Royal Copenhagen successful in removing FLORA DANICA on bags and apparels

The Opposition Board of Japan Patent Office (JPO) decided to cancel trademark registration no. 5681437 for word mark “FLORA DANICA” covering various types of bags in class 18, apparels and shoes in class 25 as a consequence of opposition trial raised by ROYAL COPENHAGEN AS, one of Europe’s oldest porcelain manufacturers in Denmark.
[Opposition case no. 2014-900278]

Trademark Opposition

Opposed mark was filed by a Danish corporation on January 23, 2014. Without receiving any office action from the JPO examiner, it was smoothly granted registration on May 30, 2014. Upon payment of registration fee on June 19, 2014, it was published for opposition on July 29, 2014.

On the very final day of statutory period to file an opposition (two months from the publication provided under Article 43bis of the Trademark Law), ROYAL COPENHAGEN challenged to an opposition disputing validity of opposed mark due to a likelihood of confusion with renowned Flora Danica porcelain, made 1790-1803 at the Royal Copenhagen Porcelain Manufactory, decorated with botanical drawings of Denmark’s flora.

The opposition relied on Article 4(1)(xv) of the Trademark Law to prohibit a junior mark likely to cause confusion with other business entity’s well-known goods or services from being registered to the benefit of brand owner and users’ benefits.

Article 4(1)(xv)

Trademark Examination Guidelines set forth factors to be taken into consideration in the assessment of a likelihood of confusion under the article.

  • The degree of similarity between the trademark as applied and the other entity’s mark;
  • The degree to which the other entity’s trademark is well known;
  • Whether the other entity’s trademark consists of a coined word or contains a distinctive feature;
  • Whether the other entity’s trademark is used as a house mark;
  • Whether there is the possibility of proximity in business as a result of diversified management;
  • Whether there is any relationship between goods, services or goods and services;
  • Whether there is any commonality between the consumers of goods, etc. and other actual states of transactions.

Click here to access the guidelines.

Board decision

In the disputed opposition, the Board found that “FLORA DANICA” has acquired a high degree of population and reputation among relevant traders and consumers as a source indicator of ceramic products manufactured by ROYAL COPENHAGEL and remained the status quo continuously.

The Board assessed both marks are deemed unquestionably identical or similar. Besides, both opposed goods in classes 18, 25 and ceramic products are all closely related to daily life, and consumers are likely to show strong preference for design and fashion of goods in selection of these goods. ROYAL COPENHAGEN deals with handkerchiefs, scarfs, perfumes, cuffs, wallets, aprons, bags as well.

Base on the foregoing, the Board concluded that relevant traders and consumers of the goods in question are likely to confuse or associate the goods using Opposed mark with opponent or any business entity economically or systematically connected with ROYAL COPENHAGEN. Thus, Opposed mark is subject to cancellation due to Article 4(1)(xv) of the Trademark Law.


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

Starbucks Trademark Dispute Brewing Over Bull Pulu Tapioca Logo

The Japan Patent Office (JPO) has rejected an opposition from Starbucks to trademark registration no. 5897739 for the green-and white “BULL PULU TAPIOCA” concentric circle logo with a puppy white bull dog in the center.
[Opposition case no. 2017-900048]

BULL PULU TAPIOCA LOGO

Opposed mark (see below) designating goods of tapioca beverages, tapioca fruit juice beverages in class 32 and retail or wholesale services for tapioca beverages, tapioca fruit juice beverages in class 35was applied for registration on May 10, 2016 by a Japanese individual. As a result of substantive examination, JPO granted a registration on October 28, 2016.

OPPOSITION by STARBUCKS

Subsequently, Starbucks Incorporated, a US coffee chain, filed an opposition based on a conflict with famous Starbucks trademarks.

In the opposition, Starbucks alleged violation of Article 4(1)(vii), (xi) and (xv) of the Japan Trademark Law.

Article 4(1)(vii) prohibits any mark likely to offend public order and morals from registering.

