Is Marie-Antoinette a name of French Queen consort or a trademark?

The Japan Patent Office (JPO) ordered to dismiss an invalidation trial against IR no. 1238820 for word mark “Marie-Antoinette” by finding the mark shall be irrevocable under Article 4(1)(vii) of the Trademark Law. [case no. 2017-68002]

Tempting Brands Netherlands B.V. (NL), filed an international registration for the mark over goods of “Bleaching preparations [deodorants] for cosmetic purposes; perfumery, essential oils, cosmetics, hair lotions; dentifrices; cosmetic soaps, soaps for personal use; douching preparations for personal sanitary or deodorant purposes [toiletries]” in class 3 and others in class 9, 18 and 25 on Dec. 5, 2014 claiming priority based on Benelux TM application dated Aug. 22, 2014, and designating Japan which granted registration of the mark on Feb. 10, 2017.

To challenge, an invalidation trail was filed against the mark. Claimant, a Japanese business entity asserted the mark shall be invalidated in violation of Article 4(1)(vii) of the Trademark Law on the grounds that the mark “Marie-Antoinette” written in a plain letter represents the late ill-fated queen consort of King Louis XVI of France who has been highly well-known as a symbolic queen of beauty among relevant public not only in France but also Japan and other countries. If so, it is extremely harmful to prestige of “Marie Antoinette” and social affections on the historical figure to admit an exclusive right on the name to any unrelated entity. It may inevitably offend public order and morals

Article 4(1)(vii) of the Trademark Law prohibits any mark likely to cause damage to public order or morality from registration. Trademark Examination Guidelines provides  “Name of a well-known or famous historical personage likely to free-ride on public measures derivative from the personage and damage the public interests in face” as an example to apply the article.

The Invalidation Trial Board decided the mark shall not be subject to the article due to the following reason.

It is unquestionable that “Marie-Antoinette” represents a name of queen consort of King Louis XVI of France and becomes famous in France as well as Japan. In the meantime, the Board could not see a fact that the name has been made use of for revitalization of local communities or tourism industry. If so, it is quite unlikely to happen that the mark could offend public order and morals when used on goods of class 3. Besides, the Board has no reason to believe registration of the mark would cause disrespect for France and French people as well as international fidelity.  Besides, there finds no circumstances to conclude the mark is proscribed to use by other legislation and applicant apparently filed the mark with a malice or fraudulent intent to be blamed.  Based on the foregoing, the international registration shall be deemed valid since the Board was unable to find out any relevant facts to apply the article on the case.

It is not freely allowed to use and register a name of historical personage as trademark. JPO rejected “Darwin” and “Monet” based on Article 4(1)(vii), but allowed registration of “Elvis”.

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

Japan: trademark registration of era names will be banned

The Japan Patent Office (JPO) revised its screening criteria to prevent all era names from being registered as trademarks.

The amendment came as the country prepares for the change in May of the current era name following the abdication of Emperor Akihito on April 30, 2019. Japan will start using the new name from May 1 when Crown Prince Naruhito ascends to the throne. The government announced to unveil the new era name on April 1, a month before the Imperial succession, to mitigate the impact of the change on people’s lives.

There was concern that the JPO might be flooded with requests to register the new era name for trademarks during the last month of the Heisei Era, which commenced on Jan. 8, 1989.


According to the JPO, more than 100 trademark registration applications for merchandise and company names using “Heisei” were filed in January of that year.

Under previous criteria, there was room for era names, except Heisei, to be registered as trademarks.
The revised guidelines to ensure trademarks do not feature any era name now clearly state that all era names, in principle, cannot be used for trademarks.

However, even after the revision, familiar product and corporate names already using old era names, such as Meiji Holdings Co. and Taisho Pharmaceutical Co., will continue to be treated as exceptions.


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

Trademark race for the 2020 Tokyo Olympic Games – Episode 2

The Appeal Board of Japan Patent Office (JPO) refused Trademark Application No. 2017-11978 for a device mark consisting of five interlaced heart shape logos for goods of clothing and footwear in class 25 because of similarity to Olympic rings based on Article 4(1)(vi) of the Japan Trademark Law.

