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

V&W is unlikely to cause confusion with VW emblem

In a recent trademark opposition involving the circular Volkswagen logo, the Opposition Board of Japan Patent Office (JPO) decided that famous VW emblem is entirely dissimilar to, or unlikely to cause confusion with, the word mark “V&W” in standard character when used on retail services for automobiles [Opposition Case no. 2017-900009].


Trademark opposition

German car giant Volkswagen AG filed an opposition against TM registration no. 5888513 for word mark “V&W” written in standard character (Opposed mark) on the grounds that Opposed mark violates Article 4(1)(xi), 4(1)(xv) and 8(1) of the Trademark Law based on senior trademark registrations for the VW emblems and a word mark “VW”.
The opposed mark designates retail services or wholesale services for automobiles and various other goods in class 35.

Volkswagen argued Opposed mark gives rise to a pronunciation of “vi: dʌb·l·juː” by omitting “&” since the prevalent symbol representing a word of “AND” is just to connect “V” and “W”, and relevant traders and consumers are prone to omit the symbol in pronouncing the entire mark in light of transactional customs at present. If so, Opposed mark is deemed similar to the VW emblem as well as “VW” in visual, phonetical and conceptual point of view.

Besides, the VW emblem has acquired substantial popularity and reputation as a source indicator of famous automobile maker, Volkswagen. Thus, it is highly likely that relevant traders and consumers confuse the source of retail service for automobiles and its parts using Opposed mark “V&W” with opponent or a business entity systematically or economically connected with the opponent.

 


Board decision

The Board admitted the VW emblem has become famous for a source indicator of opponent by taking into consideration of the facts that opponent’s cars with the VW emblem have been continuously imported to Japan since 1978 at the latest and ranked in the top 3 of new imported automobile registrations for the past three years.

In the meantime, the Board denied high awareness of the word mark “VW” as a source indicator of opponent. A mere definition of VW to indicate the opponent in a dictionary is insufficient since the term is often seen in conjunction with corporation name “Volkswagen” in newspaper, magazines and newsarticle on a website.

In the assessment of trademark similarity, the Board concluded that “V&W” is obviously dissimilar to the VW emblem and “VW” in appearance, pronunciation and meaning. Due to substantial distinction between the marks, relevant traders and consumers are less likely to confuse or associate “V&W” with opponent and any business entity systematically or economically connected with opponent.

Based on the foregoing, the Board dismissed opposition and allowed “V&W” to survive.


It is noteworthy that a mark consisting of two alphabetical letters written in a plain font design is considered less distinctive in Japan. In this respect, IR no. 1272004 for the word mark “VW” did not function to broadly protect the VW emblem in favor of Volkswagen.

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

Who shall be a legitimate owner of smiley face mark?

In a lawsuit disputing adequacy of decision by the JPO Appeal Board (Appeal case no. 2016-15097) to refuse the applied mark composed of a name of the earliest known designer of the smiley, “Harvey Ball”, and the Smiley Face (TM2015-74154, class 25) due to a conflict with cited senior registrations no.1 to 3, the IP High Court sustained the decision being appealed.[Case no. Heisei 29 (Gyo-ke) 10034, Court decision date: August 8, 2017]

The applicant, a Japanese legal entity authorized to manage intellectual property of The Harvey Ball World Smile Foundation, argued dissimilarity of the smiley design and alleged that the design becomes less distinctive as a source indicator, but just a stylized representation of a smiling humanoid face on the grounds that similar designs have been used for many years and 7,000 marks containing the design are/were registered.
Besides, taking account of a high degree of popularity as the earliest known designer, the word element of “Harvey Ball” shall function dominantly as a source indicator in applied mark. If so, applied mark shall be dissimilar to cited registrations.

But the Court denied them entirely based on following reasons.

  • Court found the smiley design representing a smiling human face in a simple and symbolic manner is sufficiently distinctive. No adverse evidence is produced.
  • Given the word element of “Harvey Ball” depicted slightly over the Smiley Face is written in a common font design and a small font size, most impressive portion of the applied mark shall be the Smiley Face from appearance.
  • In view of visual impression, both the Smiley Face of applied mark and cited registrations can be easily seen to depict a smiling human face in a simple and symbolic manner. Accordingly, both marks are deemed similar.
  • Even if cited registrations happened to be associated with the Smiley Face created by Harvey Ball, it would not affect the decision. Likewise, the word element of “Harvey Ball” in applied mark has less influence to the decision as well.

