Adidas unsuccessful in an attempt to prevent trademark protection for two-stripes

The Opposition Board of Japan Patent Office (JPO) held in an opposition filed by Adidas AG that trademark registration no. 6016240 for two-stripes device (Opposed mark) shall remain as valid as ever and entirely dismissed Adidas’ claims based on its famous three stripes.[Opposition case no. 2018-900100, Gazette issued on August 30, 2019]

Opposed mark

Opposed mark (see below) was applied for registration on June 16, 2016 over shoes in class 25 by Marubeni Footwear, a Japanese business entity, and published for registration on February 27, 2018.

Opposition by Adidas

On April 24, 2018, Adidas AG filed an opposition and argued opposed mark is revocable under Article 4(1)(vii) and 4(1)(xv) of the Japan Trademark Law in relation to its famous three stripes (see below).

Article 4(1)(vii)

Article 4(1)(vii) prohibits any mark likely to offend public order and morals from registering.

Trademark Examination Guidelines set forth criteria for the article and examples.
Among others, “Trademarks whose registration is contrary to the order predetermined under the Trademark Act and is utterly unacceptable for lack of social reasonableness in the background to the filing of an application for trademark registration.”

Based on a remarkable degree of reputation and popularity to Adidas three stripes, opponent asserted, applicant must have been aware of Adidas three stripes and filed opposed mark with a malicious intention to take advantage of the reputation and credit of opponent’s famous trademark and impair the goodwill embodied on its iconic three stripes.

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.

Adidas argued that, from appearance, opposed mark evidently gives rise to a same impression with Adidas three stripes since each stripe of the mark is depicted in the same direction, width and shape, besides a space between stripe also has the same width with the stripe.

Given opponent mark has been substantially used in various colors, length, and configurations, average consumers with an ordinary care of shoes who have been quite familiar with Adidas are likely to associate opposed mark with Adidas’ three-stripes. Inter alia, when each stripe of opposed mark is used in different color on side upper sole and a space between the stripes (upper sole fabric) has other color, and thus opposed mark looks like depicting three stripes on shoes, it is highly anticipated that relevant consumers would confuse its source with opponent.

Opposition decision

The Opposition Board admitted a high degree of reputation and popularity to Adidas three stripes in relation to sport shoes, sportswear, sports gear at the time of initial filing and registration of opposed mark.

In the meantime, the Board found a low degree of originality of three stripes and similarity between the marks, from visual, phonetic, and conceptual points of view since opposed mark can be clearly perceived as ‘two-stripes’. Even if Adidas three stripes has acquired remarkable reputation, average consumers of sports shoes would not mistake two stripes for three stripes in purchasing shoes with opposed mark.
If so, the Board believes it is unlikely that relevant consumers confuse or associate opposed mark with Adidas.

The Board also negated opponent’s allegation of a possible ‘three-stripes’ appearance under specific color combination by stating that opposed mark is nothing but a two-stripes design mark. The space in between two stripes does not constitute opposed mark. If so, the allegation shall be irrelevant to the case.

Besides, from the produced evidences, the Board found it was not foreseen a circumstance to offend public order and morals from registering opposed mark and give harmful effect to the international faith.

Based on the foregoing, the Board concluded opposed mark shall not be revocable under Article 4(1)(vii) as well as (xv) and granted registration a status quo.


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

PUMA’s Fight Against Logo Parody

On August 1, 2019, the Japan Patent Office (JPO) decided to invalidate trademark registration no. 5861923 for composite mark consisting of a word “KUMA”, which means ‘bear’ in Japanese, and the bear device by finding a likelihood of confusion with a world-renowned sports brand, PUMA and detrimental effect to public policy or morality.
[Invalidation case no. 2019-890001]

KUMA device mark

Disputed mark (see below) was filed on January 7, 2016 by a Japanese business entity in Hokkaido, Japan’s most northerly main island, an otherworldly volcanic land with eastern Asia’s highest concentration of brown bears, over various goods in class 25 including sportswear and shoes.

