IP High Court ruled trademark “SeaGull-LC” is deemed similar to “SEAGULL”

In a dispute regarding similarity between trademark “SeaGull-LC” and “SEAGULL”, the  IP High Court took the side of original decision rendered by the Japan Patent Office on the following ground.

The term of “SeaGull”, giving rise to a meaning of a gull frequenting the sea and a pronunciation of “siːɡʌl”, is evidently distinctive as a source indicator in relation to the designated goods. In the meantime, a term of “LC” in itself does not have any specific meaning in English or other foreign languages. It becomes common in trade to use two alphabetical letters accompanying a brand name on goods with an intention to represent a model or series of the brand. If so, “LC” lacks inherent distinctiveness as a source indicator of designated goods as long as relevant traders and consumers perceive the term to indicate a model or standards of the goods.

In appearance of the applied mark, “SeaGull” and “LC” can be seen separately by means of hyphen. Hyphen in itself does not serve to fuction as a source indicator. It just connects two words to constitute new term as a whole, or separates a composing element of compound word to make it more visible. Since each connected word is respectively distinguishable in the aspect of linguistics, it should be allowed to extract such word connected by hyphen independently. Thus, it is admissible to consider the term “SeaGull” as the dominant portion of applied mark and compare the portion with senior trademark registration in the assessment of trademark similarity.  Accordingly, applied mark gives rise to a meaning of a gull frequenting the sea and a pronunciation of “siːɡʌl”  from the dominant portion as well as “siːɡʌl-el-siː” from its entirety.

In the assessment of trademark similarity, commercial practice can be duly taken into consideration where it reflects regular and constant circumstances relating to the disputed goods in general. Mere commercial facts involving specific goods with disputed mark are insufficient in this regard. Sales record and publicity of trademark “SeaGull-LC” should not be considered in the assessment of trademark similarity due to the above mentioned reason.

As a conclusion, the Court found a likelihood of confusion between “SeaGull-LC” and “SEAGULL”.
[IP High Court Heisei28(Gyo-Ke)10270, June 28, 2017]

It is worthy to note that the Court considered “hyphen” functions to separate a mark in the assessment of trademark similarity regardless of its actual function to connect words. It is advisable to investigate trademark registration consisting of each word when choosing a trademark including hyphen between word elements.

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

JPO decided trademark “WHITNEY HOUSTON” is descriptive when used on music recordings

In a recent appeal decision, the Japan Patent Office (JPO) upheld examiner’s refusal and granted to protect trademark “WHITNEY HOUSTON” on the condition that the trademark does delete music recordings from goods designated under the International Registration (IR) no. 1204044. [Appeal case no. 2016-650045]

Whitney Houston

Whitney Houston, an American singer and actress, tragically died on February 9, 2012 in Beverly Hills, was one of the best-selling musical performers of 1980s and ‘90s and one of the most famous singers in the world undoubtedly.

International Registration

IR no. 1204044, registered in the name of The Estate of Whitney Houston on March 24, 2014, designates following goods in class 9, 16 and 25.

International class 9 –      Series of musical sound recordings; series of musical video recordings; downloadable musical sound recordings; downloadable music video recordings featuring music and entertainment; audiovisual recordings featuring music and entertainment; downloadable audiovisual recordings featuring music and entertainment; downloadable ringtones for mobile phones and wireless devices.
International class 16 –    Posters; concert and souvenir programs; calendars; song books.
International class 25 –    T-shirts; shirts; sweatshirts; hooded sweatshirts; hats; headwear.

JPO Initial Examination

At an initial examination proceeding, JPO examiner refused the trademark with respect to all goods in class 9 on the grounds that consumers can easily perceive or conceive the late Whitney Houston, an American famous singer from the applied mark “WHITNEY HOUSTON” written in a common font design. Besides, in a business to deal with music recordings, the title of a song or an album as well as name of performer or player are routinely indicated on goods or packages to show contents of it. Therefore, relevant consumers and traders at a sight of the applied mark used on designated goods in class 9 are just likely to conceive the goods contains music or performance by the late Whitney Houston. If so, IR no. 1204044 is subject to refusal based on Article 3(1)(iii) of the Trademark Law.
Furthermore, when the applied mark is used on music recordings unrelated to Whitney Houston, consumers will surely be in trouble since they expect the goods contains song or performance of the late Whitney Houston. If so, it should be refused for registration based on Article 4(1)(xvi) due to misconception of quality of goods.