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) excludes a junior mark which is likely to cause confusion with goods or services belonging to another business entity.

BOARD DECISION

The Opposition Board of JPO admitted a high degree of reputation and popularity to the iconic Starbucks logo among relevant consumers at the time of initial filing and registration of the opposed mark.

In the meantime, the Board found that both marks are dissimilar due to a distinctive difference in literal elements and design depicted in the center. Besides, by taking account of severe dissimilarity of both marks, the Board denied a likelihood of confusion between the marks as well.

To bolster the public disorder allegation, Starbucks revealed the facts that applicant of the opposed mark was a former CEO of J.J. Co., Ltd., a tapioca drink parlor, and Opposed mark has been used on shop signs and cups for drink managed by J.J. Co., Ltd. in fact (see below).

The Board held that such facts are insufficient to conclude Opposed mark may offend public order and morals if registered.

Accordingly, JPO rejected an opposition challenged by Starbucks.


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

IP High Court reversed JPO decision pertinent to a likelihood of confusion between men’s fashion magazines and male cosmetics

In a judgement pronounced on November 14, 2017, the IP High Court of Japan ruled to reverse JPO decision which negated a likelihood of confusion between MEN’S CLUB brand men’s fashion magazine and the same brand male cosmetics.[Court case no. H29(Gyo-ke)10109]

MEN’S CLUB magazine

The lawsuit was filed by a publisher of the MEN’S CLUB magazine who unsuccessfully challenged to invalidate TM registration no. 5858891 for a word mark “MEN’S CLUB” in standard character covering goods of male cosmetics in class 3 (hereinafter referred to as “Disputed mark”).

MEN’S CLUB magazine has been continuously published past six decades since 1965 in Japan.

 

TM Registration 5858891 – MEN’S CLUB on male cosmetics

Disputed mark was applied for registration on January 7, 2016, registered on June 17, 2016 without receiving any office action from the Japan Patent Office (JPO) examiner.

On April 5, 2017, plaintiff demanded for a trial to invalidate disputed mark in violation of Article 4(1)(xv) and (xix) of the Trademark Law by citing MEN’S CLUB brand men’s fashion magazines used by plaintiff.

The Trial Board of JPO decided that disputed mark shall neither fall under Article 4(1)(xv) nor 4(1)(xix), and dismissed the invalidation petition entirely [case no. 2016-890063].

In the lawsuit, plaintiff argued the Board misconstrued Article 4(1)(xv), thus erred in judgment to apply the article on the case.

Article 4(1)(xv)

Article 4(1)(xv) of the Trademark Law provides that a mark shall not be registered where it is likely to cause confusion with the goods or services pertaining to a business of another entity.

Theoretically, Article 4(1)(xv) is applicable to the case where a mark in question designates remotely associated or dissimilar goods or services with that of a well-known brand business.

IP High Court decision

The IP High Court ruled that the Board erred in applying Article 4(1)(xv) based on following reasons.

  • Both marks, consisting of MEN’S CLUB, are almost identical
  • MEN’S CLUB brand men’s fashion magazine has acquired a high degree of popularity and reputation among relevant consumers as a result of substantial use over decades, notwithstanding lack of creativity in the mark
  • Male cosmetics are considerably associated with men’s fashion magazines since they are often featured in men’s fashion magazines
  • Consumers of men’s fashion magazines are likely to consume male cosmetics

Based on the foregoing and the degree of ordinary care taken by relevant consumers, the court concluded that consumers of male cosmetics would conceive the MEN’S CLUB brand men’s fashion magazine and then associate the cosmetics with goods produced by plaintiff or a business entity who has systematical or economical connection with plaintiff in error.

