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

SKY ROVER is unlikely to cause confusion with LAND ROVER when used on wallets, school bags, handbags and trunks

The Opposition Board of Japan Patent Office decided to dismiss an opposition claimed by Jaguar Land Rover Limited who alleged trademark registration no. 5844561 for the mark “SKY ROVER” with figurative elements (see below) designating goods of “wallets, school bags, handbags, and trunks” in class 18 owned by a Taiwanese is confusingly similar to “ROVER”, “LAND ROVER”, “RANGE ROVER” famous for four-wheel-drive vehicles produced by the opponent.

Jaguar Land Rover Limited cited ten trademark registrations for “LAND ROVER” or “RANDE ROVER” and produced evidences to demonstrate substantial use in Japan since 1990’s. However, the Board did not approve high levels of consumer recognition to the marks in association with cars due to a failure to disclose sales amount, advertisement or promotional activity and annual car sales in connection with the cited marks. If so, it is unlikely that consumers consider a term of “ROVER” independently from the configuration of cited marks. In the assessment of trademark similarity, both marks are apparently dissimilar as a whole from visual, sound and conceptual point of view even if they contain a term “ROVER” in common.

Besides, by taking into consideration of remoteness of cars and opposed goods (wallets, school bags, handbags and trunks), it is less likely that consumes misconceive or associate the opposed mark with “LAND ROVER” or “RANDE ROVER” nor confuse goods with the opposed mark from any business entity connected with opponent.

Based on the foregoing, the Board decided to sustain registration of the opposed mark since the opposition was totally groundless. [Opposition case no. 2016-900200]

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

“F1 HEATER” was cancelled due to a likelihood of confusion with “F1” when used on electric heaters

The Opposition Board of Japan Patent Office (JPO) decided to cancel a trademark registration for word mark “F1 HEATER” in favor of an opponent, Formula One Licensing BV.
[Opposition case no. 2016-900251]

F1 HEATER

Opposed mark “F1 HEATER” was filed on December 4, 2015 by designating electric heaters in class 11 and granted for registration on March 24, 2016.
Upon a payment of statutory registration fee, the opposed mark was published in gazette on June 14, 2016.

Opposition by Formula One

Formula One Licensing BV, managing the trade marks for the FIA Formula One World Championship, filed an opposition based on Article 4(1)(xv) of the Trademark Law by complaining that relevant public is likely to confuse or misconceive electric heaters using the opposed mark with goods derived from opponent group or any entity economically or systematically connected with opponent.

Likelihood of confusion

The Opposition Board admitted “F1” has become famous as an indicator of car races and automotive for race managed by the opponent among relevant consumers in Japan.
In the assessment of trademark similarity, the Board considered a word “HEATER” is less distinctive in relation to electric heaters. If so, consumers and traders are likely to conceive that the opposed mark contains the term “F1” from appearance and confuse a source of electric heaters with FIA, opponent or any entity economically or systematically connected with opponent. Accordingly, the opposed mark should be cancelled in violation of Article 4(1)(xv) retroactively.

Opposed mark owner voluntarily waived trademark registration during the opposition trial prior to a decision.

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

 

 

JPO concluded a famous smart phone cover glass brand “Gorilla Glass” is unlikely to cause confusion with “2.5D Gorilla Glass 3” when used on bracelets, personal ornaments, and jewelery

In a trademark opposition between Corning Inc. (USA) and LG Electronics Inc. (KOREA), the Opposition Board of Japan Patent Office (JPO) dismissed the opposition against trademark registration no. 5862676 for word mark “2.5D Gorilla Glass 3”.

“Gorilla Glass” vs “2.5D Gorilla Glass 3”

Corning Inc. opposed to register the word mark “2.5D Gorilla Glass 3” designating goods of bracelets, personal ornaments, and jewellery in class 14 based on Article 4(1)(xv) of the Trademark Law by asserting a likelihood of confusion with his famous smart phone cover glass brand “Gorilla Glass”.