Article 3(1)(iii)

Article 3(1) of the Trademark Law is a provision to prohibit descriptive marks from registering.
Section (iii) of the article aims to remove any mark merely or directly suggesting quality of goods and services.

“Article 3(1) Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered, unless the trademark:
(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;”

New Trademark Examination Guideline

Trademark Examination Guideline (TEG) pertinent to Article 3(1)(iii) provides that where a trademark is widely recognized by consumers as a name of a singer or of a music group in respect of goods “sound recorded magnetic tapes, sound recorded compact disks, phonograph records” or its equivalent, the mark is deemed to indicate the quality of the goods.
http://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/pdf/tt1302-002/1-5.pdf

Likewise, where a trademark is recognized to clearly indicate specific contents of articles provided for use by a person to which the service is provided (“cine films,” “image recorded magnetic tapes,” “sound recorded magnetic tapes,” “recorded compact disks,” “phonograph records,” etc.) such as their classifications and types in respect of such services as the rental of “cine films” “image recorded magnetic tapes” “sound recorded magnetic tapes,” “recorded compact disks,” “phonograph records,” etc., is deemed to indicate the quality of a service.
(Example)
1.Trademark “Japan Folksong Collection” in respect of a service “Rental of sound recorded compact disks”
2.Trademark “Suspense” in respect of a service “Rental of cine films”

Article 4(1)(xvi)

Article 4(1) of the Trademark Law is a provision to provide unregistrable trademarks.
Section (xvi) of the article aims to prohibit registration of any mark likely to mislead quality of goods or services.

“Article 4(1) Notwithstanding the preceding Article, no trademark shall be registered if the trademark:
(xvi) is likely to mislead as to the quality of the goods or services”

Appeal Decision

Since The Estate of Whitney Houston deleted all goods classified in class 9 from Japan, a designation country of IR no.1204044, after the initial refusal, the Appeal Board admitted registration of trademark “WHITNEY HOUSTON” with respect to remaining goods, namely, “Posters; concert and souvenir programs; calendars; song books” in class 16, “T-shirts; shirts; sweatshirts; hooded sweatshirts; hats; headwear” in class 25.

Comments from author

Result seems a bit of trick. It means the name of Whitney Houston functions as a source indicator when used on song books and apparel, but a mere descriptive indication when used on music recordings though her fame never changes depend on goods.
Having reviewed examination result of IR no. 1204044 at other designation countries by means of ROMARIN , the trademark confronted with the same refusal in Singapore.
Apparently, registrability of a famous singer name as trademark varies depend on jurisdiction, goods or services and whether he/she is alive or not.

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

“MAMAS & PAPAS” failed in an opposition to invalidate trademark registration for the mark “PAPA’S&MAMA’S”.

The Opposition Board of Japan Patent Office issued a decision denying the opposition filed by MAMAS & PAPAS HOLDINGS LIMITED, a UK-based retailer and manufacturer supplying prams, pushchairs, baby products, furniture and maternity wear, and declared to sustain trademark registration no. 5853559 for the mark “PAPA’S&MAMA’S” in Class 18 and 44. [Opposition case no. 2016-900270]


Opposed mark

Opposed mark was filed by PAPA’S&MAMA’S Co. Ltd., designating goods of bags and pouches in class 18 and services of aesthetician services, beauty care and hairdressing in class 44 on March 15, 2016 and granted for protection on May 27 of the year.


 Opponent

MAMAS & PAPAS HOLDINGS LIMITED alleged to cancel the registration due to violation of Article 4(1)(xi) and 4(1)(xv) of the Japan Trademark Law in an opposition by citing his senior registered marks of “MAMAS & PAPAS”.


Opposition

The Opposition Board dismissed an opposition based on Article 4(1)(xi) by stating the ground as follows.

 Sound

Five sounds of opposed mark among 9 sounds in total are identical with opponent mark, however, overall pronunciations are clearly distinguishable due to reverse order of “PAPA” and “MAMA” so that both marks are deemed dissimilar in verbal point of view.

Meaning

Admittedly, both marks may give rise to a meaning of father and mother from word of “PAPA” and “MAMA” respectively. But difference coming from possessive form and plural form inevitably causes non-negligible gap in connotation as a whole.

Appearance

Likewise, both marks are deemed comparatively dissimilar in visual point of view by taking into consideration of reverse order of “PAPA” and “MAMA”, possessive form and plural form.

