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

JPO cancelled “UMBROID” due to a likelihood of confusion with an English sporting goods brand “Umbro”

The Opposition Board of Japan Patent Office (JPO) decided to cancel trademark registration no. 5861532 for a word mark “UNBROID” written in standard characters covering various goods of class 18 based on a high degree of popularity of “Umbro”, similarity of marks, and close association between goods.

Mark in question

Opposed mark “UMBROID” was filed on January 6, 2016 by designating the goods of “industrial packaging containers of leather; bags and the like; pouches and the like; vanity cases; umbrellas and their parts; handbag frames; purse frames; horseshoes; walking sticks; canes; metal parts of canes and walking-sticks; handles for canes and walking sticks; clothing for domestic pets” in class 18 under the name of YOUM COMPANY CO., Ltd. As a result of substantive examination by the JPO examiner, the mark was registered smoothly without any objections on June 24, 2016 and published for opposition on July 26.

DESCENTE LTD., a Japanese sporting goods trading company, as an assignee of Japanese trademark rights pertinent to “UMBRO” from Umbro International Limited, filed an opposition in violation of Article 4(1)(xv) of the Trademark Law.

Article 4(1)(xv)

No trademark shall be registered if the trademark is likely to cause confusion in connection with the goods or services pertaining to a business of another person.

Board decision

The Board admitted a high degree of popularity and reputation of “Umbro” as a source indicator of sportswear, sports shoes and sports bags distributed by the opponent among soccer fans and apparel consumers.

In assessing similarity of marks, the Board considered the opposed mark consists of a combination of two words, “UMBRO” and “ID”. Given “ID” is a commonly used term to mean any means of identification, it is less likely to function as a source indicator nowadays when used in commerce. If so, relevant traders and consumers at the sight of opposed mark would impressively pay attention to a portion of “UMBRO” and associate the mark with a famous sports brand. Therefore, both marks are deemed substantially similar, Board concluded.

Besides, the goods in question are mainly purchased by fashion conscious consumers. Consumers of sportswear, sports shoes and sports bags are also of strong interest to sports and fashion in general. Given both goods are substantially consumed by same entities, it should be considered that they are closely associated.

Based on the foregoing, the Board found a likelihood of confusion between “UMBROID” and “Umbro” when used on the goods in question, and thus the opposed mark was registered in error in violation of Article 4(1)(xv). [Opposition case no. 2016-900307]

 

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

 

 

 

 

“AI inside” is unlikely to be associated with INTEL

In a recent decision, the Opposition Board of Japan Patent Office (JPO) decided to dismiss the trademark opposition filed by Intel Corporation to mark “AI inside”.

“AI inside”

The mark in dispute, consisting of a word mark “AI inside” in standard characters, was filed on March 28, 2016 in the name of AI inside Kabushiki Kaisha, a Japanese corporation, by designating computer programs and electronic devices in class 9, and providing computer programs on data networks, software as a service [SaaS] in class 42. JPO granted to protect the mark without announcing any refusal ground as a result of substantive examination and published for registration on October 18, 2016.

Intel opposes to trademark registration

Intel Corporation, famous for the world’s largest semiconductor company, filed an opposition to the mark “AI inside” and requested the Board to cancel its registration due to violation of Article 4(1)(xi), (xv) and (xix) of the Japan Trademark Law retroactively.

“Intel inside”

In the opposition, Intel cited following senior trademark registrations containing a term of “inside”.

Series of “INSIDE” marks

Intel claimed the mark “AI inside” should be deemed confusingly similar to “Intel INSIDE” and other “INSIDE” marks cited by opponent since opposed mark allocates the term “inside” subsequent to other word as well. Given the cited marks respectively become famous for source indicator of opponent or its products, relevant traders and consumers are likely to confuse or misconceive both marks are from the same business entity. Besides, presumably applicant must have applied the opposed mark by knowing of Intel Corporation and cited marks in advance. If so, it is undeniable that applicant maliciously aimed to tarnish or free-ride on the reputation and goodwill of the opponent by adopting a similar mark.

Board decision

The Opposition Board admitted that both terms of “Intel” and “intel inside” have become famous to indicate opponent or his products among relevant traders and consumers, however, denied a certain degree of recognition to other cited marks relating to “INSIDE” owned by opponent based on the facts that opponent failed to produce evidences to demonstrate actual use of mark allocating “INSIDE” subsequent to a term other than “intel” and that the term “inside” is a generic term used to mean an inner side.

