カテゴリー: Article 4(1)(x)

Google victorious in trademark dispute for YouTube icon

The Trial Board of Japan Patent Office (JPO) recently upheld Google’s invalidation petition against TM Reg. no. 5665763 for the “Video Blog” mark in combination with figurative element (see below) due to similarity to YouTube icon and a likelihood of confusion with Google business.
[Invalidation case no. 2017-890005, Gazette issue date: July 27, 2018]

TM Registration no.5665763

Opposed mark, consisting of two words “Video Blog” in English and Japanese in two lines, and figurative elements depicted in between the words, was applied for registration on August 13, 2013 in respect of broadcasting services for internet in class 38.

Without confronting with a refusal during substantive examination, opposed mark was registered on April 25, 2014.

Petition for invalidation

Japan Trademark Law provides a provision to retroactively invalidate trademark registration for certain restricted reasons specified under Article 46 (1).

Google Incorporated filed a petition for invalidation against opposed mark on January 25, 2017. Google argued it shall be invalidated due to a conflict with famous YouTube icon (see below) and a likelihood of confusion with Google business when used on internet broadcasting services in class 38 based on Article 4(1)(x) and (xv) of the Trademark Law.

Board decision

The Board admitted that YouTube icon has acquired a high degree of popularity and reputation as a sign to play movies and TV shows on YouTube or an icon to start up YouTube application among relevant consumers of broadcasting service for internet.

In assessment of the similarity between two marks, at the outset the Board found that the words “Video Blog” of opposed mark in itself lack distinctiveness as a source indicator in relation to the designated service. If so, the figurative element of opposed mark plays key role as a source indicator. It is unquestionable that the figurative element is highly similar to Youtube icon. Besides, in view of Google’s business portfolio, it is highly predictable that Google launches broadcasting or news distributing business.

Users of Google services are also likely to receive internet broadcasting services.

Based on the foregoing, the Board concluded that, from totality of circumstances and evidences, relevant traders or consumers are likely to confuse or misconceive a source of opposed mark with Google or any entity systematically or economically connected with the opponent and declared invalidation based on Article 4(1)(x) and (xv).

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

Straight Wings Emblem Trademark Battle

In a recent trademark decision regarding straight wings emblem on automobiles, the Opposition Board of Japan Patent Office (JPO) dismissed an opposition filed by BENTLEY MOTORS LIMITED and ASTON MARTIN LAGONDA LIMITED against trademark registration no. 5962270 for a combined mark consisting of “M78 86” and straight wings device due to unlikelihood of confusion.
[Opposition case no. 2017-900293, Gazette issued date: May 17, 2018]

TM registration no. 5962270

Disputed mark (see below) was applied for registration on December 8, 2016 by designating automobiles and other goods in class 12.

Tsubuyara Productions CO., Ltd, a Japanese company, famous for the creator of Ultraman (Japanese Superhero) is a co-applicant of disputed mark.

A month after the filing, during the Press Conference held at Tokyo Auto Salon 2017, Toyota’s new M78 x 86 concept car was unveiled. Toyota, as a car supplier collaborating with Ultraman, aimed to make people “feel like Ultraman”.

“86” is a name for Toyota sports coupe. “M78” comes from Nebula M78, a home world of Ultraman, thirteen million light years away from the earth.

Disputed mark was created to represent the collaboration between Toyota and Tsuburaya.

Opposition

JPO granted registration of the mark on July 7, 2017.

To oppose the mark, Bentley, the most sought after luxury car brand in the world, and Aston Martin, iconic luxury British sports car manufacturer, filed an opposition on the grounds that disputed mark is likely to cause confusion with opponents’ business due to close resemblance and famousness of opponent mark based on Article 4(1)(x), (xi), (xv), (xix) of the Trademark Law.

