3D shape of plastic clip bag closure is registrable due to acquired distinctiveness

Appeal Board of the JPO admitted to register a three-dimensional mark in the shape of plastic clip bag closure with respect to the goods of “Plastic clips for closing bags of bread products or packages of bread products; plastic bag opening stoppers for packages of bread products; plastic opening stoppers for bags of bread products” in class 20 [Appeal No. 2015-15882].

pcbc

INITIAL EXAMINATION

At an initial examination, the applied mark was totally refused under Article 3(1)(iii) of the Trademark Law since examiner considered the mark is deemed descriptive in relation to the designated goods and it has yet to acquire distinctiveness.

“the trademark in the application consists of a three-dimensional shape, and cannot be recognized as being equipped with a unique form which is hard to expect from the purpose and function of the designated goods or a decorative shape giving a special impression and the like, and traders and consumers just recognize shapes themselves of ‘plastic clips for closing bags of food; plastic bag opening stoppers for packages of food; plastic opening stoppers for bags of food’ which are the designated goods, and the shapes themselves cannot be recognized to have force for distinguishing relevant products from others, so that it is recognized as a trademark consisting solely of a mark indicating the shape of the designated goods in a common way.  Therefore, the trademark in the application falls under Article 3(1)(iii) of the Trademark Act. Furthermore, with the evidences submitted by the applicant, as a result of the use of the trademark in the application generally in the designated goods, it cannot be said that the trademark enables consumers to recognize the goods as being connected with a certain person’s business, so that the trademark does not meet requirements stipulated in Article 3(2) of the Trademark Act.”

 

APPEAL

Applicant, KWIK LOK CORPORATION, a US corporation immediately filed an appeal against the refusal and argued inherent distinctiveness as well as acquired distinctiveness.

The Appeal Board upheld examiner’s finding that the mark just indicates the shape of designated goods in a common way.

In the meantime, the Board denied examiner’s decision regrding acquired distinctiveness of the mark in relation to the goods in question by taking into consideration of 100% market share and 90% brand awareness among relevant consumers.

“goods in the shape of the applied 3-D mark have been continuously manufactured by the Japanese subsidiary of KWIK LOK CORPORATION for about 9 years since 2007 until now, and about 2,600 million pieces of that are sold over the country every year, and it is recognized that the almost 100% of the share is possessed in the opening stoppers for bags of loaves of bread. Furthermore, the promotional advertising of goods in the shape of the applied 3-D mark has been continuously carried out by setting up a booth at the exhibitions for the industry and the like, and the awareness in the makers for manufacturing and selling the bread products, which are the main consumers, reaches 90%. Then, it is reasonable that the applied mark came to enable consumers to recognize the goods in relation to business of the applicant, as a result of continuous use for a long period by Japanese subsidiary of the applicant, concerning “plastic clips for closing bags of bread products or packages of bread products; plastic bag opening stopper for packages of bread products; plastic opening stopper for bags of bread products” which just correspond to the designated goods in class 20.”

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Article 2(4) of the Trademark Law

Article 2(4) of the Trademark Law stipulates that goods in the shape of a mark satisfies requirement to affix the mark to goods provided for in Article 2(3).


Article 2(3)

(3) “Use” with respect to a mark as used in this Act means any of the following acts:

 (i) to affix a mark to goods or packages of goods;

 (ii) to assign, deliver, display for the purpose of assignment or delivery, export, import or provide through an electric telecommunication line, goods or packages of goods to which a mark is affixed;

 (iii) in the course of the provision of services, to affix a mark to articles to be used by a person who receives the said services (including articles to be assigned or loaned; the same shall apply hereinafter);

 (iv) in the course of the provision of services, to provide the said services by using articles to which a mark is affixed and which are to be used by a person who receives the said services;

 (v) for the purpose of providing services, to display articles to be used for the provision of the services (including articles to be used by a person who receives the services in the course of the provision of services; the same shall apply hereinafter) to which a mark is affixed;

 (vi) in the course of the provision of services, to affix a mark to articles pertaining to the provision of the said services belonging to a person who receives the services;

 (vii) in the course of the provision of services through an image viewer, by using an electromagnetic device (an electromagnetic device shall refer to any electronic, magnetic or other method that is not recognizable by human perception; the same shall apply in the following item), to provide the said services by displaying a mark on the image viewer; or
(viii) to display or distribute advertisement materials, price lists or transaction documents relating to goods or services to which a mark is affixed, or to provide information on such content, to which a mark is affixed by an electromagnetic device.