Famous smartphone cover glass

The Opposition Board admitted a certain level of awareness of trademark “Gorilla Glass” in association with smart phone cover glass and scratch-resistant and durable glass for electronics devices. In the meantime, the Board denied famousness of the trademark among relevant consumers and traders to deal with bracelets, personal ornaments, and jewellery.

Assessment of trademark similarity

In the assessment of trademark similarity, the Board held that dominant portion of the opposed mark is considered “2.5D Gorilla Glass” by deleting “3” at the ending of the mark. If so, it is groundless to assess similarity of mark simply based on literal elements of “Gorilla Glass” from both marks.

Likelihood of confusion

As long as the cited mark “Gorilla Glass” has not become famous in association with bracelets, personal ornaments and jewellery, relevant consumers at first sight of the opposed mark are unlikely to confuse or misconceive a source of origin from Corning Inc. or any business entity economically or systematically connected with the opponent.
[Opposition case no. 2016-900303]

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

IP High Court ruled trademark “SeaGull-LC” is deemed similar to “SEAGULL”

In a dispute regarding similarity between trademark “SeaGull-LC” and “SEAGULL”, the  IP High Court took the side of original decision rendered by the Japan Patent Office on the following ground.

The term of “SeaGull”, giving rise to a meaning of a gull frequenting the sea and a pronunciation of “siːɡʌl”, is evidently distinctive as a source indicator in relation to the designated goods. In the meantime, a term of “LC” in itself does not have any specific meaning in English or other foreign languages. It becomes common in trade to use two alphabetical letters accompanying a brand name on goods with an intention to represent a model or series of the brand. If so, “LC” lacks inherent distinctiveness as a source indicator of designated goods as long as relevant traders and consumers perceive the term to indicate a model or standards of the goods.

In appearance of the applied mark, “SeaGull” and “LC” can be seen separately by means of hyphen. Hyphen in itself does not serve to fuction as a source indicator. It just connects two words to constitute new term as a whole, or separates a composing element of compound word to make it more visible. Since each connected word is respectively distinguishable in the aspect of linguistics, it should be allowed to extract such word connected by hyphen independently. Thus, it is admissible to consider the term “SeaGull” as the dominant portion of applied mark and compare the portion with senior trademark registration in the assessment of trademark similarity.  Accordingly, applied mark gives rise to a meaning of a gull frequenting the sea and a pronunciation of “siːɡʌl”  from the dominant portion as well as “siːɡʌl-el-siː” from its entirety.

In the assessment of trademark similarity, commercial practice can be duly taken into consideration where it reflects regular and constant circumstances relating to the disputed goods in general. Mere commercial facts involving specific goods with disputed mark are insufficient in this regard. Sales record and publicity of trademark “SeaGull-LC” should not be considered in the assessment of trademark similarity due to the above mentioned reason.

As a conclusion, the Court found a likelihood of confusion between “SeaGull-LC” and “SEAGULL”.
[IP High Court Heisei28(Gyo-Ke)10270, June 28, 2017]

It is worthy to note that the Court considered “hyphen” functions to separate a mark in the assessment of trademark similarity regardless of its actual function to connect words. It is advisable to investigate trademark registration consisting of each word when choosing a trademark including hyphen between word elements.

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

JPO permits registration of trademark “Re+Cell” by denying similarity to a word mark “ReCell”

In a dispute over trademark similarity between “Re+Cell” and “ReCell”, the Appeal Board of Japan Patent Office (JPO) determined both marks are dissimilar in visual, phonetical, and conceptual point of view.

Re+Cell vs. ReCell

The mark in dispute, consisting of the letters “Re” and “Cell” locating “+” in between, was applied for registration on July 22, 2015 by designating goods of cosmetics (class 3) in the end.

JPO examiner refused the applied mark on the grounds of conflict with a senior trademark registration no. 5661464 for word mark “ReCell” in standard character covering goods of cosmetics, soaps, flagrances (class 3) and dietary supplements (class 5), effectively registered since April 4, 2014.Applicant filed an appeal against the refusal and contended dissimilarity of the marks.

