Trademark dispute over Shogun Emblem of the Samurai Era

In a recent appeal trial over trademark dispute, the Trademark Appeal Board within the Japan Patent Office (JPO) overturned the Examiner’s determination and held that a combination mark with Tokugawa crest image and literal elements written in Chinese characters is dissimilar to, and unlikely to cause confusion with a senior trademark registration for the “TOKUGAWA CREST” device mark in connection with pickled plums of class 29.
[Appeal case no. 2018-6893, Gazette issue date: March 29, 2019]

TOKUGAWA CREST

The Tokugawa clan was the family that established the Edo shogunate, also known as the Tokugawa shogunate, (1603–1867), the final period of traditional Japan, a time of internal peace, political stability, and economic growth under the shogunate (military dictatorship) founded by Tokugawa Ieyasu. The Tokugawa shogunate continued to rule Japan for a remarkable 250 years and ended in 1868, with the Meiji Restoration when the Emperor regained power.

The Tokugawa crest was a circle in closing three leaves of the awoi (a species of mallow, found in Central Japan) joined at the tips, the stalks touching the circle (see below).

This gilded trefoil is gleaming on the property of the shogun and mausoleum even now in Japan.

YUME-AWOI

Kabushiki Kaisha Kiwa-Nouen Products, a Japanese merchant dealing with plums and its products filed a trademark application for a combination mark with Tokugawa crest image and literal elements written in Chinese characters (see below) covering pickled plums in class 29 on June 21, 2016 [TM application no. 2016-72127].

Three Chinese characters “紀州梅” in the upper right of the mark lacks distinctive since the term means plums made in Kishu, the name of a province in feudal Japan (the area corresponds to nowadays Wakayama Prefecture and southern Mie Prefecture), as a whole. Two characters “夢葵” in the center of the mark to be pronounces as “yume-awoi” is obviously a coined word and distinctive in relation to pickled plums.

The mark is actually in use on high-class pickled plums produced by applicant.

Tokugawa Museum

Going through substantive examination by the JPO examiner, applied mark was totally refused registration based on Article 4(1)(vi), (vii), (xv) of the Trademark Law on the ground that the mark contains a device resembling the Tokugawa crest which becomes famous as a source indicator of ‘Public Interest Incorporated Foundation The Tokugawa Museum’.
If so, using the mark on the designated goods by an unauthorized entity may free-ride goodwill vested in the Tokugawa crest and anything but conductive to the public interest. Besides, relevant consumers are likely to confuse or misconceive pickled plums using applied mark with goods from The Tokugawa Museum or any business entity systematically or economically connected with the museum.

Article 4(1)(vi) is a provision to refuse any mark which is identical with, or similar to, a famous mark indicating the State, a local government, an agency thereof, a non-profit organization undertaking a business for public interest, or a non-profit enterprise undertaking a business for public interest.

Article 4(1)(vii) of the Trademark Law prohibits any mark likely to cause damage to public order or morality from registration.

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.

Applicant filed an appeal against the refusal on May 21, 2018 and argued dissimilarity of the marks.

Appeal Board decision

The Board reversed the examiner’s refusal and admitted applied mark to registration by stating that:

It becomes trade practice to print family crest on the packaging of food products. Especially, trefoil awoi crest has been commonly used on the packaging of specialty products or souvenir from Aichi (Owari), Wakayama (Kishu) and Ibaragi (Mito) Prefectures where descendants from clan founder Tokugawa Ieyasu’s three youngest sons governed during the Edo shogunate. Besides, from appearance, Tokugawa crest image in applied mark looks like a background pattern and thus relevant consumers are unlikely to aware that the pattern serves the legally defined role of a trademark because the image is colored washier than literal elements. If so, two Chinese characters “夢葵” of the mark functions primarily as a source indicator.

Based on the foregoing, the Board considered, given the Tokugawa crest image in the applied mark does not play a role of source indicator at all, both marks are dissimilar and unlikely to cause confusion from visual, phonetic and conceptual points of view even if the Tokugawa crest becomes famous as a source indicator of Public Interest Incorporated Foundation The Tokugawa Museum in fact. Likewise, the Board found no specific reason to cause damage to public order or morality from applied mark.

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

PUMA Triumphs in Trademark Battle over Iconic Jumping Cat Logo

After eight years of prolonged dispute, PUMA SE could achieve a victory over trademark battle involving famous its iconic jumping cat logo. The Japan IP High Court has overturned decisions by the Japan Patent Office (JPO) which said that a trademark application for a jumping cat-like creature was unlikely to cause confusion with an iconic jumping cat logo owned by sportswear brand Puma.