Heart shape device mark

Mark in question ( see below) was filed on February 6, 2017 by designating goods of clothing, footwear, masquerade costumes, clothes for sports in class 25.

Article 4(1)(vi) of the Trademark Law

The JPO examiner refused the mark by citing the Olympic Rings based on Article 4(1)(vi) of the Trademark Law.
Article 4(1)(vi) is a provision to refuse any mark which is identical with, or similar to, a famous mark indicating the State, a local government, an agency thereof, a non-profit organization undertaking a business for public interest, or a non-profit enterprise undertaking a business for public interest.

JPO trademark examination guidelines clearly refer to the Olympic Symbol as an example of the mark to indicate a non-profit business for public interest.

Olympic Rings

The Olympic symbol, widely known throughout the world as the Olympic Rings, is the visual ambassador of Olympic for billions of people.

The Olympic symbol is defined in Olympic Charter, Rule 8 as

“The Olympic symbol consists of five interlaced rings of equal dimensions (the Olympic rings), used alone, in one or in five different colours. When used in its five-colour version, these colours shall be, from left to right, blue, yellow, black, green and red. The rings are interlaced from left to right; the blue, black and red rings are situated at the top, the yellow and green rings at the bottom.”

The Olympic Rings, publicly presented for the first time in 1913, remain a global representation of the Olympic movement and its activity.

 

Appeal Board decision

In an appeal, the Board sustained examiner’s refusal and decided the mark in question shall be refused on the same ground.
The Board stated that mark in question has same configuration with the Olympic Rings, inter alia, depicting horizontally three heart shape logos on an upper row and two on a lower row, and thus consumers at the sight of the mark are likely to conceive or connect it with a well-known Olympic symbol from appearance.
[Appeal case no. 2018-3425, Gazette issued date : December 28, 2018]


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

KANGOL: Assessing the Similarity Between Hairbands and Head wear

In a trademark opposition trial to seek cancellation of TM registration no. 6028674, the Opposition Board of Japan Patent Office (JPO) dismissed the opposition claimed by Kangol Limited, an English clothing company famous for its head wear, because of dissimilarity between hairbands and head wear.
[Opposition case no. 2018-900149, Gazette issue date: December 28, 2018]

Opposed mark

Opposed mark, consisting of the word “KANGOL” and a kangaroo device (see below), was filed in the name of Crown Creative Co., Ltd., a Japanese business entity on June 23, 2017, and admitted registration on March 16, 2018 over the goods of hairbands and others in class 25.

It is doubtless opposed mark exactly looks the same with the KANGOL trademark owned by Kangol Limited.

 

Opposition by Kangol

On June 11, 2018, Kangol Limited filed an opposition based on its-own senior TM registration no. 5036704 for the Kangol mark (see below) over the goods of head wear, helmets, night caps and hoods in class 25.

 

In the opposition brief, Kangol 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.

Since the marks of the respective parties are identical, Kangol focused on arguing the designated goods, inter alia hairbands, of opposed mark is similar to hear wear.

 

Similarity of goods

Trademark Examination Guidelines (TEG) [Part III Chapter 10: Article 4(1)(xi)] set forth criteria to determine similarity of goods.
In principle, similarity of goods is evaluated whether or not the relevant goods are likely to cause confusion as if they are goods manufactured and sold by the same business entity, when an identical or similar trademark is used for the designated goods of the trademark as applied and the cited trademark due to circumstances such that normally the goods are manufactured and sold by the same business entity.
To assess the similarity of goods, the following criteria are comprehensively taken into consideration.

(i) Whether both goods are produced by the same suppliers.
(ii) Whether both goods are distributed through the same sales channel.
(iii) Whether both goods are made from the same materials and achieve the same quality.
(iv) Whether both goods are for the same usage.
(v) Whether both goods are purchased by the same consumers.
(vi) Whether respective goods constitutes finished goods or a component of other goods.

