AI SCAN ROBO

In a recent administrative decision, the Appeal Board of Japan Patent Office (JPO) allowed registration for a word mark of “AI SCAN ROBO”, finding that the mark could function as a source indicator.
[Appeal case no. 2018-5433, Gazette issue date: November 30, 2018]

 

AI SCAN ROBO

Disputed mark, consisting of “AI SCAN ROBO” in a standard character, was applied for registration on April 13, 2017 in connection with computer programs of class 9 and data processing in computer files for others of class 42.

The JPO examiner totally refused the mark due to lack of distinctiveness by stating that:

“AI” is known for an abbreviation of Artificial Intelligence. “SCAN” is a verb to use a machine to make a copy of a document or picture and put it into a computer. “ROBO” is equivalent to “robot”. Besides, the term of “SCAN ROBO” becomes generic in connection with Robotic Process Automation (RPA) robot to capture data and manipulate applications automatically. If so, disputed mark shall fall under Article 3(1)(vi) of the Japan Trademark Law since relevant consumers are likely to conceive disputed mark as a mere description of RPA robot to capture data automatically by making use of Artificial Intelligence.

 

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.

 

Applicant filed an appeal against the refusal and argued inherent distinctiveness of applied mark “AI SCAN ROBO” in its entirety.

 

Appeal Board decision

The Board set aside the refusal, finding that disputed mark shall not fall under Article 3(1)(vi) on following grounds.

  1. “AI” is known for an abbreviation of Artificial Intelligence.
  2. In the meantime, the Board opines the term “SCAN ROBO” per se does not represent a specific meaning. Rather it shall be considered as a coined word.
  3. If so, “AI SCAN ROBO” does not give rise to any descriptive meaning as a whole.
  4. Besides, there found no circumstances in commerce to support the term “AI SCAN ROBO” has been commonly used in connection with designated goods and service.
  5. Based on the foregoing, it shall be concluded that disputed mark is distinctive and relevant consumers and traders recognize it as a source indicator.

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

IP High Court denied registering 3D Shape of Nursing Care Bed

The Japan IP High Court ruled on December 29, 2018 and did not side with Paramount Bed Co., Ltd., a Japanese manufacturer and distributor of medical and nursing care product, who filed an appeal against refusal decision by JPO to TM Application no. 2015-29155 for 3D mark representing the shape of home care bed.
[Heisei 30 (Gyo-ke) 10060, Court ruling date: November 28, 2018]

 

3D shape of home care bed

Disputed mark, representing three-dimensional shape of nursing care bed, was filed on March 31, 2015 by designating nursing care bed and mattress in class 20. The Japan Patent Office (JPO) refused the mark due to a lack of distinctiveness.

  

Paramount Bed argued acquired distinctiveness as a source indicator of Paramount nursing care bed through substantial use of the mark and its unique shape.
According to the argument, Paramount has distributed more than 145,000 sets of nursing care bed and mattress which 3D shape is identical with the applied mark. The company spent USD 2,400,000 to advertise the bed in newspaper and USD 20,000,000 in TV commercial during the past five years. Paramount produced on-line questionnaire results which showed more than 60 % of relevant traders have recognized the shape as a series of Paramount Bed.

 

IP High Court ruling

The IP High Court dismissed the allegation entirely, stating that the produced evidences are unpersuasive to conclude the 3D shape acquired distinctiveness as a source indicator of Paramount Bed’s business because of below-mentioned reasons.

  1. As long as nursing care beds are likely to be used by general public, questionnaire results answered by traders are insufficient to demonstrate acquired distinctiveness among relevant consumers.
  2. Given the shape of applied mark occasionally appears while nursing care bed is in operation and the bed has coverlet on it in ordinary days, it is questionable whether relevant consumers have perceived the shape of applied mark as a source indicator.
  3. Besides, catalogs and advertisements pertinent to Paramount nursing care bed show configurations of the bed other than the shape of applied mark.

