“PIKA-Q” is unlikely to confuse with a well-known iconic mascot name, “PIKACHU”

PIKACHU

Opposition Board of the Japan Patent Office (JPO) decided to dismiss an opposition filed by Nintendo Co., Ltd. who claimed trademark registration no. 5845409 for the word mark “ピカキュウ” (to be pronounced as “PIKA-Q”) in a standard character designating goods of “lighting apparatus for automobiles; electric lamps” in class 11 and “retail or wholesale services dealing with the goods” in class 35 should be cancelled due to a likelihood of confusion with senior trademark registrations (Citation 1 and 2) pertinent to a well-known iconic mascot name “PIKACHU”, a fictitious monster appeared in Pokémon of opponent’s commercial interest [Case No. Opposition 2016-900226].

PIKACHU vs. PIKA-Q

JPO admitted “PIKACHU” has attained a certain level of recognition amongst consumers as Pokémon characters name in association with opponent’s game and toy businesses, however, concluded that opposed mark is distinguishable from and distinctively dissimilar to the citations on the following grounds.

– In appearance, the word “ピカキュウ” of opposed mark written in Katakana characters looks similar to “ピカチュウ” in the citations since visual difference in a middle letter of “キ” and “チ” is trivial in light of resembled configuration of respective letter consisting of two horizontal lines and a vertical line.

– But, “PIKA-Q” and “PIKACHU” are phonetically distinguishable as a whole since both terms are different in overall nuance and tone by taking into consideration of a non-negligible effect caused by difference in the third sound of “kyu” and “chu”, and a few phonetic composition of four sounds in total.

– Both marks are deemed incomparably dissimilar in concept on the condition that opposed mark does not give rise to any specific meaning, but the citations are perceived as PIKACHU in Pokémon.

Besides, the Board held that relevant consumers are not only unlikely to associate or misconceive opposed mark used on the goods/services supra with the citations but also connect or confuse a source of the goods/services with opponent or related entities with commercial or organizational interest should it remain unclear whether opponent does or will expand business in association with the goods/services of opposed mark. Finding that any goods licensed by opponent is remotely associated with the opposed goods/services and the citations representing Pokémon characters do not correspond to a so-called “house mark” in opponent business, JPO concluded as mentioned above.

“PIKA-Q” appears a trademark parody originated from well-known iconic mascot name, “PIKACHU”. It is presumed that actual use on LED lamp for automobiles implying a meaning of quality of the lamp (PIKA is an imitative word to describe sudden brightness of lamp in Japanese) may affect to the Board decision.

MASAKI MIKAMI, Attorney at IP Law (Japan)

MASAKI MIKAMI, Attorney at IP Law (Japan) – Founder of MARKS IP LAW FIRM

Nintendo sues go-kart company over copyright infringement and disputes over “MariCar” trademark

 

Copyright infringement lawsuit

On February 24, 2017, Nintendo Co., the Kyoto-based video game giant filed a lawsuit with the Tokyo District Court against a Tokyo-based go-kart service operator, MariCar, for alleged copyright violations.

MariCar rents out go-karts that have been modified to run on public roads.

The go-kart service is exceedingly popular with foreign tourists, with many of the participants donning costumes that look similar to Nintendo game characters such as Super Mario.
http://maricar.com/


In the suit, Nintendo claims MariCar violated copyright by renting unauthorized costumes of Nintendo game characters such as Super Mario to its customers and using pictures of them to promote its business.

Nintendo is seeking ¥10 million in damages from the company and an end to the alleged copyright infringement.


Dispute over the MariCar trademark  

Nintendo also alleged in an opposition over the MariCar trademark registration No. 5860284 covering goods and services in class 12 ,35 and 39 that MariCar is an abbreviation of “Mario Kart,” one of its blockbuster game titles, however, the JPO rules against Nintendo to admit go-kart company keep MariCar trademark in a decision dated Jan. 26, 2017 [Opposition No. 2016-900309].