In the assessment of trademark similarity, the Board concluded opposed mark is evidently dissimilar to the citations from visual, phonetic and conceptual aspect, partly because the term of “AI” is known for an abbreviation of Artificial Intelligence. It is quite unlikely, the Board found, that famous mark “Intel inside” gives rise to a sound of “inside” in the mind of relevant traders and consumers by neglecting prominent mark “Intel”. If so, the same configuration allocating “INSIDE” subsequent to other term is insufficient to take sides with opponent’s allegation that relevant consumers conceive the opposed mark as a series of opponent mark. Given dissimilarity of both marks and unlikelihood of confusion due to a low degree of recognition to the cited “INSIDE” marks other than “Intel inside”, applicant should not be blamed for malicious intention in registering the opposed mark accordingly.

Based on the foregoing, the Board dismissed the opposition entirely and granted trademark registration no. 5881845 for the mark “AI inside” in class 9 and 42.
[Opposition case no. 2016-900399]

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

 

Apple failed to block Swatch’s attempt to acquire the trademark for Steve Jobs’ catchphrase ‘one more thing’

The Swiss watchmaker Swatch’s effort to acquire the trademark for “SWATCH ONE MORE THING” has run in to opposition from Apple, which argues the phrase ‘one more thing’ is closely associated with the software giant’s founder Steve Jobs. During Apple press events, Jobs was known to precede new product announcements and introductions with the phrase “there is one more thing” in his keynote addresses. The “one more thing” prelude became a fixture at Apple events.

SWATCH ONE MORE THING

The watchmaker has taken out an international trademark on the phrase “SWATCH ONE MORE THING”. The trademark was registered under IR no. 1261460 with the World Intellectual Property Organization (WIPO) in May 22, 2015 by designating more than 40 countries including Japan and various goods in class 9, 14 as follows.

Class09 Apparatus for recording, transmission and reproduction of sound or images; electronic payment processing apparatus, apparatus for processing cashless payment transactions; magnetic recording media, sound recording disks; compact disks, DVDs and other digital recording media; apparatus enabling the playing of compressed sound files (MP3); calculating machines and data processing equipment, software; game software for mobile telephones, for computers and for digital personal stereos; electronic game software for mobile telephones, for computers and for digital personal stereos; computers, portable computers, handheld computers, mobile computers, personal computers, wrist computers, electronic tablets and computerized and mobile devices, digital personal stereos, mobile telephones and new-generation mobile telephones featuring greater functionality (smartphones); telecommunication apparatus and instruments; apparatus for recording, transmission, reproduction of sound or images, particularly mobile telephones and new-generation mobile telephones incorporating greater functionality (smartphones); hand-held electronic apparatus for accessing the Internet and sending, receiving, recording and storing short messages, electronic messages, telephone calls, faxes, video conferences, images, sound, music, text and other digital data; handheld electronic apparatus for wireless receiving, storing and transmitting of data or messages; handheld electronic apparatus for monitoring and organizing personal information; handheld electronic apparatus for global positioning [GPS] and displaying maps and transport information; handheld electronic devices for detecting, monitoring, storing, surveillance and transmitting data relating to the user activity, namely position, itinerary, distance traveled, heart rate; covers for computers, portable and mobile telephones; optical apparatus and instruments, particularly spectacles, sunglasses, magnifying glasses; cases for spectacles, magnifying glasses and sunglasses; batteries and cells for computers and electronic and chronometric apparatus. 

Class14 Precious metals and their alloys and goods made of these materials or coated therewith included in this class, namely figurines, trophies; jewelry, namely rings, earrings, cufflinks, bracelets, charms, brooches, chains, necklaces, tie pins, tie clips, jewelry caskets, jewelry cases; precious stones, semi-precious stones; timepieces and chronometric instruments, namely chronometers, chronographs, clocks, watches, wristwatches, wall clocks, alarm clocks as well as parts and accessories for the aforesaid goods, namely hands, anchors, pendulums, barrels, watch cases, watch straps, watch dials, clockworks, watch chains, movements for timepieces, watch springs, watch glasses, presentation cases for timepieces, cases for timepieces.

Apple filed an opposition

Immediately after the JPO admitted granting protection to the trademark, Apple filed an opposition in May 19, 2015 on the grounds that the trademark violates main paragraph of Article 3(1) as well as 4(1)(vii), 4(1)(x), 4(1)(xv), and 4(1)(xix) of the Japan Trademark Law.

