カテゴリー: Composite mark

OMEGA unsuccessful in cancelling OMEGA mark

The Japan Patent Office dismissed a trademark opposition claimed by a Swiss luxury watchmaker, OMEGA SA against trademark registration no. 5916814 for the OMEGA mark in class 41 by finding less likelihood of confusion due to remote association between watches and services in class 41.
[Opposition case no. 2017-900136]

Opposed OMEGA mark

Opposed mark (see below) was filed by a Japanese business entity on April 28, 2016 by designating the services of “fortune-telling; educational and instruction services relating to arts, crafts, sports or general knowledge; providing electronic publications; Art exhibition services; Reference libraries of literature and documentary records; production of videotape film in the field of education, culture, entertainment or sports; photography etc.” in class 41.


As a result of substantive examination, the JPO admitted registration on January 27, 2017 and published for registration on February 28, 2017.

OMEGA’s Opposition

To oppose against registration, OMEGA SA filed an opposition on April 28, 2017.

In the opposition brief, OMEGA SA asserted the opposed mark shall be cancelled in violation of Article 4(1)(xv) of the Japan Trademark Law by citing the owned luxury watch brand of OMEGA (see below).

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 not applicable to the case where a mark in question is objectionable under Article 4(1)(xi), which prohibit a junior mark from registering if it is deemed identical with or similar to any senior registration. Article 4(1)(xv) plays a key role where a junior mark designates remotely associated or dissimilar goods or services with that of a well-known brand business.

Board Decision

The Opposition Board admitted similarity of both marks and a remarkable degree of reputation and population of opponent OMEGA mark in relation to watches, however, questioned whether such reputation has prevailed even among relevant consumers of designated services in class 41 as long as opponent failed to produce sufficient evidences regarding the issue.

Based on remote association between watched and services designated under the opposed mark, the Board decided that, by addressing less creativity of the OMEGA mark originating from a familiar Greek alphabet even to Japanese with an ordinary care, relevant consumers of designated services in class 41 are unlikely to confuse or misconceive a source of the opposed mark with OMEGA SA or any entity systematically or economically connected with the opponent.

JPO admits “TE’ CON MIEL” is distinctive in relation to tea

In a recent trademark opposition, the Opposition Board of the Japan Patent Office (JPO) decided to overrule the opposition against TM Registration no. 5951823 for word mark “TÉ CON MIEL” designating tea in class 30 due to distinctiveness of the mark among relevant Japanese consumers.
[Opposition case no. 2017-900259, Gazette issued date: January 26,2018]

Opposed mark

Opposed mark consists of a term “TE’ CON MIEL” and its transliteration written in Japanese character (Katakana) as shown below.

Opposition

Opponent argued the mark shall be objectionable based on Article 3(1)(iii) and 4(1)(xiv) of the Trademark Law because of descriptive meaning in relation to tea.

Each Spanish word of the mark means ‘tea’ for “TE”, ‘with’ for “CON”, ‘honey’ for “MIEL” respectively. It is obvious that opposed mark gives rise to a meaning of ‘TEA WITH HONEY’ in English as a whole.

Article 3(1)(iii)

Article 3(1)(iii) of the Trademark Law prohibits any mark from registering if the mark solely consists of elements just to indicate, in a common manner, 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.

Opponent relied on the article on the assumption that opposed mark just indicates quality or ingredient of designated goods and lacks distinctiveness in relation to ‘tea with honey’ which is undoubtedly included in the designation of tea.

Article 4(1)(xiv)

Article 4(1)(xiv) is a provision to prohibit any mark from registering if the mark is likely to mislead as to the quality of goods or service.

Opponent relied on the article presuming that relevant consumers misconceive the quality of a tea when opposed mark is used on tea other than honey tea.

In order to bolster the argument, opponent produced evidential materials showing tea bags imported from Spain.

Board decision

However, the Opposition Board, by taking into consideration the produced evidences and relevant facts, held as follows.

  1. Each term of “TE”, “CON” and “MIEL” is not familiar among relevant Japanese consumers with an ordinary care. Besides, there exists no circumstance to find a whole term of “TE’ CON MIEL” gets to be known for its descriptive meaning. If so, relevant consumers consider opposed mark as a distinctive source indicator.
  2. A fact that “TE’ CON MIEL” is used on honey tea as a generic term in Spain and other Spanish native countries does not immediately negate a distinctive perception toward opposed mark among relevant Japanese consumers
  3. Obviously, produced evidences are insufficient to demonstrate a certain degree of perception as a generic indication of ‘honey tea’ in Japan.

Based on the foregoing, the Board concluded opposed mark shall not be objectionable under Article 3(1)(iii) and 4(1)(xiv) and dismissed the opposition.