Article 4(1)(x) prohibits to register a trademark which is identical with, or similar to, other entity’s well-known mark over goods or services closely related with the entity’s business.
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.
Article 4(1)(xv) prohibits to register a trademark which is likely to cause confusion with a business of other entity.
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 Opposition Board admitted a certain degree of popularity and reputation of Opponent emblem as a source indicator of opponent’s business among relevant consumers in the fields of automobiles, however, totally negated similarity of both marks from the perspective of appearance, pronunciation, and concept. Besides, finding that relevant consumers with an ordinary care would pay particular attention to the mark in procuring expensive goods, such as cars, the Board held that a mere graphical resemblance of straight wings is insufficient to find a likelihood of confusion since even opponents are co-existing in peace regardless of the similar straight wings.
Based on the foregoing, the Board concluded that there is no likelihood of confusion between the marks and allowed the “M78 86” straight wings mark valid.

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

Trademark Opposition: “HP” versus “HP MAKER”

In a trademark dispute between “HP” and “HP MAKER”, the Japan Patent Office (JPO) dismissed an opposition filed by Hewlett-Packard, an American multinational information technology company, holding that there is no likelihood of confusion when the “HP MAKER” mark is used on the service of website creation.
[Opposition case no. 2017-900253, Gazette issued date: March 19, 2018]

HP MAKER

Oppose mark, consisting of “HP MAKER” in standard character, was filed on November 16, 2015 by designating website-related services, e.g. “Creation and maintenance of web sites for others; computer programming” in class 42. JPO permitted registration of the opposed mark on April 25, 2017 [TM registration no. 5948103].

Opponent contended that relevant consumers of the web-related services are likely to cause confusion the opposed mark “HP MAKER” with Hewlett-Packard or any business entity systematically or economically connected with opponent since trademark “HP” has already become famous among not only relevant consumers of computers but also general public in Japan as an abbreviation of Hewlett-Packard. If so, opposed mark shall be cancelled on the basis of Article 4(1)(x) and (xv) of the Japan Trademark Law.

Board decision

The Opposition Board admitted a high degree of reputation and popularity of the “HP” mark in connection with computer-related goods as a source indicator of opponent and its business, however, questioned such reputation prevails in the services of class 42 from totality of the circumstances and evidences provided by opponent.
Besides, finding that “HP” is also known as an abbreviation of homepage, the Board held opposed mark “HP MAKER” rather gives rise to a meaning of “person or tool to create homepage” from its configuration in the minds of relevant consumers with an ordinary care when used on the website-related services in dispute.
Based on the foregoing, the Board concluded that there is no likelihood of confusion between the marks and allowed the “HP MAKER” mark to remain valid.

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

Under Armour Lost Trademark Battle Against AGEAS in Japan

The Opposition Board of the Japan Patent Office (JPO) dismissed an opposition filed by Under Armour Incorporated, an American sporting goods manufacturer which supplies athletic and casual apparel, as well as footwear, against trademark registration no. 5924494 for the “H” device mark designating apparels, footwear, headgear, gloves, cycling wears in class 25.
[Opposition case no. 2017-900163, Gazette issue date:  February 23, 2018]

Under Armour logo

In an opposition, Under Armour claimed trademark registration no. 5924494 violates Article 4(1)(x), (xi), (xv) and (xix) of the Japan Trademark Law by citing a senior trademark registration no. 4701254 for the Under Armour logo (see below in left). Cited registration has been effectively registered since 2003 by designating clothing, footwear, sportswear, sports shoes in class 25.

Opposed mark

Opposed mark was applied for trademark registration on August 26, 2016 in the name of AGEAS INC. (USA) covering various goods in class 25 (see above in right).

Without any refusal notice from the JPO, opposed mark was granted for registration on January 16, 2017, and published in gazette for opposition on March 21, 2017.

Subsequently, Under Armour filed an opposition in May.

 

Opposition grounds

Article 4(1)(x) prohibits to register a trademark which is identical with, or similar to, other entity’s well-known mark over goods or services closely related with the entity’s business.
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.
Article 4(1)(xv) prohibits to register a trademark which is likely to cause confusion with a business of other entity.
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.