Precedently, applicant applied for registration of following trademarks, consist of four alphabets in bold font and an animal silhouette facing left depicted in the upper right of the alphabets, on goods in classes 9, 14, 16, 24, 25 and 28, but in vain.

“UUMA” means ‘horse’, “BUTA” means ‘pig’, “KUMA” means ‘bear’ in Japanese. It is obvious that both literal element and figurative element of respective mark give rise to a same meaning, which is the same for PUMA.

It is likely the applicant intended to use these marks on souvenirs from Hokkaido since we get accustomed to see scenes at a famous tourist spot that T-shirts and other small items displayed at gift shops parody famous brands by featuring local specialty to attract tourists for fun.

PUMA’s Opposition / Invalidation Trial

On September 26, 2016, PUMA SE filed an opposition against the KUMA mark based on Article 4(1)(vii) and 4(1)(xv) of the Trademark Law. PUMA argued relevant consumers or traders are likely to confuse or misconceive a source of disputed mark with PUMA when used on designated goods in class 25 because of a high reputation and close resemblance between PUMA logo and the KUMA mark.

The Opposition Board admitted a high degree of popularity and reputation of PUMA logo, however, the Board dismissed the opposition entirely due to unlikelihood of confusion as a result of low degree of similarity between the marks (Opposition case no. 2016-900308).

Subsequently, PUMA SE entrusted the case to MARKS IP LAW FIRM. On New Year’s Eve of 2018, MARKS IP LAW FIRM on behalf of PUMA SE requested for an invalidation trial and sought to annul the KUMA mark on the same grounds.

Invalidation Decision

The Invalidation Board reversed the opposition decision and decided in favor of PUMA by finding that:

  1. PUMA logo has been continuously famous as a source indicator of PUMA in connection with sports shoes, sportswear and others among relevant consumers and traders in Japan.
  2. Configuration of PUMA logo looks unique, creative, and impressive in itself.
  3. Regardless of visual difference in detail between the marks, overall impression of both marks is quite similar.
  4. Given close association between designated goods in class 25 and PUMA business, relevant consumers of the goods with an ordinary care are likely to confuse its source with PUMA
  5. Besides, it is presumed the current registrant of disputed mark was knowingly assigned a similar KUMA mark that applicant had a fraudulent intent to free-ride and dilute PUMA’s goodwill.
  6. If so, current registrant must have filed disputed mark with a fraudulent intention to dilute or do harm to PUMA’s goodwill given a close resemblance of between disputed mark and a rejected KUMA mark (see above right).

Based on the foregoing, the JPO decided to invalidate disputed marks based on Article 4(1)(xv) as well as 4(1)(vii) of the Japan Trademark Law.


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

Trademark Opposition: “VISA” vs. “V-ISA”

The Opposition Board of Japan Patent Office (JPO) dismissed an opposition filed by a global payments technology company, Visa International Service Association (VISA) against trademark registration no. 6077944 for a word mark “V-ISA” due to unlikelihood of confusion with VISA’s famous service mark “VISA”.
[Opposition case no. 2018-900365, Gazette issued date: July 26, 2019]

Opposed mark

Opposed mark, consisting of a word mark “V-ISA” in standard character, was filed in the name of Machine Vision Lighting Inc., a Japanese company deploying in business field of lighting apparatus.

The mark was filed to JPO on November 3, 2017. Going through substantive examination, JPO admitted registration over the goods of “lighting apparatus” in class 11 and published for opposition on October 2, 2018.

Opposition by VISA

To oppose the mark, Visa International Service Association filed an opposition on December 3, 2018.

VISA argued that opponent has use the mark “VISA” since 1976 as a tradename of credit card company and unquestionably it has become famous in Japan as source indicator of opponent business. Besides, opposed mark “V-ISA” gives rise to a pronunciation ‘viː.zə’ just like with “VISA”. Therefore, both marks are identical or similar in phonetic and visual point of view. Nowadays, in the age of global e-commerce, consumers are accustomed to purchase various goods and services by means of credit card payment. Under the circumstance, opponent business gets all the more associated with a wide variety of goods or service traded via e-commerce. If so, relevant consumers and traders of lighting apparatus are likely to confuse opposed mark with famous service mark “VISA”.

