Famous hotel brand “RITZ” successful in invalidating “RITZ MARCHE”

Invalidation trial

The Japan Trademark Law contains provision for invalidation of trademark registration by means of inter partes trial in Article 46 as a remedy to questionable ex-officio examination of the Japan Patent Office (JPO).
Statistically, approximately 100 invalidation petitions were filed to the JPO in each of the past five years. Nearly 40 percentages of them ended successfully in an invalidation of registered mark in question on average.

[Trademark invalidation trial]

Year Number of cases Disposition of trial
Invalidation Dismissal Withdrawal
2015 100 37 58 19
2014 115 38 32 15
2013 96 37 53 10
2012 118 44 76 16
2011 112 38 57 9

RITZ v. RITZMARCHE

Ritz Hotel Ltd., a world famous hotel management company, petitioned for invalidation of trademark registration no. 5594878 for a word mark “RITZMARCHE” (written in Katakana letter) covering “retail services or wholesale services for foods and beverages” in class 35 pursuant to Article 46 of the Trademark Law on the following grounds.

  1. Consumers are likely to confuse or associate the mark in dispute with Ritz Hotel due to remarkable reputation bestowed on famous hotel brand, “RITZ”.
  2. “RITZMARCHE” is deemed confusingly similar to senior trademark registrations owned by Ritz Hotel Ltd.

[Marks in dispute]

Ground 1 corresponds to on Article 4(1)(xv) of the Trademark Law to prohibit any mark likely to cause confusion with a business of another entity from being registered.

Ground 2 rests on Article 4(1)(xi) to bar registration of a junior mark which conflicts with any senior trademark registration due to similarity of both marks and goods/services.

It becomes a common practice to raise several grounds in an invalidation petition. Combination of Article 4(1)(xv) and 4(1)(xi) is a standard tactic in trademark dispute involving a famous brand. Theoretically, Article 4(1)(xv) can’t be applied unless Article 4(1)(x) is inapplicable to the case. Article 4(1)(xi) is useful to the extent the marks as well as goods/services in question are identical or similar. In the meantime, Article 4(1)(xv)   targets a wider territory where consumers are likely to confuse the source of origin between marks. In other words, Article 4(1)(xv) becomes helpful only where both marks are dissimilar, or goods/services in question are deemed dissimilar. Due to a wider protection to Article 4(1)(xv), a petitioner who claims the article is required to prove high recognition and substantial use of an opposing mark accordingly.

It is of no matter that JPO renders an invalidation decision simply based on Article 4(1)(xi) without reference to Article 4(1)(xv).

On the Ritz case, the JPO Trial Board held to invalidate registered mark “RITZMARCHE” on the grounds of Article 4(1)(xi).


Board decision

In the assessment of similarity, the Board considered a term “MARCHE” is less distinctive or inherently descriptive in connection with “retail services or wholesale services for foods and beverages” of class 35 since the term itself means “market” in French. Besides it can be seen often as a sign to indicate a place where merchants provide foods or beverages directly to consumers in Japan. Meanwhile, average consumers with an ordinary care are unlikely to perceive any descriptive meaning from the term of “RITZ”. Therefore, in the configuration of disputed mark “RITZMARCHE”, it should be allowed to extract the term “RITZ” as a prominent part of the mark.

In comparing the Katakana letter of “Ritz” with alphabetical term “RITZ” of cited marks, both have same sound. Their meaning is incomparable since both don’t give rise to specific meaning. Both terms are different in appearance, however, it becomes commercially routine to write alphabetical names in Katakana letters for purpose of representing pronunciation of the terms in fact. Based on the foregoing, the Board concluded that “RITZMARCHE” and Ritz Hotel registered marks containing a term of “RITZ” are confusingly similar as a whole, by taking into consideration of relevant factors in commerce relevant to disputed goods/services. The Board also held that “retail services or wholesale services for foods and beverages” in class 35 is considered similar to food products in class 30 designated under the citations.
[Invalidation case no. 2016-890033]

The Board didn’t refer to Article 4(1)(xv) although Ritz Hotel argued famousness of cited mark “RITZ” with enormous amount of evidential materials as mentioned reason.
If Ritz Hotel has filed the invalidation action solely based on Article 4(1)(xv), the JPO must have admitted famousness of the mark “RITZ” and invalidated “RITZMARCHE” likewise.


