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

WTR report: The first individual in history to have filed over 100,000 trademark applications

A notorious and incredibly prolific trademark application filer in Japan, Ikuhiro Ueda, is causing headaches for brands in Japan.

As the figures below show, the rate of the filings – both using the applicant name ‘Ikuhiro Ueda’ and his legal entity name ‘Best Licensing Co’ – stepped up in 2016 and 2017, reaching 24,500 and 32,000 applications per year respectively. The sheer number of applications from Ueda accounted for 18.5% of all trademarks to the JPO in 2017, and even reached over 30% in the first two months of this year.

As the graph shows, there was a dip in 2018. This was due to an attempt from the Japanese government to quell the rate of filings from entities like Ueda. A new law, the ‘Trademark Law Revision Act of 2018’, came into force on June 9 last year and introduced stipulations that – in theory – erected a hurdle to the mass filing of trademark applications without paying fees. However, that revision was not enough to permanently slow the number of applications. As the below graph shows, applications from Ueda-related entities did significantly picked up again in December 2018.

According to CompuMark’s Robert Reading, he is now the first individual in history to have filed over 100,000 trademark applications. To put the activity into context, the table below looks at the trademark activity of the world’s largest companies – and shows Ueda comfortably out in front.

While Ueda’s trademark application portfolio is unmatched, so too is his success rate – although presumably not in the way he wants. “Amazingly, Ueda only has three registered trademarks – so just one in every 30,000 applications actually succeeds, which translates to a success rate of 0.0028%”, Reading further reveals.

(Excerpt from WTR online report dated April 11, 2019 by Tim Lance)


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

JPO decision: TESLA is dissimilarly pronounced to Tesla

In a recent appeal decision over trademark dispute, the Appeal Board of Japan Patent Office (JPO) overturned the Examiner’s refusal and held the stylized TESLA mark is dissimilarly pronounced to a senior trademark registration for the “Tesla” word mark.

[Appeal case no. 2017-650037, Gazette issue date: February 22, 2019]

 

Stylized TESLA mark

U.S. electric automaker Tesla, Inc. (formerly Tesla Motors, Inc.) filed an application with the Japan Patent Office to register stylized TESLA mark as a trademark for “Articles of clothing, namely, t-shirts, shirts, jackets, hats; headgear, namely, sports hats, caps, sun visors.” in class 25 and “Providing financial services relating to automobiles, namely, automobile financing and lease-purchase financing; financing services for the purchase and leasing of motor vehicles; lease-purchase financing; credit services, namely, providing financing for motor vehicles; providing financial advice in the field of motor vehicles.” in class 36.

 

Senior TM registration for “Tesla”

Going through substantive examination by the JPO examiner, applied mark was completely refused registration based on Article 4(1)(xi) of the Trademark Law due to a conflict with a senior trademark registration no. 5533558 for word mark “Tesla” in standard character for clothing, caps and foot wears in class 25 owned by a Korean individual.

There is criterion that the examiner is checking when assessing the similarity between the marks:

  • visual similarity
  • aural similarity
  • conceptual similarity

and taking into account all these three aspects examiner makes a decision if a mark is similar (at least to some extent) with the earlier mark and if there is a likelihood of confusion for the consumers.

Applicant filed an appeal against the refusal on June 30, 2017 and argued dissimilarity of the marks.

 

Appeal Board decision

The Board reversed the examiner’s refusal and admitted applied mark to registration by stating that:

From appearance, both marks are sufficiently distinguishable because the 2nd and last letter of applied mark are too indecipherable to be perceived as a specific term in its entirety.

As long as applied mark does not give rise to any specific sound and meaning as a whole, applied mark is incomparable with cited mark “Tesla” in the aspects of pronunciation and connotation.

Based on the foregoing and criterion to assess similarity of mark, the Board is of a view that the stylized TESLA mark shall be dissimilar to senior registration for the word mark “Tesla” even if the designated goods are deemed identical or similar in class 25.


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

HISAMITSU unsuccessful in registering a shape of “Salonpas”

The Appeal Board of Japan Patent Office (JPO) disallowed registration of a shape of famous Japanese pain relief patches in the name of “Salonpas” manufactured by Hisamitsu Pharmaceutical Co., Inc. due to lack of inherent distinctiveness in relation to poultices, class 10. [Appeal case no. 2017-12694]

Salonpas

Hisamitsu Pharmaceutical Co., Inc. filed a trademark application for a shape of Over-The-Counter Topical Pain Patch known for “Salonpas” (see below) by designating pharmaceutical preparations, gauze for dressings, bandages for dressings, adhesive plasters and other goods in class 5 [TM application no. 2015-7479].

