JPO refused 3M Company to register “3M” in relation to vehicles regardless of renowned 3M logo

In a recent decision, the Appeal Board of Japan Patent Office (JPO) did not allow registration of a word mark “3M” written in standard character due to a lack of distinctiveness in relation to vehicles (class 12). [Appeal case no. 2017-3200]

Disputed mark – “3M” in standard character

Disputed mark, a word consisting of “3M” written in standard character, was filed by designating various types of vehicles (class 12) in the name of 3M Company, an American multinational technology company that engages in the manufacture of industrial, safety and consumer goods, and equipment on October 28, 2014 (TM application no. 2014-90835).

Article 3(1)(v)

On December 6, 2016, The JPO examiner totally refused disputed mark based on Article 3(1)(v) of the Trademark Law, stating that sign consisting of a digit and an alphabet is commonly used in transaction to represent article number, model number or standards. If so, disputed mark lacks inherently distinctiveness as a source indicator.

The article prohibits applied mark from registering if the mark consists solely of a very simple and common mark. Trademark Examination Guidelines (TEG) provides that a trademark composed of a numeral followed by one or two Roman characters, e.g. 2A, is subject to the article.

3M Company filed an appeal against the refusal and asserted that “3M” has become famous among public in general as a trade name and source indicator of applicant or its Japanese subsidiary.

Appeal Board decision

The Board, however, dismissed the assertions by finding that:

  1. Evidences just reveal longtime use of “3M” as a trade name of applicant or its subsidiary. But most of them show disputed “3M” mark is used to represent a commercial name in the context of newspapers and web articles. If so, there shall not be seen as a source indicator.
  2. Renowned 3M logo is different from disputed 3M mark in appearance.
  3. Even if “3M” keyword extraction from the web pages demonstrates substantial numbers of articles pertinent to applicant’s business and less possibility to use “3M” by unrelated business entities as article number, model number or standards, these facts are insufficient not to apply Article 3(1)(v).
  4. Precedent administrative decisions and judicial rulings are cases relating to renowned 3M logo. If so, as long as disputed mark consists of “3M” written in standard character, the Board can’t find any reason to bind the case in dispute.

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

Trademark registration for Kikkoman’s Soy sauce 3D Bottle

In October 11, 2016, Kikkoman Corporation, the world’s leading producer of soy sauce, filed an application for trademark registration at the Japan Patent Office (JPO) for the following three-dimensional colored mark for soy sauce in class 30.

Red-capped Kikkoman soy sauce dispenser

Iconic red-capped Kikkoman soy sauce dispenser was introduced in 1961 and has been in continuous production ever since. It was developed by Kenji Ekuan, a Japanese Navy sailor former naval academy student who dedicated his life to design when he left the service. Its unique shape took three years and over a hundred prototypes to perfect, but the teardrop design and dripless spout have become a staple of restaurant condiments all around the world. The bottle’s design hasn’t changed over the past 50 years.

JPO Examination/Acquired distinctiveness

The JPO examiner initially notified her refusal due to a lack of inherent distinctiveness in relation to say sauce.

In a response to the office action, Kikkoman argued acquired distinctiveness of the 3D bottle arising from uniqueness of its shape and substantial use for over five decades.

According to news release from Kikkoman, over 500 million of the bottles have been sold since the design was first introduced and distributed in approximately a hundred countries worldwide. Red-capped Kikkoman soy sauce dispenser has already been registered as 3D mark in US, EU, Ukraine, Norway, Russia, Australia.

In March 30, 2018, the JPO granted trademark registration based on Article 3(2) of the Trademark Law by finding acquired distinctiveness of the 3D color mark as a source indicator of Kikkoman.
[TM Registration No. 6031041]

Under Armour Lost Trademark Battle Against AGEAS in Japan

The Opposition Board of the Japan Patent Office (JPO) dismissed an opposition filed by Under Armour Incorporated, an American sporting goods manufacturer which supplies athletic and casual apparel, as well as footwear, against trademark registration no. 5924494 for the “H” device mark designating apparels, footwear, headgear, gloves, cycling wears in class 25.
[Opposition case no. 2017-900163, Gazette issue date:  February 23, 2018]

Under Armour logo

In an opposition, Under Armour claimed trademark registration no. 5924494 violates Article 4(1)(x), (xi), (xv) and (xix) of the Japan Trademark Law by citing a senior trademark registration no. 4701254 for the Under Armour logo (see below in left). Cited registration has been effectively registered since 2003 by designating clothing, footwear, sportswear, sports shoes in class 25.

