ENRICO COVERI failed to remove “COVERI” from trademark registration

The Opposition Board of Japan Patent Office (JPO) held in an opposition filed by Enrico Coveri Società a Responsabilità Limitata (Opponent) that trademark registration no. 5874843 for a word mark “COVERI” (Opposed mark) shall remain as valid as ever and dismissed claims in the opposition entirely.
[Opposition case no. 2016-900368]


Opposed mark (see below) was applied for registration on November 27, 2015 by designating various kinds of goods in class 25 including apparels and shoes, and published for registration on September 20, 2016without any office action from the JPO examiner.


Opponent claimed that the opposed mark “COVERI” shall be cancelled on the basis of Article 4(1)(vii), (viii), (x), (xi), (xv) and (xix) of the Japan Trademark Law by citing senior trademark registrations for word mark “ENRICO COVERI”, a name of the late Italian fashion designer, in class 18, 24 and 25.


In the opposition decision, the Board concluded that “ENRICO COVERI” and “COVERI” are both dissimilar in appearance, pronunciation and concept.

Besides, the Board did not admit a high degree of popularity and recognition to “ENRICO COVERI” among relevant public in Japan because of insufficient evidence to demonstrate amount of sales, number of stores and expenditure for promotion and advertisement (Opponent has just produced some photographs or articles appeared in fashion magazines).

Based on the fact finding, the Board concluded that opposed mark was not filed in a malicious intent to do harm to the designer’s fame, and “COVERI” shall not be deemed as an abbreviation of “ENRICO COVERI”. Therefore, there finds less likelihood of confusion between “COVERI” and “ENRICO COVERI” even if both marks are used on apparels or shoes.


It is highly advisable to an owner of high-end or luxurious brand, consisting of two or more alphabetical words, to have each word registered as well for the purpose of preventing free-riding and enjoying a broader scope of protection against use by others.

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

American heavy metal band, METALLICA failed in an opposition against trademark METALICA

In a recent Japan trademark opposition decision, the Opposition Board of JPO ruled that a word mark “METALICA” (Opposed mark) is unlikely to confuse with “METALLICA” well known for an American heavy metal band in connection with goods of class 9 and 14. [Opposition case no. 2016-900260]

Opposed mark

Opposed mark, solely consisting of a word “METALICA” written in a plain alphabetical letter, was filed on June 25, 2015 in the name of LG Electronics Incorporated, a Korean corporation, by designating various electronics, such as, smart phone, cell phones, personal digital appliance (PDA), audio stereo, music players of class 9 and watch, personal ornaments of class 14. JPO granted to register the mark on May 20, 2016 under TM registration no. 5851357.

 

Opposition

The Japan Trademark Law provides that anyone is entitled to file an opposition against new trademark registration within two months from the publication date of gazette under article of 43bis.

METALLICA filed an opposition against the mark “METALICA” by citing IR no. 858989 for a word mark of “METALLICA” covering goods of class 3, 6, 9, 14, 16, 25, and asserted to cancel Opposed mark based on article 4(1)(viii) and 4(1)(xv) of the Trademark Law.

 

Article 4(1)(viii)

Article 4(1)(viii) prohibits to register a mark containing the portrait of another person, or the name, famous pseudonym, professional name or pen name of another person, or famous abbreviation thereof (except those the registration of which has been approved by the person concerned). The article aims to protect personal right of living person or legal entity.

Opponent, METALLICA, a partnership corporation established by members of the band, alleged that Opposed mark “METALICA” can be conceived of the opponent or US famous heavy metal band due to identical appearance and pronunciation with “METALLICA”.

The Board dismissed the allegation of Article 4(1)(viii) by stating that “METALICA” does not contain “METALLICA” in a precise and strict sense.

 

Article 4(1)(xv)

Article 4(1)(xv) prohibits to register a mark which is likely to cause confusion in connection with the goods or services pertaining to a business of another person.