 

Board decision

In the assessment of similarity between hairbands and head wear, the Board totally denied, based on the above criteria, Kangol’s allegations by stating that:

It is true that both goods are used for many purposes and can be made from various kinds of materials. Hairbands are used for cold protection or decoration just like with head wear. Some of hairbands and head wear use cloth or rubber as a material. However, suppliers, sales channel, consumers, usage and materials of both goods are substantially different in general. If so, relevant consumers and traders are unlikely to conceive both goods with the Kangol mark would come from the same source.

Accordingly, JPO decided opposed mark shall not be subject to Article 4(1)(xi) and valid as a status quo.


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

Serapian Loses Trademark Opposition against S device mark

The Italian-based fashion house Stefano Serapian S.r.l., known for its briefcases, handbags and purses opposed the registration in Japan of the trademark S logo owned by the Japanese company, Kabushiki Kaisha Overseas.

Opposed mark

Overseas filed an application to register S logo (see below) designating, among others, bags, purses, pouches and leather goods in class 18 on April 27, 2017. Going through substantive examination at the Japan Patent Office (JPO), it was registered on October 20 of that year (TM Reg no. 5990450).

Serapian Opposition

A trademark opposition proceeding filed on January 15, 2018, Serapian contended that opposed mark is confusingly similar to its registered famous “S” device mark (see below) by citing its owned IR no. 1117130 and thus shall be cancelled in violation of Article 4(1)(xi) and (xv) 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) 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 a mark in question is deemed dissimilar to well-known brand, but still likely to cause confusion because of a high degree of popularity and reputation of the brand.

 

The Ruling

The Opposition Board of JPO negated a certain degree of popularity and reputation of Serapian’s “S” device mark, 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, it is apparent that respective mark would not be perceived as an alphabetical letter ‘S’, but a geometric figure device without any specific concept and pronunciation. If so, both marks would not give rise to similar appearance, sound and meaning at all.

Even if taking account of originality of “S” device mark, as long as it remains unclear whether Serapian “S” device mark has become popular among relevant consumers in Japan, the Board had no reason to admit a likelihood of confusion.

As a conclusion, the Board decided opposed mark is not subject to Article 4(1)(xi) and (xv) of the Trademark Law and dismissed the opposition accordingly.

[Opposition case no. 2018-900017, Gazette issue date December 28, 2018]


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

LUIS POULSEN Victory over trademark infringement lawsuit for Pendant Lamp Shade

On December 27, 2018, the Tokyo District Court sided with Luis Poulsen A/S, a Danish company, in a lawsuit for trademark infringement against R&M Japan Co., Ltd. who imported into Japan and sold lighting apparatus allegedly identical with or confusingly similar to a registered 3D mark in the shape of unique pendant lamp shade well-known for “PH5” and awarded damages of 4.4 million JPY. [Case no. Heisei 29(Wa)22543]

 

Luis Poulsen “PH-5”

Luis Poulsen A/S has manufactured and sold lighting apparatus with a unique lamp shape well-known for “PH-5” in Japan past four decades. The shape was successfully registered as a 3D mark by the JPO in 2016 as a result of demonstrating acquired distinctiveness of the shape as a source indicator in connection with goods of ramp shade in class 11 (see below) [Trademark registration no. 5825191].

 

Infringing product

R&M Japan, Defendant, imported into Japan and sold lighting apparatus which apparently looks identical with the shape of PH-5 (see below).

Defendant argued that the Court should dismiss the complaint in its entirely.

According to the court decision, defendant admitted to reproducing a design which has terminated its exclusive right after the lapse of statutory period and thus became public domain.

Defendant also disputed there happened no damages to plaintiff on the grounds that the company put consumers on notice to offer replica designer lighting or free generic design items in the marketplace. There exists a remarkable price gap between genuine PH-5 and defendant product. If so, claimed damages shall not be linked to defendant’s act.

 

Court decision

The Tokyo District Court ruled in favor of Luis Poulsen by stating that:

  1. It is unquestionable that infringing product constitutes trademark infringement given the same shape with registered 3D mark representing “PH-5” owned by plaintiff.
  2. Provided that the 3D shape of “PH-5” has been successfully registered as a trademark in Japan, expiration of design right shall not prevent the owner from enforcing trademark right against the shape once registered as design right.
  3. Even if infringing product was offered to sell on notice of replica designer lighting or free generic design items at a lower price than genuine PH-5, it shall not deny a fact that infringing product is likely to compete with plaintiff.