Accordingly, VISA alleged that opposed mark “V-ISA” shall be retroactively cancelled in violation of Article 4(1)(xv) of the Japan Trademark Law.

Article 4(1)(xv)

Article 4(1)(xv) provides that a mark shall not be registered where it is likely to cause confusion with other business entity’s well-known goods or services, to the benefit of brand owner and users’ benefits.

Board decision

The Opposition Board did not question a remarkable degree of popularity and reputation of mark “VISA” in relation to credit card payment as a source indicator of opponent business.

In the meantime, the Board emphasized the term “VISA” is not a coined word, having its original meaning as an official mark, usually made in a passport, that allows you to enter or leave a particular country. Besides, the Board considered both marks are distinctively dissimilar by stating that:

From appearance, even if opposed mark “V-ISA” consists of the same literal elements with opponent mark “VISA”, they are visually distinguishable because of a hyphen (-).

Opposed mark just gives rise to pronunciation of ‘vui-isa’ or ‘vui-ai-esu-ei”. If so, the pronunciations are clearly dissimilar to ‘viː.zə’ of opponent mark.

Given opposed mark does not give rise to any specific meaning, both marks are not comparable in concept.

Since “lighting apparatus” in class 11 is obviously dissimilar to and less associated with opponent business, relevant consumers with an ordinary care would not conceive of opponent mark at the sight of opposed mark.

Based on the foregoing, the Board concluded that relevant consumers and traders are unlikely to confuse opposed mark with VISA or any business entity systematically or economically connected with opponent.

Thus, opposed mark shall not be cancelled based on Article 4(1)(xv), and remains valid as a status quo.


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

Patagonia Victorious in Trademark Battle

The Trial Board of Japan Patent Office (JPO) recently upheld an invalidation petition by US outdoor apparel company, Patagonia Inc. against TM Reg. no. 6028801 for the “royalwest” mark in combination with figurative elements due to a likelihood of confusion with Patagonia logo.
[Invalidation case no. 2018-890048, Gazette issue date: June 28, 2019]

TM Registration no.6028801

Disputed mark, consisting of a word “royalwest” and figurative elements (see below left), was applied for registration on April 13, 2017 in respect of apparels and other goods in class 25.

Without confronting with a refusal during substantive examination, disputed mark was registered on March 23, 2018.

Petition for invalidation

Japan Trademark Law provides a provision to retroactively invalidate trademark registration for certain restricted reasons specified under Article 46 (1).

US outdoor apparel company Patagonia Incorporated filed a petition for invalidation against disputed mark on June 29, 2018. Patagonia argued it shall be invalidated due to similarity to an owned senior trademark registration no. 5891980 for the Patagonia mark with figurative elements depicting mountain landscape and sky in blue, purple and orange color (see above right), and a likelihood of confusion with its famous brand when used on designated goods in class 25 based on Article 4(1)(xi) and (xv) of the Trademark Law.

Board decision

At the outset, the Board admitted the Patagonia logo has acquired a high degree of popularity and reputation as a source indicator of Patagonia Inc. among relevant consumers in connection with outdoor goods.

In assessing similarity of both marks, the Board found that a literal element of respective mark is unquestionably dissimilar. However, even if both marks give rise to a different pronunciation and concept, by taking account of similar factors: (1) coloring of the sky, (2) font design and size, (3) rectangular outline, (4) black silhouette with a white border line, (5) configuration and proportion of respective elements, and balancing them comprehensively, relevant consumers with an ordinary care at the sight of both marks would conceive a same impression from appearance and associate disputed mark with Patagonia. If so, it is obvious that visual similarity plays a key role in the assessment. A phonetic and conceptual difference arising from literal element is insufficient to negate similarity between the marks in its entirety.

