IP High Court admitted high reputation of Red Bull mark in relation to automobiles as well

In a lawsuit disputing similarity of red-colored bull device marks, the IP High Court nullified the JPO decision in favor of Red Bull GmbH known for Red Bull energy drink, and ruled to invalidate TM registration no. 5664585 (Disputed Mark) on the ground that it is likely to cause confusion with the Red Bull Mark.
[Case no. Heisei29(Gyo-ke)10080,  Judgement date: December 25, 2017]

Disputed Mark, filed on October 4, 2013 by designating various goods for automobiles in class 1,3,4 and 5, e.g. detergent additives to gasoline, was registered on April 18, 2014 by a Korean distributor dealing with goods related to automobiles. Prior to the appeal to the IP High Court, Red Bull was unsuccessful to attack Disputed Mark in an opposition and invalidation trial.

The Court concluded that relevant traders and consumers at the sight of designated goods using Disputed Mark would likely connect it with famous Red Bull Mark, and consequently misbelieve the source of the goods from Red Bull, an entity economically related to Red Bull, or a paerner authorized to use Red Bull Mark in business based on the following findings.

Trademark similarity

Both marks are visually confusing irrespective of differences in detail since the marks share basic configuration of depicting a left-pointing horned red bull in a vibrant motion over yellow and warm color of background. Besides, Disputed Mark gives rise to a meaning of a red-colored jumping bull and Red Bull Mark does a meaning of a red-colored rushing bull. If so, it is obvious that both marks are almost identical or similar in concept. Therefore, Disputed Mark is deemed substantially similar to Red Bull Mark.

High reputation of Red Bull Mark

Red Bull Mark, as a source indicator of plaintiff, becomes well-known not only in the field of energy drinks but also among traders and consumers of goods related to automobiles. Admittedly, it has acquired a high degree of reputation.

Consumers

Consumes of automobile goods are not limited to car enthusiast. They can be purchased by the general consuming public. Plaintiff has distributed various types of goods relating to automobiles and car race with Red Bull Mark for promotional purpose under the scheme of trademark license. It is undeniable that most of the public with an ordinary care are neither precisely familiar with trademark and brand in detail, nor always mindful to manufacturer and source indicators in the selection of goods.


It is noteworthy that the Court admitted high reputation of Red Bull Mark in the field of automobiles as well even if it evidently represents one of sponsors for car racing team

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

How to remove senior registered mark in an effective manner

How to remove trademark registration

The Japan Trademark Law provides several provisions to make trademark registrations ineffective once successfully registered.

  1. Opposition (Article 43bis)
  2. Invalidation trial (Article 46)
  3. Non-use cancellation trial (Article 50)
  4. Cancellation trial based on misleading use by registrant (Article 51)
  5. Cancellation trial based on fraudulent use by assignee of divided trademark right (Article 52bis)
  6. Cancellation trail based on misleading use by licensee (Article 53)
  7. Cancellation trial based on unauthorized registration by person concerned (Article 53bis)

Which is risk saving?

According to the statistical data released by the Japan Patent Office (JPO), it shows that non-use cancellation trial is at lowest risk in view of past success rate.

<Success rate in 2016>

  • Non-use cancellation trial: 80%
  • Invalidation trial: 47%
  • Opposition: 17%

Non-use cancellation trial

In Japan, since burden of proof to demonstrate genuine use of the disputed mark during the past three years rests just on trademark owner, non-use cancellation trial is not burdensome to claimant at all. Besides, the law does not require the claimant to have legal interest to the result of cancellation trial. It also helps to boost a preference to non-use cancellation trial.