The Court decision gives us a lesson that high popularity of the Smiley Face designer will not guarantee the position of a trademark owner to the design if it becomes a generic symbol as a result of widespread, common use in the marketplace.

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

“AI inside” is unlikely to be associated with INTEL

In a recent decision, the Opposition Board of Japan Patent Office (JPO) decided to dismiss the trademark opposition filed by Intel Corporation to mark “AI inside”.

“AI inside”

The mark in dispute, consisting of a word mark “AI inside” in standard characters, was filed on March 28, 2016 in the name of AI inside Kabushiki Kaisha, a Japanese corporation, by designating computer programs and electronic devices in class 9, and providing computer programs on data networks, software as a service [SaaS] in class 42. JPO granted to protect the mark without announcing any refusal ground as a result of substantive examination and published for registration on October 18, 2016.

Intel opposes to trademark registration

Intel Corporation, famous for the world’s largest semiconductor company, filed an opposition to the mark “AI inside” and requested the Board to cancel its registration due to violation of Article 4(1)(xi), (xv) and (xix) of the Japan Trademark Law retroactively.

“Intel inside”

In the opposition, Intel cited following senior trademark registrations containing a term of “inside”.

Series of “INSIDE” marks

Intel claimed the mark “AI inside” should be deemed confusingly similar to “Intel INSIDE” and other “INSIDE” marks cited by opponent since opposed mark allocates the term “inside” subsequent to other word as well. Given the cited marks respectively become famous for source indicator of opponent or its products, relevant traders and consumers are likely to confuse or misconceive both marks are from the same business entity. Besides, presumably applicant must have applied the opposed mark by knowing of Intel Corporation and cited marks in advance. If so, it is undeniable that applicant maliciously aimed to tarnish or free-ride on the reputation and goodwill of the opponent by adopting a similar mark.

Board decision

The Opposition Board admitted that both terms of “Intel” and “intel inside” have become famous to indicate opponent or his products among relevant traders and consumers, however, denied a certain degree of recognition to other cited marks relating to “INSIDE” owned by opponent based on the facts that opponent failed to produce evidences to demonstrate actual use of mark allocating “INSIDE” subsequent to a term other than “intel” and that the term “inside” is a generic term used to mean an inner side.

In the assessment of trademark similarity, the Board concluded opposed mark is evidently dissimilar to the citations from visual, phonetic and conceptual aspect, partly because the term of “AI” is known for an abbreviation of Artificial Intelligence. It is quite unlikely, the Board found, that famous mark “Intel inside” gives rise to a sound of “inside” in the mind of relevant traders and consumers by neglecting prominent mark “Intel”. If so, the same configuration allocating “INSIDE” subsequent to other term is insufficient to take sides with opponent’s allegation that relevant consumers conceive the opposed mark as a series of opponent mark. Given dissimilarity of both marks and unlikelihood of confusion due to a low degree of recognition to the cited “INSIDE” marks other than “Intel inside”, applicant should not be blamed for malicious intention in registering the opposed mark accordingly.

Based on the foregoing, the Board dismissed the opposition entirely and granted trademark registration no. 5881845 for the mark “AI inside” in class 9 and 42.
[Opposition case no. 2016-900399]

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

 

SKY ROVER is unlikely to cause confusion with LAND ROVER when used on wallets, school bags, handbags and trunks

The Opposition Board of Japan Patent Office decided to dismiss an opposition claimed by Jaguar Land Rover Limited who alleged trademark registration no. 5844561 for the mark “SKY ROVER” with figurative elements (see below) designating goods of “wallets, school bags, handbags, and trunks” in class 18 owned by a Taiwanese is confusingly similar to “ROVER”, “LAND ROVER”, “RANGE ROVER” famous for four-wheel-drive vehicles produced by the opponent.

Jaguar Land Rover Limited cited ten trademark registrations for “LAND ROVER” or “RANDE ROVER” and produced evidences to demonstrate substantial use in Japan since 1990’s. However, the Board did not approve high levels of consumer recognition to the marks in association with cars due to a failure to disclose sales amount, advertisement or promotional activity and annual car sales in connection with the cited marks. If so, it is unlikely that consumers consider a term of “ROVER” independently from the configuration of cited marks. In the assessment of trademark similarity, both marks are apparently dissimilar as a whole from visual, sound and conceptual point of view even if they contain a term “ROVER” in common.

Besides, by taking into consideration of remoteness of cars and opposed goods (wallets, school bags, handbags and trunks), it is less likely that consumes misconceive or associate the opposed mark with “LAND ROVER” or “RANDE ROVER” nor confuse goods with the opposed mark from any business entity connected with opponent.