[Judgment of 26 March 2019 in Case H29(Gyo-ke)10206 and 10207]

PUMA Jumping Cat Logo

PUMA SE (former “Puma AG Rudolf Dassler Sports”), branded as PUMA, is a Germany-based multinational outfit that is famous for manufacturing one of the most sophisticated sportswear and athletic shoes in the world.

Its iconic jumping cat logo (see below), designed in 1967, has been undoubtedly one of the most famous brand logos in the world.

Single cat device

A Japanese individual filed a trademark for the single cat device (see below) on April 12, 2008 by designating T-shirts and caps in class 25. JPO registered the marks on February 25, 2011.

[TM Registration no. 5392943]

[TM Registration no. 5392944]

Opposition / Invalidation Trial

On May 27, 2011, PUMA SE filed an opposition against the mark based on Article 4(1)(xv) of the Trademark Law and asserted relevant consumers or traders are likely to confuse or misconceive a source of the single cat device mark with PUMA or a business entity systematically or economically connected with PUMA when used on designated goods in class 25 because of a high reputation and close resemblance between PUMA jumping cat logo and single cat device.

The Opposition Board admitted a high degree of popularity and reputation of the jumping cat logo in relation to sportswear as well as apparel, including T-shirts and caps, as a source indicator of PUMA SE, however, the Board dismissed the opposition due to the dissimilarity of both marks (Opposition case nos. 2011-900191 and -900192).

Subsequently, PUMA SE requested for an invalidation trial and sought to annul the mark based on Article 4(1)(xii) and (xv) of the Trademark Law on February 25, 2016, the final deadline of five years from registration. However, the Invalidation Trial Board totally dismissed PUMA’s allegations on the same grounds (Trial case nos. 2016-890014 and -890015).

To challenge the validity of the administrative decisions, PUMA appealed to the IP High Court.

IP High Court ruling

After eight years of prolonged dispute, the IP High Court set aside the administrative decisions and ruled in favor of PUMA.

In the ruling, the Court pointed out a fact that designated goods, T-shirts and caps in question have a close association with sportswear and apparel of PUMA’s great interest in the aspect of usage, purpose and consumers/traders. Both goods are purchased by general consumers. Besides, the Court confirmed PUMA jumping cat logo has unquestionably acquired a high degree of popularity and reputation among relevant consumers and traders with an ordinary care even before a filing date of disputed mark. It is true that there exists visual difference between PUMA jumping cat logo and disputed marks, however, admittedly overall impression of both marks is too similar in appearance. Disputed marks do not give rise to any specific meaning and pronunciation. In the meantime, the cited mark gives rise to a meaning and pronunciation of famous sports brand “PUMA”. If so, the Court assumes the difference in sound and concept shall be less obvious on the case.
By taking above facts into considerations, the Court affirmed relevant consumers of T-shirts and caps (class 25) are likely to associate the goods with PUMA and thus confuse its source with PUMA or a business entity systematically or economically connected with PUMA SE.

Based on the foregoing, the Court annulled the Board decisions and ruled to invalidate disputed marks based on Article 4(1)(xv).

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

HISAMITSU unsuccessful in registering a shape of “Salonpas”

The Appeal Board of Japan Patent Office (JPO) disallowed registration of a shape of famous Japanese pain relief patches in the name of “Salonpas” manufactured by Hisamitsu Pharmaceutical Co., Inc. due to lack of inherent distinctiveness in relation to poultices, class 10. [Appeal case no. 2017-12694]

Salonpas

Hisamitsu Pharmaceutical Co., Inc. filed a trademark application for a shape of Over-The-Counter Topical Pain Patch known for “Salonpas” (see below) by designating pharmaceutical preparations, gauze for dressings, bandages for dressings, adhesive plasters and other goods in class 5 [TM application no. 2015-7479].

Salonpas is a product of Hisamitsu Pharmaceutical, a company whose history dates back to the mid-1800s. Salonpas was introduced in 1934 and was first distributed in Asia. The FDA approved the Salonpas Pain Relief Patch for the US market in 2008. Approximately 20 billion Salonpas transdermal patches have been sold in the last 20 years. Salonpas has been acknowledged as World’s No.1 OTC Topical Analgesics in patch format.