Based on the foregoing, the Board concluded that, from totality of circumstances and evidences, relevant traders or consumers are likely to confuse or misconceive a source of disputed mark with Patagonia or any entity systematically or economically connected with the opponent when used on apparels and any other designated goods in class 25 and declared invalidation based on Article 4(1)(xi) and (xv).


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

Trademark Opposition: “iPhone” versus “SAIPHONE”

The Japan Patent Office (JPO) dismissed a trademark opposition claimed by the U.S. tech giant, Apple Inc. against trademark registration no. 6060316 for word mark “SAIPHONE” in class 9 and 18 by finding less likelihood of confusion with Apple “iPhone”.
[Opposition case no. 2018-900255]

“SAIPHONE”

Opposed mark, a word mark “SAIPHONE” in standard character, was filed by a Japanese business entity, STYLE Corporation, on September 28, 2017 by designating ‘mobile phones, smart phones, and its accessories, namely cases, covers and hands-free holders’ in class 9, and ‘purses and wallets, commutation-ticket holders, business card cases, bags and pouches, umbrellas, industrial packaging containers of leather’ in class 25.

STYLE Corporation promotes the “SAIPHONE” leather cases for iPhone (see below).

The JPO admitted registration on June 22, 2018 and published for registration on July 6, 2018.

APPLE’s Opposition

To oppose against registration within a statutory period of two months counting from the publication date, Apple Inc. with AIPHONE Co., Ltd., as a joint claimant, filed an opposition on September 7, 2018.

In the opposition brief, Apple Inc. asserted the opposed mark shall be cancelled in violation of Article 4(1)(xi) and (xv) of the Japan Trademark Law given a remarkable reputation of opponent mark “iPhone” in the business field of smart phones and similarity to a senior trademark registration no. 5147866 for the word mark “iPhone” in standard character over mobile phones in class 9 effective since 2008.

Interestingly, “iPhone” is indeed a registered trademark owned by AIPHONE Co., Ltd. in Japan. Apple Inc. is an exclusive licensee of the mark.

Apple Inc. argued opposed mark “SAIPHONE” gives rise to a confusingly similar pronunciation and appearance to “iPhone”, since opposed mark contains a famous mark “iPhone” entirely and a mere difference on prefix “SA” is insufficient for relevant consumers anything but to conceive “iPhone” from opposed mark.

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) provides that a mark shall not be registered where it is likely to cause confusion with other business entity’s well-known goods or services, to the benefit of brand owner and consumers.

Board Decision

The Opposition Board admitted a remarkable degree of reputation and popularity of opponent trademark “Apple” in connection with smart phones based on the produced evidences showing a more than 40% share of the market in Japan.

In the meantime, the Board found “SAIPHONE” and “iPhone” are totally dissimilar since they are sufficiently distinguishable in visual, phonetic, and conceptual point of view.
A fact that opposed mark contains “iPhone” is not persuasive on the case since relevant consumers with an ordinary case would see opposed mark in its entirety.
If so, it is likely that the consumers confuse or misconceive a source of the opposed mark with Apple Inc. or any entity systematically or economically connected with the opponent.

Based on the foregoing, the Board decided the opposed mark shall not be cancelled on the grounds of Article 4(1)(xi) as well as (xv).


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

JPY 71 Million Damages Award Against Design Copycat of BAO BAO ISSEY MIYAKE

In a civil legal battle involving design copycat of luxurious “BAO BAO” bags designed by ISSEY MIYAKE, a Japanese fashion designer, the Tokyo District Court sided with ISSEY MIYAKE and found infringement under the Unfair Competition Prevention Act on June 18, 2019.
[Judicial case no. H29(Gyo-wa)31572]

BAO BAO ISSEY MIYAKE

Issey Miyake’s innovative and unique bag designs under the brand of “BAO BAO” since 2010 earned it accolades and wide recognition in the fashion world. Its most prominent design is crafted with a tessellating triangular structure that shifts as it’s moved to create new three-dimensional forms. Capturing a seamless fusion of geometric shapes and fluid silhouettes, the designs are often a kaleidoscope of color. Most of the pieces consist of rectangular equilateral triangle.

