The Appeal Board of Japan Patent Office (JPO) ruled that senior trademark registrations for the mark “Teddy Bear” in standard character over goods of trees, flowers, dried flowers, plants, seedlings, saplings in class 21 is unlikely to cause confusion with a junior mark “Rose Teddy Bear” in plain letters even if the mark is used on rose and rose bushes in class 21. [Appeal case no. 2017-18006, Gazette issue date: October 26, 2018]
Senior registrations for the “Teddy Bear” mark
“TEDDY BEAR”, a children’s toy, made from soft or furry material, which looks like a friendly bear, has its origin after Teddy, nickname for Theodore Roosevelt who was well known as a hunter of bears.
In Japan, name of the toy bear has been registered in the name of Nisshin OilliO Group. Ltd. on various goods in class 29, 30, 31 and 32 since 1986.
Junior application for “Rose Teddy Bear”
Junior mark for “Rose Teddy Bear” was applied for registration by a French company on August 10, 2016 over goods of rose, rose trees and other items relating to rose in class 31.
JPO examiner rejected junior mark due to a conflict with the “Teddy Bear” mark based on Article 4(1)(xi) of the Trademark Law on September 5. 2017.
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.
To seek for registration, applicant filed an appeal against the refusal on December 5, 2017.
Appeal Board decision
The Appeal Board set aside a refusal on the grounds that:
(1) From appearance and pronunciation, the term of “Rose Teddy Bear” shall be recognized as one mark in its entirety.
(2) Relevant consumers and traders are likely to conceive the term as a coined word since it does not give rise to any specific meaning as a whole.
(3) Therefore, the refusal based on the assumption that literal portions of “Teddy Bear” in junior mark plays a dominant role made a factual mistake and shall be cancelled consequently.
It seems that the Board decision is not consistent with the Trademark Examination Guidelines (TEG) criteria.
[Chapter III, Part 10 of TEG]
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 rose in class 21 and the term “Rose” in the mark further impresses the concept of rose in mind of consumers, the portion of “Rose” should be considered descriptive in relation to designated goods. 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 signaled a narrower scope of right where trademark has evidently its origin from other entity or meaning unrelated to senior registrant.
Masaki MIKAMI, Attorney at IP Law – Founder of MARKS IP LAW FIRM