 Article 2(4)


(4) To affix a mark to goods or other articles provided for in the preceding paragraph shall include to form in the shape of the mark goods, packages of goods, articles to be used for the provision of services, or advertisement materials relating to goods or services.

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

ETRO was defeated with a trademark opposition over famous Pegasus emblem

The Opposition Board of JPO decided two figurative marks depicting Pegasus are deemed dissimilar from phonetic, conceptual and visual point of view and dismissed an opposition filed by ETRO S.P.A. [Opposition no. 2014-900325].

etro

Opposition by ETRO

ETRO disputed the opposed mark should be cancelled based on Article 4(1)xi of the Trademark Law due to similarity to ETRO’s famous Pegasus emblem (Opponent mark).

In an opposition brief, ETRO alleged both marks are considered confusingly similar in appearance on the grounds that both marks depict an image of Pegasus getting up on hind legs in silhouette. Besides, they are confusing in concept as well since both marks give rise to a meaning of Pegasus in the mind of consumers. Consequently, the opposed mark is deemed similar to famous Pegasus emblem.

Board decision

In the meantime, the Opposition Board concluded both marks are dissimilar contrary to ETRO’s allegation.

With respect to concept, it becomes usual to depict Pegasus in different posture and style. A mere fact that both marks share same image of Pegasus is insufficient to determine visual aspect of respective mark by taking into consideration of circumstance that Pegasus is legendary creatures as well. Thus, it is not permissible to admit both marks simply give rise to a meaning of Pegasus. Rather, they should respectively be considered a mark having no specific meaning at all.

Regarding appearance, obviously there exists difference in depicting Pegasus. Pegasus in the opposed mark gets up on hind legs. Meanwhile, the opponent mark apparently is galloping. Such difference produces distinctive impression in the mind of consumers. Difference in direction and detail depicting of Pegasus should not be neglected.

As a conclusion, the opposed mark is deemed dissimilar to famous Pegasus emblem of ETRO.

1187hirai%e4%bf%ae%e6%ad%a3003_2MASAKI MIKAMI, Attorney at IP Law (JAPAN) – MARKS IP LAW FIRM

What happens to junior application filed by trademark registration owner for the same mark designating the same goods/services?

The Trademark Law does not contain a specific provision to prohibit a junior application filed by an owner of existing trademark registration for the same mark designating the same goods/services from being registered.


Against the purpose of the Trademark Law

However, the JPO has consistently refused the junior application even if it was filed in the name of trademark registration owner on the grounds that it may result in producing duplicate exclusive right on a mark which is inconvenient from a legal point of view, namely “against the purpose of the Trademark Law”.


Trademark Examination Guidelines

Trademark Examination Guidelines (TEG) sets forth prohibition of the duplication.

 

 Chapter XVIII: Others

 

6. When the same person makes a duplicating application for the same trademark designating the same goods or services, except for cases corresponding to the provisions of Article 68-10, in principle, after the trademark in respect of the prior application is registered, the later application will be refused under the reasons that it is “against the purpose of the Trademark Law”. This is also true when the holder of the trademark right applies for a trademark registration for the same trademark designating the same goods and services.

 


There is a dispute whether the Guideline should be applied to a case where junior application filed by an owner of trademark registration for the same mark designating goods/ services more than existing registration.

