Serapian Loses Trademark Opposition against S device mark

The Italian-based fashion house Stefano Serapian S.r.l., known for its briefcases, handbags and purses opposed the registration in Japan of the trademark S logo owned by the Japanese company, Kabushiki Kaisha Overseas.

Opposed mark

Overseas filed an application to register S logo (see below) designating, among others, bags, purses, pouches and leather goods in class 18 on April 27, 2017. Going through substantive examination at the Japan Patent Office (JPO), it was registered on October 20 of that year (TM Reg no. 5990450).

Serapian Opposition

A trademark opposition proceeding filed on January 15, 2018, Serapian contended that opposed mark is confusingly similar to its registered famous “S” device mark (see below) by citing its owned IR no. 1117130 and thus shall be cancelled in violation of Article 4(1)(xi) and (xv) of the Japan Trademark Law.

 

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) provides that a mark shall not be registered where it is likely to cause confusion with other business entity’s well-known goods or services, to the benefit of brand owner and consumers.

Theoretically, Article 4(1)(xv) is applicable to the case where a mark in question is deemed dissimilar to well-known brand, but still likely to cause confusion because of a high degree of popularity and reputation of the brand.

 

The Ruling

The Opposition Board of JPO negated a certain degree of popularity and reputation of Serapian’s “S” device mark, stating that produced materials are insufficient and non-objective to demonstrate famousness of the cited mark.

Besides, the Board found that both marks are sufficiently distinguishable from appearance in view of overall configuration. From phonetic and conceptual points of view, it is apparent that respective mark would not be perceived as an alphabetical letter ‘S’, but a geometric figure device without any specific concept and pronunciation. If so, both marks would not give rise to similar appearance, sound and meaning at all.

Even if taking account of originality of “S” device mark, as long as it remains unclear whether Serapian “S” device mark has become popular among relevant consumers in Japan, the Board had no reason to admit a likelihood of confusion.

As a conclusion, the Board decided opposed mark is not subject to Article 4(1)(xi) and (xv) of the Trademark Law and dismissed the opposition accordingly.

[Opposition case no. 2018-900017, Gazette issue date December 28, 2018]


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

POLO BCS defeated in trademark battle with POLO RALPH LAUREN

In a ruling on the merits of whether or not an applied mark “POLO HOME / BRITISH COUNTRY SPIRIT” is likely to cause confusion with a world-famous trademark “POLO” by the fashion house Ralph Lauren, the Japan IP High Court sided with the JPO and ruled in favor of Ralph Lauren on December 10, 2018.

[Court case no. H30(Gyo-ke)10067]

 

“POLO HOME / BRITISH COUNTRY SPIRIT”

POLO BCS Co., Ltd., plaintiff of the case, is a Japanese business entity, promoting apparel products bearing trademarks of “POLO BRITISH COUNTRY SPIRIT”, “POLO BCS”, and “POLO HOME”.

 

POLO BCS filed a trademark registration for the mark “POLO HOME / BRITISH COUNTRY SPIRIT” as shown in below on January 5, 2015 by designating clothing and other goods in class 25. [TM application no. 2015-305]

 

In fact, POLO BCS, a registrant of the word mark “POLO” on class 25 in Japan since 1997 (TM registration no. 1434359 and 2721189), granted trademark license to Ralph Lauren in the year of 1987 and since then continuously allows RL to use the mark “POLO” in Japan.

 

JPO decision

The Japan Patent Office (JPO) rejected the applied mark based on Article 4(1)(xv) of the Trademark Law on June 3, 2016. The refusal relies on a prominent portion of the mark “POLO” is likely to cause confusion with RALPH LAUREN when used on apparel products, being that “POLO” becomes remarkably well-known for an abbreviation of POLO RALPH LAUREN among relevant consumers with an ordinary care.

Article 4(1)(xv) is a provision to prohibit any mark from being registered where it is likely to cause confusion with other business entity’s well-known goods or services, to the benefit of brand owner and users’ benefits.