Main paragraph of Article 3(1)

Main paragraph of Article 3(1) demands applicant to have used or intend to genuinely use applied mark. Where examiners have “reasonable doubts” about the use of a trademark or intention to use a trademark by the applicant on the designated goods, the examiners shall reject the application based on the ground. Likewise, the trademark is subject to cancellation if opposition board has convinced of such reasonable doubts during opposition procedure.
Apple claimed that Swatch filed the trademark with a malicious intention to hinder the business of opponent since Swatch has been aware of the phrase ‘one more thing’ used by Steve Jobs. Besides, Swatch has not used the trademark. If so, it is obvious that Swatch will not intend to use the mark on designated goods.

Article 4(1)(vii)

Article 4(1)(vii) prohibits a trademark which is likely to cause damage to public order or morality from registering.
Apple claimed that the trademark should be subject to cancellation based on the ground as long as Swatch, having been aware of the phrase ‘one more thing’ used by Steve Jobs, filed the trademark with a malicious intention to hinder the business of opponent.

Article 4(1)(x)

Article 4(1)(x) prohibits to register a trademark which is identical with, or similar to, other entity’s well-known mark over goods or services closely related with the entity’s business.
Apple claimed that the dominant portion of trademark “SWATCH ONE MORE THING” is similar to Steve Jobs’ catchphrase ‘one more thing’, since the phrase has become famous among relevant consumers as admitted in administrative decision of the Turkish Patent Office. Besides, designated goods in class 9 are closely related with Apple products.

Article 4(1)(xv)

Article 4(1)(xv) prohibits to register a trademark which is likely to cause confusion with a business of other entity.
Apple cited administrative decision of the Turkish Patent Office on the claim as well and alleged that there exists a likelihood of confusion between the applied trademark and Steve Jobs’ catchphrase ‘one more thing’ in due course.

Article 4(1)(xix)

Article 4(1)(xix) prohibits to register a trademark which is identical with, or similar to, other entity’s famous mark, if such trademark is aimed for unfair purposes, e.g. gaining unfair profits, or causing damage to the entity.
Apple disputed on Swatch’s unfair purpose to free-ride prestigious fame bestowed on the Steve Jobs’ catchphrase as well as to harm or depreciate the value of goodwill by means of trademark dilution.

Opposition Board decision

Opposition Board dismissed Apple’s arguments.

Firstly, the Board denied famousness of the phrase ‘One more thing’ as a source indicator of Apple partly because the phrase can be commonly used in daily conversation and Apple failed to produce evidences demonstrating the phrase is used as a source indicator other than verbal presentation by Steve Jobs.
Secondly, in the assessment of trademark similarity, the Board considered “SWATCH” plays an important and dominative role as a source indicator by taking into consideration of the facts that SWATCH becomes famous among consumers in connection with goods of class 9 and less distinctiveness of the phrase ‘ONE MORE THING”. If so, it should be concluded that  because of presence or absence of “SWATCH” both marks are distinctively dissimilar from visual, sound and conceptual point of view.

Based on the foregoing, the Board decided the opposed mark is not objectionable under Article 4(1)(x), (xv) and (xix) of the Trademark Law due to less recognized awareness of the phrase ‘One more thing’ as a source indicator of Apple and dissimilarity of both marks. The Board also considered that previous trademark disputes between the parties would not suffice to decide Swatch had a malicious intention to hinder the business of opponent. Therefore, the opposition is groundless to conclude the opposed mark is likely to cause damage to public order or morality under Article 4(1)(vii).
Likewise, it is insufficient to conclude that Swatch lacks an intention to use the opposed mark not-too-distant future given the designated goods in class 9, 14 are related to wristwatches to a certain extent (Main paragraph of Article 3(1)).

[Opposition case number: 2016-685012, Decision date: April 20, 2017]

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

How to search for well-known marks in Japan

In Japan, the trademark law allows for registration of defensive marks under Article 64. The proprietor of a well-known registered trademark (original registration) which has been applied for in respect of certain goods/services can obtain defensive registration for the identical mark on goods/services unrelated to those designated under the original registration if he feels that there causes a likelihood of confusion when unauthorized entity uses the identical mark in respect of those goods/services.

Trademarks in Japan are declared well-known via judicial or administrative processes. Under the judicial process, the appeal/trial board or courts recognize trademarks as well-known in their decisions. Under the administrative process, the Japan Patent Office (JPO) recognizes a mark as well-known when the proprietor registers a mark as a defensive mark or proves substantial good will bestowed on the mark through cancellation, opposition, and invalidation procedures.