JPO Examination

The JPO examiner totally refused the application based on Article 3(1)(iii) of the Japan Trademark Law stating that the applied mark can be easily seen as a shape of poultices and the shape does solely consist of a common configuration to achieve the basic function of poultices. If so, the applied mark lacks distinctiveness as a source indicator.

Article 3(1)(iii) is a provision to prohibit any mark from registering where the mark solely consists 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.

To dispute the refusal, Hisamitsu filed an appeal on August 28, 2017.

Appeal Board’s decision

The Appeal Board, however, upheld the examiner’s decision on the ground and dismissed Hisamitsu’s allegation by stating that relevant consumers and traders shall conceive of a mere qualitative representation to indicate the shape of poultices and plasters at the sight of applied mark given similar indications are depicted on the packages of other supplier’s goods on the market (see below).

Based on the foregoing, the Board consequently refused to register the mark based on Article 3(1)(iii) of the Trademark Law.

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

Adidas: Victorious in Trademark Battle over the Trefoil logo

The Opposition Board of Japan Patent Office (JPO) held in an opposition filed by Adidas AG that trademark registration no. 5958601 for the LSXI device mark shall be revocable due to a likelihood of confusion with world-famous Adidas Trefoil logo.

[Opposition case no. 2017-900267, Gazette issued on December 28, 2018]

Opposed mark

Opposed mark (see below), in the name of a Chinese business entity, was applied for registration on December 30, 2016 by designating apparels, shoes, headgear and other goods in class 25.

The JPO, going through the substantive examination, published opposed mark for registration on July 18, 2017.

Adidas Trefoil logo

Adidas AG, opponent, filed an opposition on August 31, 2017 and claimed that opposed mark shall be retroactively cancelled in violation of Article 4(1)(xv) of the Japan Trademark Law due to a likelihood of confusion with Adidas Trefoil logo (see below).

Article 4(1)(xv)

Opposition

Adidas argued that the figurative element of opposed mark evidently gives rise to a same impression with the Trefoil logo in view of basic configurations consisting of two or three laurel leaves intersected by two or three stripes in parallel. Being that the Trefoil logo has been mainly used on sports clothes and sports gear and often seen with athletes during the race and game, consumers are accustomed to conceiving it even at a partial sight of the logo.

Besides, taking account of reputation and popularity of the Trefoil logo and visual resemblance between the marks, relevant consumers are likely to consider opposed mark as a variation of the Trefoil logo and confuse or connect it with Adidas when used on goods in question.

Board decision

The Opposition Board admitted a high degree of reputation, popularity and originality to the iconic Adidas Trefoil logo in relation to sport clothes, casual wear and footwear at the time of initial filing and registration of opposed mark.

Regarding similarity of the marks, the Board considered relevant consumers are likely to have impressions that opposed mark contains dominant portions of a world-famous opponent mark and redesigned the Trefoil logo in part.

Since apparels and shoes designated under opposed mark are for daily use and consumed by the general public, it is evident that usage, purpose and consumers of the goods are same with that of sport clothes, casual wear and footwear on which the opponent has been using the Trefoil logo.

Based on the foregoing, the Board concluded relevant consumers are likely to confuse or connect a source of the opposed mark with Adidas AG or any entity systematically or economically connected with the opponent when used on goods in question. If so, opposed mark shall be cancelled in violation of Article 4(1)(xv) of the Trademark Law.

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

Trademark race for the 2020 Tokyo Olympic Games – Episode 2

The Appeal Board of Japan Patent Office (JPO) refused Trademark Application No. 2017-11978 for a device mark consisting of five interlaced heart shape logos for goods of clothing and footwear in class 25 because of similarity to Olympic rings based on Article 4(1)(vi) of the Japan Trademark Law.

Heart shape device mark

Mark in question ( see below) was filed on February 6, 2017 by designating goods of clothing, footwear, masquerade costumes, clothes for sports in class 25.

Article 4(1)(vi) of the Trademark Law

The JPO examiner refused the mark by citing the Olympic Rings based on Article 4(1)(vi) of the Trademark Law.
Article 4(1)(vi) is a provision to refuse any mark which is identical with, or similar to, a famous mark indicating the State, a local government, an agency thereof, a non-profit organization undertaking a business for public interest, or a non-profit enterprise undertaking a business for public interest.

JPO trademark examination guidelines clearly refer to the Olympic Symbol as an example of the mark to indicate a non-profit business for public interest.