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

 

 

Mattel failed in a trademark opposition to block “Salon BARBIES”

JPO dismissed an opposition by Mattel, Inc. – maker of the world-famous Barbie doll – who claimed “Salon BARBIES” is likely to cause confusion or association with famous Barbie doll when used on restaurant and fan club services. [Opposition case no. 2016-900395]


Opposed mark

Opposed mark, TM Registration no. 5881203, was filed on March 10, 2016 by designating various services in class 35 and 43 including restaurant, accommodation club services, business management analysis and others.

JPO granted to register opposed mark with no finding of refusal grounds and published for registration on October 11, 2016.


Opposition

On December 12, 2016, Mattel, Inc., an American multinational toy manufacturing company, opposed an application to register the mark Salon BARBIES (see above).

In the opposition, Mattel cited two senior trademark registrations.

  • TM Registration no. 5383631 for word mark “BARBIE” in standard character (classes 9, 14, 18, 24, 25, 28, 35)
  • TM Registration no. 589632 for the BARBIE logo (classes 9, 15, 20, 21, 25, 28)

Mattel argued that Opposed mark is subject to cancellation in violation of Article 4(1)(xv) of the Trademark Law on the grounds that its BARBIE mark had acquired such fame that, upon seeing the opposed mark used on restaurant and fan club service, the average consumer would be led to infer the existence of a connection to the owner of the famous brand.

Besides, Opposed mark is objectionable in violation of Article 4(1)(xix) as well since it would presumably aim to dilute or do harm to remarkable prestige bestowed to BARBIE mark.


Board decision

The Opposition Board admitted BARBIE mark has acquired a high degree of popularity and reputation as a source indicator of dolls among relevant traders and consumers at the time of both the application and the grant of registration of Opposed mark.
In the meantime, the Board denied similarity of both marks in visual, phonetical and conceptual points of view.
Based on dissimilarity of the marks, the Board concluded relevant traders and consumers are unlikely to confuse or associate the services using Opposed mark with opponent or any business entity economically or systematically connected with Mattel.
Therefore, Opposed mark shall not be cancelled due to Article 4(1)(xv) of the Trademark Law.

Article 4(1)(xix) is applicable only where both marks are identical or similar.
Besides, from the totality of the circumstances, the Board found no fact and evidence to show or infer that Opposed mark was filed with malicious or fraudulent intent on the part of registrant to hinder the business of opponent. Thus, Opposed mark shall remain valid in light of Article 4(1)(xix) as well.

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

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

SISLEY, French luxury beauty brand, failed in a trademark opposition against the mark “SISLOY”

In a recent decision, the Opposition Board of the Japan Patent Office dismissed an opposition filed by CFUB Sisley, a French producer of cosmetics and fragrances, founded in 1976 against the word mark “SISLOY” written in a standard character.
[Opposition case no. 2016-900379]

Opposed mark

Mark in dispute, consisting of a word “SISLOY” written in a standard character, TM Registration no. 5878006, was applied for registration in March 11, 2016 in the name of U STYLE Co., Ltd., a Japanese legal entity, by designating goods of cosmetics, perfumes, creams, soaps etc. in class 3. Based on the results of substantive examination by the JPO, the mark was granted for protection without any refusal or oppositions on August 4, 2016 and subsequently published for opposition on October 4, 2016.

 

Trademark opposition claim by Sisley

Sisley filed an opposition and demanded the JPO to cancel the oppose mark in violation of Article 4(1)(xv) of the Trademark Law.

Article 4(1)(xv) is a provision to prohibit any trademark which is likely to cause confusion with a third party or its business from being registered for protection.

Sisley cited a registered “SISLEY” trademark (TM Registration no. 1873095) which consists of alphabetical letters and Japanese katakana letters to pronounce Sisley, as well as a non-registered “sisley” trademark solely written in lower-case alphabetical letters (herein after collectively referred to as “SISLEY trademarks”).

Sisley alleged that SISLEY trademarks has acquired a high degree of popularity and reputation among relevant traders and consumers of cosmetics worldwide.