Based on the foregoing, the Court ruled that R&M Japan committed a trademark infringement and awarded Luis Poulsen 4.4 million JPYen for damages.

R&M Japan once challenged validity of trademark registration for the 3D mark of PH-5, but resulted in vain. click here.


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

Lee unsuccessful in removing Leeao from trademark registration

The Japan Patent Office dismissed a trademark opposition claimed by the second largest manufacturer of jeans in the United States, The H.D. Lee Company, Inc. (LEE) against trademark registration no. 5990967 for the Leeao logo mark in class 25 by finding less likelihood of confusion with “Lee” because of remarkable dissimilarity between the marks.
[Opposition case no. 2017-900381]

 

Leeao

Opposed mark “Leeao” (see below) was filed by a Japanese business entity on April 28, 2017 by designating clothing and clothes for sports in class 25.

Going through substantive examination, the JPO admitted registration on September 29, 2017 and published for registration on November 21, 2017.

LEE’s Opposition

To oppose against registration, LEE filed an opposition on December 20, 2017.
In the opposition brief, LEE asserted the opposed mark shall be cancelled in violation of Article 4(1)(xi) of the Japan Trademark Law given a high reputation and popularity of opponent mark “Lee” in the business field of jeans having longer history than LEVIS and similarity of opposed mark with its owned senior trademark registration no. 1059991 for the “Lee” logo mark (see below) over clothing in class 25 effective since 1974.

LEE argued opposed mark gives rise to a pronunciation of ‘liː’ from the first three letters, allegedly a prominent portion of opposed mark, since remaining elements are rarely perceived as letters of “ao” from its appearance.

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 LEE’s senior registration covers clothing in class 25, similarity of goods is indisputable in the case.

 

Board Decision

The Opposition Board, based on the fact-finding that Lee jeans has been distributed in Japan for five decades and its frequent appearance in media, admitted a high degree of popularity and reputation of “LEE” logo as a source indicator of opponent jeans among general consumers.

In the meantime, the Board completely denied similarity between the marks on the grounds that:

  1. Opposed mark, from appearance, shall not be seen as a combination of “lee” and “ao” unless “ao” does clearly give rise to a descriptive meaning. If so, opposed mark shall constitute one word as a whole and be deemed sufficiently distinctive in concept as well.
  2. In the meantime, relevant consumers of goods in question shall conceive opponent mark as a source indicator of famous “Lee” jeans.
  3. If so, both marks are completely distinguishable from three aspects of appearance, sound, and concept.

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

Is GRAND HOME dissimilar or similar to GRAN HOME?

In a recent appeal trial over trademark dispute, the Appeal Board of Japan Patent Office (JPO) overturned the Examiner’s determination and held that a word mark “GRAND HOME” is dissimilar to, and unlikely to cause confusion with a senior trademark registration for the “GRAN HOME” mark in connection with construction, reform or repair service for residential homes and buildings.

[Appeal case no. 2017-13251, Gazette issue date: November 30, 2018]

GRAND HOME

Kabushiki Kaisha GRAND HOME, a Japanese business entity filed a trademark application for a word mark “GRAND HOME” in standard character covering services of reform, repair, maintenance, cleaning and construction for residential homes and buildings in class 37 on May 17, 2016 [TM application no. 2016-53226].

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 senior trademark registration no. 5534717 for word mark “GRAN HOME” written in Japanese character(katakana) for the same services in class 37.

There are basic rules that the examiner is checking when evaluating 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 September 6, 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:

  1. From appearance, both marks are distinguishable because of a difference in literal elements. Applied mark consists of alphabetical letters. Meanwhile, the earlier mark consists of Japanese character.
  2. Having compared the sound of applied mark “ɡrænd hoʊm” and earlier mark “ɡræn hoʊm”, there evidently exists a difference in the middle sound. The difference shall not be negligible from overall sound composition as long as the sound “D” in the middle of applied mark is pronounced in a clear and intelligible manner. If so, both marks are aurally distinctive.
  3. Applied mark gives rise to a meaning of ‘large house’. In the meantime, the earlier mark “GRAN HOME” does not give rise to any specific meaning. Hence, both marks are dissimilar from conceptual point of view.
  4. Based on the foregoing, it is unlikely that relevant consumers confuse or misconceive a source of “GRAND HOME” with the earlier mark “GRAN HOME”.