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

JPO decided to invalidate the word mark “Bord’or” in relation to wines

In a decision to the invalidation trial jointly claimed by INSTITUT NATIONAL DE L’ORIGINE ET DE LA QUALITE and CONSEIL INTERPROFESSIONNEL DU VIN DE BORDEAUX, the Invalidation Board of Japan Patent Office (JPO) ordered to invalidate TM registration no. 5737079 for a word mark “Bord’or” in script fonts (see below) in violation of Article 4(1)(vii) of the Trademark Law.
[Invalidation case no. 2016-890075]

TM Registration no. 5737079

Mark in dispute (see above), owned by a Japanese legal entity, was filed on October 9, 2014 by designating various types of alcoholic beverages including wines in class 33. After an initial application, applicant requested the JPO to expedite substantive examination. In accordance with the request, JPO examiner put a priority on the mark and admitted to grant registration in three months subsequent to substantive examination.

Accelerated Examination

JPO applies the accelerated examination system to trademark application on the condition that the application meets the following condition.

  1. Applicant/licensee uses or will use applied mark on one of designated goods/services at least, and there exists an urgency to registration, e.g. unauthorized use by third parties, basic application to international registration,
  2. All designated goods/services are actually or shortly used by applicant/licensee, or
  3. Applicant/licensee uses or will use applied mark on one of designated goods/services at least, and all the goods/services are designated in accordance with a standard description based on Examination Guidelines for Similar Goods and Services.

Accelerated examination system enables applicant to obtain examination results in less than two months on average, which is four months shorter than regular examination.

Claimants’ allegation

Claimants argued disputed mark gives rise to the same pronunciation with BORDEAUX, “ bɔːˈdəʊ”. If so, relevant consumers shall conceive BORDEAUX, a world-famous geographical name known for an origin of French wine. Besides, according to the document produced by applicant to demonstrate actual use of disputed mark on designated goods in requesting accelerated examination, it evidently reveals intention to free-ride or dilute fame of prestigious wine.
Thus, if disputed mark is used on wines originated from areas other than BORDEAUX, it severely does harm to fame and aura of prestigious wine constituted under the strict control of domicile of origin. Then, inevitably it causes disorder to a world of global commerce in a manner inconsistent with international fidelity.

To bolster the allegation, claimants cited precedent trademark decisions involving famous French wine, e.g. ROMANEE-CONTI, BEAUJOLAIS NOUVEAU, CHABLIS. Inter alia, IP High Court ruled a word mark “CHAMPAGNE TOWER” invalid in relation to “CHAMPAGNE” based on Article 4(1)(vii).

Article 4(1)(vii) of the Japan Trademark Law

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

Trademark Examination Guidelines sets forth criteria for the article and samples.

  1. Trademarks that are “likely to cause damage to public order or morality” are, for example, the trademarks that fall under the cases prescribed in (1) to (5) below.

(1) Trademarks which are, in composition per se, characters or figures, signs, three-dimensional shapes or colors or any combination thereof, or sounds that are unethical, obscene, discriminative, outrageous, or unpleasant to people. It is judged whether characters, figures, signs, three-dimensional shapes or colors or any combination thereof, or sounds are unethical, discriminative or unpleasant to people, with consideration given to their historical backgrounds, social impacts, etc. from a comprehensive viewpoint.

(2) Trademarks which do not have the composition per se as prescribed in (1) above but are liable to conflict with the public interests of the society or contravene the generally-accepted sense of morality if used for the designated goods or designated services.

(3) Trademarks with their use prohibited by other laws.

(4) Trademarks liable to dishonor a specific country or its people or trademarks generally considered contrary to the international faith.

(5) 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.

 

  1. Examples that fall under this item

(i) Trademarks that contain characters such as “university” and are likely to be mistaken for the name of universities, etc. under the School Education Act.

(ii) Trademarks that contain characters such as “士(shi)” which are likely to mislead that they represent national qualifications.

(iii) Trademarks of the name of a well-known or famous historical personage which are determined to have the risk of taking a free ride on public measures related to that personage and damage the public interests by inhibiting the performance of such measures.