Based on the foregoing, the court upheld JPO decision.


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

JPO decision over POWER TECH trademark

In an administrative appeal disputing trademark similarity between TM registration no. 4015750 for word mark “POWERTECH” and a junior application no. 2016-137853 for the “AC POWERTECH” device mark represented as below, the Appeal Board of the Japan Patent Office decided that both marks are deemed dissimilar and reversed examiner’s rejection.
[Appeal case no. 2018-6124, Gazette issued date: October 26, 2018]

 

TM Registration no. 4015750

The cited mark, consisting of a word “POWERTECH” colored in red (see below), was registered on June 20, 1997 by designating various vehicles in class 12.

Junior Application no. 2016-137853

Applied junior mark consists of the following “AC POWERTECH” device mark (see below).

It was applied for registration on December 7, 2016 by designating vehicles in class 12.

The JPO examiner refused the applied mark due to a conflict with senior TM registration no. 4015750 based on Article 4(1)(xi) of the 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.

 

Subsequently, the applicant filed an appeal against the rejection and disputed dissimilarity of both marks.

 

Board decision

In the decision, the Appeal Board held that:

Applied mark is a composite mark mainly consisting of two words of “AC” and “POWERTECH” written in two lines and a black hexagon.

Even if the term “AC” is likely to be used as an indication of type and mode of vehicles in commerce, from appearance of applied mark as a whole, the Board opines that relevant consumers would not conceive the term as indication of type or model. If so, it is questionable whether consumers ignore “AC” in the applied mark and pay considerable attention to the term “POWERTECH”. Thus, it is reasonable to conclude that applied mark shall give rise to a pronunciation nothing but “AC POWERTECH” and no specific meaning.

Based on the foregoing, in the assessment of trademark similarity, the Board decided that:

Obviously, both marks are distinguishable in appearance. Given applied mark does give rise to a pronunciation of “AC POWERTECH” and no meaning, the Board finds no ground to affirm examiner’s rejection from visual, phonetic, and conceptual point of view.


Astonishingly, JPO viewed the applied mark “AC POWERTECH” in its entirety irrespective of significant difference in font size between “AC” and “POWERTECH”.

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

“Teddy Bear” versus “Rose Teddy Bear”

The Appeal Board of Japan Patent Office (JPO) ruled that senior trademark registrations for the mark “Teddy Bear” in standard character over goods of trees, flowers, dried flowers, plants, seedlings, saplings in class 21 is unlikely to cause confusion with a junior mark “Rose Teddy Bear” in plain letters even if the mark is used on rose and rose bushes in class 21. [Appeal case no. 2017-18006, Gazette issue date: October 26, 2018]

Senior registrations for the “Teddy Bear” mark

“TEDDY BEAR”, a children’s toy, made from soft or furry material, which looks like a friendly bear, has its origin after Teddy, nickname for Theodore Roosevelt who was well known as a hunter of bears.

In Japan, name of the toy bear has been registered in the name of Nisshin OilliO Group. Ltd. on various goods in class 29, 30, 31 and 32 since 1986.

Junior application for “Rose Teddy Bear”

Junior mark for “Rose Teddy Bear” was applied for registration by a French company on August 10, 2016 over goods of rose, rose trees and other items relating to rose in class 31.

JPO examiner rejected junior mark due to a conflict with the “Teddy Bear” mark based on Article 4(1)(xi) of the Trademark Law on September 5. 2017.

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.

To seek for registration, applicant filed an appeal against the refusal on December 5, 2017.

Appeal Board decision

The Appeal Board set aside a refusal on the grounds that:

(1) From appearance and pronunciation, the term of “Rose Teddy Bear” shall be recognized as one mark in its entirety.
(2) Relevant consumers and traders are likely to conceive the term as a coined word since it does not give rise to any specific meaning as a whole.
(3) Therefore, the refusal based on the assumption that literal portions of “Teddy Bear” in junior mark plays a dominant role made a factual mistake and shall be cancelled consequently.

