to (iv), or an individual who is managing (v) [Article 4(2)].

 

Article 31 is a provision pertinent to “non-exclusive trademark license”.

Under the existing law, owner of trademark right (licensor) may grant a non-exclusive permission for the use of its mark to another [Article 31(1)]. In the meantime, the article has an exceptional clause and disallows a non-exclusive license for the use of registered mark which was granted based on Article 4(2).

 

New Revision

According to announcement from the Japan Patent Office, “Recently, public entity aiming to encourage regional development and collaboration with industry gets involved in necessity to advertise or promote goods or products originated from the entity. Inter alia, universities/colleges are desirous to secure financial resources, publicize achievements of academic research and increase publicity of the school by means of granting permission for the use of famous mark to a business entity”.

 

By the revision, the exceptional clause is deleted from Article 31(1).

From May 27, 2019, it enables an owner of trademark right for famous mark, i.e. (i) the nation, (ii) a local government, (iii) an agency thereof, (iv) a non-profit organization undertaking a business for public interest, or (v) an individual who manages non-profit activity for public interest, to grant “non-exclusive license” permission for the use of its famous mark.

It should be noted that the revision does not apply to “exclusive trademark license” provided in Article 30 (1). It remains impermissible. 

Giorgio Armani defeated with trademark battle over V-shaped wing device

In a recent administrative trademark decision , the Opposition Board of Japan Patent Office (JPO) dismissed an opposition filed by Giorgio Armani S.p.A against trademark registration no. 5983697 for V-shaped wing device mark on bags in class 18 due to unlikelihood of confusion.

[Opposition case no. 2017-900384, Gazette issued date: April 26, 2019]

Opposed mark

Disputed mark (see below) was applied for registration on April 24, 2017, by designating bags, wallets, suitcases, hang bags, backpacks and others of class 18 in the name of a Chinese individual.

Going through substantive examination at the Japan Patent Office (JPO), the mark was registered on September 29 of that year (TM Reg no. 5983697).

 

Armani Opposition

To oppose the mark, Giorgio Amani filed an opposition on December 22, 2017.
In the opposition brief, Armani contended that opposed mark is confusingly similar to its registered famous V-shaped wing logo in the shape of “V” letter (see below) by citing its owned IR no. 695685 and thus shall be cancelled in violation of Article 4(1)(xi), (xv) and (xix) 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.
Article 4(1)(xv) prohibits to register a trademark which is likely to cause confusion with a business of other entity.
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

To my surprise, the Opposition Board of JPO negated a certain degree of popularity and reputation of Armani V-shaped wing device mark – Armani logo, stating that produced materials are insufficient and non-objective to demonstrate famousness of the cited mark.

Besides, the Board found that both marks are sufficiently distinguishable from appearance in view of overall configuration. From phonetic and conceptual points of view, opposed mark is unlikely to give rise to any specific meaning and pronunciation as well as cited mark.If so, both marks would not be comparable from visual and conceptual points of view. By taking into consideration of above fact findings, the Board found dissimilarity of both marks and held less likelihood of confusion between the marks even if used on bags in class 18.
Based on the foregoing, the Board decided opposed mark is not subject to Article 4(1)(xi), (xv) and (xix) of the Trademark Law and dismissed the opposition totally.

Trademark trolls target New Japan era name “REIWA”

Over 1,200 applications filed for Reiwa-related trademarks in China within a month after announcement of the new Imperial era name “REIWA” by the Japanese government on April 1, 2019.

According to a search site of China’s trademark office, prior to the April 1 announcement of the era name, there was only one trademark application for the name, filed in 2017. However, 238 applications related to REIWA were filed on April 1 alone, when the new era name was announced. The number of such applications further swelled to 1,276 as of April 30.

The applicants seem to be trying to take advantage of the new era name. Those requests are for registration of names such as “Reiwado,” “Reiwaya” and “Reiwa tenka.” The applications were in a variety of fields ranging from cosmetics to food, with examples including “Reiwa beef” and “Reiwa hall.”

It is unclear whether their applications will be approved. Chinese authorities are unlikely to grant any new permission for trademark names related to REIWA.

 

Other neighbor nations (Taiwan, Korea)

According to a search site of Taiwan’s IP office, 8 applications related to REIWA were filed after announcement as of May 1.

In Korea, a search site revealed only 3 applications related to REIWA were filed in April.

Japan

48 applications related to REIWA were filed to the Japan Patent Office in three days after announcement of the new era name.

As mentioned in the previous blog article, the revised trademark guidelines to ensure trademarks do not feature any era name now clearly state that all era names, in principle, cannot be used for trademarks.
It is expected most of the applications are rejected for registration under the latest guidelines.


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

GEOGRAPHICAL INDICATION BOURBON LOSES TRADEMARK OPPOSITION

In a recent decision, the Japan Patent Office (JPO) has dismissed the opposition filed by Distilled Spirits Council of the United States (DISCUS), a US non-profit organization which represents the interests of producers and traders of spirit drinks, including Bourbon whiskey, against trademark registration no. 5927252 for the word mark “ROYCE’ BOURBON” for bourbon whiskey in class 33.

[Opposition case no. 2017-900181, Gazette issued on March 29, 2019]

 

ROYCE’ BOURBON

Opposed mark (see below) is a combination of “ROYCE” with apostrophe and “BOURBON” written in a plain roman type.

ROYCE’ BOURBON was filed in January 25, 2016 by a Japanese confectionery company, ROYCE’ Confect Co., Ltd., headquartered in Hokkaido, for bourbon whiskey in class 33.

JPO, going through substantive examination, admitted registration and published for opposition on April 4, 2017.

 

TRADEMARK OPPOSITION

On June 2, 2019, before the lapse of a two-months opposition period, DISCUS filed an opposition, arguing that the word ‘BOURBON’ in the mark applied for would allow consumers to establish a link between the geographical indication Bourbon and “bourbon whiskey”. Therefore, the use and registration of the mark by unrelated entity to Bourbon County, Kentucky (USA) would dilute and exploit the reputation of the geographical indication [Bourbon]. Opposed mark shall be prohibited from registration based on Article 4(1)(vii) of the Trademark Law as well as Article 4(1)(xvi) since the mark is likely to offend public order and cause misconception in quality.

 

BOARD DECISION

The Board admitted Bourbon is an indication of origin/geographical indication from the United States to represent an American Whiskey produced mainly in the southern part of Kentucky State. However, the Board considered opposed mark shall neither offend public order nor cause misconception in quality, stating that:

To the extent opposed mark just covers “bourbon whiskey”, appropriate use of the mark would not disorder fair deal and international trade practice. If so, the Board finds no clue to conclude the applicant adopted the mark with intentions to free ride the reputation of the geographical indication [Bourbon].

Likewise, as long as the Bourbon denomination may be used only for products manufactured in Kentucky by regulations, the designated goods “bourbon whisky” is unquestionably from the US. If so, opposed mark ROYCE’ BOURBON would not cause qualitative misconception in the minds of relevant consumers in relation to “bourbon whiskey” at all.

Based on the foregoing, the Board decided opposed mark shall not be objectionable under Article 4(1)(vii) and (xvi), and granted registration a status quo.


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