Appeal

Appeal Board ruled in favor of applicant based on the following factual findings.

  1. Applied mark gives rise to a pronunciation of “ri-purasu-seru” or “re-puresu-seru” from appearance, but no specific meaning in its entirety.
  2. Cited mark gives rise to a pronunciation of “ri-seru” or “re-seru”. Respective term composing the mark means “microscopic structure containing nuclear and cytoplasmic material” and “a prefix used with the meaning ‘again’”, however, concept of the mark is unspecified as a whole.
  3. From appearance, both marks are sufficiently distinguishable due to presence or absence of “+”.
  4. Sound of both marks is clearly dissimilar in view of nature and number of the tone.
  5. As long as no specific meaning is conceived from both marks, the marks are conceptually dissimilar.

As a consequence, applied mark is deemed dissimilar to the cited mark and the Board withdrew the refusal. [Appeal case no. 2016-16102]

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

 

Famous sportswear brand “PUMA” unsuccessful in setting aside registration of “KUMA” mark

In a recent Japan trademark opposition decision, the Opposition Board ruled that famous PUMA logo for sportswear was dissimilar to the “KUMA” mark with bear design for goods in class 25, so as to cause confusion.

In the case, Opposition case no. 2016-900308, the Board was faced with considering whether the KUMA device mark of Applicant for “clothing; headgears; T-shirts; sportswear; sports shoes” in class 25 was confusingly similar to Opponent’s famous PUMA logo for “sportswear”.

In concluding that confusion was unlikely, the Board stated that two “key considerations” in making such a determination were famousness of Opponent’s mark and the similarity between the trademarks. With regard to the former factor, the Board admitted remarkable reputation and famousness of the PUMA logo among relevant public in Japan. The Board nonetheless reached its conclusion of dissimilarity – most likely on the fact that difference in the first letter generates distinctive impression in the mind of consumers since “KUMA” means bears (wild animals) in Japanese.

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

“WORLD SERIES OF FIGHTING” is less likely to cause confusion with “WORLD SERIES” owned by Major League Baseball Properties, Inc.

The Opposition Board of JPO (Japan Patent Office) dismissed an opposition claimed by Major League Baseball Properties, Inc., a US corporation managing trademark portfolio pertinent to US major league baseball, and determined to sustain trademark registration no. 5858151 for word mark “WORLD SERIES OF FIGHTING” [Opposition case no. 2016-900288].

WORLD SERIES OF FIGHTING

The mark in question consists of a standard character mark “WORLD SERIES OF FIGHTING” covering the goods of apparels, shoes, caps, underwear, uniforms and sportswear (class 25) and the service of entertainment or events relating to Mixed Martial Arts (class 41).

OPPOSITION by Major League Baseball Properties, Inc.

Major League Baseball Properties, Inc. filed an opposition based on the grounds that (i)WORLD SERIES OF FIGHTING” conflicts with senior trademark registrations for the mark “WORLD SERIES” owned by the opponent due to similarity between marks, (ii) there finds a likelihood of confusion with the source between marks because of high recognition of “WORLD SERIES” to indicate the annual championship of baseball games between the champions of the two major baseball leagues in the United States, the American League and the National League.

Similarity between marks

In evaluating the similarities between marks, the Board analyzed the similarity in the sight, sound and meaning of the marks.
The Board concluded “WORLD SERIES OF FIGHTING” is easily distinguishable from “WORLD SERIES” in appearance and pronunciation as a consequence of “FIGHTING” at the end of the mark in question. Besides, “WORLD SERIES OF FIGHTING” gives rise to meaning of a series of global events pertinent to martial art match. In the meantime, “WORLD SERIES” can be conceived to mean the championship games between major baseball leagues in the United States. Evidently, both marks are dissimilar from a conceptual point of view.
Accordingly, both marks are deemed dissimilar.