(iv) Trademarks with figures indicated in a manner that may impair the dignity and honor of national flags (including foreign national flags)

(v) A sound mark related to the services of “medical treatment” which causes people to recognize siren sounds generated by ambulances that are well known in Japan.

(vi) A sound mark which causes people to recognize national anthems of Japan and other countries.

Board decision

Board found in favor of claimants that “BORDEAUX” has acquired a high degree of popularity and reputation among Japanese consumers as a source indicator of wines originated from the Bordeaux district. As long as disputed mark gives rise to the same pronunciation with BORDEAUX, it is undeniable that consumers are likely to connect the disputed mark with BORDEAUX wine or its district. If so, disputed mark free-rides or dilutes lure and image of BORDEAUX wine, and adversely affects domicile of origin strictly controlled by French government.
Consequently, Board decided to invalidate Bord’or in violation to Article 4(1)(vii).


Protection of geographical indication

The Japan Trademark Law contains provisions to protect geographical indication.
In principle, a mark merely consisting of geographical name or location is deemed descriptive and falls under Article 3(1)(iii). Even if a mark is combined geographical indication with other distinctive elements, it is subject to Article 4(1)(xvi) since the mark may mislead the quality when used on goods from other areas.
Regarding a mark indicating a place of origin off wine, Article 4(1)(xvii) plays a significant role.

Article 4(1)(xvii)

No trademark shall be registered if the trademark is comprised of a mark indicating a place of origin of wines or spirits of Japan which has been designated by the Commissioner of the Patent Office, or a mark indicating a place of origin of wines or spirits of a member of the World Trade Organization which is prohibited by the said member from being used on wines or spirits not originating from the region of the said member, if such a trademark is used in connection with wines or spirits not originating from the region in Japan or of the said member.

Geographical indications to be protected under the article can be reviewed by accessing http://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/pdf/appendix2.pdf

In this regard, it should be noted that Article 4(1)(xvii) is applicable to any mark containing a term to represent protected GI in itself. In other words, Article 4(1)(xvii) can’t block “Bord’or” since disputed mark does not contain “BORDEAUX” or its transliteration.


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

IP High Court reversed JPO decision pertinent to a likelihood of confusion between men’s fashion magazines and male cosmetics

In a judgement pronounced on November 14, 2017, the IP High Court of Japan ruled to reverse JPO decision which negated a likelihood of confusion between MEN’S CLUB brand men’s fashion magazine and the same brand male cosmetics.[Court case no. H29(Gyo-ke)10109]

MEN’S CLUB magazine

The lawsuit was filed by a publisher of the MEN’S CLUB magazine who unsuccessfully challenged to invalidate TM registration no. 5858891 for a word mark “MEN’S CLUB” in standard character covering goods of male cosmetics in class 3 (hereinafter referred to as “Disputed mark”).

MEN’S CLUB magazine has been continuously published past six decades since 1965 in Japan.

 

TM Registration 5858891 – MEN’S CLUB on male cosmetics

Disputed mark was applied for registration on January 7, 2016, registered on June 17, 2016 without receiving any office action from the Japan Patent Office (JPO) examiner.

On April 5, 2017, plaintiff demanded for a trial to invalidate disputed mark in violation of Article 4(1)(xv) and (xix) of the Trademark Law by citing MEN’S CLUB brand men’s fashion magazines used by plaintiff.

The Trial Board of JPO decided that disputed mark shall neither fall under Article 4(1)(xv) nor 4(1)(xix), and dismissed the invalidation petition entirely [case no. 2016-890063].

In the lawsuit, plaintiff argued the Board misconstrued Article 4(1)(xv), thus erred in judgment to apply the article on the case.

Article 4(1)(xv)

Article 4(1)(xv) of the Trademark Law provides that a mark shall not be registered where it is likely to cause confusion with the goods or services pertaining to a business of another entity.

Theoretically, Article 4(1)(xv) is applicable to the case where a mark in question designates remotely associated or dissimilar goods or services with that of a well-known brand business.