Further, JPO maintains a database of well-known trademarks, recognized either through judicial process or administrative process, which is accessible to the public at large.
If you are in need to search Japanese well-known trademarks, please access the following URL.
https://www2.j-platpat.inpit.go.jp/chomei/search_e.cgi?login&1503051142973


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

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

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

F1 HEATER

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

Opposition by Formula One

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

Likelihood of confusion

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

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

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

 

 

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

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

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

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

Famous smartphone cover glass

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

Assessment of trademark similarity

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

Likelihood of confusion

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

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

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

American heavy metal band, METALLICA failed in an opposition against trademark METALICA

In a recent Japan trademark opposition decision, the Opposition Board of JPO ruled that a word mark “METALICA” (Opposed mark) is unlikely to confuse with “METALLICA” well known for an American heavy metal band in connection with goods of class 9 and 14. [Opposition case no. 2016-900260]

Opposed mark

Opposed mark, solely consisting of a word “METALICA” written in a plain alphabetical letter, was filed on June 25, 2015 in the name of LG Electronics Incorporated, a Korean corporation, by designating various electronics, such as, smart phone, cell phones, personal digital appliance (PDA), audio stereo, music players of class 9 and watch, personal ornaments of class 14. JPO granted to register the mark on May 20, 2016 under TM registration no. 5851357.

 

Opposition

The Japan Trademark Law provides that anyone is entitled to file an opposition against new trademark registration within two months from the publication date of gazette under article of 43bis.

METALLICA filed an opposition against the mark “METALICA” by citing IR no. 858989 for a word mark of “METALLICA” covering goods of class 3, 6, 9, 14, 16, 25, and asserted to cancel Opposed mark based on article 4(1)(viii) and 4(1)(xv) of the Trademark Law.

 

Article 4(1)(viii)

Article 4(1)(viii) prohibits to register a mark containing the portrait of another person, or the name, famous pseudonym, professional name or pen name of another person, or famous abbreviation thereof (except those the registration of which has been approved by the person concerned). The article aims to protect personal right of living person or legal entity.

Opponent, METALLICA, a partnership corporation established by members of the band, alleged that Opposed mark “METALICA” can be conceived of the opponent or US famous heavy metal band due to identical appearance and pronunciation with “METALLICA”.

The Board dismissed the allegation of Article 4(1)(viii) by stating that “METALICA” does not contain “METALLICA” in a precise and strict sense.

 

Article 4(1)(xv)

Article 4(1)(xv) prohibits to register a mark which is likely to cause confusion in connection with the goods or services pertaining to a business of another person.

Opponent alleged relevant consumers are likely to confuse or misconceive goods with Opposed mark “METALICA” as goods from opponent in view of similarity of both marks and substantial reputation acquired among rock music fanatics.

The Board admits widespread reputation of “METALLICA” among traders and consumers relating to goods and service of rock music, such as music CD and music live performance. In the meantime, famousness of the mark “METALLICA” on any goods and service unrelated to music was denied.

In the assessment of similarity, the Board admitted both marks are deemed similar in appearance, sound, concept. However, the goods designated under Opposed mark are remotely associated with T-shirts, caps, posters, badges, music videos and goods or service related to American rock music of METALLICA’s interest.

Based on the forgoing, the Board concluded that “METALICA” is unlikely to confuse or misconceive with “METALLICA” in connection with goods of class 9 and 14.

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

TM Cancellation – Violation of public order based on high levels of consumer recognition in China

In an opposition claimed by Advanced Optronic Devices (ASIA) Co., Ltd, a Hong Kong corporation, JPO decided to cancel TM registration no. 5740919 designating LED lightning apparatus in class 11 (Opposed mark), registered on February 13, 2015, owned by a Chinese corporation resided in Qingdao City, Shandong Province due to violation of public order and standards of decency based on facts that Opposed mark is almost identical with Cited mark well-known for a source indicator of AOD group, inter alia, among relevant Chinese traders and consumers  of LED products, and it is likely that neighboring opposed owner has noticed Cited mark in advance.[Opposition Case no. 2015-900154, May 26, 2017]

Trademark Law prohibits to register a mark filed by unauthorized entity if Japanese consumers are acquainted with the mark becoming famous in foreign countries.  This case is noteworthy chiefly for cancelling a mark famous among Chinese consumers.

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