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

POLO BCS defeated in trademark battle with POLO RALPH LAUREN

In a ruling on the merits of whether or not an applied mark “POLO HOME / BRITISH COUNTRY SPIRIT” is likely to cause confusion with a world-famous trademark “POLO” by the fashion house Ralph Lauren, the Japan IP High Court sided with the JPO and ruled in favor of Ralph Lauren on December 10, 2018.

[Court case no. H30(Gyo-ke)10067]

 

“POLO HOME / BRITISH COUNTRY SPIRIT”

POLO BCS Co., Ltd., plaintiff of the case, is a Japanese business entity, promoting apparel products bearing trademarks of “POLO BRITISH COUNTRY SPIRIT”, “POLO BCS”, and “POLO HOME”.

 

POLO BCS filed a trademark registration for the mark “POLO HOME / BRITISH COUNTRY SPIRIT” as shown in below on January 5, 2015 by designating clothing and other goods in class 25. [TM application no. 2015-305]

 

In fact, POLO BCS, a registrant of the word mark “POLO” on class 25 in Japan since 1997 (TM registration no. 1434359 and 2721189), granted trademark license to Ralph Lauren in the year of 1987 and since then continuously allows RL to use the mark “POLO” in Japan.

 

JPO decision

The Japan Patent Office (JPO) rejected the applied mark based on Article 4(1)(xv) of the Trademark Law on June 3, 2016. The refusal relies on a prominent portion of the mark “POLO” is likely to cause confusion with RALPH LAUREN when used on apparel products, being that “POLO” becomes remarkably well-known for an abbreviation of POLO RALPH LAUREN among relevant consumers with an ordinary care.

Article 4(1)(xv) is a provision to prohibit any mark from being 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.

POLO BCS filed an appeal against the refusal on August 16, 2016, but its attempt resulted in failure [Appeal case no. 2016-12344].
To contest the JPO decision, POLO BCS appealed to the IP High Court filed immediately.

 

IP High Court decision

The court admitted a high degree of reputation and popularity of Ralph Lauren and “POLO” as an abbreviation of Polo Ralph Lauren in connection with apparel products by taking account of following fact findings.

  1. The first collection for Polo brand was launched in the US by a designer Mr. Ralph Lauren in 1967.
  2. Annual sales of Ralph Lauren exceed 7 billion USD in 2013 around the globe.
  3. In 1976, Ralph Lauren launched Polo brand and shops in Japan.
  4. According to brand perception survey of 900 randomly selected Japanese consumers ages 20 to 69 conducted in 2010, 81.8% of consumers recognize Ralph Lauren.
  5. Annual sales of 26.7 billion JPY in Japan (fiscal year 2008) accounts for 6% of global sales of Ralph Lauren.

Besides, the court found close similarity between applied mark and “POLO” by Ralph Lauren given a tiny font size of “BRITISH COUNTRY SPIRIT” in the configuration of applied mark and less distinctiveness of the word “HOME” in relation to apparel for home use.

Plaintiff argued to consider the fact that RL has used the “POLO” mark in Japan under license from plaintiff. But the court negated the argument stating that such fact would not mean consumers recognize the mark as a source indicator of plaintiff. In addition, plaintiff argued originality and fame of the word “POLO” as a source indicator of Ralph Lauren by citing Polo Game, organizations for the game, e.g. US POLO ASSOCIATION, HURLINGHAM POLO, and a generic name of Polo shirts. Court considered such circumstances would mean less originality of the mark “POLO”, but never deny fame of the mark as a source indicator of Ralph Lauren as long as consumers doubtlessly connect it with Ralph Lauren.

Based on the foregoing, the IP High Court concluded it is obvious that relevant consumers are likely to confuse or misconceive a source of the applied mark with Ralph Lauren or any entity systematically or economically connected with RL when used on clothing in class 25.


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