Opponent alleged relevant consumers are likely to confuse or misconceive goods with Opposed mark “METALICA” as goods from opponent in view of similarity of both marks and substantial reputation acquired among rock music fanatics.

The Board admits widespread reputation of “METALLICA” among traders and consumers relating to goods and service of rock music, such as music CD and music live performance. In the meantime, famousness of the mark “METALLICA” on any goods and service unrelated to music was denied.

In the assessment of similarity, the Board admitted both marks are deemed similar in appearance, sound, concept. However, the goods designated under Opposed mark are remotely associated with T-shirts, caps, posters, badges, music videos and goods or service related to American rock music of METALLICA’s interest.

Based on the forgoing, the Board concluded that “METALICA” is unlikely to confuse or misconceive with “METALLICA” in connection with goods of class 9 and 14.

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

Name of a deceased historical person as trademark

Trademark containing the name, famous pseudonym, professional name or pen name of another person in-life, or famous abbreviation thereof is prevented from registering based on Article 4(1)(viii) of the Japanese Trademark Law.

 Article 4(1)(viii) is applicable only to a person in-life, however.

What happens to the name of a deceased historical person?

 JPO admitted to register the following surname of historical person as trademark filed during the past half decade by an entity apparently unrelated to the person or his descendant.

Reg No. 5501361 for word mark “CLEOPATRA” in class 31

Reg No. 5610909 for word mark “NAPOLEON” in class 14

Reg No. 5870913 for word mark “EDISON” in class 21

Reg No. 5744685 for word mark “MOZART” in class 11

Reg No. 5514116 for word mark “NEWTON” in class 9, 41

Reg No. 5744686 for word mark “PICASSO” in class 11

Reg No. 5537255 for word mark “KENNEDY” in class 25

 

Meanwhile, “ANNE FRANK”, “JOHN LENNON”, “JAMES DEAN”, “MARILYN MONROE”, “CHAPLIN”, and “MOTHER TERESA” has been registered as a trademark owned by specific organization

 

Trademark Examination Manual (TEM) 42.107.04 revised in 2009 refers to approach to application filed for registering a trademark created after the name of a historical person or name of a well-known or famous deceased person.

 1. In the process of examining an application filed for registering a trademark, examiners should pay special attention to the application for a trademark created after the name of a historical person since using or registering such application may cause damage to social and public interest, irrespective the unobjectionable composition of the trademark, or generally-accepted sense of morality, which may fall under Article 4(1)(vii) of the Trademark Act. Specifically, they should analyze such application if it would fall under the provision, comprehensively taking the following backgrounds into consideration:

1) Popularity of the well-known or famous historical person;

2) Acceptance of the name of the historical person among the nation or region;

3) Availability of the name of the historical person;

4) Relationship between the availability of the name of the historical person and the designated goods or services;

5) Circumstance, purpose, or reason of the application; and

6) Relationship between the historical person and the applicant.

2. In the process of the examination said above, especially when examiners recognize the application as “an application for registering the trademark filed by the applicant who takes advantage of the measures for public interest using the name of a historical person, who hinders the execution of the measures, and who intends to monopolize the interest while he/she knows that the application would result in damaging public interest,” the application falls under Article 4(1)(vii) of the Trademark Act based on the idea that the application may disrupt the order of fair competition and cause damage to social and public interest.

 In a lawsuit disputing invalidity of mark “CARNEGIE SPECIAL”, the court ruled that the registered trademark as a whole was invalidated due to violation of public policy because it was presumed that the plaintiff had illegally intended to use the achievement of Dale Carnegie Note (1888 – 1955), famous writer, for his own business. (Decision by the Tokyo High Court, August 29, 2002 [2001 (Gyo Ke) No. 545])

To sum up, since 2009, it becomes evident that where an applied mark corresponds to the name of a historical person, the mark shall not be registered if its registration is likely to cause damage to public policy on the ground of violation of Article 4(1)(vii) and TEM 42.107.04. Inter alia, where a specific organization manages IP right of historical person, JPO will refuse registration of the name of such person accordingly.