Conclusion

Taking account of fact that opponent mark has not acquired remarkable reputation as well, the Board decided to conclude both marks are unlikely to cause confusion in the mind of consumers and thus entirely dissimilar.


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

Consumers are unlikely to confuse or associate the mark “GOTHAM CITY” with Batman’s place of residence and DC Comics when used on apparels, bags and fashion accessories

The Appeal Board of Japan Patent Office (JPO) has cancelled an initial decision by JPO examiner to refuse the mark “GOTHAM CITY” with a logo, and ordered to grant protection for the mark by decision of March 14, 2017 [Appeal case no. 2016-9140].


Trademark in dispute

The mark in dispute consists of “GOTHAM CITY” written in alphabetical letters and Japanese characters as shown below.

Applicant filed the mark on April 17, 2015 to the JPO by covering goods of “key holders; fashion accessories” in class 14, “bags; pouches; vanity cases” in class 18, and “clothing; waistbands; belts” in class 25 [TM application no. 2015-37755].


Initial examination

JPO examiner initially refused the mark for confusion with DC comics, a US comic book publisher, or its affiliate pursuant to Article 4(1)(xv) of the Japanese Trademark Law since “GOTHAM CITY” is widely known as a fictitious city out of Batman from DC Comics.

Article 4(1)(xv) is a provision to prohibit any applied mark from being registered where relevant consumers or traders are likely to confuse or associate the mark with renowned sources other than applicant. It would suffice to apply the provision where consumers conceive goods or services with the mark derive from entities systematically or economically connected with the source even if relevant consumers believe the goods or services are not from the source.

It is not conditioned that renowned source indicator should be registered in advance, however, the indicator must obtain high degree of trademark awareness from the nature of things.

Article 4(1)(xv)

Article 4 Notwithstanding the preceding Article, no trademark shall be registered if the trademark:
(xv) is likely to cause confusion in connection with the goods or services pertaining to a business of another person


Appeal

Applicant filed an appeal against the refusal decision by examiner on June 21, 2016 and argued for registration of the mark in dispute.

Consequently, the Appeal Board decided in favor of applicant by stating its grounds as follows.

Distinctiveness/Awareness of GOTHAM CITY

The Board considers that the word “GOTHAM” is an unfamiliar or rarely known word in our society. Thus, the applied mark with a combination of “GOTHAM” and “CITY” and its pronunciation in Japanese characters is deemed an invented word in its entirety and does not give rise to any specific meaning at all.

In the meantime, ex-officio examination during the appeal trial revealed that the term of “GOTHAM CITY” corresponds to a fictitious city out of Batman which has been published by a US publisher, DC Comics, since 1939 as a work of comic book, movies, television programs in series worldwide. In view of high movie box office ranking to Batman movies and DVD series in Japan, it is no doubt that Batman becomes famous among the general public. But, when it comes to “GOTHAM CITY”, it just appears in texts to introduce contents of these movies and DVDs. Board could not find any fact to demonstrate the term is used at advertisement or promotional materials in a manner to attract attention to the public.

If so, the Board may admit a certain degree of awareness of the term “GOTHAM CITY” to represent a fictitious city out of Batman among movie fans. But it must be insufficient to admit the term is widely known among the public in general.

Remoteness with goods in dispute

Apparels, fashion accessories and bags. These goods in dispute for general consumers with an ordinary care are distinctively different from goods or services in the field of entertainment, movie and comics in light of remoteness of manufacturers/suppliers, location of transaction, distribution channels and usage/applications.

Conclusion

Based on the foregoing, the Board held that it is inadmissible to find the term “GOTHAM CITY” has obtained high degree of awareness among ordinary consumers in connection with apparels, bags and fashion accessories at the time of initial application as well as the time of the trial decision.

If so, relevant consumers and traders are less likely to conceive a source of goods with the mark in dispute from entities systematically or economically connected with DC Comics. Accordingly, the Board finds that it is quite unlikely to cause confusion between applicant and DC Comics.

Therefore, the refusal decision errored in applying Article 4(1)(xv) on the case and should be cancelled.


Trademark registration of Geographical names

The Trademark Examination Manual (TEM), official criteria released by JPO, sets forth issues relating to foreign geographical names (TEM 41.103.01).
TEM 41.103.01 provides that name of a city, sightseeing spot will be refused in principle on the grounds that it indicates the location where the goods are manufactured and sold (location of transaction) or the location of service, even though these names may not be directly perceived as the location of transaction in the mind of consumers.