Salonpas is a product of Hisamitsu Pharmaceutical, a company whose history dates back to the mid-1800s. Salonpas was introduced in 1934 and was first distributed in Asia. The FDA approved the Salonpas Pain Relief Patch for the US market in 2008. Approximately 20 billion Salonpas transdermal patches have been sold in the last 20 years. Salonpas has been acknowledged as World’s No.1 OTC Topical Analgesics in patch format.

 

JPO Examination

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 shape of poultices and the shape does solely consist of a common configuration to achieve the basic function of poultices. If so, the applied mark lacks distinctiveness as a source indicator.

Article 3(1)(iii) is a provision to prohibit any mark from registering where the mark solely consists of elements just to indicate, in a common manner, the place of origin, place of sale, quality, raw materials, efficacy, intended purpose, quantity, shape (including shape of packages), price, the method or time of production or use.

 

To dispute the refusal, Hisamitsu filed an appeal on August 28, 2017.

 

Appeal Board’s decision

The Appeal Board, however, upheld the examiner’s decision on the ground and dismissed Hisamitsu’s allegation by stating that relevant consumers and traders shall conceive of a mere qualitative representation to indicate the shape of poultices and plasters at the sight of applied mark given similar indications are depicted on the packages of other supplier’s goods on the market (see below).

 

Based on the foregoing, the Board consequently refused to register the mark based on Article 3(1)(iii) of the Trademark Law.


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

JPO denied registering GRAND CANYON as trademark

In a recent appeal decision, the Japan Patent Office (JPO) upheld examiner’s refusal and decided to reject trademark “GRAND CANYON” in connection with clothing and shoes of class 25 due to lack of distinctiveness. [Appeal case no. 2017-16166]

 

GRAND CANYON

UNITIKA LTD., a Japanese textile company, applied for registration of word mark “GRAND CANYON” in relation to clothing, shoes and other goods of class 25 on September 26, 2016.

JPO examiner totally refused the application due to lack of distinctiveness based on Article 3(1)(iii) of the Trademark Law by stating that THE GRAND CANYON, a steep-sided canyon carved by the Colorado River in Arizona, one of America’s most famous and awe-inspiring natural attractions, recognized by UNESCO as a World Heritage Site, has been known for a famous tourist spot. Since relevant traders and consumers in Japan are familiar with circumstances that variety of souvenirs and gifts are on sale at tourist spot, presumably consumers will consider the applied mark just as a geographical indication in connection with the designated goods, not a source indicator.

 

Article 3(1)(iii)

Article 3(1) of the Trademark Law is a provision to prohibit descriptive marks from registering.

Section (iii) of the article aims to remove any mark merely or directly suggesting quality of goods and services.

“Article 3(1) Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered, unless the trademark:

(iii) consists solely of a mark indicating, in a common manner, in the case of goods, the place of origin, place of sale, quality, raw materials, efficacy, intended purpose, quantity, shape (including shape of packages), price, the method or time of production or use, or, in the case of services, the location of provision, quality, articles to be used in such provision, efficacy, intended purpose, quantity, modes, price or method or time of provision;”

 

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

UNITIKA argued “GRAND CANYON” shall be registrable in connection with clothing by citing several trademark registrations of the name granted by the JPO. In fact, UNITIKA is an owner of trademark registration for the same mark on goods of class 24 and 25 since 2005.

 

Appeal Board’s decision

The Appeal Board, however, upheld the examiner’s decision on the ground and dismissed UNITIKA’s allegation by stating that relevant consumers and traders at the sight of applied mark depicted on clothing shall conceive of a famous World Heritage Site in US.

Existing trademark registrations for the mark “GRAND CANYON” will not affect the decision since distinctiveness of trademark is variable as time goes by – with the lapse of time.

 

Criteria for Trademark Examination Guideline

Trademark Examination Guideline (TEG) pertinent to Article 3(1)(iii) provides that where a trademark is composed of a geographical name in foreign country or sightseeing area, the mark is deemed as “the place of origin” of goods or “the place of their sale”, provided that consumers or traders generally recognize that the designated goods will be produced or sold at the place indicated by the geographical name.

Trademark Examination Manual, 413.103.01 sets forth criteria to examine trademarks related to foreign geographical name.