It seems that the Board decision is not consistent with the Trademark Examination Guidelines (TEG) criteria.

[Chapter III, Part 10 of TEG]
A composite trademark having characters representing an adjective (characters indicating the quality, raw materials, etc. of goods or characters indicating the quality of services, the location of its provision, quality, etc.) is judged as similar to a trademark without the adjective as a general rule.

In this respect, as long as the junior mark designates rose in class 21 and the term “Rose” in the mark further impresses the concept of rose in mind of consumers, the portion of “Rose” should be considered descriptive in relation to designated goods. Otherwise, any combined mark composed of registered mark and a generic term pertinent to the designated goods is deemed dissimilar to the registered mark.


I suppose the Board signaled a narrower scope of right where trademark has evidently its origin from other entity or meaning unrelated to senior registrant.

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

Trademark dispute for XXXX

In a recent trademark appeal trial to seek dismissal of examiner’s refusal, the Appeal Board of Japan Patent Office (JPO) set aside the refusal and allowed registration of TM Application no. 2017-21396 for the XXXX mark because of dissimilarity to a senior registration for “XXXX” mark.
[Appeal case no. 2018-5881, Gazette issue date: October 26, 2018]

 

Applied mark

The mark in dispute (see below left) was applied for registration in the name of Mitsukoshi Isetan, Japan’s largest department store group, on February 22, 2017 by designating goods of clothing; belts in class 25 and retail or wholesale services for clothing, bags and pouches, handkerchief and hair ornaments in class 35.

 

Cited TM registration for “XXXX”

The JPO examiner refused the applied mark due to a conflict with senior TM registration no. 4147840 for the mark “XXXX” (see above right) based on Article 4(1)(xi) of the 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.

Cited mark has been registered since 1998 over goods of clothing, garters, sock suspenders, suspenders [braces], waistbands, belts for clothing, footwear, clothes for sports, special footwear for sports in class 25.

Applicant filed an appeal against the decision on April 27, 2018 and disputed dissimilarity of the marks.

 

Appeal Board decision

The Appeal Board sided with the applicant and negated similarity of both marks by stating that:

Applied mark shall be seen to represent a certain geometric figure. It appears that cited mark represents four alphabetical letters of “X” in line. It means there finds distinguishable gap between geometric figure and alphabetical letters from appearance.
Applied mark does not give rise to any specific pronunciation. In the meantime, cited mark shall have pronunciations of “eks eks eks eks” and “four eks”. Likewise, both marks are sufficiently distinguishable in pronunciation.
Besides, as long as both marks do not give rise to any specific meaning, it is not feasible to compare them in concept.
In view of above aspects, it unlikely happens confusion between the marks and thus deemed dissimilar.

Based on the foregoing, the Board decided applied mark is not subject to Article 4(1)(xi), and admitted registration.


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

Luis Vuitton victory in trademark battle for remake use

In a trademark battle involving famous Louis Vuitton Monogram for remake use, the Japan IP High Court ruled in favor of Louis Vuitton and ordered appellant to pay 1.7 million JP-Yen for damages on October 23, 2018.

Custom-made Remake

Appellant has produced shoes, caps and other fashion items by making use of material of secondhand Louis Vuitton goods (see below) and promoted the items as a custom-made remake, e.g. LOUIS VUITTON REMAKE DENIM CAP/BLUE, through internet.

Unfair Competition Prevention Act

Louis Vuitton filed a lawsuit and demanded to stop selling the items as well as payment for the damage on the grounds that appellant’s act constitutes unfair competition under Article 2(1)(ii) of the Japan Unfair Prevention Act.

Article 2(1)(ii) of the Unfair Competition Prevention Act is a provision to prohibit any person from using a famous source indicator of another person without permission.