 

The Trial Board has decided the junior application will not hinder the purpose of the Trademark Law to the extent it designates additional goods/services and allowed junior trademark application to be registered regardless of examiner’s continuous refusal.

 

 


New Trademark Examination Guidelines

 

Expectedly the dispute reaches a conclusion in April.

According to news release from the JPO, New TEG allows trademark registration of a junior application filed by the same entity for the same mark as long as junior application designates goods/services beyond the scope of existing registration.
Without additional designation, junior application will be refused as it is.

 

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MASAKI MIKAMI – Attorney at IP Law (JAPAN), MARKS IP LAW FIRM

New statutory damages for trademark infringement

The Japanese Government promulgated the Trans-Pacific Partnership (TPP) Implementation Law No. 108 of December 16, 2016. Inter alia, in the field of intellectual property, it entails amendment of provisions concerning monetary remedies in an attempt to harmonize with TPP.
New Trademark Law introduces additional statutory damages for trademark infringement enabling trademark owner to recover the amount of damage equivalent to expenses paid for initial acquisition and maintenance (renewal) of trademark registration under Article 38 (4).

 

Article 38 (4)

Where trademark owner or exclusive trademark licensee claims damages from infringer for trademark infringement undertaken intentionally or negligently, and the infringement constitutes the use of a registered trademark (including a mark deemed as identical from common sense with the registered trademark as well as a word mark depicted in different fonts; a mark with identical pronunciation and concept written in different characters among Hiragana, Katakana and alphabets; and a device mark deemed as identical with the registered trademark in appearance) in connection with any of the designated goods or services, the owner or licensee is entitled to recover the amount equivalent to expenses paid for initial acquisition and maintenance of the trademark registration in general.

Statutory minimum damage

Article 38(4) provides for a new option to recover minimum damages from trademark infringement. 

Existing monetary remedies provided under Article 38(1) to (3) enable trademark owner or exclusive licensee to recover the amount of:

  1. Profit per unit of infringed goods multiplied by the quantity of infringing goods,
  2. Profits attributed to infringer caused by infringement
  3. License fee

New monetary remedy is indeed less punishable in comparison with existing statutory damages since infringer is just liable for expenses incurred in the administrative procedures of trademark registration and renewals.

Infringing mark

Monetary remedy under Article 38(4) is deemed applicable to a case where infringing mark misuses a registered trademark or its equivalent on designated goods/services. In other words, damages based on Article 38(4) are not recoverable provided that infringer misused a mark similar to the trademark registration.

Therefore, if disputed marks are not deemed identical, but similar, damages  provided under Article 38(1) to (3) are recoverable.

Implementation date

New Trademark Law is scheduled to become effective on the day of the TPP coming into force.

NOTE: 

TPP is a 12-nation trade pact aiming to liberalise the flow of goods among countries in the Pacific Rim. Japan ratified TPP agreement on December 9, 2016, however, the new US administration of President Donald Trump has said its trade strategy to withdraw from the TPP trade pact, which the United States signed but has not ratified. Unless two major economic powers ratify the agreement, TPP will never come into force.

 

1187hirai%e4%bf%ae%e6%ad%a3003_2MASAKI MIKAMI – Attorney at IP Law
Founder of MARKS IP LAW FIRM

 

 

 

How to avoid a descriptive mark from being refused by JPO

The trademark law prohibits any mark incapable of serving as a source indicator from being registered under Article 3 (1).

Article 3(1) of the trademark law

Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered, unless the trademark:

(i) consists solely of a mark indicating, in a common manner, the common name of the goods or services;

(ii) is customarily used in connection with the goods or services;

(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;

(iv) consists solely of a mark indicating, in a common manner, a common surname or name of a juridical person;

(v) consists solely of a very simple and common mark; or

(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.

How to overcome refusal under Article 3(1)

We have three options to overcome the refusal under Article 3(1).

Option 1: Opposing to examiner’s assertion and dispute inherent distinctiveness.

