Is “VEGAS” an abbreviation for Las Vegas, or a source indicator?

In a trademark opposition disputing over abbreviation for ‘Las Vegas’, the Japan Patent Office (JPO) decided the term “VEGAS” shall be distinctive in connection with a service of providing amusement facilities (casino facilities, Pachinko parlors) of class 41.
[Opposition case no. 2018-900349, Gazette issue date: August 30, 2019]

VEGAS

Opposed mark is a word mark “VEGAS” in a plain gothic type.

The mark was filed in December 26, 2017 by a Japanese entertainment company, VEGASVEGAS Co., Ltd., headquartered in Tokyo, for various services in class 41 including providing casino (gambling) facilities, Pachinko parlors.

JPO, going through substantive examination, admitted registration (TM Registration no. 6080858) and published for opposition on October 9, 2018.

TRADEMARK OPPOSITION – Article 3(1)(iii)

On November 26, 2018, before the lapse of a two-months opposition period, DAIHACHI Co., Ltd. (d/b/a VEGAS GROUP), an amusement company, operating Pachinko & slot machine parlors in the name of VEGAS, filed an opposition, arguing that the word ‘VEGAS’ has been known among relevant consumers for an abbreviation for Las Vegas, the gamblers’ paradise, a trendy tourist destination, the entertainment capital of the world.

If so, it shall be forbidden to allow exclusive use of famous geographical indication by trademark right. Besides, consumers at the sight of opposed mark would establish a link between the geographical indication Las Vegas and “amusement facilities, casino (gambling) facilities and Pachinko parlors” and just conceive the facilities using opposed mark are connected with or equivalent to services available in Las Vegas Nevada (US).

Therefore, it is evident that opposed mark lacks distinctiveness in connection with the designated service of providing amusement facilities (casino facilities, Pachinko parlors) of class 41 and shall be revocable under Article 3(1)(iii) of the Trademark Law.

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;”

OPPOSITION DECISION

JPO Opposition Board totally dismissed the opposition by stating that:

  1. From the produced evidences, it is unclear whether ‘VEGAS’ becomes ordinary indication for Las Vegas in Nevada, US.
  2. The Board could not find circumstances and business practices related to the service in dispute that ‘VEGAS’ has been used to indicate a specific quality of the service or an association with Las Vegas at all.
  3. A mere fact that ‘VEGAS’ reminds consumers of Las Vegas is insufficient to negate distinctiveness of opposed mark in connection with the service in dispute.

Based on the foregoing, the JPO decided opposed mark shall play a part of source indicator over the service in class 41 and irrevocable under Article 3(1)(iii) of the Trademark Law.


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

Adidas unsuccessful in an attempt to prevent trademark protection for two-stripes

The Opposition Board of Japan Patent Office (JPO) held in an opposition filed by Adidas AG that trademark registration no. 6016240 for two-stripes device (Opposed mark) shall remain as valid as ever and entirely dismissed Adidas’ claims based on its famous three stripes.[Opposition case no. 2018-900100, Gazette issued on August 30, 2019]

Opposed mark

Opposed mark (see below) was applied for registration on June 16, 2016 over shoes in class 25 by Marubeni Footwear, a Japanese business entity, and published for registration on February 27, 2018.

Opposition by Adidas

On April 24, 2018, Adidas AG filed an opposition and argued opposed mark is revocable under Article 4(1)(vii) and 4(1)(xv) of the Japan Trademark Law in relation to its famous three stripes (see below).

Article 4(1)(vii)

Article 4(1)(vii) prohibits any mark likely to offend public order and morals from registering.

Trademark Examination Guidelines set forth criteria for the article and examples.
Among others, “Trademarks whose registration is contrary to the order predetermined under the Trademark Act and is utterly unacceptable for lack of social reasonableness in the background to the filing of an application for trademark registration.”

Based on a remarkable degree of reputation and popularity to Adidas three stripes, opponent asserted, applicant must have been aware of Adidas three stripes and filed opposed mark with a malicious intention to take advantage of the reputation and credit of opponent’s famous trademark and impair the goodwill embodied on its iconic three stripes.

Article 4(1)(xv)

Article 4(1)(xv) prohibits to register a trademark which is likely to cause confusion with a business of other entity.

Adidas argued that, from appearance, opposed mark evidently gives rise to a same impression with Adidas three stripes since each stripe of the mark is depicted in the same direction, width and shape, besides a space between stripe also has the same width with the stripe.