Opposed mark

Opposed mark was applied for trademark registration on August 26, 2016 in the name of AGEAS INC. (USA) covering various goods in class 25 (see above in right).

Without any refusal notice from the JPO, opposed mark was granted for registration on January 16, 2017, and published in gazette for opposition on March 21, 2017.

Subsequently, Under Armour filed an opposition in May.

 

Opposition grounds

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.

To sum up, Under Armour wins if the Under Armour logo is considered confusingly similar to opposed mark. Meanwhile, even if the Under Amour logo obtains a high degree of popularity and reputation among relevant public in Japan, the opposition is overruled as long as both marks are dissimilar and unlikely to cause confusion.

 

Board decision

The Opposition Board admitted a high degree of popularity and reputation of the Under Armour logo as a source indicator of opponent among relevant consumers in the fields of sports.

In the assessment of mark appearance, the Board concluded:

“It is apparent that respective mark gives rise to a diverse visual impression in the mind of consumers because of different configuration. Opposed mark can be perceived as a device deriving from ‘H’. In the meantime, the cited mark as a device consisting of ‘U’ and upside-down ’U’. Besides, from phonetical and conceptual points of view, there exists no element to find similarity of the marks. Based on the foregoing, both marks shall be less likely to cause confusion due to a remarkable degree of visual difference.”

 

As a conclusion, the Board decided opposed mark is not subject to Article 4(1)(x), (xi), (xv) and (xix) of the Trademark Law, and admitted to continue a status quo.


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

NIKE unsuccessful in registering JUST DO IT on cosmetics

In a recent decision, the Appeal Board of Japan Patent Office (JPO) dismissed an appeal filed by NIKE Innovate C.V., who attempted to register a word mark “JUST DO IT” in standard character on cosmetics and other goods classified in class 3 by means of “defensive mark” under Article 64 of the Japan Trademark Law.
[Appeal case No. 2015-23031, Gazette issued date: February 23, 2018]

 

DEFENSIVE MARK

According to Article 64, famous brand owner is entitled to register its brand as “defensive mark” with respect to dissimilar goods/services that are not designated under the basic registration, where the owner shall demonstrate that the mark has acquired remarkable prestige in relation to the goods/services on which the mark has been substantially used, and thus there will be likely to occur confusion with the owner if an identical or similar mark is used on dissimilar or remotely associated goods/services with basic registration.

 

JUST DO IT

NIKE Innovate C.V. owns trademark registration no. 4206837 for the word mark “JUST DO IT” on apparels, shoes and sportswear and other goods in class 25 since 1998.

NIKE sought to register the mark as defensive mark on cosmetics (class 3) on October 22, 2014 (Trademark application no. 2014-88774). Examiner refused the application by stating that it is unclear whether the mark has been used in connection with applicant’s goods of class 25. If so, the mark can be recognized merely as a commercial slogan to represent sports event. Consequently, examiner considers the mark has not become well-known mark as a source indicator of applicant.

To contest the refusal, NIKE filed an appeal on December 15, 2015.

 

BOARD DECISION

The Appeal Board likewise questioned whether “JUST DO IT” has been used as a source indicator of apparel, shoes, or sportswear.

Board admitted a certain degree of popularity and reputation on the term “JUST DO IT” as a corporate message from NIKE, however, upheld the refusal by stating that the produced advertisement and evidences regarding “JUST DO IT” are insufficient and vague to connect the term with goods designated under basic registration.


Apparently, the Board underestimated “JUST DO IT” on the grounds that NIKE failed to advertise the term in a manner closely connected with specific goods.