Examiner often withdraws a refusal if we could convince the examiner of inherent distinctiveness in a response. Mostly, where applied mark is composed of two or three words, it is worthy of arguing distinctiveness of the mark in its entirety even though respective word is deemed descriptive.

 

Option 2: Arguing acquired distinctiveness of applied mark if applicant has substantial used of the mark.

A mark having functioned as a source indicator resulting from extensive and substantial use can be exceptionally registered under Article 3(2) of the trademark law regardless of descriptive meaning of the mark.

Article 3(2)
Notwithstanding the preceding paragraph, a trademark that falls under any of items (iii) to (v) of the preceding paragraph may be registered if, as a result of the use of thetrademark, consumers are able to recognize the goods or services as those pertaining to a business of a particular person.

 

Option 3: Asserting a unique appearance of the mark even if admittedly the mark itself is descriptive without such appearance.

If applied mark contains figurative elements or depicts word(s) with an unfamiliar font design, it is still possible to overcome the refusal since Article 3(1) is applicable to a mark depicted “in a common manner”.

In other words, descriptive term(s) written in an uncommon manner can be registered regardless of original meaning of the mark.

Needless to say, it is not allowed to amend font design of applied mark during examination based on Article 16-2. Therefore, third option should be taken into consideration prior to filing an application.

Article 16-2(1)
Where an amendment made to the designated goods or designated services, or to the trademark for which registration is sought as stated in the application, is considered to cause any change of the gist thereof, the examiner shall dismiss the amendment by a ruling.

 

1187hirai%e4%bf%ae%e6%ad%a3003_2Masaki MIKAMI – Attorney at IP Law, Japan
MARKS IP LAW FIRM

IP High Court ruled a commonly used shape of package is incapable of serving as a source indicator

On December 22, 2016, the IP High Court (Tokyo) upheld decision of Tokyo District Court (Case no. Heisei 27(Wa)33398), and ordered dismissal of appeal ruling that:

  • Appellant’s good serves as a source indicator due to designs, color, gloss, and texture depicted on external package of the goods, not merely by cube geometry of the package.
  • In view of severe difference in design, color, word mark appeared on the package, consumers will perceive such distinctive elements as “configuration of goods” provided under Article 2(4) of the Unfair Competition Law rather than shape of the package itself.
  • Configuration of goods is incapable of serving as a source indicator unless it comprises prominent distinction. Overall shape of package composed of appellant’s goods is quite simple and thus a mere fact of identical shape with respective package is insufficient to conclude that the shape plays a role of source indicator of goods in dispute.

package

Based on the foregoing, the court denied appellant’s motion to dismiss a decision of trial court on the grounds that overall package of appellant’s goods neither corresponds to “indication of goods” provided under Article 2(1)i of the Unfair Competition Law, nor “configuration of goods” under Article 2(1)iii without combination of designs, color, gloss, and texture depicted on the package.

Unfair Competition Law

Article 2(1)i
The termunfair competition” as used in this Act shall mean any of the following:

(i) creation of confusion with another person‘s goods or business by use of an indication of goods, etc. (which shall mean a name, trade name, trademark, mark, container or package, or any other indication of goods or trade pertaining to a person‘s business; the same shall apply hereinafter) that is identical or similar to an indication of goods, etc. wellknown among consumers used by said person, or assignment, delivery, display for the purpose of assignment or delivery, export, import or provision through a telecommunications line of goods bearing the such an indication of goods, etc.;

 

Article 2(1)iii
(iii) assignment, lease, display for the purpose of assignment or lease, export or import of goods which imitate the form of another person‘s goods (excluding forms indispensable to ensuring the functioning of said goods);

 

Article 2(4)
The term “configuration of goods” as used in this Act shall mean the external and internal shape of goods and their associated patterns, color, gloss, and texture, which may be perceived by users when making ordinary use of the goods.

Unfair Competition Law plays a key role in a dispute involving unregistered mark or trade dress. The case teaches us a good lesson.