NEW TRADEMARK EXAMINATION GUIDELINE

In April 2017, the JPO announced new trademark examination guideline [Revision 13].
The guideline aims to reflect recent judicial decisions and non-traditional trademarks. Inter alia, Article 4(1)(xi) is hot topic due to its significance as a key provision pertinent to assessment of mark similarity. From now on, it is more likely that the JPO admits an argument of prominent part of trademark than before, even if the mark consists of other words or figurative elements.
I suppose, the RITZ case is timely ruled in line with New Guideline.

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

The IP High Court ruled a trademark “TOMATO SYSTEM” is deemed similar to “TOMATO” in connection with the service of computer programming

On March 23, 2017, in a lawsuit disputing registrability of an applied word mark “TOMATO SYSTEM” in standard character designating goods of electronic machines, apparatus and parts thereof (Class 9), and services of computer software design, computer programing, or maintenance of computer software; technological advice relating to computers, automobiles and industrial machines; testing or research on machines, apparatus and instruments; providing computer programs on data networks (Class 42), the IP High Court upheld the original refusal decision rendered by the JPO Appeal Board and dismissed the lawsuit filed by applicant, Ishiguro Medical System Co., Ltd. [Case No. Heisei 28 (Gyo-Ke) 10208].

 


 

JPO decision

Initially, JPO examiner rejected to register the applied mark “TOMATO SYSTEM” due to conflict with senior registration no. 4394923 for word mark “TOMATO” in standard character designating services of technological advice relating to computers; computer software design in Class 42 (Citation 1) and no. 5238348 for “tomato” with a device mark designating retail/wholesale services for electrical machinery and apparatus in Class 35 (Citation 2). Applicant sought to file an appeal against the rejection by arguing dissimilarity of both marks, however, the Appeal Board decided to refuse the applied mark on the basis of Article 4 (1) (xi) of the Trademark Law in a decision dated July 28, 2016 [Appeal Case No. 2016-2278].

In the decision, the Board concluded “TOMATO”, an English term meaning red edible fruit, does not imply any descriptive meaning in association with the designated goods and services. In the meantime, a term “SYSTEM” easily reminds consumers of meanings to suggest organized, purposeful structure that consists of interrelated and interdependent elements when used on machines, apparatus and computer software. Unless we find conceptual connection between two terms, it is allowed to segregate the applied mark into each element in the assessment of mark comparison. If so, relevant consumers at an ordinary care are likely to consider the term “TOMATO” as a predominant portion of the applied mark. Based on the foregoing, the Board judged the applied mark is deemed similar to Citation 1 and 2.


IP High Court 

In the lawsuit, plaintiff claimed the Board decision was defectively inappropriate since it is not allowed to segregate each term composing the applied mark in light of tight combination of both terms and ambiguous meaning of the term “SYSTEM” in relating to designated goods and services.

The Court upheld the Board decision by declaring “SYSTEM” is less distinctive in connection with goods or services relating to information processing. Therefore, it is permissible to segregate the applied mark into each element and to judge similarity of mark based on a predominant element of the mark in dispute.



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

First to file rule – How to solve a conflict filed on the same date

The Japan Trademark Law follows “first to file” rule under which a registration is granted to the person who is first to file a trademark application, whether or not he or she began to use the mark before others.

 

Article 4 (1)(Xi) of the Trademark Law

“No trademark shall be registered if the trademark is identical with, or similar to, another person’s registered trademark which has been filed prior to the filing date of an application for registration of the said trademark, if such a trademark is used in connection with the designated goods or designated services relating to the said registered trademark, or goods or services similar thereto.”

 

Provided that a senior mark has yet to be registered at the time of a junior application, but expected in due course, Article 8(1) is applicable.

 

Article 8(1)

“Where two or more applications for trademark registration relating to identical or similar trademarks which are to be used in connection with identical or similar goods or services have been filed on different dates, only the applicant who filed the application for trademark registration on the earlier date shall be entitled to register the trademark in question.”

 

Article 4(1)(xi) and 8(1) provides a decisive solution to deal with conflicting marks filed in different dates based on the “first to file” rule.

 

What happens when conflicting marks are filed on the same date?

 

Article 8(2), (4) of the Trademark law stipulates that the JPO requests applicants to negotiate voluntarily to determine which party is entitled to be a registrant.

 

Article 8(2)

“Where two or more applications for trademark registration relating to identical or similar trademarks which are to be used in connection with identical or similar goods or services have been filed on the same date, only one applicant who is to be determined by consultations among the applicants who filed such applications shall be entitled to register the trademark in question.”

 

Given applicants failed to reach an agreement, the JPO conducts a lotteryto select either applicant for registration in accordance with Article 8(5).

The lottery is conducted using a lottery machine.