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

 

No Violation of the US President’s Personality Rights

The Appeal Board of Japan Patent Office (JPO) admitted registration of a mark consisting of jigsaw puzzles design and “TA TRUMP” (see below), saying that it does not violate personality rights of Mr. Donald John Trump, the President of the United States.

 

MARK IN QUESTION

A Japanese individual filed a trademark application for the mark consisting of jigsaw puzzles design and a word of “TA TRUMP” (see below) on November 23, 2016 by designating “psychology education cards” in class 16.

JPO examiner refused the mark on the grounds that it comprises a famous abbreviation of Mr. Donald John Trump, the President of the United States and presumably the applicant would not obtain consent from him.

 

Article 4(1)(viii)

Article 4(1)(viii) of the Trademark Law prohibits registration of trademarks which contain the representation or name of any person, famous pseudonym, professional name or pen name of another person, or famous abbreviation thereof. Notwithstanding the provision, the article is not applicable where the applicant of disputed mark produces the written consent of the person.

The Supreme Court of Japan ruled the article has aimed to protect personality rights of a living individual. A diminutive of foreign celebrity falls under the category of “abbreviation” even if his/her full name is not so familiar among Japanese citizen.

 

To contest the refusal, the applicant filed an appeal on August 11, 2017.

 

Appeal Board

In the decision rendered on January 10, 2018, the Appeal Board overruled the refusal and admitted registration of the mark in question by stating that:

  1. “TRUMP” has been known as an English term meaning playing cards among the public in Japan.
  2. In the meantime, “TRUMP” admittedly corresponds to a surname of Mr. Donald John Trump and it becomes evident he is a well-known person as the 45th President of the United States to be called “President Trump”.
  3. Overall appearance of the applied mark easily reminds us of a kind of playing card back designs.
  4. If so, the term of “TRUMP” depicted in the mark shall not be considered to suggest President Trump at all.
  5. Based on the foregoing, accordingly it is groundless to refuse the mark based on Article 4(1)(viii).

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

 

Never trademark “BON GOÛT” in food-service business

The Appeal Board of the Japan Patent Office (JPO) decided to register a term of “bon goût” in relation to various foods of class 30 and restaurant service of class 43 by finding that the term is deemed a coined word in Japan.
[Appeal case no. 2017-7985]

“BON GOÛT”

Disputed mark (see below), written in a common font design, was filed in December 14 by designating various foods of class 30, e.g. buns and breads, confectioneries, hamburgers, pizza, hot dogs, spices, noodles, pasta, coffee, tea, and restaurant service, rental of cooking apparatus and microwave ovens and others of class 43 in the ultimate.

Lack of distinctiveness

JPO examiner entirely refused the mark due to lack of distinctiveness based on Article 3(1)(iii) of the Trademark Law. In refusal decision, examiner asserted the term of “bon goût” is a French term to mean “good taste” in English.

If so, relevant consumers and traders are likely to conceive the term in association with quality of goods and services.

Besides, given the mark is written in a common font design, it shall be objectionable under Article 3(1)(iii) since the mark is solely composed 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.

 

Appeal Board decision

In the meantime, the Appeal Board overruled examiner’s rejection and granted registration of “bon goût”.

The Board admitted the terms of “bon” and “goût” are French words meaning good and taste respectively by referring to French dictionary, but, in contrast, considered a combined word of “bon goût” is unfamiliar to Japanese public with an ordinary care.
If so, disputed mark shall be deemed a coined word in its entirety and relevant consumers are unlikely to conceive any specific meaning from the mark.

Besides, the Board held, as a result of ex officio examination, there found no circumstance to convince “bon goût” is ordinarily used as a mere descriptive indication in food-service business.

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


This case gives us a lesson.
Descriptive term in foreign language has a potential risk to be registered in Japan if we are unfamiliar to the term.

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

JPO refused to register word mark “ROMEO GIGLI” due to lack of consent from Italian fashion designer

In a recent decision, the Appeal Board of Japan Patent Office (JPO) refused to register trademark application no. 2015- 100245 for a red-colored word mark “ROMEO GIGLI” in gothic script (see below) designating goods of Class 24 and 25 on the grounds that applicant failed to obtain a consent from Italian fashion designer, Romeo Gigli, based on Article 4(1)(viii) of the Trademark Law.[Case no. 2017-3558]

Disputed mark was filed on October 16, 2015 in the name of ECCENTRIC SRL, an Italian legal entity, by designating following goods in Class 24 and 25.