In the opposition, Nintendo claimed that MariCar was widely interpreted by the public as short for “Mario Kart,” citing other examples of popular video games that go by abbreviated nicknames in Japanese, such as “Pokemon” for “Pocket Monsters,” “Pazudora” for “Puzzle & Dragons” and “Sumabura” for “Super Smash Bros.”
Consequently, the Opposition Board of JPO denied it and held the trademark MariCar was neither widely used nor recognized by game users as an abbreviation of Nintendo’s blockbuster video game title “Mario Kart,” adding that it was “an unassociated trademark.”

 


 

MASAKI MIKAMI, Attorney at IP Law (Japan) – Founder of MARKS IP LAW FIRM

JPO eventually allowed registration of color marks since commencement of Non-Traditional trademark application in 2015

On March 1st, 2017, the JPO announced to allow registration of color marks for the first time ever since commencement of Non-Traditional trademark application in April, 2015.

The trademark law of Japan protects sound marks, motion marks, position marks, hologram and color marks as well as traditional marks provided they meet all the other criteria for a valid trademark.

First color marks registration

The honor of first color marks registration went to (i) a three-color-combination mark in blue, white and black for goods of “erasers” in class 16 owned by Tombow Pencil Co., Ltd. and (ii) a seven-color-combination mark in white, orange, white, green, white, red and white for retail services in class 35 owned by Seven-Eleven Japan Co., Ltd..

Tombow Pencil Co., Ltd. has used the three-color-marks on erasers and other stationery.

tombow

The seven-color-marks is a symbolic design representing well-known convenience store of Seven-Eleven Japan Co., Ltd.

%e3%82%bb%e3%83%96%e3%82%a4%e3%83%ac

According to the announcement from the JPO, 492 applications for color marks were filed since April, 2015 so far. Above color marks were both filed on the very beginning day of Non-Traditional trademark application. Taking into consideration of a six-month examination period on average for traditional marks, it has obviously spent substantial time even when it compares with other Non-Traditional marks. As of February 20, 2017, 110 sound marks are registered among 517 applications. 23 position marks are registered among 345 applications. 65 motion marks are registered among 123 applications.

It is anticipated that the JPO expedites to terminate examination for color marks in the months ahead.

1187hirai%e4%bf%ae%e6%ad%a3003
MASAKI MIKAMI – Attorney at IP Law, JAPAN
Founder of MARKS IP LAW FIRM

JPO aims to encourage fast track examination to users’ benefit

On February 6, 2017, the Japan Patent Office (JPO) revised the Guidelines for Accelerated Trademark Examination with an attempt to meet the public needs for expedited examination proceedings and to encourage efficient and frequent use of accelerated examination by newly adding two types of trademark applications to  the Guidelines.

Presently, following trademark applications are allowed to take the fast-track path on demand from applicant.

[Case 1] Applicant is in use of or likely to use an applied mark on more than one of goods/services in the designation, and in urgent need of registration.

To meet an urgent need requirement, applicant is required to demonstrate ; (i) unauthorized third party uses an applied mark, (ii) any third party request a license to use the applied mark, (iii) any third party demand applicant to cease a use of the applied mark , or (iv) applicant filed the identical mark to foreign country.

[Case 2] Applicant is in use of or likely to use an applied mark on every goods/services in the designation.

NEW ACCELERATION EXAMINATION GUIDELINES

New acceleration examination guidelines admit “Case 3” in addition to the above.

[Case 3] Applicant is in use of or likely to use an applied mark on more than one of goods/services in the designation, and description of goods/services are all in conformity with that of listed in the Examination guidelines for similar goods and services.

Besides, (v) where applicant seeks to apply for an international registration of trademark identical with the applied mark through the Madrid Protocol, it is also admitted to meet an urgent need requirement for Case 1.

Below lists acceleration conditions to each case under the new guidelines.

%e6%97%a9%e6%9c%9f%e5%af%a9%e6%9f%bb

New guideline for accelerated examination is in force on February 6, 2017.

Referential information is available at the website of:
News release from JPO –  http://www.meti.go.jp/english/press/2017/0206_003.html
Examination guidelines for similar goods/services – http://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/goods_services_10-2015.htm

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

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.”

 img_1028-002

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.

1187hirai%e4%bf%ae%e6%ad%a3003_2

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.

 

1187hirai%e4%bf%ae%e6%ad%a3003_2

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