A coincidence in the shape of package is insufficient in a lawsuit based on the Unfair Competition Law unless the shape contains prominent distinction in itself.

Appeal Case no. IP High Court Heisei28(Ne)10084

1187hirai%e4%bf%ae%e6%ad%a3003_2Masaki MIKAMI – Attorney at IP Law (Japan)

MARKS IP LAW FIRM

New Standard Characters in trademark registration

When applying to register a trademark at the JPO, the mark itself can be one of several types.

  • Word mark in standard character
  • Word mark in specific style
  • Design (logo)
  • 3D mark (trade dress)
  • Color
  • Motion
  • Position
  • Hologram
  • Combination of above elements (other than standard character trademark)

Standard Characters 

For a mark to quality as a standard character trademark, it must consist of only acceptable standard characters – alphabetical letters, Japanese characters (Hiragana, Katakana), Chinese characters, numbers and some symbols.

Article 5(3) of the Japan Trademark Law provides:

Where a person desires to register a trademark consisting solely of characters designated by the Commissioner of the Patent Office (hereinafter referred to as “standard characters”), the application shall contain a statement indicating thereof.

Trademark Examination Manual 19.01 enumerates standard characters available in obtaining Japanese trademark registration.

 

New Standard Characters

From January 1, 2017, “New Standard Character Set” becomes effective.

Newly adopted standard characters, almost Chinese characters as below listed, are aimed to comply with characters provided in the New Japanese Industrial Standards (JIS).

 standard-character

 

In terms of trademark registration, a standard character claim allows for the registration of words, letters, numbers and some symbols without any specific font, size, style, color or other design element. It simply requires the mark to be typed out without regard to the font, style, size or color. Registering a trademark in standard characters provides the broadest form of protection regardless of the form it appears in.

1187hirai%e4%bf%ae%e6%ad%a3003_2Masaki MIKAMI – Attorney at IP law (JAPAN), MARKS IP LAW FIRM

Cancellation of Trademark Registration Filed with Malicious Intent

The Opposition Board of JPO declared cancellation of trademark registration No. 5778852 for the mark composed of a prancing horse design and term “Cavallino Lampanti” (Opposed mark) covering the goods in class 18 and 25 on the grounds that Opposed mark was registered with malicious intent to resemble a renowned horse emblem of opponent, Ferrari S.p.A., known for “cavallino rampante”, and free ride remarkable reputation bestowed on the opponent marks. [Opposition Case No. 2015-900335]

ferrari-opposition

In the opposition decision, the Board did not clearly admit similarity of the horse design depicted in both marks regardless of conceptual similarity, however, concluded the term “Cavallino Lampanti” of Opposed mark and a name “cavallino rampante” of Opponent mark are highly similar in both appearance and sound.

Besides, admittedly Opponent marks have been well known among general public in Italy even prior to an application date of Opposed mark. Opponent has promoted several goods belonging to class 18 and 25 e.g. bags, necktie, T-shirts, wallets, shoes to Japanese customers as well.

Based on the above facts, presumably an applicant of Opposed mark must have been acquainted with such circumstances and Opponent’s business. If so, it is not deniable to conclude that Opposed mark was filed with malicious intent to harm Opponent business and free ride valuable reputation bestowed on famous brand.

As a conclusion, the Board cancelled Opposed mark based on Article 4 (1) (xix) of the Trademark Law.

 

Article 4(1)(xix)

“No trademark shall be registered if the trademark is identical with, or similar to, a trademark which is well known among consumers in Japan or abroad as that indicating goods or services pertaining to a business of another person, if such trademark is used for unfair purposes (referring to the purpose of gaining unfair profits, the purpose of causing damage to the other person, or any other unfair purposes, the same shall apply hereinafter).”

 

Article 4(1)(xix) aims to prevent unauthorized entities from registering a well-known mark in foreign country even if the mark itself has not yet acquired high recognition in Japan to the extent relevant domestic consumers become aware of such situation in foreign country. The article plays a significant role in attacking a fraudulent trademark registration where it designates goods or services remotely associated with business of a famous brand owner.