In the cases of (a) the name of a capital, (b) the name of a state, (c) the name of a prefecture, (d) the name of a state capital, (e) the name of a province, (f) the name of the capital of a province, (g) the name of a county, (h) the name of the capital of a prefecture, (i) a former country name, (j) an old regional name, (k) the name of a district, (l) the name of a city, or special district, (m) the name of a busy downtown street, and (n) the name of a sightseeing area, even though these names may not be directly described in a dictionary or other documents/material as the place of origin, the place of sales (location of transaction) of the goods, or the location of provision of services (location of transaction), if a factor exists that establishes a connection between the goods and the name as the place of sales (location of transaction), or the location of the provision of services (location of transaction), in principle, the trademark will be refused on the grounds that it indicates the location where the goods are sold (location of transaction) or the location of provision of services (location of transaction)


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

Who associates “Pen-Pineapple-Apple-pen” with Apple Inc.?

The Japan Patent Office (JPO) dismissed an opposition filed by Apple Incorporated, a US corporation, against TM Registration no. 6031236 for word mark “Pen Pineapple Apple Pen” written in alphabets and Katakana characters, and allowed the mark to remain valid. [case no. 2018-900165]

 

Opposed mark : Pen-Pineapple-Apple-Pen

Avex Inc., a Japanese company, filed the mark to the JPO on February 24, 2017 over various kinds of goods/services in class 3,9,14,16,18,20,21,24,25,28,30,32,41,43 (14 classes in total). The JPO admitted registration on March 30, 2018.

 

Opposition by Apple Inc.

Apple Inc., an US multinational IT company, filed an opposition based on Article 4(1)(xi), (xv) and (xix) of the Trademark Law by asserting opposed mark is deemed similar to opponent famous trademark “Apple”, “Apple Pay” and “Apple Pencil”, likely to cause confusion with opponent’s business when used on designated goods and services. Besides, opposed mark was seemingly adopted with an intention to freeride good-will bestowed on opponent famous trademarks.

Article 4(1)(xi) prohibits from registering a junior mark identical or similar to senior registered mark on identical or similar goods/service.
Article 4(1)(xv) prohibits any junior mark likely to cause confusion with others.
Article 4(1)(xix)
  prohibits a junior mark identical or similar to others’ famous mark with a malicious intention.
The provisions are available as cause of claims underlying  an opposition when registered in error.

 

JPO decision

The Opposition Board of JPO held opposed mark shall NOT be revocable in accordance with the articles by stating that:

“Opposed mark, solely consisting of literal elements with same size and same font, gives rise to a pronunciation of ‘pen pineapple apple pen’ as a whole. Regardless of slight verbosity, relevant consumers will surely connect the mark with viral hit song “Pen-Pineapple-Apple-Pen or PPAP” by PIKOTARO, internet sensation from Japan, which has become known among the general public remarkably. If so, opposed mark merely gives rise to a meaning of PIKOTARO’s song.  Therefore, opposed mark shall be deemed dissimilar to opponent trademarks from visual, phonetic and conceptual points of view.

The Board admits a high degree of reputation or popularity of “APPLE” as a source indicator of opponent’s business in connection with PC, its accessories, software and smartphones, however, provided that both marks are distinctively dissimilar and ‘APPLE’ is a dictionary word commonly known among relevant public to mean the round, red or yellow, edible fruit of a small tree, the Board considers it is unlikely that relevant consumers and traders would confuse or associate opposed mark with opponent’s mark “APPLE”.

Besides, opponent alleged that PIKOTARO might compose the song inspired by “APPLE PENCIL” and ludicrously promoted with an intention of free-riding opponent’s goodwill. However, the Board was unable to find out any fact to assume malicious intention of the free-riding by applicant from the totality of the circumstances.”


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

IP High Court ruling: “BULK AAA” is confusingly similar to “BULK HOMME”

On March 7, 2019, the Japan IP High Court revoked a decision by the Japan Patent Office (JPO) to invalidation trial over a dispute of similarity between trademark “BULK AAA” and “BULK HOMME”, ruled “BULLK AAA” shall be retroactively invalid. [Judicial case no. Heise30(Gyo-ke)10141]

 

BULK HOMME

The case was brought into the IP High Court after the JPO decided to dismiss an invalidation trail (case no. 2017-890079) claimed by BULK HOMME Co., Ltd. (Plaintiff), an owner of senior trademark registration no. 5738351 for the mark combined “BULK HOMME” with other literal elements (see below) over goods of cosmetics and skin care products for men in class 3.

 

INVALIDATION TRIAL AGAINST “BULK AAA”

In the invalidation trial, plaintiff asserted trademark registration no. 5931607 for word mark “BULK AAA” in standard character shall be invalid in violation of Article 4(1)(xi) of the Trademark Law since the mark is confusingly similar to “BULK HOMME” and designates cosmetics (class 3) which is undoubtedly identical with or similar to the goods designated under its own senior registration.