It is noteworthy that TEP has no reference to a name of fictitious city.

Board decision implies name of fictitious city can be registered by unrelated entity to original work of art unless the city gets popular among the public in general as well.

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

A word mark consisting of “Perfect” is deemed dissimilar to Spanish term “PERFECTO”

The Appeal Board of JPO (Japan Patent Office), in an appeal disputing adequacy of examiner’s decision to refuse trademark application for a word mark “Perfect” on the grounds of conflict with a senior registration for word mark “PERFECTO”, overturned examiner’s decision and admitted to grant protection of the mark “Perfect”. [Fufuku 2016-13360]

The mark in dispute was filed on June 8, 2015 designating computer program and other goods in class 9. As a result of ex-officio examination, the JPO examiner refused the mark due to conflict with senior trademark registration no. 5019378 for word mark “PERFECTO” in standard character. Cited registration has been effective since January 19, 2007 covering identical goods in class 9.

In the decision, the Appeal Board held the term “PERFECTO” is unfamiliar to relevant consumers in Japan unlike an English word “Perfect”. Besides, there finds no circumstance to suggest the term is commonly used in connection with the goods in dispute. Thus, the consumers are likely to conceive the term as a coined word.

In the assessment of mark, the Board admitted both marks give rise to same sound, however, concluded it is unlikely to happen that consumers confuse or misconceive a source of origin between the marks in view of distinction in appearance, meaning and overall impression.


Apparently, the Board considered a mere difference arising from alphabetical letter “O” at the ending of both terms is non-negligible in visual and conceptual assessment of the marks by taking into consideration of a fact that “Perfect” is much familiar English word among the public in Japan.

In my personal opinion, the decision paid less attention to Spanish language to my surprise.

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

How to avoid mispronounced marks

Unique writing system of the Japanese language consists of three different character sets: Kanji (several thousands of Chinese characters), and Hiragana and Katakana (two syllabaries of 46 characters each).

Specifically, Katakana gets used for writing foreign loanwords phonetically.

By virtue of Katakana, we get a clue to learn proper pronunciation of unpronounceable alphabetical words. In this regard, Katakana is obviously of great help to avoid phonetic slip-ups and mispronouncing high-profile brand names in Japan.

For instance,

When we come across a word “YVES SAINT LAURENT” for the first time, we most likely call it “i-bes-sein-to-lo-ren-to”.

Likewise, we may call “L’OCCITANE” as “lo-sshi-ta-ne”, “PEUGEOT” as “pe-u-ge-o-to”, “RENAULT” as “re-na-u-ru-to”, “agnès b” as “a-gu-ne-su-bi”, “MONC BLANC” as “mon-to-bu-ran-ku”, “T-fal” as “tei-fa-lu”.

 

In other words, less attention to Katakana in promoting alphabetical brand names is likely to result in mispronunciation among the relevant public in Japan as you can see from the examples.

What’s worse, it may give rise to tragedy that trademark registration for the alphabetical name is insufficient to force unauthorized entity to cease his use of a mark consisting of Katakana to represent correct pronunciation of the name due to dissimilarity of the marks.

Provided that trademark registration is solely composed of alphabetical words, pronunciation of the mark is construed based on the most natural, logical way to pronounce it.

In this regard, it was a bit surprise that the Supreme Court judged a word mark written in Katakana pronounced as “reeru-dyu-tan” is phonetically identical with a registered mark “L’Air du Temps” in Case 1998 (Gyo-Hi) 85. Undoubtedly the judgement was based on the facts that “L’Air du Temps” had become well-known as a brand of perfume and the registered mark had been advertised accompanying a Katanaka “reeru-dyu-tan” as well.

http://www.courts.go.jp/app/hanrei_en/detail?id=493

When we come across a word “L’Air du Temps” for the first time, little thought is given to call it “reeru-dyu-tan”. The most natural way to pronounce it is “lu-ear-dyu-ten-po-su” indeed.Thus, the Supreme Court judgement should not be considered to negate necessity of Katakana in avoiding mispronounced marks.

 

It is advisable to use and register a Katakana word representing correct pronunciation of brand name as well as the alphabetical letters, especially where the letters are unpronounceable to the Japanese and thus natural pronunciation is not what a brand owner expects the Japanese to call it.