Given opponent mark has been substantially used in various colors, length, and configurations, average consumers with an ordinary care of shoes who have been quite familiar with Adidas are likely to associate opposed mark with Adidas’ three-stripes. Inter alia, when each stripe of opposed mark is used in different color on side upper sole and a space between the stripes (upper sole fabric) has other color, and thus opposed mark looks like depicting three stripes on shoes, it is highly anticipated that relevant consumers would confuse its source with opponent.

Opposition decision

The Opposition Board admitted a high degree of reputation and popularity to Adidas three stripes in relation to sport shoes, sportswear, sports gear at the time of initial filing and registration of opposed mark.

In the meantime, the Board found a low degree of originality of three stripes and similarity between the marks, from visual, phonetic, and conceptual points of view since opposed mark can be clearly perceived as ‘two-stripes’. Even if Adidas three stripes has acquired remarkable reputation, average consumers of sports shoes would not mistake two stripes for three stripes in purchasing shoes with opposed mark.
If so, the Board believes it is unlikely that relevant consumers confuse or associate opposed mark with Adidas.

The Board also negated opponent’s allegation of a possible ‘three-stripes’ appearance under specific color combination by stating that opposed mark is nothing but a two-stripes design mark. The space in between two stripes does not constitute opposed mark. If so, the allegation shall be irrelevant to the case.

Besides, from the produced evidences, the Board found it was not foreseen a circumstance to offend public order and morals from registering opposed mark and give harmful effect to the international faith.

Based on the foregoing, the Board concluded opposed mark shall not be revocable under Article 4(1)(vii) as well as (xv) and granted registration a status quo.


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

Fashion Designer in trademark fight over his name

On August 7, 2019, the Japan IP High Court ruled to dismiss an appeal by Ken Kikuchi, a Japanese jewelry designer, who contested a decision by the Japan Patent Office (JPO) to deny trademark registration for a composite mark consisting of a word “KEN KIKUCHI” with an eagle device under Article 4(1)(viii) of the Trademark Law.
[Judicial case no. Heisei31(Gyo-ke)10037]

KEN KIKUCHI

Disputed mark (see below) was filed by Ken Kikuchi on May 23 ,2017 covering various goods in class 14, 18 and 25 including jewelry and accessories. [TM application no. 2017-69467]

Since 2000, Ken Kikuchi allegedly has been designing and manufacturing affordable elaborate silver jewelry under the brand of his name “KEN KIKUCHI”. As a result of business expansion (14 brick-and-mortar stores in Japan, 4 stores in foreign counties) and advertisements from television, magazines, the designer’s name has acquired better reputation in the industry.

Refusal decision by JPO

The Japan Patent Office (JPO) refused the mark based on Article 4(1)(viii) of the Trademark Law, on the ground that the literal element of disputed mark can be perceived to identify a private individual named “Ken Kikuchi”. According to white pages, evidently there exist several Japanese people with the same name. If so, disputed mark shall not be allowed for registration since it contains a name of living person per se.

Article 4(1)(viii)

Article 4(1)(viii) of the Trademark Law prohibits registration of trademarks which contain the representation or name of any person, famous pseudonym, professional name or pen name of another person, or famous abbreviation thereof. Notwithstanding the provision, the article is not applicable where the applicant of disputed mark produces the written consent of the person.

The Supreme Court of Japan has ruled the article shall be interpreted to protect personal rights of a living individual. In line with the Supreme Court ruling, Trademark Examination Manuals (TEM) set forth that the article is applicable not only to natural persons (including foreigners) and corporations but also associations without capacity.

The Appeal Board of JPO also sided with the examiner’s refusal on the same ground. [Appeal case no. 2018-7529]

To contest the administrative decision, the designer filed an appeal to the IP High Court on March 25, 2019

IP High Court Ruling

The court dismissed the allegation entirely, by stating that:

  1. “KEN” and “KIKUCHI” are both commonly used names to Japanese people.
  2. Literal elements of disputed mark shall be perceived as a name of person even if the name is written in alphabet, given it has become popular to write a full name on the passport, credit card and others in alphabet.
  3. Article 4(1)(viii) shall be construed to comprehend a name of person written in alphabet.
  4. It is not relevant to consider reputation of disputed mark in applying the article since it aims to protect personal rights of a living individual.
  5. Irrespective of the fact that a person named “Ken Kikuchi” surely exists, applicant failed to prove consent from the person.