IP High Court decision

The IP High Court ruled that the Board erred in applying Article 4(1)(xv) based on following reasons.

  • Both marks, consisting of MEN’S CLUB, are almost identical
  • MEN’S CLUB brand men’s fashion magazine has acquired a high degree of popularity and reputation among relevant consumers as a result of substantial use over decades, notwithstanding lack of creativity in the mark
  • Male cosmetics are considerably associated with men’s fashion magazines since they are often featured in men’s fashion magazines
  • Consumers of men’s fashion magazines are likely to consume male cosmetics

Based on the foregoing and the degree of ordinary care taken by relevant consumers, the court concluded that consumers of male cosmetics would conceive the MEN’S CLUB brand men’s fashion magazine and then associate the cosmetics with goods produced by plaintiff or a business entity who has systematical or economical connection with plaintiff in error.

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

 

 

Trademark battle: OLYMPIC vs Ocalympic

In a TM invalidation appeal filed by the International Olympic Committee (IOC) who disputed TM registration no. 5608031 for the mark “Ocalympic” covering services of organization of musical performances played by ocarinas and others in class 41 shall be invalid due to conflict with “OLYMPIC”, an international sports festival organized by IOC, the Appeal Board of JPO  decided in favor of IOC and declared invalidation of the “Ocalympic” mark based on Article 4(1)(vi) of the Trademark Law.
[Case no. 2016-890064,  Decisively  fixed date: September 4, 2017]


Article 4(1)(vi)

Trademark shall not be registered if the trademark 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.

Famous mark to represent public business by NPO

The Board admitted the OLYMPIC marks has acquired substantial degree of popularity and reputation worldwide as a source indicator of the Olympic Games organized by NPO for public interest at the time of application for invalidated mark based on the facts that IOC is an international NPO established on June 23, 1894, an organizer of the Olympic Games, has been using the marks to represent the Games which correspond to an undertaking for public interest.

Assessment of similarity between marks

Since literal configuration of the Invalidated mark, having an initial letter “O” and spellings of “LYMPIC(lympic)” in the latter part, is identical with a coined mark “OLYMPIC”, the mark gives rise to an impression closely associated with “OLYMPIC” from appearance.

A mere verbal difference on second sound “ca” shall not be material as a whole in view of common pronunciation in initial sound “O” and “LYMPIC” in the latter part. Besides, when pronouncing each mark at a breath, relevant audience shall find resemblance in tone and a sense of language. Thus, both marks are deemed similar in phonetical point of view.

Regarding conceptual point of view, even if the Invalidated mark is admittedly a coined term, it still gives rise to a meaning of the Olympic Games.

Therefore, considering every circumstance, both marks are deemed similar.


Provided that Invalidated mark combines “ocarinas” with “Olympic”, I feel above assessment inappropriate. Toward the 2020 Tokyo Olympic Games, it is anticipated that such sort of mark may appear. Be on high alert for famous mark “OLYMPIC”!

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

Famous hotel brand “RITZ” successful in invalidating “RITZ MARCHE”

Invalidation trial

The Japan Trademark Law contains provision for invalidation of trademark registration by means of inter partes trial in Article 46 as a remedy to questionable ex-officio examination of the Japan Patent Office (JPO).
Statistically, approximately 100 invalidation petitions were filed to the JPO in each of the past five years. Nearly 40 percentages of them ended successfully in an invalidation of registered mark in question on average.

[Trademark invalidation trial]

Year Number of cases Disposition of trial
Invalidation Dismissal Withdrawal
2015 100 37 58 19
2014 115 38 32 15
2013 96 37 53 10
2012 118 44 76 16
2011 112 38 57 9

RITZ v. RITZMARCHE

Ritz Hotel Ltd., a world famous hotel management company, petitioned for invalidation of trademark registration no. 5594878 for a word mark “RITZMARCHE” (written in Katakana letter) covering “retail services or wholesale services for foods and beverages” in class 35 pursuant to Article 46 of the Trademark Law on the following grounds.

