Apple successful in a trademark opposition to block “PriPhone”

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

“PriPhone”

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

Apple’s Opposition

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

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

Article 4(1)(xv) provides that a mark shall not be registered where it is likely to cause confusion with other business entity’s well-known goods or services, to the benefit of brand owner and consumers. Theoretically, Article 4(1)(xv) is applicable to the case where both marks are dissimilar, but likely to cause confusion among relevant consumers because of a related impression attributable to reputation of the well-known mark.

Board Decision

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

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

Based on the foregoing, the Board decided that relevant consumers are likely to confuse or misconceive a source of the opposed mark with Apple Inc. or any entity systematically or economically connected with the opponent.
If so, opposed mark shall be cancelled in violation Article 4(1)(xv) of the trademark law.


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

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

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

TM Registration – “TOP-SIDER”

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

Licensee’s Use

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

Sperry Top-Sider

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

Cancellation trial based on Article 53

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

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

IP High Court decision

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

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

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

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

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

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

“SMAPPLE”

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

Apple’s Opposition

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

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

Article 4(1)(xv) provides that a mark shall not be registered where it is likely to cause confusion with other business entity’s well-known goods or services, to the benefit of brand owner and consumers. Theoretically, Article 4(1)(xv) is applicable to the case where both marks are dissimilar, but likely to cause confusion among relevant consumers because of a related impression attributable to reputation of the well-known mark.

Board Decision

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

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

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


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

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

Trademark race for the 2020 Tokyo Olympic Games

The Appeal Board of Japan Patent Office (JPO) refused Trademark Application No. 2016-85559 for a device mark consisting of metallic rings on goods of metallic fishing nets in class 6 on the ground of conflict with Article 4(1)(vi) of the Japan Trademark Law.

Metallic ring device mark

Mark in question ( see below) was filed on August 8, 2016 by designating goods of metallic fishing nets in class 6.

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 Olympism 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 and thus consumers at the sight of the mark are likely to conceive a well-known Olympic symbol from appearance regardless of difference in small rings to connect five symbolic rings.
[Appeal case no. 2018-1590, Gazette issued date : August 31, 2018]


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

ROLEX Unsuccessful in Trademark Battle Over Crown Logo

In a recent trademark decision, the Opposition Board of Japan Patent Office (JPO) dismissed an opposition against IR no. 1263679 filed by Rolex SA, Swiss manufacturer of luxurious watches, based on the iconic Rolex crown.

[Opposition case no. 2017-685031, Gazette issue date: August 31, 2018]

Opposed mark – Crown device

Opposed mark, consisting of a crown device (see below), was filed in the name of PWT A/S, a Danish retailer of clothing, furnishings, and accessories for men, women, and children.
The mark was filed to JPO through the Madrid Protocol (IR no. 1263679) with priority date of June 25, 2014 and admitted national registration on July 28, 2017 over the goods of “Toilet soaps, perfumery, essential oils, cosmetics, perfumed toilet preparations, preparations for cleaning, care and beauty cosmetics of the skin, scalp and hair, deodorizing preparations for personal use” in class 3, “Leather, boxes of leather or leather board, bags of leather for packaging” in class 18, and “Clothing, headgear” in class 25.
During substantive examination, JPO examiner initially issued a refusal due to a conflict with senior registrations for the Rolex crown. However, the JPO withdrew the refusal as a result of PWT’s response to partially delete goods and argue dissimilarity of mark.

Opposition by Rolex

During a two-months opposition period after registration, Rolex SA filed an opposition, stating that relevant consumers are likely to confuse or misconceive opposed mark with Rolex or any business entity systematically or economically connected with Rolex because of high similarity to the iconic Rolex crown (see above) and close association between “watches” and the designated goods in class 3 and 25.

Article 4(1)(xv)

Rolex SA sought to retroactively cancel opposed mark in relation to cosmetics and other goods designated under class 3 and clothing, headgear in class 25 based on Article 4(1)(xv) of the Japan 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 Opposition Board did not question a remarkable degree of popularity and reputation of the ROLEX crown as a source indicator of opponent business.
In the meantime, the Board considered both marks give rise to a different impression in the minds of relevant consumers from overall appearance and found that the degree of similarity of marks is relatively low irrespective of a common crown design with five points and its circle-shaped ends. Besides, the Board negated close association between watches and cosmetics, apparel to the extent that watches, a sort of precision instrument, are not ordinarily manufactured or distributed by same business entity with cosmetics and apparel.

Based on the foregoing, the Board concluded that relevant consumers of goods in question are unlikely to confuse opposed mark with Rolex or any business entity systematically or economically connected with opponent.
Thus, opposed mark is not subject to Article 4(1)(x), and valid as a status quo.