Based on the foregoing, the IP High Court sided with the JPO and upheld the refusal decision.


 

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

PUMA’s Fight Against Logo Parody

On August 1, 2019, the Japan Patent Office (JPO) decided to invalidate trademark registration no. 5861923 for composite mark consisting of a word “KUMA”, which means ‘bear’ in Japanese, and the bear device by finding a likelihood of confusion with a world-renowned sports brand, PUMA and detrimental effect to public policy or morality.
[Invalidation case no. 2019-890001]

KUMA device mark

Disputed mark (see below) was filed on January 7, 2016 by a Japanese business entity in Hokkaido, Japan’s most northerly main island, an otherworldly volcanic land with eastern Asia’s highest concentration of brown bears, over various goods in class 25 including sportswear and shoes.

Precedently, applicant applied for registration of following trademarks, consist of four alphabets in bold font and an animal silhouette facing left depicted in the upper right of the alphabets, on goods in classes 9, 14, 16, 24, 25 and 28, but in vain.

“UUMA” means ‘horse’, “BUTA” means ‘pig’, “KUMA” means ‘bear’ in Japanese. It is obvious that both literal element and figurative element of respective mark give rise to a same meaning, which is the same for PUMA.

It is likely the applicant intended to use these marks on souvenirs from Hokkaido since we get accustomed to see scenes at a famous tourist spot that T-shirts and other small items displayed at gift shops parody famous brands by featuring local specialty to attract tourists for fun.

PUMA’s Opposition / Invalidation Trial

On September 26, 2016, PUMA SE filed an opposition against the KUMA mark based on Article 4(1)(vii) and 4(1)(xv) of the Trademark Law. PUMA argued relevant consumers or traders are likely to confuse or misconceive a source of disputed mark with PUMA when used on designated goods in class 25 because of a high reputation and close resemblance between PUMA logo and the KUMA mark.

The Opposition Board admitted a high degree of popularity and reputation of PUMA logo, however, the Board dismissed the opposition entirely due to unlikelihood of confusion as a result of low degree of similarity between the marks (Opposition case no. 2016-900308).

Subsequently, PUMA SE entrusted the case to MARKS IP LAW FIRM. On New Year’s Eve of 2018, MARKS IP LAW FIRM on behalf of PUMA SE requested for an invalidation trial and sought to annul the KUMA mark on the same grounds.

Invalidation Decision

The Invalidation Board reversed the opposition decision and decided in favor of PUMA by finding that:

  1. PUMA logo has been continuously famous as a source indicator of PUMA in connection with sports shoes, sportswear and others among relevant consumers and traders in Japan.
  2. Configuration of PUMA logo looks unique, creative, and impressive in itself.
  3. Regardless of visual difference in detail between the marks, overall impression of both marks is quite similar.
  4. Given close association between designated goods in class 25 and PUMA business, relevant consumers of the goods with an ordinary care are likely to confuse its source with PUMA
  5. Besides, it is presumed the current registrant of disputed mark was knowingly assigned a similar KUMA mark that applicant had a fraudulent intent to free-ride and dilute PUMA’s goodwill.
  6. If so, current registrant must have filed disputed mark with a fraudulent intention to dilute or do harm to PUMA’s goodwill given a close resemblance of between disputed mark and a rejected KUMA mark (see above right).

Based on the foregoing, the JPO decided to invalidate disputed marks based on Article 4(1)(xv) as well as 4(1)(vii) of the Japan Trademark Law.


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

SISLEY lose trademark opposition over SOIR DE LUNE

In a recent trademark opposition, the Opposition Board of the Japan Patent Office (JPO) held a junior trademark registration no. 6041076 for word mark “LunaSoir” is dissimilar to a senior IR registration no. 845029 for word mark “SOIR DE LUNE”, one of fragrance brands by SISLEY, a French producer of cosmetics and fragrances, even when used on fragrance in class 3
[Opposition case no. 2018-900194, Gazette issue date: July 26, 2019]

LunaSoir

Opposed mark (see below) was applied for registration on July 31, 2017 by designating soaps, perfumery, cosmetics and others in class, and published for registration on June 5, 2018 without any office action from the JPO examiner.

SISLEY – SOIR DE LUNE

Opponent, SISLEY, a French producer of cosmetics and fragrances, claimed that the opposed mark “LunaSoir” shall be cancelled under Article 4(1)(xi) of the Japan Trademark Law by citing a senior trademark registration for word mark “SOIR DE LUNE”covering soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices in class 3.