 

Article 8(5)

“Where no agreement is reached in the consultations held pursuant to paragraph (2) or no report is submitted within the designated time limit set forth in the preceding paragraph, only one applicant, selected by a lottery in a fair and just manner conducted by the Commissioner of the Patent Office, shall be entitled to register the trademark in question.”

 

This can offer us a valuable lesson.

Get good luck on your side to win a trademark registration in addition to complying with “first to file” rule!

 

Procedures for the public lottery can be seen at Trademark Examination Manual.

https://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/pdf/44-01.pdf

1187hirai%e4%bf%ae%e6%ad%a3003_2 Masaki MIKAMI – Attorney at IP Law (Japan)

“ROYAL PRESTIGE NEO” is decided similar to “ROYAL PRESTIGE” (JPO Appeal No. 2015-5083)

The Appeal Board of the JPO decided a word mark “POYAL PRESTIGE NEO” covering the goods of “Schoolchildren’s backpacks” in class 18 is confusingly similar to senior registrations for mark consisting of, or containing the term “ROYAL PRESTIGE” in the same class.

 

JPO examiner refused to register an applied mark “ROYAL PRESTIGE NEO” by citing senior registrations for the mark “ROYAL PRESTIGE”.

 royal-prestige-neo

Applicant filed an appeal against examiner’s decision and argued that

“In evaluating similarity of mark, the term “PRESTIGE NEO”, having a meaning of “new fame”, in configuration of the applied mark should be considered predominant since the word “ROYAL” is used to suggest quality with the highest grade in the Schoolchildren’s backpacks industry.”

 

However, the Board rejected such arguments on the grounds that:

“in consideration of configuration and meaning of respective word constituting the applied mark, “ROYAL PRESTIGE” is easily recognized as an implication of “fame of king. Meanwhile, it is difficult to consider that “NEO” (new) at the end modifies “ROYAL” and “PRESTIGE” immediately, and thus three words are hardly recognized as an implication of ” new king’s(fame)” and “new fame (king’s)”

“NEO (new) is a word which generally indicates the quality of goods, and it is assumed that “NEO” does not have the function for distinguishing relevant products from others, namely a weak term as source indicator. In the industry for dealing with Schoolchildren’s backpacks, bags, and the like, the word “NEO” coming after product name or series trade name is commonly used to indicate a goods is different from traditional ones or the latest product. As a consequence, where the applied mark is used on the designated goods, traders and consumers at the sight of applied mark are likely to perceive the portion of “ROYAL PRESTIGE” having a meaning of “fame of king” as a source indicator, and remaining term of “NEO” as a mere indication of quality of the goods in dispute. Even though a term “ROYAL” is occasionally used to suggest quality of goods, it is not applicable to the subject case by taking into consideration of a whole configuration of the applied mark.”

 Applicant counterargued by referring to coexisting registrations in order to bolster and demonstrate dissimilarity of mark admitted by JPO previously notwithstanding a mere difference of term “NEO”.

 The Board dismissed the allegation on following grounds as well.

“similarity of mark should be specifically and individually determined by considering configuration and aspect of respective mark, actual state of transaction of goods, and by comparing both marks in dispute at a time of decision or appeal decision. It is not mandatory to be bound by precedent decisions or coexisting registrations in the past”

“AQUA COLLAGEN GEL” is not a descriptive term, but a source indicator by means of acquired distinctiveness.

On October 27, 2016, the IP High Court ruled to uphold a decision by JPO declaring cancellation of opposed mark “ Dr.Coo / AQUA COLLAGEN GEL” due to conflict with senior registrations containing a term of “Aqua-Collagen-Gel” (Case no. Heisei 28 (Gyo-ke) 10090).

JPO declared cancellation of the opposed mark “Dr.Coo / AQUA COLLAGEN GEL” (see below) covering goods of “Collagen gel cosmetics; collagen gel soaps” in class 3 on the grounds that the mark is confusingly similar to senior trademark registrations cited by an opponent, an owner of Dr. Ci:Labo brand.

 aqua-collagen-gel

Applicant of the opposed mark filed a lawsuit against the decision to the IP High Court. In the lawsuit, applicant alleged that it was JPO’s error to have considered “AUQ COLLAGEN GEL” as a distinctive term in relation to the designated goods of class 3 since the term merely describes quality or material of goods in dispute and thus it can’t even take a role of source indicator.

