カテゴリー: Article 4(1)(xvi)

GEOGRAPHICAL INDICATION BOURBON LOSES TRADEMARK OPPOSITION

In a recent decision, the Japan Patent Office (JPO) has dismissed the opposition filed by Distilled Spirits Council of the United States (DISCUS), a US non-profit organization which represents the interests of producers and traders of spirit drinks, including Bourbon whiskey, against trademark registration no. 5927252 for the word mark “ROYCE’ BOURBON” for bourbon whiskey in class 33.

[Opposition case no. 2017-900181, Gazette issued on March 29, 2019]

 

ROYCE’ BOURBON

Opposed mark (see below) is a combination of “ROYCE” with apostrophe and “BOURBON” written in a plain roman type.

ROYCE’ BOURBON was filed in January 25, 2016 by a Japanese confectionery company, ROYCE’ Confect Co., Ltd., headquartered in Hokkaido, for bourbon whiskey in class 33.

JPO, going through substantive examination, admitted registration and published for opposition on April 4, 2017.

 

TRADEMARK OPPOSITION

On June 2, 2019, before the lapse of a two-months opposition period, DISCUS filed an opposition, arguing that the word ‘BOURBON’ in the mark applied for would allow consumers to establish a link between the geographical indication Bourbon and “bourbon whiskey”. Therefore, the use and registration of the mark by unrelated entity to Bourbon County, Kentucky (USA) would dilute and exploit the reputation of the geographical indication [Bourbon]. Opposed mark shall be prohibited from registration based on Article 4(1)(vii) of the Trademark Law as well as Article 4(1)(xvi) since the mark is likely to offend public order and cause misconception in quality.

 

BOARD DECISION

The Board admitted Bourbon is an indication of origin/geographical indication from the United States to represent an American Whiskey produced mainly in the southern part of Kentucky State. However, the Board considered opposed mark shall neither offend public order nor cause misconception in quality, stating that:

To the extent opposed mark just covers “bourbon whiskey”, appropriate use of the mark would not disorder fair deal and international trade practice. If so, the Board finds no clue to conclude the applicant adopted the mark with intentions to free ride the reputation of the geographical indication [Bourbon].

Likewise, as long as the Bourbon denomination may be used only for products manufactured in Kentucky by regulations, the designated goods “bourbon whisky” is unquestionably from the US. If so, opposed mark ROYCE’ BOURBON would not cause qualitative misconception in the minds of relevant consumers in relation to “bourbon whiskey” at all.

Based on the foregoing, the Board decided opposed mark shall not be objectionable under Article 4(1)(vii) and (xvi), and granted registration a status quo.

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

JPO decided trademark “WHITNEY HOUSTON” is descriptive when used on music recordings

In a recent appeal decision, the Japan Patent Office (JPO) upheld examiner’s refusal and granted to protect trademark “WHITNEY HOUSTON” on the condition that the trademark does delete music recordings from goods designated under the International Registration (IR) no. 1204044. [Appeal case no. 2016-650045]

Whitney Houston

Whitney Houston, an American singer and actress, tragically died on February 9, 2012 in Beverly Hills, was one of the best-selling musical performers of 1980s and ‘90s and one of the most famous singers in the world undoubtedly.

International Registration

IR no. 1204044, registered in the name of The Estate of Whitney Houston on March 24, 2014, designates following goods in class 9, 16 and 25.

International class 9 –      Series of musical sound recordings; series of musical video recordings; downloadable musical sound recordings; downloadable music video recordings featuring music and entertainment; audiovisual recordings featuring music and entertainment; downloadable audiovisual recordings featuring music and entertainment; downloadable ringtones for mobile phones and wireless devices.
International class 16 –    Posters; concert and souvenir programs; calendars; song books.
International class 25 –    T-shirts; shirts; sweatshirts; hooded sweatshirts; hats; headwear.

JPO Initial Examination

At an initial examination proceeding, JPO examiner refused the trademark with respect to all goods in class 9 on the grounds that consumers can easily perceive or conceive the late Whitney Houston, an American famous singer from the applied mark “WHITNEY HOUSTON” written in a common font design. Besides, in a business to deal with music recordings, the title of a song or an album as well as name of performer or player are routinely indicated on goods or packages to show contents of it. Therefore, relevant consumers and traders at a sight of the applied mark used on designated goods in class 9 are just likely to conceive the goods contains music or performance by the late Whitney Houston. If so, IR no. 1204044 is subject to refusal based on Article 3(1)(iii) of the Trademark Law.
Furthermore, when the applied mark is used on music recordings unrelated to Whitney Houston, consumers will surely be in trouble since they expect the goods contains song or performance of the late Whitney Houston. If so, it should be refused for registration based on Article 4(1)(xvi) due to misconception of quality of goods.

Article 3(1)(iii)

Article 3(1) of the Trademark Law is a provision to prohibit descriptive marks from registering.
Section (iii) of the article aims to remove any mark merely or directly suggesting quality of goods and services.

“Article 3(1)　Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered, unless the trademark:
(iii)　consists solely of a mark indicating, in a common manner, in the case of goods, the place of origin, place of sale, quality, raw materials, efficacy, intended purpose, quantity, shape (including shape of packages), price, the method or time of production or use, or, in the case of services, the location of provision, quality, articles to be used in such provision, efficacy, intended purpose, quantity, modes, price or method or time of provision;”

New Trademark Examination Guideline

Trademark Examination Guideline (TEG) pertinent to Article 3(1)(iii) provides that where a trademark is widely recognized by consumers as a name of a singer or of a music group in respect of goods “sound recorded magnetic tapes, sound recorded compact disks, phonograph records” or its equivalent, the mark is deemed to indicate the quality of the goods.
http://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/pdf/tt1302-002/1-5.pdf

Likewise, where a trademark is recognized to clearly indicate specific contents of articles provided for use by a person to which the service is provided (“cine films,” “image recorded magnetic tapes,” “sound recorded magnetic tapes,” “recorded compact disks,” “phonograph records,” etc.) such as their classifications and types in respect of such services as the rental of “cine films” “image recorded magnetic tapes” “sound recorded magnetic tapes,” “recorded compact disks,” “phonograph records,” etc., is deemed to indicate the quality of a service.
(Example)
1.Trademark “Japan Folksong Collection” in respect of a service “Rental of sound recorded compact disks”
2.Trademark “Suspense” in respect of a service “Rental of cine films”

Article 4(1)(xvi)

Article 4(1) of the Trademark Law is a provision to provide unregistrable trademarks.
Section (xvi) of the article aims to prohibit registration of any mark likely to mislead quality of goods or services.

“Article 4(1) Notwithstanding the preceding Article, no trademark shall be registered if the trademark:
(xvi)　is likely to mislead as to the quality of the goods or services”

Appeal Decision

Since The Estate of Whitney Houston deleted all goods classified in class 9 from Japan, a designation country of IR no.1204044, after the initial refusal, the Appeal Board admitted registration of trademark “WHITNEY HOUSTON” with respect to remaining goods, namely, “Posters; concert and souvenir programs; calendars; song books” in class 16, “T-shirts; shirts; sweatshirts; hooded sweatshirts; hats; headwear” in class 25.

Comments from author

Result seems a bit of trick. It means the name of Whitney Houston functions as a source indicator when used on song books and apparel, but a mere descriptive indication when used on music recordings though her fame never changes depend on goods.
Having reviewed examination result of IR no. 1204044 at other designation countries by means of ROMARIN , the trademark confronted with the same refusal in Singapore.
Apparently, registrability of a famous singer name as trademark varies depend on jurisdiction, goods or services and whether he/she is alive or not.

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