POLO BCS filed an appeal against the refusal on August 16, 2016, but its attempt resulted in failure [Appeal case no. 2016-12344].
To contest the JPO decision, POLO BCS appealed to the IP High Court filed immediately.

 

IP High Court decision

The court admitted a high degree of reputation and popularity of Ralph Lauren and “POLO” as an abbreviation of Polo Ralph Lauren in connection with apparel products by taking account of following fact findings.

  1. The first collection for Polo brand was launched in the US by a designer Mr. Ralph Lauren in 1967.
  2. Annual sales of Ralph Lauren exceed 7 billion USD in 2013 around the globe.
  3. In 1976, Ralph Lauren launched Polo brand and shops in Japan.
  4. According to brand perception survey of 900 randomly selected Japanese consumers ages 20 to 69 conducted in 2010, 81.8% of consumers recognize Ralph Lauren.
  5. Annual sales of 26.7 billion JPY in Japan (fiscal year 2008) accounts for 6% of global sales of Ralph Lauren.

Besides, the court found close similarity between applied mark and “POLO” by Ralph Lauren given a tiny font size of “BRITISH COUNTRY SPIRIT” in the configuration of applied mark and less distinctiveness of the word “HOME” in relation to apparel for home use.

Plaintiff argued to consider the fact that RL has used the “POLO” mark in Japan under license from plaintiff. But the court negated the argument stating that such fact would not mean consumers recognize the mark as a source indicator of plaintiff. In addition, plaintiff argued originality and fame of the word “POLO” as a source indicator of Ralph Lauren by citing Polo Game, organizations for the game, e.g. US POLO ASSOCIATION, HURLINGHAM POLO, and a generic name of Polo shirts. Court considered such circumstances would mean less originality of the mark “POLO”, but never deny fame of the mark as a source indicator of Ralph Lauren as long as consumers doubtlessly connect it with Ralph Lauren.

Based on the foregoing, the IP High Court concluded it is obvious that relevant consumers are likely to confuse or misconceive a source of the applied mark with Ralph Lauren or any entity systematically or economically connected with RL when used on clothing in class 25.


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

Apple successful in a trademark opposition to block “PriPhone”

Apple Inc. achieved a victory over trademark battle involving famous “iPhone”.
In a recent trademark opposition, case no. 2017-900319, the Opposition Board of Japan Patent Office (JPO) decided in favor of Apple Inc. to cancel trademark registration no. 5967983 for word mark “PriPhone” due to a likelihood of confusion with Apple’s famous “iPhone”.

“PriPhone”

Opposed mark “PriPhone” was filed by a Japanese business entity on December 26, 2016 by designating the goods of “mobile phones; smart phones; downloadable image and music files; telecommunication machines and apparatus; electronics machines, apparatus and their parts” in class 9.
The JPO admitted registration on July 28, 2017 and published for registration on August 22, 2017.

Apple’s Opposition

To oppose the registration, Apple Inc. filed an opposition against “PriPhone” on October 20, 2017.

In the opposition brief, Apple Inc. asserted the opposed mark shall be cancelled in violation of Article 4(1)(xv) of the Japan Trademark Law given a remarkable reputation of opponent mark “iPhone” since nearly a quarter of Japanese have favorably used iPhone as a personal device to connect with internet.
Apple argued the opposed registrant knowingly included famous “iPhone” trademark on the ground that the company promotes protective cases, covers for iPhone.

Article 4(1)(xv) provides that a mark shall not be registered where it is likely to cause confusion with other business entity’s well-known goods or services, to the benefit of brand owner and consumers. Theoretically, Article 4(1)(xv) is applicable to the case where both marks are dissimilar, but likely to cause confusion among relevant consumers because of a related impression attributable to reputation of the well-known mark.

Board Decision

The Opposition Board admitted a remarkable degree of reputation and popularity of opponent trademark “iPhone” among general consumers which occupies the highest share (54.1% in 2012) of the smart phone market for past five years consecutively.