Disputed bags

Defendant, Largu Co., Ltd. began to promote following women’s shoulder bags, pouches, backpacks and tote bags under the brand of “Avancer” from 2016. Defendant copied tessellating triangular structure on disputed bags likewise. Most of the pieces are not rectangular equilateral triangle.

Defendant sold these goods for JPY 1,000 ~ 6,000. It was far cheaper than BAO BAO ISSEY MIYAKE – sometimes up to one-thirteenth.

Court decision

In the judgment, at the outset, the court assessed whether the geometric shapes of tessellating triangular structure shall play a role of source indicator protectable under the Unfair Competition Prevention Act. The judge found the shape of plaintiff’s goods has a distinctive and different feature from other women’s bags by taking account of produced evidences. Its unique and innovative design, inter alia, creating various three-dimensional forms when used, apparently gives unusual impression to consumers. If so, the prominent design consisting of triangular structure shall be protectable under the Unfair Competition Prevention Act.

Besides, the court found the triangular structure of plaintiff’s goods obtained a certain degree of popularity and reputation as a source indicator of BAO BAO ISSEY MYAKE by the time defendant launched disputed bags in 2016.

In assessing a likelihood of confusion, the court dismissed defendant’s counterargument on different shape of triangle by stating that disputed goods give rise to a same visual effect with BAO BAO ISSEY MIYAKE by means of creating various three-dimensional forms when used. Price difference is not a material factor to negate a likelihood of confusion as long as consumers conceive BAO BAO ISSEY MIYAKA at the sight of disputed bags.

After significant litigation, the trade dress suit ended with an injunction barring all future sales of the copied designs and a hefty damages award, JPY 71,068,000 under the Unfair Competition Prevention Act.

In the meantime, the court dismissed plaintiff’s allegation of copyright infringement on the ground that plaintiff’s goods are rather suitable for industrial design. In fact, plaintiff’s goods are produced in quantity at factory. If so, it shall be unprotectable under the Copyright Law.


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

The Japan IP High Court Finds “EQ” Entitled to Trademark Registration Belonging to Mercedes Benz

On July 3, 2019, the Japan IP High Court reversed a decision of the Japan Patent Office (JPO) finding that the company Daimler AG was entitled to registration of “EQ” for Motor vehicles in class 12, even though the term “EQ” by itself is descriptive for the goods.
[Case no. Heisei31(Gyo-ke)10004, Daimler AG vs the JPO Commissioner]

The EQ Application

The JPO has refused registration to an application for EQ in standard characters (word only, see below) on the basis that the mark was descriptive for the goods “Motor vehicles” in class 12 based on Article 3(1)(v) of the Trademark Law.

The article prohibits an applied mark from registering if it consists solely of a very simple and common mark. Trademark Examination Guidelines (TEG) stipulates that a mark consisting of one or two alphabetical letters is not eligible for registration under the article. Click here.

A mark consisting of two alphabetical letters is not capable of identifying the source of the goods due to a lack of distinctiveness because a combination of two alphabetical letters is limited on quantity and currently used to represent a model name of vehicle, e.g. BMW XS, TOYOTA Carina ED, Ferrari FX, Nissan GT-R.

Descriptive terms falling under the article are only capable for registration based on Article 3(2) if they have “acquired distinctiveness”, which means the term has taken on a meaning in the public view so that people see the term as a trademark identifying the goods rather than simply describing the goods.

In this regard, Daimler AG argued the EQ mark, a coined term originating from “Electric Intelligence” to appeal design, extraordinary driving pleasure, high levels of everyday suitability and maximum safety of electric car by Mercedes-Benz, has acquired distinctiveness since launching the brand at the Paris Motor Show in September 2016.