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.

SISLEY argued both marks give rise to a same meaning of “moon night” given “Luna” and “LUNE mean “moon” in Latin and French respectively, “SOIR” means “night” in French, and “DE” corresponds to “of” in English. If so, both marks are likely to cause confusion from a conceptual point of view.

Board Decision

In the decision, the Board decided that “LunaSoir” and “SOIR DE LUNA” are both dissimilar in appearance, pronunciation as well as concept.

The Board assessed, by taking into consideration a relatively low level of knowledge to Latin and French language among relevant consumers with an ordinary care, opposed mark consisting of “Luna” and “Soir” would not give rise to any specific meaning at all.
Based on the fact finding, the Board concluded that opposed mark “LunaSoir” is obviously dissimilar to SISLEY’s fragrance brand “SOIR DE LUNE” from concept, needless to say appearance and pronunciation.

It is noteworthy to a brand owner from non-English speaking nations that conceptual similarity would not play a defensive role to prevent free-riding and enjoy a broader scope of protection against use by others where the brand contains a non-English term unfamiliar to Japanese.


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

Trademark Opposition: “VISA” vs. “V-ISA”

The Opposition Board of Japan Patent Office (JPO) dismissed an opposition filed by a global payments technology company, Visa International Service Association (VISA) against trademark registration no. 6077944 for a word mark “V-ISA” due to unlikelihood of confusion with VISA’s famous service mark “VISA”.
[Opposition case no. 2018-900365, Gazette issued date: July 26, 2019]

Opposed mark

Opposed mark, consisting of a word mark “V-ISA” in standard character, was filed in the name of Machine Vision Lighting Inc., a Japanese company deploying in business field of lighting apparatus.

The mark was filed to JPO on November 3, 2017. Going through substantive examination, JPO admitted registration over the goods of “lighting apparatus” in class 11 and published for opposition on October 2, 2018.

Opposition by VISA

To oppose the mark, Visa International Service Association filed an opposition on December 3, 2018.

VISA argued that opponent has use the mark “VISA” since 1976 as a tradename of credit card company and unquestionably it has become famous in Japan as source indicator of opponent business. Besides, opposed mark “V-ISA” gives rise to a pronunciation ‘viː.zə’ just like with “VISA”. Therefore, both marks are identical or similar in phonetic and visual point of view. Nowadays, in the age of global e-commerce, consumers are accustomed to purchase various goods and services by means of credit card payment. Under the circumstance, opponent business gets all the more associated with a wide variety of goods or service traded via e-commerce. If so, relevant consumers and traders of lighting apparatus are likely to confuse opposed mark with famous service mark “VISA”.

Accordingly, VISA alleged that opposed mark “V-ISA” shall be retroactively cancelled in violation of Article 4(1)(xv) of the Japan Trademark Law.

Article 4(1)(xv)

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 Opposition Board did not question a remarkable degree of popularity and reputation of mark “VISA” in relation to credit card payment as a source indicator of opponent business.

In the meantime, the Board emphasized the term “VISA” is not a coined word, having its original meaning as an official mark, usually made in a passport, that allows you to enter or leave a particular country. Besides, the Board considered both marks are distinctively dissimilar by stating that:

From appearance, even if opposed mark “V-ISA” consists of the same literal elements with opponent mark “VISA”, they are visually distinguishable because of a hyphen (-).

Opposed mark just gives rise to pronunciation of ‘vui-isa’ or ‘vui-ai-esu-ei”. If so, the pronunciations are clearly dissimilar to ‘viː.zə’ of opponent mark.

Given opposed mark does not give rise to any specific meaning, both marks are not comparable in concept.

Since “lighting apparatus” in class 11 is obviously dissimilar to and less associated with opponent business, relevant consumers with an ordinary care would not conceive of opponent mark at the sight of opposed mark.

Based on the foregoing, the Board concluded that relevant consumers and traders are unlikely to confuse opposed mark with VISA or any business entity systematically or economically connected with opponent.

Thus, opposed mark shall not be cancelled based on Article 4(1)(xv), and remains valid as a status quo.