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

IP High Court: “VANSNEAKER” is confusingly similar to famous “VANS” sneakers

The IP High Court ruled on August 29, 2018 to uphold the Japan Patent Office (JPO) decision to cancel TM Reg. No. 5916735 for the mark “VANSNEAKER” over shoes in class 25 due to a conflict with TM Reg. No. 5245474 for famous mark “VANS”.
[Case no. Heisei30(Gyo-ke)10026]

VANSNEAKER

Disputed mark “VANSNEAKER” in the standard character format was filed on July 25, 2016 and registered next January by designating shoes in class 25 in the name of VAN Jacket Inc., a Japanese business entity, who succeeded to apparel business of “VAN” brand all the rage in the 60’S.

Opposition by VANS Incorporated

VANS Incorporated, a US business entity, established in California 1966,  famous for “VANS” sneakers, filed an opposition  by citing its own senior registered mark “VANS” in standard character format over shoes in class 25. The JPO decided to cancel disputed mark in breach of Article 4(1)(xi) of the Trademark Law on the ground that it is confusingly similar to famous “VANS” mark from a conceptual point of view. [Opposition case no. 2017-900135]

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.

Appeal to the IP High Court

To contend, VAN Jacket appealed to the IP High Court and demanded cancellation of the decision.

VAN Jacket alleged in the court that JPO decision was based on an erroneous assumption of fact because it considered the portion of “VANS” plays a dominant role in source indicator. Given disputed mark “VANSNEAKER” consists of one word in its entirety, it is unlikely that consumers perceive the last letter “S” of “VANS” functions to represent an initial letter of “SNEAKER” as well.

Court decision

The IP High Court, however, dismissed the arguments by VAN Jacket, stating that:

  1. Cited mark ”VANS” has become famous among Japanese general consumers in connection with sneakers and shoes both at the time of filing application and registration of disputer mark.
  2. “NEAKER” does not give rise to any specific meaning. In the meantime, “SNEAKER”, combining “S” with “NEAKER” adjacent to it, is an English word familiar among relevant public to mean a type of the designated goods (shoes).
  3. It becomes usual to prevent successive letter in a coined mark consisting of two words where first word ends with a letter and send word starts with the same letter.
  4. Based on the foregoing, consumers at sight of disputed mark shall pay attention to a distinctive portion of “VANS” and are likely to conceive that the mark consists of two words, “VANS” and “SNEAKER” by omitting first or the last letter “S” of respective words.
  5. Consequently, the Court finds that disputed mark is likely to cause confusion with famous “VANS” sneakers when used on shoes.

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

Trademark battle over slogan : Think different vs Tick different

Swiss watch giant Swatch has failed to stop US tech giant Apple from registering “Think Different” as a trademark, which Swatch argued segues too closely to its own “Tick Different” trademark.

THINK DIFFERENT

Apple’s “THINK DIFFERENT” mark was used in its successful Emmy-award winning advertising campaign which ran for five years from 1997. The mark was also used on the box packaging for its iMac computers next to another trademark “Macintosh”.

Its applications to register “THINK DIFFERENT” were filed in Japan on February 24, 2016 for use in relation to various goods and services belonging to 8 classes like watches, clocks (cl.12) as well as online social networking services (cl.45), among other items. JPO admitted registration on September 12, 2017. Subsequently, the mark was published in the Official Gazette for opposition.

Tick different

By citing its own mark, Swatch filed an opposition against Apple’s “THINK DIFFERENT” mark based on Article 4(1)(xi) of the Japan Trademark Law and asserted a likelihood of confusion with Swatch “Tick different” mark when used in connection with all goods designated in class 14.

Swatch’s “Tick Different” mark was filed to JPO through the Madrid Protocol (IR no. 1279757) with priority date of July 16, 2015 and admitted national registration on July 15, 2016 by designating timepieces and chronometric instruments, namely chronometers, chronographs, clocks, watches, wristwatches, wall clocks, alarm clocks, among other items in class 14.

Swatch, having a worldwide presence and its corporate group owns a stable of Swiss watch brands, including Omega, Tissot and Swatch, has allegedly used the mark on mobile payment smart watches since 2015.

 

Opposition decision

Swatch argued that the two marks were highly similar due to the same syllabic structure and number of words. With the same ending and almost the same beginning, they are visually and aurally similar.

However, in decision grounds issued on June 6 2018, the Opposition Board of Japan Patent Office (JPO) found that when compared as wholes, the marks were more dissimilar than similar.

The Board, after considering all the pleadings, evidence and submissions, concluded because of the conceptual, visual and aural dissimilarities of the marks, the Board was persuaded that the average consumer would conceive they are, overall, more dissimilar than similar.

Consequently, JPO ruled that as Swatch’s opposition failed on all grounds, the “THINK DIFFERENT” mark registration from Apple will remain with the status quo.
[Opposition case no. 2017-900376]


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

Fashion design and copycat

On July 30, the Tokyo District Court delivered a ruling in the case of copycat fashion dispute pertinent to the shape of cold shoulder blouse.
[Case no. Heisei 29(Wa)30499]

Cold Shoulder Blouse

The case was brought into the court by PETTERS Co., Ltd. who complained MAXIM Co., Ltd. of unlawfully imitating a unique shape of cold shoulder blouse designed by plaintiff and damaging business interests by distribution of defendant’s “KOBE LETTUCE” cold shoulder blouses.