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

Inter alia, plaintiff strongly argued the term “AAA” in disputed mark lacks distinctiveness as a source indicator in relation to cosmetics since “AAA” is a term commonly known to represent the highest possible rating assigned to the bonds of an issuer by credit rating agencies. Given the circumstance, relevant consumes of cosmetics are likely to consider the term in disputed mark a qualitative indication of the goods even if the term has not been used as such indication in connection with cosmetics in fact.

However, the Trial Board of JPO set aside the allegation by stating that disputed mark “BULK AAA” shall be assessed in its entirety. It is groundless to compare a word portion “BULK” of disputed mark with “BULK HOMME” given the Board could not identify any facts to assume relevant consumers of cosmetics conceive the term “AAA” of disputed mark as a qualitative indication. Both marks are sufficiently distinguishable from visual, phonetic, and conceptual points of view and dissimilar as a whole.

To contend against the decision, plaintiff filed an appeal to the IP High Court.

 

IP HIGH COURT DECISION

The IP High Court, to the contrary, sided with plaintiff and completely negated fact-findings made by the Trial Board of JPO. The Court held the term “AAA” is recognized as a qualitative indication even when used on cosmetics and thus the word portion of “BULK” is likely to play a dominant role of source indicator. If so, it is never inappropriate to pick up the word “BULK” from disputed mark and compare it with other mark in the assessment of mark similarity.

Besides, “HOMME” is a French term meaning “for men”. From the produced evidences, it seems apparent the term has been used in relation to men’s cosmetics, and consumers are accustomed to it and recognize the meaning. Given the term is depicted in a thinner font than “BULK” in the citation, “BULK” gives dominant impression as a source indicator in the mind of consumers. Accordingly, it is reasonable to pick up the word “BULK” from the citation and compare it with other mark in the assessment of mark similarity.

The Court found that the Trial Board materially erred in the fact-finding and assessing similarity of mark. As long as dominant portion “BULK” of both marks and designated goods are identical, disputed mark shall be invalid based on Article 4(1)(xi).


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

Trademark Opposition: “DISCOVERY” vs. “DISCOVERER”

In a recent administrative decision to trademark opposition filed by Jaguar Land Rover Limited who alleged trademark registration no. 6011666 for word mark “DISCOVERER” designating goods of “batteries and cells, telecommunication machines and apparatus, recorded video discs, and other goods” belonging to class 9 owned by a Japanese business entity is confusingly similar to “DISCOVERY” famous for four-wheel-drive vehicles produced by the opponent, the Opposition Board of Japan Patent Office (JPO) dismissed the opposition due to an unlikelihood of confusion.

[Opposition case no. 2018-900086, Gazette issue date: January 25, 2019]

 

Opposed mark – DISCOVERER

Opposed mark (trademark registration no. 6100666) just consists of a term “DISCOVERER” in a plain roman type and its transliteration in a Japanese katakana character.

The mark was filed on April 24, 2017 by designating “batteries and cells, telecommunication machines and apparatus, recorded video discs, and other goods” belonging to class 9.

JPO, going through substantive examination, admitted registration and published for opposition on February 13, 2018.

 

Opposition by Land Rover “DISCOVERY”

On April 6, 2018, before the lapse of a two-months opposition period, Jaguar Land Rover Limited filed an opposition, stating that relevant consumers are likely to confuse or misconceive opposed mark with opponent or any business entity systematically or economically connected with Land Rover due to high popularity of “DISCOVERY” for Land Rover SUV and similarity between “DISCOVERY” and “DISCOVERER”.

 

Article 4(1)(xv)

Jaguar Land Rover sought to retroactively cancel opposed mark in relation to all designated goods in class 9 based on Article 4(1)(xv) of the Trademark Law.

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.

 

Board decision

The Board negated a certain degree of popularity and reputation of opponent mark “DISCOVERY”, 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 visual, phonetic and conceptual points of view and deemed dissimilar.

Even if car makers are looking at ways to speed up development of self-driving and recent cars consist of batteries and telecommunication apparatus in fact, given non-originality of opponent “DISCOVERY” mark and remoteness between opposed goods and vehicles, the Board held that relevant consumers of opposed goods are unlikely to confuse or associate “DISCOVERER” with opponent or any business entity systematically or economically connected with Jaguar Land Rover Limited.

Thus, opposed mark shall not be revocable to Article 4(1)(xv) of the Trademark Law and dismissed the opposition entirely.


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