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

Patagonia Victorious in Trademark Battle

The Trial Board of Japan Patent Office (JPO) recently upheld an invalidation petition by US outdoor apparel company, Patagonia Inc. against TM Reg. no. 6028801 for the “royalwest” mark in combination with figurative elements due to a likelihood of confusion with Patagonia logo.
[Invalidation case no. 2018-890048, Gazette issue date: June 28, 2019]

TM Registration no.6028801

Disputed mark, consisting of a word “royalwest” and figurative elements (see below left), was applied for registration on April 13, 2017 in respect of apparels and other goods in class 25.

Without confronting with a refusal during substantive examination, disputed mark was registered on March 23, 2018.

Petition for invalidation

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

US outdoor apparel company Patagonia Incorporated filed a petition for invalidation against disputed mark on June 29, 2018. Patagonia argued it shall be invalidated due to similarity to an owned senior trademark registration no. 5891980 for the Patagonia mark with figurative elements depicting mountain landscape and sky in blue, purple and orange color (see above right), and a likelihood of confusion with its famous brand when used on designated goods in class 25 based on Article 4(1)(xi) and (xv) of the Trademark Law.

Board decision

At the outset, the Board admitted the Patagonia logo has acquired a high degree of popularity and reputation as a source indicator of Patagonia Inc. among relevant consumers in connection with outdoor goods.

In assessing similarity of both marks, the Board found that a literal element of respective mark is unquestionably dissimilar. However, even if both marks give rise to a different pronunciation and concept, by taking account of similar factors: (1) coloring of the sky, (2) font design and size, (3) rectangular outline, (4) black silhouette with a white border line, (5) configuration and proportion of respective elements, and balancing them comprehensively, relevant consumers with an ordinary care at the sight of both marks would conceive a same impression from appearance and associate disputed mark with Patagonia. If so, it is obvious that visual similarity plays a key role in the assessment. A phonetic and conceptual difference arising from literal element is insufficient to negate similarity between the marks in its entirety.

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 disputed mark with Patagonia or any entity systematically or economically connected with the opponent when used on apparels and any other designated goods in class 25 and declared invalidation based on Article 4(1)(xi) and (xv).


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

Trademark Opposition: “iPhone” versus “SAIPHONE”

The Japan Patent Office (JPO) dismissed a trademark opposition claimed by the U.S. tech giant, Apple Inc. against trademark registration no. 6060316 for word mark “SAIPHONE” in class 9 and 18 by finding less likelihood of confusion with Apple “iPhone”.
[Opposition case no. 2018-900255]

“SAIPHONE”

Opposed mark, a word mark “SAIPHONE” in standard character, was filed by a Japanese business entity, STYLE Corporation, on September 28, 2017 by designating ‘mobile phones, smart phones, and its accessories, namely cases, covers and hands-free holders’ in class 9, and ‘purses and wallets, commutation-ticket holders, business card cases, bags and pouches, umbrellas, industrial packaging containers of leather’ in class 25.

STYLE Corporation promotes the “SAIPHONE” leather cases for iPhone (see below).

The JPO admitted registration on June 22, 2018 and published for registration on July 6, 2018.

APPLE’s Opposition

To oppose against registration within a statutory period of two months counting from the publication date, Apple Inc. with AIPHONE Co., Ltd., as a joint claimant, filed an opposition on September 7, 2018.

In the opposition brief, Apple Inc. asserted the opposed mark shall be cancelled in violation of Article 4(1)(xi) and (xv) of the Japan Trademark Law given a remarkable reputation of opponent mark “iPhone” in the business field of smart phones and similarity to a senior trademark registration no. 5147866 for the word mark “iPhone” in standard character over mobile phones in class 9 effective since 2008.

Interestingly, “iPhone” is indeed a registered trademark owned by AIPHONE Co., Ltd. in Japan. Apple Inc. is an exclusive licensee of the mark.

Apple Inc. argued opposed mark “SAIPHONE” gives rise to a confusingly similar pronunciation and appearance to “iPhone”, since opposed mark contains a famous mark “iPhone” entirely and a mere difference on prefix “SA” is insufficient for relevant consumers anything but to conceive “iPhone” from opposed mark.

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) 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.

Board Decision

The Opposition Board admitted a remarkable degree of reputation and popularity of opponent trademark “Apple” in connection with smart phones based on the produced evidences showing a more than 40% share of the market in Japan.

In the meantime, the Board found “SAIPHONE” and “iPhone” are totally dissimilar since they are sufficiently distinguishable in visual, phonetic, and conceptual point of view.
A fact that opposed mark contains “iPhone” is not persuasive on the case since relevant consumers with an ordinary case would see opposed mark in its entirety.
If so, it is likely that the consumers confuse or misconceive a source of the opposed mark with Apple Inc. or any entity systematically or economically connected with the opponent.