According to the court decision, plaintiff allegedly designed a new cold shoulder blouse featuring unique ruffle sleeve and long ribbon (see right in below) in February 2016 and began selling from August of the year. Subsequently, defendant imported similar blouses (see left in below) from Korea and promoted for sale in Japan since May 2017.

Unfair Competition Prevention Law

Plaintiff argued defendant shall be liable for his conduct because it constitutes violation of Article 2(1)(iii) of the Unfair Competition Prevention Law.

Article 2(1)(iii) of the Unfair Prevention Law prohibits unauthorized party from assignment, lease, display for assignment or lease, export or import of goods which shape results from imitation of goods belonging to other entity.

The party shall be exempted from liability if it passes three months from initial offer for sale of imitated goods at the time of his misconduct.
From the case law, it is construed that the article does not apply for imitation of a commonly used-shape in light of the purposes and objectives of the article.

 

Court decision

The judge, however, did not clearly state if overall shape of plaintiff’s cold shoulder blouse shall be protectable under the article.
As a consequence, the court totally dismissed the case on the grounds that:

  1. There exists difference in the shape of ruffle sleeve and ribbon between disputed goods.
  2. The difference gives rise to distinctive impressive in the mind of consumers
  3. If so, the shape of defendant’s goods shall neither be identical with, nor deemed imitation of plaintiff’s goods.

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

Is Polaroid Photo Frame trademarked?

In a recent decision, the Appeal Board of Japan Patent Office (JPO) admitted trademark registration for the Polaroid Photo Frame design mark (see below) in relation to services of photo printing, digital on-demand printing, processing of photographic films, photographic retouching (class 40).
[Appeal case no. 2017-9599, Gazette issue date: June 28, 2018]

 

Polaroid Photo Frame

Disputed mark (see below), apparently looking like Polaroid Photo Frame, was filed in the name of PLR IP Holdings, LLC, the ex-owner of the Polaroid brand and related intellectual property, by covering services of photo printing, digital on-demand printing, processing of photographic films, photographic retouching under class 40 on June 24, 2015.

As a result of substantive examination by the JPO examiner, disputed mark was refused due to a lack of inherent distinctiveness based on Article 3(1)(vi) of the Trademark Law.

Article 3(1)(vi) is a comprehensive provision to prohibit any mark lacking inherent distinctiveness from being registered.

Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered, unless the trademark:
(vi)
 is in addition to those listed in each of the preceding items, a trademark by which consumers are not able to recognize the goods or services as those pertaining to a business of a particular person.

 

Appeal Board decision

The Appeal Board sided with applicant and overruled examiner’s refusal decision by stating that the Board could not detect actual use of the applied design as a representation of shape or quality in connection with the designated services.

Besides, it is questionable to conclude that disputed mark, a combination of White Square and black rectangle, solely consists of a very simple and common sign. If so, the Board considers disputed mark is capable of serving as a source indicator so that consumers may distinguish the source with the clue of disputed mark.

Based on the foregoing, the Board admitted trademark registration of the Polaroid Photo Frame device mark in class 40.


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

Google victorious in trademark dispute for YouTube icon

The Trial Board of Japan Patent Office (JPO) recently upheld Google’s invalidation petition against TM Reg. no. 5665763 for the “Video Blog” mark in combination with figurative element (see below) due to similarity to YouTube icon and a likelihood of confusion with Google business.
[Invalidation case no. 2017-890005, Gazette issue date: July 27, 2018]

TM Registration no.5665763

Opposed mark, consisting of two words “Video Blog” in English and Japanese in two lines, and figurative elements depicted in between the words, was applied for registration on August 13, 2013 in respect of broadcasting services for internet in class 38.

Without confronting with a refusal during substantive examination, opposed mark was registered on April 25, 2014.

Petition for invalidation

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

Google Incorporated filed a petition for invalidation against opposed mark on January 25, 2017. Google argued it shall be invalidated due to a conflict with famous YouTube icon (see below) and a likelihood of confusion with Google business when used on internet broadcasting services in class 38 based on Article 4(1)(x) and (xv) of the Trademark Law.

Board decision

The Board admitted that YouTube icon has acquired a high degree of popularity and reputation as a sign to play movies and TV shows on YouTube or an icon to start up YouTube application among relevant consumers of broadcasting service for internet.

In assessment of the similarity between two marks, at the outset the Board found that the words “Video Blog” of opposed mark in itself lack distinctiveness as a source indicator in relation to the designated service. If so, the figurative element of opposed mark plays key role as a source indicator. It is unquestionable that the figurative element is highly similar to Youtube icon. Besides, in view of Google’s business portfolio, it is highly predictable that Google launches broadcasting or news distributing business.

Users of Google services are also likely to receive internet broadcasting services.

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 opposed mark with Google or any entity systematically or economically connected with the opponent and declared invalidation based on Article 4(1)(x) and (xv).


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