In the assessment of mark similarity, the Board found “PriPhone” would be perceived containing “iPhone” in the mark, provided that “iPhone”, as a coined word, is deemed a unique and famous trademark. Besides, in view of close connection between smart phones and the goods in question, similarity with respect to consumers, it is undeniable that relevant consumers with an ordinary care are likely to conceive “iPhone” from opposed mark when used on goods in question.

Based on the foregoing, the Board decided that relevant consumers are likely to confuse or misconceive a source of the opposed mark with Apple Inc. or any entity systematically or economically connected with the opponent.
If so, opposed mark shall be cancelled in violation Article 4(1)(xv) of the trademark law.


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

Apple Inc. Lost Trademark Opposition to “SMAPPLE” in Japan

The Japan Patent Office dismissed a trademark opposition claimed by the U.S. tech giant, Apple Inc. against trademark registration no. 5987344 for word mark “SMAPPLE” in class 9 and 37 by finding less likelihood of confusion with Apple.
[Opposition case no. 2018-900006]

“SMAPPLE”

Opposed mark “SMAPPLE” was filed by a Japanese business entity on March 13, 2017 by designating mobile phones in class 9 and repair or maintenance service of mobile phones in class 37.
Going through substantive examination, the JPO admitted registration on September 15, 2017 and published for registration on November 7, 2017.

Apple’s Opposition

To oppose against registration, Apple Inc. filed an opposition on January 5, 2018.

In the opposition brief, Apple Inc. asserted the opposed mark shall be cancelled in violation of Article 4(1)(xv) of the Japan Trademark Law given a remarkable reputation of opponent mark “APPLE” in the business field of computers, smart phones, tablets, and any related business.
Apple argued the first two letters of “SM” is descriptive in connection with repair and maintenance service since it is conceived as an abbreviation of “service mark”, to my surprise. In addition, as long as the term “SMAPPLE” is not a dictionary word, relevant consumers at the sight of the term are likely to consider that the opposed mark consists of “SM” and “APPLE”.

Article 4(1)(xv) provides that a mark shall not be registered where it is likely to cause confusion with other business entity’s well-known goods or services, to the benefit of brand owner and consumers. Theoretically, Article 4(1)(xv) is applicable to the case where both marks are dissimilar, but likely to cause confusion among relevant consumers because of a related impression attributable to reputation of the well-known mark.

Board Decision

The Opposition Board admitted a remarkable degree of reputation and popularity of opponent trademark “Apple” in the business field to manufacture and distribute computers, smart phones, audio devices and mobiles phones etc., however, gave a negative view in relation to repair or maintenance service of mobile phones by taking account of insufficient evidences Apple Inc. produced to the Board.

Besides, in the assessment of mark similarity, the Board found “SMAPPLE” and “Apple” are totally dissimilar since they are sufficiently distinguishable in visual, phonetic, and conceptual point of view. The Board also questioned Apple’s argument the first two letters of “SM” does imply a meaning of service mark. If so, it is not permissible to separate a element of “APPLE” from the opposed mark. The mark shall be compared in its entirety. As long as “APPLE” is a familiar English term among relevant public to mean a round fruit with red or green skin and a whitish inside, the term shall not be deemed a coined word.

Based on the foregoing, the Board decided that relevant consumers are unlikely to confuse or misconceive a source of the opposed mark with Apple Inc. or any entity systematically or economically connected with the opponent.


I feel the opposed mark rather gives rise to a connotation of “smart apple”, than “service mark” and “apple”.
“Service mark” is not commonly used in our daily life unless he or she has a knowledge of IP law (LOL).

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

ROLEX Unsuccessful in Trademark Battle Over Crown Logo

In a recent trademark decision, the Opposition Board of Japan Patent Office (JPO) dismissed an opposition against IR no. 1263679 filed by Rolex SA, Swiss manufacturer of luxurious watches, based on the iconic Rolex crown.