Based on the foregoing, the Board decided the opposed mark shall not be cancelled on the grounds of Article 4(1)(xi) as well as (xv).


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

JPY 71 Million Damages Award Against Design Copycat of BAO BAO ISSEY MIYAKE

In a civil legal battle involving design copycat of luxurious “BAO BAO” bags designed by ISSEY MIYAKE, a Japanese fashion designer, the Tokyo District Court sided with ISSEY MIYAKE and found infringement under the Unfair Competition Prevention Act on June 18, 2019.
[Judicial case no. H29(Gyo-wa)31572]

BAO BAO ISSEY MIYAKE

Issey Miyake’s innovative and unique bag designs under the brand of “BAO BAO” since 2010 earned it accolades and wide recognition in the fashion world. Its most prominent design is crafted with a tessellating triangular structure that shifts as it’s moved to create new three-dimensional forms. Capturing a seamless fusion of geometric shapes and fluid silhouettes, the designs are often a kaleidoscope of color. Most of the pieces consist of rectangular equilateral triangle.

Disputed bags

Defendant, Largu Co., Ltd. began to promote following women’s shoulder bags, pouches, backpacks and tote bags under the brand of “Avancer” from 2016. Defendant copied tessellating triangular structure on disputed bags likewise. Most of the pieces are not rectangular equilateral triangle.

Defendant sold these goods for JPY 1,000 ~ 6,000. It was far cheaper than BAO BAO ISSEY MIYAKE – sometimes up to one-thirteenth.

Court decision

In the judgment, at the outset, the court assessed whether the geometric shapes of tessellating triangular structure shall play a role of source indicator protectable under the Unfair Competition Prevention Act. The judge found the shape of plaintiff’s goods has a distinctive and different feature from other women’s bags by taking account of produced evidences. Its unique and innovative design, inter alia, creating various three-dimensional forms when used, apparently gives unusual impression to consumers. If so, the prominent design consisting of triangular structure shall be protectable under the Unfair Competition Prevention Act.

Besides, the court found the triangular structure of plaintiff’s goods obtained a certain degree of popularity and reputation as a source indicator of BAO BAO ISSEY MYAKE by the time defendant launched disputed bags in 2016.

In assessing a likelihood of confusion, the court dismissed defendant’s counterargument on different shape of triangle by stating that disputed goods give rise to a same visual effect with BAO BAO ISSEY MIYAKE by means of creating various three-dimensional forms when used. Price difference is not a material factor to negate a likelihood of confusion as long as consumers conceive BAO BAO ISSEY MIYAKA at the sight of disputed bags.

After significant litigation, the trade dress suit ended with an injunction barring all future sales of the copied designs and a hefty damages award, JPY 71,068,000 under the Unfair Competition Prevention Act.

In the meantime, the court dismissed plaintiff’s allegation of copyright infringement on the ground that plaintiff’s goods are rather suitable for industrial design. In fact, plaintiff’s goods are produced in quantity at factory. If so, it shall be unprotectable under the Copyright Law.


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

JPO Annual Report 2019

The Japan Patent Office released its 2019 Annual Report (in Japanese only) on July 12, 2019, which contain informative figures and statistics relating to IP applications in Japan and on all other activities of the JPO.

Trademark Applications in Japan

The number of trademark applications in Japan has increased recent years.
In 2018, 184,483 trademark applications were filed to the JPO. TM application via Madrid Protocol increased to 17,802 by 2.7% compared to the previous year. Direct application decreased to 166,681 by 4 %.

Trademark Application to JPO by Year

Timeline for Trademark Registration

Due to the recent increase, timeline for trademark prosecution, i.e., the average time between filing and first office action, was getting longer for the last four years in a row. Trademark Average First Action Pendency was 6.3 months in 2017. In the meantime, the pendency in 2018 exceeded 7.9 months on average. Accordingly, the average total pendency period for trademark registration was 9.3 months in 2018.

Timeline for trademark registration

Application to JPO by Foreign Company/ Non-resident

39,209 trademark applications, which account for 21.3% of the total, were filed by foreign company or non-resident in 2018. The number was increased by 8.4% since last year.

TM Application to JPO by Foreign applicants

The statistic shows Europe was leading the ranking with about 10,000 trademark applications in 2017. In 2018, China took the leading place eventually.


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