Appeal

Appellant argued they become popular among relevant consumers as a business entity to produce a custom-made remake from secondhand of genuine brand. If so, since consumers are fully aware that the items are remake, neither faked goods nor brand-new article, confusion is unlikely to happen in the mind of consumers. Besides, appellant insisted as long as the Louis Vuitton Monogram is not used as a source indicator but design, the Unfair Competition Prevention Act is not applicable to the items.

IP High Court decision

The IP High Court decisively dismissed appellant’s allegations and decided the monogram on the items still plays a role of source indicator in view of remarkable reputation of Louis Vuitton Monogram. It can be easily presumed that average consumers at sight of the items shall conceive Louis Vuitton. Even if the items are sold as a custom-made remake or with any description to appeal the items made from secondhand, such facts will not affect the decision on the merit.
[Heisei 30 (Ne)10042]


The Unfair Competition Prevention Act is essential to the case where actual confusion would not happen in fact regardless of unauthorized commercial use of famous brand.

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

Trademark Dispute over Pendant Lamp Shade

In a decision to the invalidation trial claimed by LUIS POULSEN A/S, a Danish company, the Trial Board of Japan Patent Office (JPO) upheld the petition and invalidated TM registration no. 5643726 for a combination mark containing the pendant lamp shade design (see below) in violation of Article 4(1)(xix) of the Trademark Law.
[Invalidation case no. 2017-890003, Gazette issue date: September 28, 2018]

 

Disputed mark

Disputed mark, consisting of a literal element “R&M Interior Store”, “R&M” logo in the shape of shield and the pendant lamp shade design (see below), was filed on June 14, 2013 by a Japanese business entity, designating wholesale or retail services for lighting apparatus and others in class 35.

Going through substantive examination, the JPO admitted registration on January 17, 2014. Three years after the registration, LUIS POULSEN A/S filed an invalidation action against disputed mark on January 4, 2017.

 

Invalidation trial

During the invalidation trial, LUIS POULSEN A/S argued disputed mark shall be invalidation based on Article 4(1)(xix) since the applicant filed the mark, confusingly similar to trademark registration no. 5825191 for 3D mark in the shape of unique pendant lamp shade (see below) well-known for “PH5” created by a Danish designer Poul Henningsen, with a malicious intention to damage claimant.

According to supporting evidence produced to the trial, “PH5” lamp was originally designed in 1958. It has been promoted for sale in the marketplace of Japan since 1976. More than 500,000 lamps have been produced and sold around the globe. To bolster its reputation, LUIS POULSEN submitted a written declaration by Danish Ambassador to Japan. Besides, 3D shape of “PH5” lamp shade is successfully registered by finding acquired distinctiveness as a result of substantial use and uniqueness finally to serve as a source indicator (TM Registration no. 5825191).


Article 4(1)(xix)
 prohibits to register a trademark which is identical with, or similar to, other entity’s famous mark, if such trademark is aimed for unfair purposes, e.g. gaining unfair profits, or causing damage to the entity.

 

Board decision

The Board found that:

  1. 3D shape of “PH5” lamp has become famous as a source indicator of LUIS POULSEN among relevant domestic consumers well before the filing date of disputed mark as a result of continuous marketing activities in Japan since 1976.
  2. In the assessment of trademark similarity, it is unquestionable that the pendant lamp shade design depicted in disputed mark closely resembles “PH5”. From overall appearance, relevant consumers and traders will conceive the portion of the pendant lamp shade design plays a dominant role in disputed mark.
  3. The fact that applicant promoted similar lamp shade as “reproduct” or “generic product” of “PH5” convinces us that applicant has been aware of prospective controversy and causing damage to business interest of LUIS POULSEN.

Based on the above findings, the Board concluded that applicant filed a similar mark to “PH5” well-known for a pendant lamp shade of LUIS POULSEN with a malicious intention to gain unfair profits or cause damage to claimant. Thus, disputed mark shall be invalidated in violation of Article 4(1)(xix) of the Trademark Law.


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

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