[Opposition case no. 2017-685031, Gazette issue date: August 31, 2018]

Opposed mark – Crown device

Opposed mark, consisting of a crown device (see below), was filed in the name of PWT A/S, a Danish retailer of clothing, furnishings, and accessories for men, women, and children.
The mark was filed to JPO through the Madrid Protocol (IR no. 1263679) with priority date of June 25, 2014 and admitted national registration on July 28, 2017 over the goods of “Toilet soaps, perfumery, essential oils, cosmetics, perfumed toilet preparations, preparations for cleaning, care and beauty cosmetics of the skin, scalp and hair, deodorizing preparations for personal use” in class 3, “Leather, boxes of leather or leather board, bags of leather for packaging” in class 18, and “Clothing, headgear” in class 25.
During substantive examination, JPO examiner initially issued a refusal due to a conflict with senior registrations for the Rolex crown. However, the JPO withdrew the refusal as a result of PWT’s response to partially delete goods and argue dissimilarity of mark.

Opposition by Rolex

During a two-months opposition period after registration, Rolex SA filed an opposition, stating that relevant consumers are likely to confuse or misconceive opposed mark with Rolex or any business entity systematically or economically connected with Rolex because of high similarity to the iconic Rolex crown (see above) and close association between “watches” and the designated goods in class 3 and 25.

Article 4(1)(xv)

Rolex SA sought to retroactively cancel opposed mark in relation to cosmetics and other goods designated under class 3 and clothing, headgear in class 25 based on Article 4(1)(xv) of the Japan Trademark Law.
Article 4(1)(xv) provides that a mark shall not be registered where it is likely to cause confusion with other business entity’s well-known goods or services, to the benefit of brand owner and users’ benefits.

Board decision

The Opposition Board did not question a remarkable degree of popularity and reputation of the ROLEX crown as a source indicator of opponent business.
In the meantime, the Board considered both marks give rise to a different impression in the minds of relevant consumers from overall appearance and found that the degree of similarity of marks is relatively low irrespective of a common crown design with five points and its circle-shaped ends. Besides, the Board negated close association between watches and cosmetics, apparel to the extent that watches, a sort of precision instrument, are not ordinarily manufactured or distributed by same business entity with cosmetics and apparel.

Based on the foregoing, the Board concluded that relevant consumers of goods in question are unlikely to confuse opposed mark with Rolex or any business entity systematically or economically connected with opponent.
Thus, opposed mark is not subject to Article 4(1)(x), and valid as a status quo.


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

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

Toyota vs. Renault: Battle of the Brands

In a trademark opposition between Toyota Motor Corporation (JAPAN) and Renault SAS (FRANCE), the Opposition Board of Japan Patent Office (JPO) dismissed the opposition against trademark registration no. 5932825 for word mark “WIGO”.

WIGO vs. TWINGO

Renault opposed to register the word mark “WIGO” designating automobiles in class 12 by Toyota based on Article 4(1)(xi), (xv) of the Trademark Law by citing his senior trademark registration no. 2710075 for Renault’s car brand “TWINGO”.

TOYOTA WIGO is mini hatchback from Toyota.

RENAULT TWINGO is small city car from Renault.

Assessment of trademark similarity

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.

In assessing trademark similarity under Article 4(1)(xi), the Board considered opposed mark “WIGO” is deemed a coined word since it does not give rise to any specific meaning as well as “TWINGO”. Besides, both marks are evidently distinguishable in appearance and pronunciation. If so, the Board found that it is groundless to conclude “WIGO” is similar to “TWINGO” from visual, phonetic and conceptual aspect.

Likelihood of confusion

Article 4(1)(xv) provides that a mark shall not be registered where it is likely to cause confusion with other business entity’s well-known goods or services, to the benefit of brand owner and users’ benefits.
Theoretically, Article 4(1)(xv) is applicable to the case where a mark in question is deemed dissimilar to well-known brand, but is still likely to cause confusion because of a high degree of popularity and reputation of the brand.