Likelihood of confusion

As long as both marks are distinctively dissimilar in the sight, sound and meaning as mentioned supra, relevant consumers at an ordinary care are unlikely to confuse or associate the source of the mark in question with the opponent when used on goods and services in dispute even if “WORLD SERIES” has become well-known for a source indicator of the opponent among consumers in Japan.

Accordingly, the Board concluded the opposition should be denied since it lacks grounds to be sustained.


I have no idea why the Board denied a likelihood of confusion between marks despite admitting a widespread reputation of “WORLD SERIES”.
As long as opposed mark contains a famous mark “WORLD SERIES” entirely, it should be cancelled on the goods of class 25 at least in view of similarity between goods in dispute.

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

 

Famous hotel brand “RITZ” successful in invalidating “RITZ MARCHE”

Invalidation trial

The Japan Trademark Law contains provision for invalidation of trademark registration by means of inter partes trial in Article 46 as a remedy to questionable ex-officio examination of the Japan Patent Office (JPO).
Statistically, approximately 100 invalidation petitions were filed to the JPO in each of the past five years. Nearly 40 percentages of them ended successfully in an invalidation of registered mark in question on average.

[Trademark invalidation trial]

Year Number of cases Disposition of trial
Invalidation Dismissal Withdrawal
2015 100 37 58 19
2014 115 38 32 15
2013 96 37 53 10
2012 118 44 76 16
2011 112 38 57 9

RITZ v. RITZMARCHE

Ritz Hotel Ltd., a world famous hotel management company, petitioned for invalidation of trademark registration no. 5594878 for a word mark “RITZMARCHE” (written in Katakana letter) covering “retail services or wholesale services for foods and beverages” in class 35 pursuant to Article 46 of the Trademark Law on the following grounds.

  1. Consumers are likely to confuse or associate the mark in dispute with Ritz Hotel due to remarkable reputation bestowed on famous hotel brand, “RITZ”.
  2. “RITZMARCHE” is deemed confusingly similar to senior trademark registrations owned by Ritz Hotel Ltd.

[Marks in dispute]

Ground 1 corresponds to on Article 4(1)(xv) of the Trademark Law to prohibit any mark likely to cause confusion with a business of another entity from being registered.

Ground 2 rests on Article 4(1)(xi) to bar registration of a junior mark which conflicts with any senior trademark registration due to similarity of both marks and goods/services.

It becomes a common practice to raise several grounds in an invalidation petition. Combination of Article 4(1)(xv) and 4(1)(xi) is a standard tactic in trademark dispute involving a famous brand. Theoretically, Article 4(1)(xv) can’t be applied unless Article 4(1)(x) is inapplicable to the case. Article 4(1)(xi) is useful to the extent the marks as well as goods/services in question are identical or similar. In the meantime, Article 4(1)(xv)   targets a wider territory where consumers are likely to confuse the source of origin between marks. In other words, Article 4(1)(xv) becomes helpful only where both marks are dissimilar, or goods/services in question are deemed dissimilar. Due to a wider protection to Article 4(1)(xv), a petitioner who claims the article is required to prove high recognition and substantial use of an opposing mark accordingly.

It is of no matter that JPO renders an invalidation decision simply based on Article 4(1)(xi) without reference to Article 4(1)(xv).

On the Ritz case, the JPO Trial Board held to invalidate registered mark “RITZMARCHE” on the grounds of Article 4(1)(xi).


Board decision

In the assessment of similarity, the Board considered a term “MARCHE” is less distinctive or inherently descriptive in connection with “retail services or wholesale services for foods and beverages” of class 35 since the term itself means “market” in French. Besides it can be seen often as a sign to indicate a place where merchants provide foods or beverages directly to consumers in Japan. Meanwhile, average consumers with an ordinary care are unlikely to perceive any descriptive meaning from the term of “RITZ”. Therefore, in the configuration of disputed mark “RITZMARCHE”, it should be allowed to extract the term “RITZ” as a prominent part of the mark.