  1. Consumers are likely to confuse or associate the mark in dispute with Ritz Hotel due to remarkable reputation bestowed on famous hotel brand, “RITZ”.
  2. “RITZMARCHE” is deemed confusingly similar to senior trademark registrations owned by Ritz Hotel Ltd.

[Marks in dispute]

Ground 1 corresponds to on Article 4(1)(xv) of the Trademark Law to prohibit any mark likely to cause confusion with a business of another entity from being registered.

Ground 2 rests on Article 4(1)(xi) to bar registration of a junior mark which conflicts with any senior trademark registration due to similarity of both marks and goods/services.

It becomes a common practice to raise several grounds in an invalidation petition. Combination of Article 4(1)(xv) and 4(1)(xi) is a standard tactic in trademark dispute involving a famous brand. Theoretically, Article 4(1)(xv) can’t be applied unless Article 4(1)(x) is inapplicable to the case. Article 4(1)(xi) is useful to the extent the marks as well as goods/services in question are identical or similar. In the meantime, Article 4(1)(xv)   targets a wider territory where consumers are likely to confuse the source of origin between marks. In other words, Article 4(1)(xv) becomes helpful only where both marks are dissimilar, or goods/services in question are deemed dissimilar. Due to a wider protection to Article 4(1)(xv), a petitioner who claims the article is required to prove high recognition and substantial use of an opposing mark accordingly.

It is of no matter that JPO renders an invalidation decision simply based on Article 4(1)(xi) without reference to Article 4(1)(xv).

On the Ritz case, the JPO Trial Board held to invalidate registered mark “RITZMARCHE” on the grounds of Article 4(1)(xi).


Board decision

In the assessment of similarity, the Board considered a term “MARCHE” is less distinctive or inherently descriptive in connection with “retail services or wholesale services for foods and beverages” of class 35 since the term itself means “market” in French. Besides it can be seen often as a sign to indicate a place where merchants provide foods or beverages directly to consumers in Japan. Meanwhile, average consumers with an ordinary care are unlikely to perceive any descriptive meaning from the term of “RITZ”. Therefore, in the configuration of disputed mark “RITZMARCHE”, it should be allowed to extract the term “RITZ” as a prominent part of the mark.

In comparing the Katakana letter of “Ritz” with alphabetical term “RITZ” of cited marks, both have same sound. Their meaning is incomparable since both don’t give rise to specific meaning. Both terms are different in appearance, however, it becomes commercially routine to write alphabetical names in Katakana letters for purpose of representing pronunciation of the terms in fact. Based on the foregoing, the Board concluded that “RITZMARCHE” and Ritz Hotel registered marks containing a term of “RITZ” are confusingly similar as a whole, by taking into consideration of relevant factors in commerce relevant to disputed goods/services. The Board also held that “retail services or wholesale services for foods and beverages” in class 35 is considered similar to food products in class 30 designated under the citations.
[Invalidation case no. 2016-890033]

The Board didn’t refer to Article 4(1)(xv) although Ritz Hotel argued famousness of cited mark “RITZ” with enormous amount of evidential materials as mentioned reason.
If Ritz Hotel has filed the invalidation action solely based on Article 4(1)(xv), the JPO must have admitted famousness of the mark “RITZ” and invalidated “RITZMARCHE” likewise.


NEW TRADEMARK EXAMINATION GUIDELINE

In April 2017, the JPO announced new trademark examination guideline [Revision 13].
The guideline aims to reflect recent judicial decisions and non-traditional trademarks. Inter alia, Article 4(1)(xi) is hot topic due to its significance as a key provision pertinent to assessment of mark similarity. From now on, it is more likely that the JPO admits an argument of prominent part of trademark than before, even if the mark consists of other words or figurative elements.
I suppose, the RITZ case is timely ruled in line with New Guideline.

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