To sum up, Under Armour wins if the Under Armour logo is considered confusingly similar to opposed mark. Meanwhile, even if the Under Amour logo obtains a high degree of popularity and reputation among relevant public in Japan, the opposition is overruled as long as both marks are dissimilar and unlikely to cause confusion.

 

Board decision

The Opposition Board admitted a high degree of popularity and reputation of the Under Armour logo as a source indicator of opponent among relevant consumers in the fields of sports.

In the assessment of mark appearance, the Board concluded:

“It is apparent that respective mark gives rise to a diverse visual impression in the mind of consumers because of different configuration. Opposed mark can be perceived as a device deriving from ‘H’. In the meantime, the cited mark as a device consisting of ‘U’ and upside-down ’U’. Besides, from phonetical and conceptual points of view, there exists no element to find similarity of the marks. Based on the foregoing, both marks shall be less likely to cause confusion due to a remarkable degree of visual difference.”

 

As a conclusion, the Board decided opposed mark is not subject to Article 4(1)(x), (xi), (xv) and (xix) of the Trademark Law, and admitted to continue a status quo.

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

Apple failed to block Swatch’s attempt to acquire the trademark for Steve Jobs’ catchphrase ‘one more thing’

The Swiss watchmaker Swatch’s effort to acquire the trademark for “SWATCH ONE MORE THING” has run in to opposition from Apple, which argues the phrase ‘one more thing’ is closely associated with the software giant’s founder Steve Jobs. During Apple press events, Jobs was known to precede new product announcements and introductions with the phrase “there is one more thing” in his keynote addresses. The “one more thing” prelude became a fixture at Apple events.

SWATCH ONE MORE THING

The watchmaker has taken out an international trademark on the phrase “SWATCH ONE MORE THING”. The trademark was registered under IR no. 1261460 with the World Intellectual Property Organization (WIPO) in May 22, 2015 by designating more than 40 countries including Japan and various goods in class 9, 14 as follows.

Class09 Apparatus for recording, transmission and reproduction of sound or images; electronic payment processing apparatus, apparatus for processing cashless payment transactions; magnetic recording media, sound recording disks; compact disks, DVDs and other digital recording media; apparatus enabling the playing of compressed sound files (MP3); calculating machines and data processing equipment, software; game software for mobile telephones, for computers and for digital personal stereos; electronic game software for mobile telephones, for computers and for digital personal stereos; computers, portable computers, handheld computers, mobile computers, personal computers, wrist computers, electronic tablets and computerized and mobile devices, digital personal stereos, mobile telephones and new-generation mobile telephones featuring greater functionality (smartphones); telecommunication apparatus and instruments; apparatus for recording, transmission, reproduction of sound or images, particularly mobile telephones and new-generation mobile telephones incorporating greater functionality (smartphones); hand-held electronic apparatus for accessing the Internet and sending, receiving, recording and storing short messages, electronic messages, telephone calls, faxes, video conferences, images, sound, music, text and other digital data; handheld electronic apparatus for wireless receiving, storing and transmitting of data or messages; handheld electronic apparatus for monitoring and organizing personal information; handheld electronic apparatus for global positioning [GPS] and displaying maps and transport information; handheld electronic devices for detecting, monitoring, storing, surveillance and transmitting data relating to the user activity, namely position, itinerary, distance traveled, heart rate; covers for computers, portable and mobile telephones; optical apparatus and instruments, particularly spectacles, sunglasses, magnifying glasses; cases for spectacles, magnifying glasses and sunglasses; batteries and cells for computers and electronic and chronometric apparatus. 

Class14 Precious metals and their alloys and goods made of these materials or coated therewith included in this class, namely figurines, trophies; jewelry, namely rings, earrings, cufflinks, bracelets, charms, brooches, chains, necklaces, tie pins, tie clips, jewelry caskets, jewelry cases; precious stones, semi-precious stones; timepieces and chronometric instruments, namely chronometers, chronographs, clocks, watches, wristwatches, wall clocks, alarm clocks as well as parts and accessories for the aforesaid goods, namely hands, anchors, pendulums, barrels, watch cases, watch straps, watch dials, clockworks, watch chains, movements for timepieces, watch springs, watch glasses, presentation cases for timepieces, cases for timepieces.