It should be noted that a descriptive term in foreign language can be deemed distinctive and registered in Japan 

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

Apple Inc. failed in a trademark opposition to block “Apple Assist Center”

The Japan Patent Office dismissed a trademark opposition claimed by the U.S. tech giant, Apple Inc. against trademark registration no. 59923763 for word mark “Apple Assist Center” in class 35, 36, and 43 by finding less likelihood of confusion.
[Opposition case no. 2017-900155]

“Apple Assist Center”

Opposed mark “Apple Assist Center” was filed by a Japanese business entity on July 22, 2016 by designating the services of “secretary services; telephone answering and message handling services; reception services for visitors” in class 35, “rental of business and commercial premises; management of buildings; providing information in the field of buildings for business and commercial use” in class 36, “rental of conference room; rental of exhibition room” in class 43.
As a result of substantive examination, the JPO admitted registration on February 17, 2017 and published for registration on March 21, 2017.

Apple’s Opposition

To oppose against registration, Apple Inc. filed an opposition on May 17, 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.

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 designates remotely associated or dissimilar goods or services with that of a well-known brand business.

Board Decision

The Opposition Board admitted a remarkable degree of reputation and population of opponent trademark “Apple” in the field of computers, smart phones, audio devices etc., however, gave a negative view in relation to goods and services remotely associated with Apple products by taking account of arguments and evidences Apple Inc. provided during the trial.

Besides, in the assessment of mark similarity, the Board found “Apple Assist Center” and “Apple” are dissimilar since they are sufficiently distinguishable in visual, phonetic, and conceptual point of view. The Board considered that the word of “Assist Center” does not immediately give rise to a descriptive meaning in relation to the designated service of class 35, 36, and 43. Given that “Assist Center” is deemed a coined word, it is not permissible to separate a element of “Apple” from the opposed mark.

Based on the foregoing, the Board decided that, unless Apple Inc. demonstrates possibility to embark on business related to the designated services and overlapping of consumers between Apple products and the opposed mark, 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.

It surprises me that the Board considered “Assist Center” does not lack distinctiveness in relation to business support services.

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

How can a combination of descriptive words become a source indicator?

In a recent decision, the Appeal Board of Japan Patent Office (JPO) granted to protect a word mark “TOUGH CARRY” in relation to carts and trolleys of class 12.
[Appeal case no. 2017-7976]

“TOUGH CARRY”

As a result of substantive examination, the JPO examiner refused trademark application no. 2016-28871 for a mark “TOUGH CARRY” composed of descriptive words combination in relation to carts, trolleys, sleighs and sleds[vehicles], rickshaws, horse drawn carriages, bicycle trailers [Riyakah], and casting carriages of class 12 on the ground that the mark lacks distinctiveness under Article 3(1)(iii) of the Trademark Law. Examiner raised her objection based on the facts that a word of “TOUGH” means “strong and durable; not easily broken or cut”. “CARRY” means “to take or support from one place to another; convey; transport”. Besides, it is obvious that relevant consumers are familiar with both words. If so, consumers with an ordinary care will surely conceive the meaning of “being able to transport items with strong and durable capability” at the sight of trademark “TOUGH CARRY” when used on designated goods.

Appeal Board decision

In the meantime, the Appeal Board cancelled the examiner’s rejection and admitted registration of “TOUGH CARRY”.

The Board decided that, even if respective word, highly known among consumers, inherently lacks distinctiveness in relation to goods of class 12 and the entire mark gives rise to the meaning as examiner asserted, it does not mean the mark as a whole is just a direct and clear qualitative indication of specific goods.

On the case, the Board found, as a result of ex officio examination, no evidence to demonstrate the descriptive words combination of “TOUGH CARRY” is ordinarily used in transaction of carts and trolleys. Besides, there exists no circumstance to use the combination as a qualitative indication in relation to any other goods.

Consequently, it is groundless to reject the trademark “TOUGH CARRY” based on Article 3(1)(iii) since it does not give rise to any descriptive meaning in relation to the goods in question.

Occasionally, a trademark composed of descriptive words combination becomes controversial. Such disputes mostly focus on distinctiveness of the entire mark. In case the JPO found that combination of respective word is unique and remains suggestive in relation to disputed goods/service by taking account of transactional circumstance, the mark is eligible for registration regardless of descriptive meaning of each word.
In other words, it depends on competitor’s behavior and perception of relevant consumers whether a combination of descriptive words can be protected as a source indicator.

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

How do you pronounce “Q-revo” mark?

In an administrative appeal disputing trademark similarity between TM registration no. 2705284 for word mark “REVO” and a junior trademark represented as below, the Appeal Board of Japan Patent Office (JPO) decided that both marks are deemed dissimilar and allowed to register the junior trademark accordingly.
[Appeal case no. 2017-8341]

Disputed mark

Disputed mark (see above) was applied for trademark registration on October 30, 2015 by designating goods of telecommunication machines, electronic machines and others belonging to class 9.

As a result of substantive examination by the JPO, examiner refused the disputed mark by citing a senior TM registration “REVO” based on Article 4(1)(xi) of the Trademark Law to find that the citation has also covered telecommunication machines, electronic machines in the designation which are deemed identical with disputed mark.

