カテゴリー: composite

Trademark battle over slogan : Think different vs Tick different

Swiss watch giant Swatch has failed to stop US tech giant Apple from registering “Think Different” as a trademark, which Swatch argued segues too closely to its own “Tick Different” trademark.

THINK DIFFERENT

Apple’s “THINK DIFFERENT” mark was used in its successful Emmy-award winning advertising campaign which ran for five years from 1997. The mark was also used on the box packaging for its iMac computers next to another trademark “Macintosh”.

Its applications to register “THINK DIFFERENT” were filed in Japan on February 24, 2016 for use in relation to various goods and services belonging to 8 classes like watches, clocks (cl.12) as well as online social networking services (cl.45), among other items. JPO admitted registration on September 12, 2017. Subsequently, the mark was published in the Official Gazette for opposition.

Tick different

By citing its own mark, Swatch filed an opposition against Apple’s “THINK DIFFERENT” mark based on Article 4(1)(xi) of the Japan Trademark Law and asserted a likelihood of confusion with Swatch “Tick different” mark when used in connection with all goods designated in class 14.

Swatch’s “Tick Different” mark was filed to JPO through the Madrid Protocol (IR no. 1279757) with priority date of July 16, 2015 and admitted national registration on July 15, 2016 by designating timepieces and chronometric instruments, namely chronometers, chronographs, clocks, watches, wristwatches, wall clocks, alarm clocks, among other items in class 14.

Swatch, having a worldwide presence and its corporate group owns a stable of Swiss watch brands, including Omega, Tissot and Swatch, has allegedly used the mark on mobile payment smart watches since 2015.

 

Opposition decision

Swatch argued that the two marks were highly similar due to the same syllabic structure and number of words. With the same ending and almost the same beginning, they are visually and aurally similar.

However, in decision grounds issued on June 6 2018, the Opposition Board of Japan Patent Office (JPO) found that when compared as wholes, the marks were more dissimilar than similar.

The Board, after considering all the pleadings, evidence and submissions, concluded because of the conceptual, visual and aural dissimilarities of the marks, the Board was persuaded that the average consumer would conceive they are, overall, more dissimilar than similar.

Consequently, JPO ruled that as Swatch’s opposition failed on all grounds, the “THINK DIFFERENT” mark registration from Apple will remain with the status quo.
[Opposition case no. 2017-900376]

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

Straight Wings Emblem Trademark Battle

In a recent trademark decision regarding straight wings emblem on automobiles, the Opposition Board of Japan Patent Office (JPO) dismissed an opposition filed by BENTLEY MOTORS LIMITED and ASTON MARTIN LAGONDA LIMITED against trademark registration no. 5962270 for a combined mark consisting of “M78 86” and straight wings device due to unlikelihood of confusion.
[Opposition case no. 2017-900293, Gazette issued date: May 17, 2018]

TM registration no. 5962270

Disputed mark (see below) was applied for registration on December 8, 2016 by designating automobiles and other goods in class 12.

Tsubuyara Productions CO., Ltd, a Japanese company, famous for the creator of Ultraman (Japanese Superhero) is a co-applicant of disputed mark.

A month after the filing, during the Press Conference held at Tokyo Auto Salon 2017, Toyota’s new M78 x 86 concept car was unveiled. Toyota, as a car supplier collaborating with Ultraman, aimed to make people “feel like Ultraman”.

“86” is a name for Toyota sports coupe. “M78” comes from Nebula M78, a home world of Ultraman, thirteen million light years away from the earth.

Disputed mark was created to represent the collaboration between Toyota and Tsuburaya.

Opposition

JPO granted registration of the mark on July 7, 2017.

To oppose the mark, Bentley, the most sought after luxury car brand in the world, and Aston Martin, iconic luxury British sports car manufacturer, filed an opposition on the grounds that disputed mark is likely to cause confusion with opponents’ business due to close resemblance and famousness of opponent mark based on Article 4(1)(x), (xi), (xv), (xix) of the Trademark Law.

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.
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) prohibits to register a trademark which is likely to cause confusion with a business of other entity.
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.

Board decision

The Opposition Board admitted a certain degree of popularity and reputation of Opponent emblem as a source indicator of opponent’s business among relevant consumers in the fields of automobiles, however, totally negated similarity of both marks from the perspective of appearance, pronunciation, and concept. Besides, finding that relevant consumers with an ordinary care would pay particular attention to the mark in procuring expensive goods, such as cars, the Board held that a mere graphical resemblance of straight wings is insufficient to find a likelihood of confusion since even opponents are co-existing in peace regardless of the similar straight wings.
Based on the foregoing, the Board concluded that there is no likelihood of confusion between the marks and allowed the “M78 86” straight wings mark valid.

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

 

 

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

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

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

“ANNIVERSARY DIAMOND” versus “ANNIVERSARY”

The JPO Appeal Board ruled that

a senior trademark registration for the mark “ANNIVERSARY” in standard character designating jewelry in class 14 is unlikely to cause confusion with a junior mark “ANNIVERSARY DIAMOND” written in plain letters other than a letter “O” which was replaced with a diamond-ring device (see below), even if the mark is used on diamond rings in class 14[Fufuku2015-19812].

anniversary-diamond

The Appeal Board cancelled a refusal decision rendered by the JPO examiner on the grounds that:
(1) From appearance and pronunciation, the “ANNIVERSARY DIAMOND” logo can be perceived as one mark in its entirety. Besides, both terms of “ANNIVERSARY” and “DIAMOND” are quite familiar with relevant public in Japan and thus concept of “ANNIVERSARY DIAMOND” can be easily conceived from the combination.
(2) Due to the configuration, it must be appropriate to consider that the logo just gives rise to its pronunciation and meaning as a whole.
(3) Therefore, the refusal decision based on the assumption that the term of “ANNIVERSARY” plays a dominant role in the logo made a factual mistake and should be cancelled consequently.

Seemingly, above conclusion is not coincident with the Trademark Examination Guidelines (TEG) criteria as below.

Chapter III, Part 10 of TEG provides that:
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 diamond rings in class 14 and the device depicted on the term “DIAMOND” further impresses the concept of diamond rings in mind of consumers, the portion of “DIAMOND” should be considered descriptive. 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 just aimed to declare narrower scope of right where trademark consists of a dictionary word commonly used to the public.