JPO Decision

However, the JPO dismissed the argument on the grounds that:

  1. Daimler has neither used the EQ mark by itself as a name of electric car nor produced evidences of its plan to sell electric car named “EQ”.
  2. Daimler uses the EQ mark in a stylized design in press releases. If so, it is questionable whether relevant consumers conceive the EQ mark in standard characters as a source indicator of Mercedes-Benz.
  3. According to the produced evidences, Daimler uses the EQ mark in combination with other literal elements, e.g. “Generation EQ Concept”, “Concept EQA”, “EQC”, “smart vision EQ for two”, “EQ POWER”, “EQ POWER+”.
  4. There are no actual domestic sales of the electric car using the applied mark during the past two years from the date Daimler launched the brand in fact.
  5. A combination of two alphabetical letters, “E” and “Q”, has been generally used as a mode name in association with vehicles, e.g. TOYOTA electric car “eQ”, HYUNDAI luxury sedan “EQ900”, Zhengzhou Nissan truck “EQ1060”, Laufenn tyre “S FIT EQ”, ALPINE car navigation “EX11Z-EQ”, SPECIALLIZED bicycle “ALIBI SPORT EQ”. If so, the EQ term shall not be eligible for monopoly by a specific entity any longer.

The Appeal Board of JPO also upheld the refusal.
[Appeal case no. 2018-650016]

To contest the administrative decision, Daimler AG filed an appeal to the IP High Court on January 15, 2019.

IP High Court Ruling

The court first found the EQ mark in standard characters is not eligible for registration under Article 3(1)(v) of the Trademark Law.

In the meantime, the court found Daimler has newly released, promoted, and used the EQ mark with a combination of “POWER” as a new brand concept of electric car by Mercedes-Benz. Given a space for single letter between “EQ” and “POWER”, relevant consumers at the sight of promotional materials, advertisements and car magazines pertinent to Mercedes-Benz’s new electric car brand would perceive “EQ” as a specific source indicator. Taking account of enormous number of circulation of magazines (approx. 230,000) and advertisements for users (170,000 per year), the court held the EQ mark has been well known for a source indicator of Daimler electric car among relevant consumers and traders even if the duration of actual use and sales amount are not sufficient by themselves.

Notably, the court also negated fact-finding by JPO regarding ordinary use of the term EQ in association with vehicles by stating that since competitors use the term in a tight combination with other literal elements, they can be simply perceived as a mode name. If so, such use shall not be construed to negate acquired distinctiveness of the EQ mark by Daimler.

Based on the foregoing, the court ruled the EQ mark is entitled to trademark registration based on Article 3(2) of the Trademark Law and reversed a decision by the JPO on that account.


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

Nintendo loses trademark fight over “Switch” name in Japan

The Japan Patent Office (JPO) rendered advisory opinion in a trademark fight over “Switch” name unfavorable to Japanese video game giant Nintendo.
[Case no. 2018-600008, Gazette issue date: May 31, 2019]

Nintendo Switch

Nintendo released The Switch, a home video game system that can also be used as a handheld, in March 2017. The Switchhas become the fastest-selling home game console ever in the United States. By the end of 2017, more than 14 million consoles were sold worldwide.

Nintendo owned trademark registration no. 3274643 for the SWITCH mark (see below) on home games in class 9 since 1997.

Japan TM Registration no. 3274643 for SWITCH by Nintendo

Switch Carrying Case (Hard Pouch Bag)

On November 22, 2017, Nintendo found ALLONE CO., Ltd., a Japanese merchant for game accessories, distributes hard pouch bag for home games (see below) via websites and electronics retail stores.

It is obvious that a word “SWITCH” is indicated in prominent manner with a larger font size on package of the pouch bag, however, pictures of the Nintendo Switch and the console in the bag are printed on the package.

In order to settle the trademark dispute, Nintendo requested advisory opinion to the JPO on March 15, 2018.