Apple filed an opposition

Immediately after the JPO admitted granting protection to the trademark, Apple filed an opposition in May 19, 2015 on the grounds that the trademark violates main paragraph of Article 3(1) as well as 4(1)(vii), 4(1)(x), 4(1)(xv), and 4(1)(xix) of the Japan Trademark Law.

Main paragraph of Article 3(1)

Main paragraph of Article 3(1) demands applicant to have used or intend to genuinely use applied mark. Where examiners have “reasonable doubts” about the use of a trademark or intention to use a trademark by the applicant on the designated goods, the examiners shall reject the application based on the ground. Likewise, the trademark is subject to cancellation if opposition board has convinced of such reasonable doubts during opposition procedure.
Apple claimed that Swatch filed the trademark with a malicious intention to hinder the business of opponent since Swatch has been aware of the phrase ‘one more thing’ used by Steve Jobs. Besides, Swatch has not used the trademark. If so, it is obvious that Swatch will not intend to use the mark on designated goods.

Article 4(1)(vii)

Article 4(1)(vii) prohibits a trademark which is likely to cause damage to public order or morality from registering.
Apple claimed that the trademark should be subject to cancellation based on the ground as long as Swatch, having been aware of the phrase ‘one more thing’ used by Steve Jobs, filed the trademark with a malicious intention to hinder the business of opponent.

Article 4(1)(x)

Article 4(1)(x) prohibits to register a trademark which is identical with, or similar to, other entity’s well-known mark over goods or services closely related with the entity’s business.
Apple claimed that the dominant portion of trademark “SWATCH ONE MORE THING” is similar to Steve Jobs’ catchphrase ‘one more thing’, since the phrase has become famous among relevant consumers as admitted in administrative decision of the Turkish Patent Office. Besides, designated goods in class 9 are closely related with Apple products.

Article 4(1)(xv)

Article 4(1)(xv) prohibits to register a trademark which is likely to cause confusion with a business of other entity.
Apple cited administrative decision of the Turkish Patent Office on the claim as well and alleged that there exists a likelihood of confusion between the applied trademark and Steve Jobs’ catchphrase ‘one more thing’ in due course.

Article 4(1)(xix)

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.
Apple disputed on Swatch’s unfair purpose to free-ride prestigious fame bestowed on the Steve Jobs’ catchphrase as well as to harm or depreciate the value of goodwill by means of trademark dilution.

Opposition Board decision

Opposition Board dismissed Apple’s arguments.

Firstly, the Board denied famousness of the phrase ‘One more thing’ as a source indicator of Apple partly because the phrase can be commonly used in daily conversation and Apple failed to produce evidences demonstrating the phrase is used as a source indicator other than verbal presentation by Steve Jobs.
Secondly, in the assessment of trademark similarity, the Board considered “SWATCH” plays an important and dominative role as a source indicator by taking into consideration of the facts that SWATCH becomes famous among consumers in connection with goods of class 9 and less distinctiveness of the phrase ‘ONE MORE THING”. If so, it should be concluded that  because of presence or absence of “SWATCH” both marks are distinctively dissimilar from visual, sound and conceptual point of view.

Based on the foregoing, the Board decided the opposed mark is not objectionable under Article 4(1)(x), (xv) and (xix) of the Trademark Law due to less recognized awareness of the phrase ‘One more thing’ as a source indicator of Apple and dissimilarity of both marks. The Board also considered that previous trademark disputes between the parties would not suffice to decide Swatch had a malicious intention to hinder the business of opponent. Therefore, the opposition is groundless to conclude the opposed mark is likely to cause damage to public order or morality under Article 4(1)(vii).
Likewise, it is insufficient to conclude that Swatch lacks an intention to use the opposed mark not-too-distant future given the designated goods in class 9, 14 are related to wristwatches to a certain extent (Main paragraph of Article 3(1)).

[Opposition case number: 2016-685012, Decision date: April 20, 2017]

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