 

In view of material facts that an opponent has consecutively used the term “Aqua-Collagen-Gel” on cosmetics since 1999, cumulative quantity of the cosmetics amounts to 30 million by the year 2015, recent annual sale of the cosmetics exceeds 12 billion JP Yen and frequent TV advertisement and publications, the IP High Court admitted the term “Aqua-Collagen-Gel” has independently served function as a source indicator of the opponent even if opponent’s cosmetics depict so-called house mark “Dr. Ci:Labo” adjacent to Aqua-Collagen-Gel”.

Based on above findings, the Court dismissed applicant’s argument to insist dissimilarity of both marks on the grounds that average consumers are likely to pay attention to a term “AQUA COLLAGEN GEL” in configuration of the opposed mark and consequently associate the term with opponent products irrespective of existence of “Dr.Coo”.

“ANNIVERSARY DIAMOND” versus “ANNIVERSARY”

The JPO Appeal Board ruled that

a senior trademark registration for the mark “ANNIVERSARY” in standard character designating jewelry in class 14 is unlikely to cause confusion with a junior mark “ANNIVERSARY DIAMOND” written in plain letters other than a letter “O” which was replaced with a diamond-ring device (see below), even if the mark is used on diamond rings in class 14[Fufuku2015-19812].


anniversary-diamond


The Appeal Board cancelled a refusal decision rendered by the JPO examiner on the grounds that:
(1) From appearance and pronunciation, the “ANNIVERSARY DIAMOND” logo can be perceived as one mark in its entirety. Besides, both terms of “ANNIVERSARY” and “DIAMOND” are quite familiar with relevant public in Japan and thus concept of “ANNIVERSARY DIAMOND” can be easily conceived from the combination.
(2) Due to the configuration, it must be appropriate to consider that the logo just gives rise to its pronunciation and meaning as a whole.
(3) Therefore, the refusal decision based on the assumption that the term of “ANNIVERSARY” plays a dominant role in the logo made a factual mistake and should be cancelled consequently.

Seemingly, above conclusion is not coincident with the Trademark Examination Guidelines (TEG) criteria as below.

Chapter III, Part 10 of TEG provides that:
A composite trademark having characters representing an adjective (characters indicating the quality, raw materials, etc. of goods or characters indicating the quality of services, the location of its provision, quality, etc.) is judged as similar to a trademark without the adjective as a general rule.

In this respect, as long as the junior mark designates diamond rings in class 14 and the device depicted on the term “DIAMOND” further impresses the concept of diamond rings in mind of consumers, the portion of “DIAMOND” should be considered descriptive. Otherwise, any combined mark composed of registered mark and a generic term pertinent to the designated goods is deemed dissimilar to the registered mark.

I suppose the Board just aimed to declare narrower scope of right where trademark consists of a dictionary word commonly used to the public.

Similarity of Goods and/or Services

Article 4(1)(xi) of the Japanese Trademark Law stipulates that trademark is not registrable if it is identical with, or similar to, another entity’s senior registration provided that the applied trademark is used in connection with the same designated goods or designated services related to the senior registration.

In evaluating dissimilarity of goods or services between the applied mark and senior registration, JPO relies on “Examination Guidelines for Similar Goods and Services (EGSGS).”

EGSGS, in compliance with the Nice Classification, categorize goods having commonality in terms of the production sector, the sales sector, raw materials, qualities, etc.; or services having commonality in terms of how they are being offered, the purposes for which they are being offered, the places they are being offered, etc.

It aims to determine which goods or services belong to which group in light of above commonality, and therefore, in principle, goods/services in each group is deemed similar respectively.

Each group is numbered with a five-digit, common, alphanumeric code, which is called “Similar Group Code (SGC)”.

Similar Group Code (SGC)

As an established examination practice, JPO has considered any goods and services assigned to the same SGC to be in principle similar to each other.

[Example of SGC for goods]

–       Cl.16 Books (26A01)

–       Cl.24 Towels (17B01)

[Example of SGC for services]

–       Cl.41 Educational services for art, sports, or knowledge (41A01)

–       Cl.44 Medical practices (42V02)

 

Same code can be numbered even if each goods/services is classified in different class based on the Nice Classification, vice versa.

[Example of same SGC in different class]

–       Cl.14 Jewelry case (20A01) similar to Cl.20 Furniture (20A01)

[Example of different SGC in same class]

–       Cl.16 Books (26A01) dissimilar to Cl.16 Pencils (25B01)

 

As trademark practitioner, SGC provides us useful information in assessing registrability of a junior mark and possibility of trademark infringement.

In the meantime, occasionally it becomes an unexpected obstacle in view of less likelihood of confusion in the course of actual trade.

Similar code system is introduced in neighboring Asian countries, such as Korea and China.