Advisory Opinion (Hantei)

The Japan Trademark Law allows the Japan Patent Office to provide advisory opinions with respect to the scope of trademark right upon request under Article 28.

Proceedings of the advisory opinion system is almost the same as invalidation trial. Upon a request of advisory opinion from either party, the JPO appoints three examiners to constitute a trial board and orders other party to answer the request for subsequent trial. Board seldomly holds an oral hearing to investigate the case. In general, all proceedings are based on written statements and documentary evidences.

From a legal point of view, the advisory opinion by JPO does not have a binding effect, unlike the judicial decision. Accordingly, less than 10 trademark cases have been lodged with the JPO to seek the advisory opinion annually.

JPO Opinion

On April 11, 2019, the JPO released its advisory opinion to the case by stating that:

  • As an undisputed fact, the Nintendo Switch has acquired a certain degree of reputation and popularity as a source indicator of Nintendo’s home video games among relevant consumers by the time ALLONE started to promote Switch pouch bag.
  • It has become common practices to provide game accessories by unrelated entities to the game maker with an explicit indication of its usage, “FOR” or “(専)用” on package.
  • ALLONE indicates “FOR SWITCH” with a smaller font size on upper right of the package.
  • Based on the foregoing, the board considers that relevant consumers with an ordinary care would perceive “SWITCH” on the package as a mere indication to suggest its usage, suitable pouch bag for the Nintendo Switch. If so, it is unlikely that the “SWITCH” mark in dispute on the package would not play a role of source indicator, but rather a mere description to indicate quality or usage of the goods.

Consequently, the Board decided the “SWITCH” mark in dispute would not be within the scope of Nintendo’s trademark right since Article 26 (1)(ii) of the Trademark Law provides trademark right shall not be effective against a mark indicating quality or usage of goods to the extent that the mark is used in an ordinary manner.


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

Boeing Wins 777 Trademark Victory

The Trial Board of Japan Patent Office (JPO) recently upheld The Boeing Company’s invalidation petition against TM Reg. no. 5990529 for the “PACHINKO&SLOT AIRPORT 777” mark in respect of amusement services in class 41 due to a likelihood of confusion with Boeing’s famous jet airliner “777”. [Invalidation case no. 2018-890054, Gazette issue date: May 31, 2019]

AIRPORT 777

Mark in dispute, consisting of three terms, “PACHINKO&SLOT” and “AIRPORT777” in English and Japanese in three lines, and a device of jet airliner (see below), was applied for registration by SEA Co., Ltd., a Japanese business entity, on February 17, 2017 in respect of providing Pachinko and slot machine parlors, game services provided online from a computer network or mobile phone; providing amusement facilities and other services in class 41.
Opposed mark “AIRPORT 777”
SEA CO., Ltd. has been operating pachinko and slot machine parlors in the name of AIRPORT 777.
Pachinko& Slot Airport 777
Without confronting with a refusal during substantive examination, the AIRPORT 777 mark was registered on October 20, 2017.

Petition for Invalidation

Japan Trademark Law provides a provision to retroactively invalidate trademark registration for certain restricted reasons specified under Article 46 (1). The Boeing Company, the world’s largest American aerospace company and leading manufacturer of commercial jetliners, defense, space and security systems, and service provider of aftermarket support, filed a petition for invalidation against opposed mark on July 17, 2018. Boeing argued the AIRPORT 777 mark shall be invalidated due to a likelihood of confusion with “777” The Boeing 777 when used on above designated services in class 41 based on Article 4(1)(xv) of the Trademark Law. The Boeing 777 is the world’s largest twin-engine jet airliner, first flown in June of 1994. Commonly referred to as the ‘Triple Seven,’ the 777 is Boeing’s first fly-by-wire airliner (an electronic system that replaces the conventional manual flight controls of an aircraft) and the first commercial aircraft entirely computer-designed. In Japan, Boeing has successfully registered three digits “777” in respect of jet airliners in class 12 since 2001. Trademark Registration no. 4456004 (see below).
Japan TM Registration no. 4456004