Class 24:

“woven fabrics; elastic woven material; bed and table linen; towels of textile; bed blankets; table cloths of textile; bed covers; bed sheets; curtains of textile or plastic; table napkins of textile; quilts”

Class 25:

“clothing; T-shirts; shirts; jumpers; trousers; pants; jackets; skirts; jeans; neckties; overcoats; coats; belts; gloves; mufflers; sweat suits; underwear; swimsuits; headgear; hats; caps; footwear; special footwear for sports”

 

Article 4(1)(viii)

On December 9, 2016, JPO examiner refused the mark based on Article 4(1)(viii) of the Trademark Law.

Article 4(1)(viii) is a provision to prohibit registration of trademarks which contain the representation or name of any person, famous pseudonym, professional name or pen name of another person, or famous abbreviation thereof. Notwithstanding the provision, the article is not applicable where the applicant of disputed mark produces the written consent of the person.

The Supreme Court of Japan has ruled the article shall be interpreted to protect personal rights of a living individual. In line with the Supreme Court ruling, Trademark Examination Manuals (TEM) set forth that the article is applicable not only to natural persons (including foreigners) and corporations but also associations without capacity. Familiar name of foreigners falls under the category of “abbreviation” if its full name contains middle name(s) unknown to Japanese consumer.

Click here to access TEM on the JPO website.

Finding that disputed mark just consists of an individual name of famous fashion designer, Romeo Gigli, the examiner raised an objection based on Article 4(1)(viii) unless ECCENTRIC SRL obtains a consent from the designer.

 

APPEAL

The applicant filed a notice of appeal with the Appeal Board, a body within JPO responsible for hearing and deciding certain kinds of cases including appeals from decisions by JPO Examiners denying registration of marks, on March 9, 2017 and contended against the refusal decision by examiner.

During the appeal trial, ECCENTRIC SRL argued inadequacy of the decision by demonstrating following facts.

  • ECCENTRIC SRL is a legitimate successor of trademark rights owned by Romeo Gigli as a consequence of mandatory handover resulting from bankruptcy of company managed by Romeo Gigli irrespective of his intention. Under the circumstance, it is almost impossible to obtain a written consent from him.
  • In the meantime, ECCENTRIC SRL has already obtained trademark registrations for the word mark “ROMEO GIGLI” in several jurisdictions.
  • Besides, ECCENTRIC SRL is a current registrant of Japanese TM registration no. 2061302 for identical wordmark in Class 4,18,21 and 26.
  • There has been no single complaint from consumers, traders or Romeo Gigli in person.

ECCENTRIC SRL alleged that the above facts shall amount to having obtained an implicit consent from Romeo Gigli in fact. Thus, disputed mark shall be allowed for registration even without a written consent in the context of purpose of the article.

The Appeal Board dismissed the appeal, however, and sustained the examiner’s decision by saying that trademark registrations in foreign countries shall not be a decisive factor in determining registrability of disputed mark under Article 4(1)(viii) in Japan. Absence of complaint from Romeo Gigli shall not be construed that he has consented to register his name in the territory of Japan explicitly or implicitly.

Unless applicant produces evidence regarding a consent from Romeo Gigli otherwise, disputed mark shall be refused to register based on Article 4(1)(viii) of the Trademark Law.

According to the JPO database, ECCENTRIC SRL filed an appeal against the Board decision to the IP High Court in November 2017. The Court decision will be rendered within a couple of months.


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

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

Consumers are unlikely to confuse or associate the mark “GOTHAM CITY” with Batman’s place of residence and DC Comics when used on apparels, bags and fashion accessories

The Appeal Board of Japan Patent Office (JPO) has cancelled an initial decision by JPO examiner to refuse the mark “GOTHAM CITY” with a logo, and ordered to grant protection for the mark by decision of March 14, 2017 [Appeal case no. 2016-9140].