According to the evidence, annual sales in Japan amounts to about 2 billion yen continuously. Sisley occupies 1% market share in Japan

To bolster the argument, Sisley referred to the past favorable decision in an opposition against a word mark of “SYSLEY” in which the JPO admitted famousness of “SISLEY” as a source indicator of skin care cosmetics.

Based on SISLEY trademarks known for French luxury beauty brand, Sisley argued that relevant traders and consumers are likely to conceive Sisley at the sight of goods with opposed mark, or confuse the goods comes from any business entity economically or systematically associated with Sisley in error by taking into consideration of close similarity between “SISLEY” and “SISLOY”.

 

Board decision

The Opposition Board considered the evidence is insufficient and less objective to convince the Board of the fame of SISLEY trademarks in the marketplace of Japan.

Due to the lack of objective evidence, the Board denied a high degree of popularity and reputation of SISLEY trademarks as a source indicator of skin care cosmetics in view of a trivial market share.

Regarding the past opposition decision to admit famousness of the mark “SISLEY”, the Board held the decision was irrelevant on the case because it never made things clear whether SISLEY trademarks still maintained such famousness at the time of application filing of the opposed mark, given eight years already passed since then.

Besides, the Board concluded that finding the difference of “O” and “E” at fifth letter is not negligible, the oppose mark and SISLEY trademarks are distinctively dissimilar in the aspect of appearance, pronunciation and meaning.

Based on the foregoing, it should decide that the relevant traders and consumers are unlikely to confuse or misconceive the opposed mark with SISLEY trademarks even when used on cosmetics and other designated goods

 

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

JPO cancelled “UMBROID” due to a likelihood of confusion with an English sporting goods brand “Umbro”

The Opposition Board of Japan Patent Office (JPO) decided to cancel trademark registration no. 5861532 for a word mark “UNBROID” written in standard characters covering various goods of class 18 based on a high degree of popularity of “Umbro”, similarity of marks, and close association between goods.

Mark in question

Opposed mark “UMBROID” was filed on January 6, 2016 by designating the goods of “industrial packaging containers of leather; bags and the like; pouches and the like; vanity cases; umbrellas and their parts; handbag frames; purse frames; horseshoes; walking sticks; canes; metal parts of canes and walking-sticks; handles for canes and walking sticks; clothing for domestic pets” in class 18 under the name of YOUM COMPANY CO., Ltd. As a result of substantive examination by the JPO examiner, the mark was registered smoothly without any objections on June 24, 2016 and published for opposition on July 26.

DESCENTE LTD., a Japanese sporting goods trading company, as an assignee of Japanese trademark rights pertinent to “UMBRO” from Umbro International Limited, filed an opposition in violation of Article 4(1)(xv) of the Trademark Law.

Article 4(1)(xv)

No trademark shall be registered if the trademark is likely to cause confusion in connection with the goods or services pertaining to a business of another person.

Board decision

The Board admitted a high degree of popularity and reputation of “Umbro” as a source indicator of sportswear, sports shoes and sports bags distributed by the opponent among soccer fans and apparel consumers.

In assessing similarity of marks, the Board considered the opposed mark consists of a combination of two words, “UMBRO” and “ID”. Given “ID” is a commonly used term to mean any means of identification, it is less likely to function as a source indicator nowadays when used in commerce. If so, relevant traders and consumers at the sight of opposed mark would impressively pay attention to a portion of “UMBRO” and associate the mark with a famous sports brand. Therefore, both marks are deemed substantially similar, Board concluded.

Besides, the goods in question are mainly purchased by fashion conscious consumers. Consumers of sportswear, sports shoes and sports bags are also of strong interest to sports and fashion in general. Given both goods are substantially consumed by same entities, it should be considered that they are closely associated.

Based on the foregoing, the Board found a likelihood of confusion between “UMBROID” and “Umbro” when used on the goods in question, and thus the opposed mark was registered in error in violation of Article 4(1)(xv). [Opposition case no. 2016-900307]

 

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

 

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