Subsequently, the applicant of disputed mark filed an appeal to the case.

TRADEMARK APPEAL

Main issue at the appeal rested on how disputed mark should be pronounced in the assessment of trademark similarity.

In this respect, the Board held that disputed mark gives rise to a sole pronunciation of “kju- riːvo” in view of overall configuration fully consolidated from appearance.

Based on the finding, the Board compared the disputed mark and the citation in the aspect of visual appearance, sound and concept, and concluded, inter alia, both sounds, “kju- riːvo” and “ riːvo”, are distinctively dissimilar.

It has been recognized in Japan that hyphen (-) serves as a separator of words at fore-and-aft position. To see a graphical distinction between the “Q” logo and “revo”, I believe the decision isn’t quite persuasive enough.

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

 

 

Trademark battle: OLYMPIC vs Ocalympic

In a TM invalidation appeal filed by the International Olympic Committee (IOC) who disputed TM registration no. 5608031 for the mark “Ocalympic” covering services of organization of musical performances played by ocarinas and others in class 41 shall be invalid due to conflict with “OLYMPIC”, an international sports festival organized by IOC, the Appeal Board of JPO  decided in favor of IOC and declared invalidation of the “Ocalympic” mark based on Article 4(1)(vi) of the Trademark Law.
[Case no. 2016-890064,  Decisively  fixed date: September 4, 2017]

Article 4(1)(vi)

Trademark shall not be registered if the trademark is identical with, or similar to, a famous mark indicating the State, a local government, an agency thereof, a non-profit organization undertaking a business for public interest, or a non-profit enterprise undertaking a business for public interest.

Famous mark to represent public business by NPO

The Board admitted the OLYMPIC marks has acquired substantial degree of popularity and reputation worldwide as a source indicator of the Olympic Games organized by NPO for public interest at the time of application for invalidated mark based on the facts that IOC is an international NPO established on June 23, 1894, an organizer of the Olympic Games, has been using the marks to represent the Games which correspond to an undertaking for public interest.

Assessment of similarity between marks

Since literal configuration of the Invalidated mark, having an initial letter “O” and spellings of “LYMPIC(lympic)” in the latter part, is identical with a coined mark “OLYMPIC”, the mark gives rise to an impression closely associated with “OLYMPIC” from appearance.

A mere verbal difference on second sound “ca” shall not be material as a whole in view of common pronunciation in initial sound “O” and “LYMPIC” in the latter part. Besides, when pronouncing each mark at a breath, relevant audience shall find resemblance in tone and a sense of language. Thus, both marks are deemed similar in phonetical point of view.

Regarding conceptual point of view, even if the Invalidated mark is admittedly a coined term, it still gives rise to a meaning of the Olympic Games.

Therefore, considering every circumstance, both marks are deemed similar.

Provided that Invalidated mark combines “ocarinas” with “Olympic”, I feel above assessment inappropriate. Toward the 2020 Tokyo Olympic Games, it is anticipated that such sort of mark may appear. Be on high alert for famous mark “OLYMPIC”!

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

Who shall be a legitimate owner of smiley face mark?

In a lawsuit disputing adequacy of decision by the JPO Appeal Board (Appeal case no. 2016-15097) to refuse the applied mark composed of a name of the earliest known designer of the smiley, “Harvey Ball”, and the Smiley Face (TM2015-74154, class 25) due to a conflict with cited senior registrations no.1 to 3, the IP High Court sustained the decision being appealed.[Case no. Heisei 29 (Gyo-ke) 10034, Court decision date: August 8, 2017]

The applicant, a Japanese legal entity authorized to manage intellectual property of The Harvey Ball World Smile Foundation, argued dissimilarity of the smiley design and alleged that the design becomes less distinctive as a source indicator, but just a stylized representation of a smiling humanoid face on the grounds that similar designs have been used for many years and 7,000 marks containing the design are/were registered.
Besides, taking account of a high degree of popularity as the earliest known designer, the word element of “Harvey Ball” shall function dominantly as a source indicator in applied mark. If so, applied mark shall be dissimilar to cited registrations.

But the Court denied them entirely based on following reasons.

  • Court found the smiley design representing a smiling human face in a simple and symbolic manner is sufficiently distinctive. No adverse evidence is produced.
  • Given the word element of “Harvey Ball” depicted slightly over the Smiley Face is written in a common font design and a small font size, most impressive portion of the applied mark shall be the Smiley Face from appearance.
  • In view of visual impression, both the Smiley Face of applied mark and cited registrations can be easily seen to depict a smiling human face in a simple and symbolic manner. Accordingly, both marks are deemed similar.
  • Even if cited registrations happened to be associated with the Smiley Face created by Harvey Ball, it would not affect the decision. Likewise, the word element of “Harvey Ball” in applied mark has less influence to the decision as well.

The Court decision gives us a lesson that high popularity of the Smiley Face designer will not guarantee the position of a trademark owner to the design if it becomes a generic symbol as a result of widespread, common use in the marketplace.

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