Trademark in dispute

The mark in dispute consists of “GOTHAM CITY” written in alphabetical letters and Japanese characters as shown below.

Applicant filed the mark on April 17, 2015 to the JPO by covering goods of “key holders; fashion accessories” in class 14, “bags; pouches; vanity cases” in class 18, and “clothing; waistbands; belts” in class 25 [TM application no. 2015-37755].


Initial examination

JPO examiner initially refused the mark for confusion with DC comics, a US comic book publisher, or its affiliate pursuant to Article 4(1)(xv) of the Japanese Trademark Law since “GOTHAM CITY” is widely known as a fictitious city out of Batman from DC Comics.

Article 4(1)(xv) is a provision to prohibit any applied mark from being registered where relevant consumers or traders are likely to confuse or associate the mark with renowned sources other than applicant. It would suffice to apply the provision where consumers conceive goods or services with the mark derive from entities systematically or economically connected with the source even if relevant consumers believe the goods or services are not from the source.

It is not conditioned that renowned source indicator should be registered in advance, however, the indicator must obtain high degree of trademark awareness from the nature of things.

Article 4(1)(xv)

Article 4 Notwithstanding the preceding Article, no trademark shall be registered if the trademark:
(xv) is likely to cause confusion in connection with the goods or services pertaining to a business of another person


Appeal

Applicant filed an appeal against the refusal decision by examiner on June 21, 2016 and argued for registration of the mark in dispute.

Consequently, the Appeal Board decided in favor of applicant by stating its grounds as follows.

Distinctiveness/Awareness of GOTHAM CITY

The Board considers that the word “GOTHAM” is an unfamiliar or rarely known word in our society. Thus, the applied mark with a combination of “GOTHAM” and “CITY” and its pronunciation in Japanese characters is deemed an invented word in its entirety and does not give rise to any specific meaning at all.

In the meantime, ex-officio examination during the appeal trial revealed that the term of “GOTHAM CITY” corresponds to a fictitious city out of Batman which has been published by a US publisher, DC Comics, since 1939 as a work of comic book, movies, television programs in series worldwide. In view of high movie box office ranking to Batman movies and DVD series in Japan, it is no doubt that Batman becomes famous among the general public. But, when it comes to “GOTHAM CITY”, it just appears in texts to introduce contents of these movies and DVDs. Board could not find any fact to demonstrate the term is used at advertisement or promotional materials in a manner to attract attention to the public.

If so, the Board may admit a certain degree of awareness of the term “GOTHAM CITY” to represent a fictitious city out of Batman among movie fans. But it must be insufficient to admit the term is widely known among the public in general.

Remoteness with goods in dispute

Apparels, fashion accessories and bags. These goods in dispute for general consumers with an ordinary care are distinctively different from goods or services in the field of entertainment, movie and comics in light of remoteness of manufacturers/suppliers, location of transaction, distribution channels and usage/applications.

Conclusion

Based on the foregoing, the Board held that it is inadmissible to find the term “GOTHAM CITY” has obtained high degree of awareness among ordinary consumers in connection with apparels, bags and fashion accessories at the time of initial application as well as the time of the trial decision.

If so, relevant consumers and traders are less likely to conceive a source of goods with the mark in dispute from entities systematically or economically connected with DC Comics. Accordingly, the Board finds that it is quite unlikely to cause confusion between applicant and DC Comics.

Therefore, the refusal decision errored in applying Article 4(1)(xv) on the case and should be cancelled.


Trademark registration of Geographical names

The Trademark Examination Manual (TEM), official criteria released by JPO, sets forth issues relating to foreign geographical names (TEM 41.103.01).
TEM 41.103.01 provides that name of a city, sightseeing spot will be refused in principle on the grounds that it indicates the location where the goods are manufactured and sold (location of transaction) or the location of service, even though these names may not be directly perceived as the location of transaction in the mind of consumers.

It is noteworthy that TEP has no reference to a name of fictitious city.

Board decision implies name of fictitious city can be registered by unrelated entity to original work of art unless the city gets popular among the public in general as well.

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