Based on the foregoing, the Board decided to sustain registration of the opposed mark since the opposition was totally groundless. [Opposition case no. 2016-900200]

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

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 permits registration of trademark “Re+Cell” by denying similarity to a word mark “ReCell”

In a dispute over trademark similarity between “Re+Cell” and “ReCell”, the Appeal Board of Japan Patent Office (JPO) determined both marks are dissimilar in visual, phonetical, and conceptual point of view.

Re+Cell vs. ReCell

The mark in dispute, consisting of the letters “Re” and “Cell” locating “+” in between, was applied for registration on July 22, 2015 by designating goods of cosmetics (class 3) in the end.

JPO examiner refused the applied mark on the grounds of conflict with a senior trademark registration no. 5661464 for word mark “ReCell” in standard character covering goods of cosmetics, soaps, flagrances (class 3) and dietary supplements (class 5), effectively registered since April 4, 2014.Applicant filed an appeal against the refusal and contended dissimilarity of the marks.

Appeal

Appeal Board ruled in favor of applicant based on the following factual findings.

  1. Applied mark gives rise to a pronunciation of “ri-purasu-seru” or “re-puresu-seru” from appearance, but no specific meaning in its entirety.
  2. Cited mark gives rise to a pronunciation of “ri-seru” or “re-seru”. Respective term composing the mark means “microscopic structure containing nuclear and cytoplasmic material” and “a prefix used with the meaning ‘again’”, however, concept of the mark is unspecified as a whole.
  3. From appearance, both marks are sufficiently distinguishable due to presence or absence of “+”.
  4. Sound of both marks is clearly dissimilar in view of nature and number of the tone.
  5. As long as no specific meaning is conceived from both marks, the marks are conceptually dissimilar.

As a consequence, applied mark is deemed dissimilar to the cited mark and the Board withdrew the refusal. [Appeal case no. 2016-16102]

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

“WORLD SERIES OF FIGHTING” is less likely to cause confusion with “WORLD SERIES” owned by Major League Baseball Properties, Inc.

The Opposition Board of JPO (Japan Patent Office) dismissed an opposition claimed by Major League Baseball Properties, Inc., a US corporation managing trademark portfolio pertinent to US major league baseball, and determined to sustain trademark registration no. 5858151 for word mark “WORLD SERIES OF FIGHTING” [Opposition case no. 2016-900288].

WORLD SERIES OF FIGHTING

The mark in question consists of a standard character mark “WORLD SERIES OF FIGHTING” covering the goods of apparels, shoes, caps, underwear, uniforms and sportswear (class 25) and the service of entertainment or events relating to Mixed Martial Arts (class 41).

OPPOSITION by Major League Baseball Properties, Inc.

Major League Baseball Properties, Inc. filed an opposition based on the grounds that (i)WORLD SERIES OF FIGHTING” conflicts with senior trademark registrations for the mark “WORLD SERIES” owned by the opponent due to similarity between marks, (ii) there finds a likelihood of confusion with the source between marks because of high recognition of “WORLD SERIES” to indicate the annual championship of baseball games between the champions of the two major baseball leagues in the United States, the American League and the National League.

Similarity between marks

In evaluating the similarities between marks, the Board analyzed the similarity in the sight, sound and meaning of the marks.
The Board concluded “WORLD SERIES OF FIGHTING” is easily distinguishable from “WORLD SERIES” in appearance and pronunciation as a consequence of “FIGHTING” at the end of the mark in question. Besides, “WORLD SERIES OF FIGHTING” gives rise to meaning of a series of global events pertinent to martial art match. In the meantime, “WORLD SERIES” can be conceived to mean the championship games between major baseball leagues in the United States. Evidently, both marks are dissimilar from a conceptual point of view.
Accordingly, both marks are deemed dissimilar.

Likelihood of confusion

As long as both marks are distinctively dissimilar in the sight, sound and meaning as mentioned supra, relevant consumers at an ordinary care are unlikely to confuse or associate the source of the mark in question with the opponent when used on goods and services in dispute even if “WORLD SERIES” has become well-known for a source indicator of the opponent among consumers in Japan.

Accordingly, the Board concluded the opposition should be denied since it lacks grounds to be sustained.


I have no idea why the Board denied a likelihood of confusion between marks despite admitting a widespread reputation of “WORLD SERIES”.
As long as opposed mark contains a famous mark “WORLD SERIES” entirely, it should be cancelled on the goods of class 25 at least in view of similarity between goods in dispute.

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