カテゴリー: examination

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

3D shape of Zippo lighters registrable when a lighter lid open, but unregistrable when closed

In an appeal to the refusal decision against trademark application no. 2014-8964 for a three dimensional shape of box-type lighter in connection with lighters of class 34 filed by ZIPPO Manufacturing Company (US), the Appeal Board of Japan Patent Office (JPO), after stating the application impermissibly contains two 3D marks, namely Shape A with a lighter lid closed and Shape B with a lighter lid open, ruled as follows.

Shape A
Shape A can be easily perceived as a shape of box-type lighter with the lid closed in connection with the goods in dispute. Besides, as a matter of fact, similar lighters are commercially produced and distributed in general. If so, relevant traders and consumers at the sight of Shape A  are likely to conceive the shape as a mere indication of the lighter.  Thus, Shape A is objectionable based on Article 3(1)(iii) of the Trademark Law since the shape solely consists of a shape commonly used on lighters.

Even if Shape A corresponds to the 3D shape of “ZIPPO Brushed Chrome 200” substantially produced and promoted by applicant, it is questioned whether Shape A serves to function as a source indicator since presumably traders and consumers distinguish applicant’s lighters by the “ZIPPO” letter marked at the bottom of the lighter where the lid remains closed. Accordingly, Shape A is unregistrable based on Article 3(2) as well.

Shape B
Three dimensional shapes cited for refusal during initial examination are all related to box-type lighters with a lid closed. As long as there shows no reference to lighters with a lid open in the refusal decision, it should be construed that the initial examination just questioned Shape A, not B.

Since applicant amended to delete Shape A from the application, the initial decision lacks legal ground to refusal the applied mark of Shape B based on Article 3(1)(iii) accordingly.

As a conclusion, the Board admits to register the applied 3D mark consisting of Shape B in connection with lighters.
[Appeal case no. 2016-2368]

It is worthy to note that in an attempt to register 3D shape of goods, a hidden shape is considered an independent mark from the shape perceivable from appearance of the goods.
Besides, the JPO allowed to delete one of 3D marks depicted in the application document without detrimental effect to the applicant despite that the Trademark Law prohibits amendment of mark amounting to change its gist.

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

 

 

JPO aims to encourage fast track examination to users’ benefit

On February 6, 2017, the Japan Patent Office (JPO) revised the Guidelines for Accelerated Trademark Examination with an attempt to meet the public needs for expedited examination proceedings and to encourage efficient and frequent use of accelerated examination by newly adding two types of trademark applications to  the Guidelines.

Presently, following trademark applications are allowed to take the fast-track path on demand from applicant.

[Case 1] Applicant is in use of or likely to use an applied mark on more than one of goods/services in the designation, and in urgent need of registration.

To meet an urgent need requirement, applicant is required to demonstrate ; (i) unauthorized third party uses an applied mark, (ii) any third party request a license to use the applied mark, (iii) any third party demand applicant to cease a use of the applied mark , or (iv) applicant filed the identical mark to foreign country.

[Case 2] Applicant is in use of or likely to use an applied mark on every goods/services in the designation.

NEW ACCELERATION EXAMINATION GUIDELINES

New acceleration examination guidelines admit “Case 3” in addition to the above.

[Case 3] Applicant is in use of or likely to use an applied mark on more than one of goods/services in the designation, and description of goods/services are all in conformity with that of listed in the Examination guidelines for similar goods and services.

Besides, (v) where applicant seeks to apply for an international registration of trademark identical with the applied mark through the Madrid Protocol, it is also admitted to meet an urgent need requirement for Case 1.

Below lists acceleration conditions to each case under the new guidelines.

%e6%97%a9%e6%9c%9f%e5%af%a9%e6%9f%bb

New guideline for accelerated examination is in force on February 6, 2017.

Referential information is available at the website of:
News release from JPO –  http://www.meti.go.jp/english/press/2017/0206_003.html
Examination guidelines for similar goods/services – http://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/goods_services_10-2015.htm

1187hirai%e4%bf%ae%e6%ad%a3003_2MASAKI MIKAMI,
Attorney at IP Law – Founder of MARKS IP LAW FIRM

What happens to junior application filed by trademark registration owner for the same mark designating the same goods/services?

The Trademark Law does not contain a specific provision to prohibit a junior application filed by an owner of existing trademark registration for the same mark designating the same goods/services from being registered.

Against the purpose of the Trademark Law

However, the JPO has consistently refused the junior application even if it was filed in the name of trademark registration owner on the grounds that it may result in producing duplicate exclusive right on a mark which is inconvenient from a legal point of view, namely “against the purpose of the Trademark Law”.

Trademark Examination Guidelines

Trademark Examination Guidelines (TEG) sets forth prohibition of the duplication.

 

 Chapter XVIII: Others

 

6. When the same person makes a duplicating application for the same trademark designating the same goods or services, except for cases corresponding to the provisions of Article 68-10, in principle, after the trademark in respect of the prior application is registered, the later application will be refused under the reasons that it is “against the purpose of the Trademark Law”. This is also true when the holder of the trademark right applies for a trademark registration for the same trademark designating the same goods and services.

 

There is a dispute whether the Guideline should be applied to a case where junior application filed by an owner of trademark registration for the same mark designating goods/ services more than existing registration.

 

The Trial Board has decided the junior application will not hinder the purpose of the Trademark Law to the extent it designates additional goods/services and allowed junior trademark application to be registered regardless of examiner’s continuous refusal.

 

 

New Trademark Examination Guidelines

 

Expectedly the dispute reaches a conclusion in April.

According to news release from the JPO, New TEG allows trademark registration of a junior application filed by the same entity for the same mark as long as junior application designates goods/services beyond the scope of existing registration.
Without additional designation, junior application will be refused as it is.

 

1187hirai%e4%bf%ae%e6%ad%a3003_2

MASAKI MIKAMI – Attorney at IP Law (JAPAN), MARKS IP LAW FIRM