The Board concluded it remains unclear whether Renault TWINGO has become famous in automobiles from totality of the circumstances and evidence.
Provided that TWINGO does not obtain remarkable reputation in relation to automobiles as a source indicator of Renault car, WIGO is unlikely to cause confusion with Renault TWINGO because both marks are considerably dissimilar.
[Opposition case no. 2017-900193]


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

GODZILLA defeated GUZZILLA in IP High Court trademark battle

On June 12, 2018, the Japan IP High Court denied the JPO Trial Board decision and sided with TOHO Co., Ltd., a Japanese filmmaker that unleashed Godzilla on the world, in a trademark dispute between GODZILLA and GUZZILLA.
[Judicial case no. H29(Gyo-ke)10214]

GODZILLA

TOHO Co., Ltd., the top and oldest Japanese filmmaker, is known worldwide for unleashing Godzilla in 1954. Godzilla, known as the King of the Monsters, is a giant irradiated prehistoric amphibious reptile appearing in the films produced by TOHO. TOHO has produced more than 20 Godzilla flicks, including 1999’s Godzilla 2000: Millennium, and 2014’s GODZILLA.

GUZZILLA

Taguchi Industrial Co., Ltd., a Japanese manufacturer of attachments for construction machinery, filed an trademark application for the “GUZZILLA” mark (see below) in November 21, 2011 by designating mining machines, construction machines, loading-unloading machines, agricultural machines, waste compacting machines, waste crushing machines in class 7. JPO registered the mark on April 27, 2012.
The “GUZZILLA” mark has been used on attachments for construction machinery by Taguchi. (see website of Taguchi – http://en.taguchi.co.jp/series/guzzilla/)

 

Invalidation Trial

On February 22, 2017, two months before a lapse of five years from the registration, TOHO requested for invalidation trial based on Article 4(1)(xv) of the Trademark Law and asserted relevant consumers or traders are likely to confuse or misconceive a source of the “GUZZILLA” mark with TOHO or a business entity systematically or economically connected with TOHO when used on designated goods in class 7 due to close resemblance between “GUZZILLA” and “GODZILLA”.

Article 4(1)(xv) provides that a mark shall not be registered where it is likely to cause confusion with other business entity’s well-known goods or services, to the benefit of brand owner and users’ benefits.

The Trial Board admitted a high degree of popularity and reputation of “GODZILLA” as a name of monster appeared in films produced by TOHO, however, the invalidation trial was totally dismissed since the Board found no likelihood of confusion in view of remote association between TOHO’s business and designated goods in class 7 (Trial case no. 2017-890010).

To contest the decision, TOHO appealed to the IP High Court.

 

IP High Court ruling

IP High Court set aside the decision and ruled in favor of TOHO.

In the ruling, the Court pointed out a fact that designated goods in question include pneumatic jacks, electric jacks, chain blocks, winches, mowing machines, and hedge trimmers. These goods have a certain degree of association with toys or groceries of TOHO’s interest in the aspect of use, objective and consumer. Besides, relevant consumers of goods in question rely on not only quality and function of goods but also goodwill in trademark at the time of purchasing such goods. If so, the Court finds that, by taking into consideration famousness and originality of “GODZILLA” as a source indicator of TOHO’s business as well as close resemblance of both marks, relevant consumers of above goods (class 7) designated under the “GUZZILLA” mark are likely to associate the goods with “GODZILLA” and thus confuse its source with TOHO or a business entity systematically or economically connected with TOHO.

Court also held that a well-known “GODZILLA” mark gives rise to a meaning of imaginary giant monster in films and an image of strength by means of the monster’s action devastating city and buildings. Inter alia, purchasers of pneumatic jacks in question are likely to receive an incentive to buy “GODZILLA” in anticipation of strong performance of the jacks as GODZILLA did.

Based on the foregoing, the court decided invalidation of “GUZZILLA” trademark registration based on Article 4(1)(xv).


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