Board decision

The Board admitted that the “777” mark has acquired a high degree of popularity and reputation as a source indicator of Boeing jetliners among relevant consumers. In assessment of the similarity between two marks, at the outset the Board found that three digits 777 implies a meaning of wining jackpot in association with pachinko and slot machines. However, by taking account of a term “AIRPORT” and a silhouette of jet airliner, the Board considered it is likely that relevant consumers with an ordinary care shall connect or associate the services using opposed mark with The Boeing 777. If so, it is unquestionable that opposed mark is highly similar to a famous mark “777”. Besides, since recent game and amusement industry have a trend to introduce flight and airplane games with new technology or to use images, video and sounds of jet airliner, it is not unreasonable to find above services in class 41 are closely related to jet airliners. In view of Boeing’s business portfolio, it is highly predictable that The Boeing Company expands the business and launches amusement business. Based on the foregoing, the Board concluded that, from totality of circumstances and evidences, relevant traders or consumers are likely to confuse or misconceive a source of opposed mark with Boeing or any entity systematically or economically connected with the opponent and declared invalidation based on Article 4(1)(xv).
Masaki MIKAMI, Attorney at IP Law – Founder of MARKS IP LAW FIRM

Apple Inc. Defeated in Trademark case over the name ‘MAC’ in Japan

The Opposition Board of Japan Patent Office (JPO) dismissed an opposition filed by the U.S. tech giant, Apple Inc. against trademark registration no. 5986073 for a word mark “Face2Mac” due to unlikelihood of confusion with Apple’s famous trademark “Mac”.
[Opposition case no. 2018-900002, Gazette issued date: May 31, 2019]

Opposed mark

Opposed mark, consisting of a word mark “Face2MAC” in standard character, was filed in the name of Allied Telesis Holdings K.K., a Japanese company deploying in business field of network devices and cyber securities.

The mark was filed to JPO on January 31, 2017 and admitted registration on October 6, 2017 over the goods of “computer software; telecommunication machines and apparatus; electronic machines and apparatus; network cameras” in class 9, and other services in class 37, 42 and 45.

Opposition by Apple Inc.

During a two-months opposition period after registration, Apple Inc. filed an opposition.

Apple argued that opposed mark “Face2Mac” shall be retroactively cancelled in violation of Article 4(1)(xv) of the Trademark Law since opposed mark contains (i) a famous trademark “Mac” of Apple Inc. and (ii) a term “Face” which reminds consumers of Apple’s well-known mark “FaceID” and “FACETIME”. If so, relevant consumers and traders are likely to confuse or misconceive opposed mark with Apple or any business entity systematically or economically connected with opponent.

Article 4(1)(xv)

Article 4(1)(xv) provides that a mark shall not be registered where it is likely to cause confusion with other business entity’s well-known goods or services, to the benefit of brand owner and users’ benefits.

Board decision

The Opposition Board did not question a remarkable degree of popularity and reputation of trademark “Mac” as an abbreviated source indicator of opponent’s personal computers ‘Macintosh’.

In the meantime, the Board considered both marks distinctively give rise to a different impression in the minds of relevant consumers from visual, phonetical and conceptual points of view. Besides, the Board emphasized the term “MAC” is commonly used as an abbreviation to indicate ‘Media Access Control’ in business field of computers and telecommunications. According to produced evidences by opponent, Apple Inc. has continuously used the mark “Mac” with a big ‘M’ and small letters ‘ac’, but not in a configuration of “MAC” at all. Therefore, it is rather presumed that relevant consumers at the sight of opposed mark shall conceive of media access control from “Face2MAC”, than Apple’s famous trademark.

Based on the foregoing, the Board concluded that relevant consumers of goods in question are unlikely to confuse opposed mark with Apple Inc. or any business entity systematically or economically connected with opponent.

Thus, opposed mark is not subject to Article 4(1)(x), and valid as a status quo.


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