 

If you want to find more information on SGC, please visit at a website of the JPO for your reference.

https://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/goods_services_10-2016.htm

How to decide similarity of composite marks

The Japanese Trademark Law sets forth:

– the use of a trademark similar to the registered trademark constitutes infringement of trademark right (Article 37(1)),

– trademark shall not be registered if the trademark is similar to another entity’s senior registered trademark (Article 4(1)(xi)).

It remains unclear from the articles how we can discriminate marks in dispute are similar or dissimilar.

Trademark examination guideline (TEG) plays a role to provide us with key factors in the assessment of similarity of marks.

[TEG Chapter 3, Part 10]

1.In judging the similarity of a trademark, decisive elements of the trademark, including its appearance, sound and concept need to be comprehensively taken into consideration.

2.A judgment on the similarity of a trademark needs to, with consideration given to a class of main users (for example, professionals, senior people, children, women, etc.) of goods or services on which the trademark is used, be made based on attentiveness usually possessed by the user, with consideration given to the state of transaction of the goods or the provision of the services.

The guidelines are set forth in conformity with precedent decisions of the Supreme Court.

In regard to composite marks, TEG enumerates seven cases and corresponding examples as follows.

 6.Concerning the similarity of a composite trademark composed of two or more elements, a judgment needs to be made based on the following among other things, with consideration given to the strength of a combination between its elements. However, this does not apply where such a trademark is judged clearly to produce a remarkably different appearance, sound and concept.

(1) A composite trademark having characters representing an adjective (characters indicating the quality, raw materials, etc. of goods or characters indicating the quality of services, the location of its provision, quality, etc.) is judged as similar to a trademark without the adjective as a general rule.

[Example]

“SUPER LION” v. “LION”,

“GINZA KOBAN” v. “KOBAN”,

“LADY GREEN” v. “LADY”

(2) A trademark composed of letters different in size is judged with respect to a group of letters identical in size as a general rule.

[Example]

“富士白鳥” v. “富士” or “白鳥”

“サンムーン” v. “サン” or “ムーン”

(3) A trademark composed of letters conspicuously separate apart from each other is judged with respect to a group of letters separate from others as a general rule.

[Example]

“鶴亀  万寿” v. “鶴亀” or “万寿”

(4) A trademark which, because of its long sound or its particularly conspicuous portion, may be simplified with a certain portion thereof is compared with other trademarks, in principle, with its portion picked up in its simplified form.

[Example]

“cherryblossomboy” v. “cherryblossom”,

“chrysanthemumbluesky” v. “kurisanshimamu” or “blue-sky”

(5) A trademark combining letters customarily used for the designated goods or designated services with other letters is compared with other trademarks with the customarily-used letters removed.

[Example]

“男山富士” v. “富士” for sake

“play guide shuttle” v. “shuttle” for arrangements for seats of entertainment facilities

 (6) A trademark combining another person’s registered trademark that is widely recognized in respect of the designated goods or designated services with other letters or figures, including one whose appearance in totality is well formed or one having a connection in concept, is judged as similar to that another person’s trademark, in principle, excluding however cases where the part of another person’s trademark has become an established word.

[Example]

“SONY” v. “SONYLINE” in respect of tape recorders

“L‘OREAL” v. “LOVE L‘OREAL” in respect of cosmetics

(7) A trademark composed of a trade name (including a trademark composed of an abbreviation of a trade name, as hereinafter applicable) having such characters as “Co.,” “K.K.” “Ltd.,” etc. customarily used as part of a trade name is judged with those characters removed as a general rule, irrespective of their position respective to the primary part of the trademark, either at its head or end.

 

In the meantime, the Supreme Court decision rendered in 2008 established general rule to grasp composite marks in its entirety in the assessment of similarity of mark.

 “Where a mark in dispute is recognized as a composite mark consisting of two elements or more, it is not permissible to decide similarity of mark as a whole simply by picking out an element of the composite mark and then comparing such element with other mark, unless consumers or traders are likely to perceive the element as a dominant portion appealing its source of origin of goods/service, or remaining elements truly lack inherent ability to serve as a source indicator in view of sound and concept.”

 

Based on the above rule, composite mark “TSUTSUMINO-OHINAKKOYA” was deemed dissimilar to a word mark “TSUSTUMI” on the grounds that latter portion of “OHINAKKOYA” is admittedly distinctive.

 Recent disputes arising from similarity of composite mark are entirely in conformity with the Supreme Court decision. Namely, a composite mark consisting of two or more distinctive elements will put you on the fast track to registration