1187hirai%e4%bf%ae%e6%ad%a3003_2Masaki MIKAMI – Attorney at IP Law (Japan)

MARKS IP LAW FIRM http://www.marks-iplaw.jp/

First to file rule – How to solve a conflict filed on the same date

The Japan Trademark Law follows “first to file” rule under which a registration is granted to the person who is first to file a trademark application, whether or not he or she began to use the mark before others.

 

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

“No trademark shall be registered if the trademark is identical with, or similar to, another person’s registered trademark which has been filed prior to the filing date of an application for registration of the said trademark, if such a trademark is used in connection with the designated goods or designated services relating to the said registered trademark, or goods or services similar thereto.”

 

Provided that a senior mark has yet to be registered at the time of a junior application, but expected in due course, Article 8(1) is applicable.

 

Article 8(1)

“Where two or more applications for trademark registration relating to identical or similar trademarks which are to be used in connection with identical or similar goods or services have been filed on different dates, only the applicant who filed the application for trademark registration on the earlier date shall be entitled to register the trademark in question.”

 

Article 4(1)(xi) and 8(1) provides a decisive solution to deal with conflicting marks filed in different dates based on the “first to file” rule.

 

What happens when conflicting marks are filed on the same date?

 

Article 8(2), (4) of the Trademark law stipulates that the JPO requests applicants to negotiate voluntarily to determine which party is entitled to be a registrant.

 

Article 8(2)

“Where two or more applications for trademark registration relating to identical or similar trademarks which are to be used in connection with identical or similar goods or services have been filed on the same date, only one applicant who is to be determined by consultations among the applicants who filed such applications shall be entitled to register the trademark in question.”

 

Given applicants failed to reach an agreement, the JPO conducts a lotteryto select either applicant for registration in accordance with Article 8(5).

The lottery is conducted using a lottery machine.

 

Article 8(5)

“Where no agreement is reached in the consultations held pursuant to paragraph (2) or no report is submitted within the designated time limit set forth in the preceding paragraph, only one applicant, selected by a lottery in a fair and just manner conducted by the Commissioner of the Patent Office, shall be entitled to register the trademark in question.”

 

This can offer us a valuable lesson.

Get good luck on your side to win a trademark registration in addition to complying with “first to file” rule!

 

Procedures for the public lottery can be seen at Trademark Examination Manual.

https://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/pdf/44-01.pdf

1187hirai%e4%bf%ae%e6%ad%a3003_2 Masaki MIKAMI – Attorney at IP Law (Japan)

The Japan Patent Office (JPO) has declared to modify the amounts of the individual fee payable with respect to Japan under Article 8(7) of the Madrid Protocol.

ITEMS Present(in Swiss francs) New Amounts(in Swiss francs)
Application or Subsequent Designation First Part: 92 for one class 108
70 for each additional class 82
Second Part: 229 for each class 269
Renewal 315 for each class 371

 

This change takes effect on December 14, 2016.

Therefore, these amounts will be payable where Japan:

(a)  is designated in an international application which is received, or is deemed to have been received under Rule 11(1)(c), by the Office of origin on or after that date;  or

(b)  is the subject of a subsequent designation which is received by the Office of the Contracting Party of the holder on or after that date, or is filed directly with the International Bureau of WIPO on or after that date;  or

(c)  has been designated in an international registration which is renewed on or after that date.

 

Japan was the 5th designated member.

According to the WIPO Statistics Database, June 2016, the numbers of designations made in Madrid applications for Japan from the top 20 origins in 2015 is 13,533.

It was followed by the Switzerland (13,071) and Australia (11,993).

The most designated member was China, the only country to exceed 20,000 designations.

It has become a routine to obtain trademark registrations in Japan by means of Madrid Protocol.

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Masaki MIKAMI – Attorney at IP Law (Japan)