In comparing the Katakana letter of “Ritz” with alphabetical term “RITZ” of cited marks, both have same sound. Their meaning is incomparable since both don’t give rise to specific meaning. Both terms are different in appearance, however, it becomes commercially routine to write alphabetical names in Katakana letters for purpose of representing pronunciation of the terms in fact. Based on the foregoing, the Board concluded that “RITZMARCHE” and Ritz Hotel registered marks containing a term of “RITZ” are confusingly similar as a whole, by taking into consideration of relevant factors in commerce relevant to disputed goods/services. The Board also held that “retail services or wholesale services for foods and beverages” in class 35 is considered similar to food products in class 30 designated under the citations.
[Invalidation case no. 2016-890033]

The Board didn’t refer to Article 4(1)(xv) although Ritz Hotel argued famousness of cited mark “RITZ” with enormous amount of evidential materials as mentioned reason.
If Ritz Hotel has filed the invalidation action solely based on Article 4(1)(xv), the JPO must have admitted famousness of the mark “RITZ” and invalidated “RITZMARCHE” likewise.


NEW TRADEMARK EXAMINATION GUIDELINE

In April 2017, the JPO announced new trademark examination guideline [Revision 13].
The guideline aims to reflect recent judicial decisions and non-traditional trademarks. Inter alia, Article 4(1)(xi) is hot topic due to its significance as a key provision pertinent to assessment of mark similarity. From now on, it is more likely that the JPO admits an argument of prominent part of trademark than before, even if the mark consists of other words or figurative elements.
I suppose, the RITZ case is timely ruled in line with New Guideline.

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

The IP High Court ruled a trademark “TOMATO SYSTEM” is deemed similar to “TOMATO” in connection with the service of computer programming

On March 23, 2017, in a lawsuit disputing registrability of an applied word mark “TOMATO SYSTEM” in standard character designating goods of electronic machines, apparatus and parts thereof (Class 9), and services of computer software design, computer programing, or maintenance of computer software; technological advice relating to computers, automobiles and industrial machines; testing or research on machines, apparatus and instruments; providing computer programs on data networks (Class 42), the IP High Court upheld the original refusal decision rendered by the JPO Appeal Board and dismissed the lawsuit filed by applicant, Ishiguro Medical System Co., Ltd. [Case No. Heisei 28 (Gyo-Ke) 10208].

 


 

JPO decision

Initially, JPO examiner rejected to register the applied mark “TOMATO SYSTEM” due to conflict with senior registration no. 4394923 for word mark “TOMATO” in standard character designating services of technological advice relating to computers; computer software design in Class 42 (Citation 1) and no. 5238348 for “tomato” with a device mark designating retail/wholesale services for electrical machinery and apparatus in Class 35 (Citation 2). Applicant sought to file an appeal against the rejection by arguing dissimilarity of both marks, however, the Appeal Board decided to refuse the applied mark on the basis of Article 4 (1) (xi) of the Trademark Law in a decision dated July 28, 2016 [Appeal Case No. 2016-2278].

In the decision, the Board concluded “TOMATO”, an English term meaning red edible fruit, does not imply any descriptive meaning in association with the designated goods and services. In the meantime, a term “SYSTEM” easily reminds consumers of meanings to suggest organized, purposeful structure that consists of interrelated and interdependent elements when used on machines, apparatus and computer software. Unless we find conceptual connection between two terms, it is allowed to segregate the applied mark into each element in the assessment of mark comparison. If so, relevant consumers at an ordinary care are likely to consider the term “TOMATO” as a predominant portion of the applied mark. Based on the foregoing, the Board judged the applied mark is deemed similar to Citation 1 and 2.


IP High Court 

In the lawsuit, plaintiff claimed the Board decision was defectively inappropriate since it is not allowed to segregate each term composing the applied mark in light of tight combination of both terms and ambiguous meaning of the term “SYSTEM” in relating to designated goods and services.

The Court upheld the Board decision by declaring “SYSTEM” is less distinctive in connection with goods or services relating to information processing. Therefore, it is permissible to segregate the applied mark into each element and to judge similarity of mark based on a predominant element of the mark in dispute.



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