POLO BCS defeated in trademark battle with POLO RALPH LAUREN

In a ruling on the merits of whether or not an applied mark “POLO HOME / BRITISH COUNTRY SPIRIT” is likely to cause confusion with a world-famous trademark “POLO” by the fashion house Ralph Lauren, the Japan IP High Court sided with the JPO and ruled in favor of Ralph Lauren on December 10, 2018.

[Court case no. H30(Gyo-ke)10067]

 

“POLO HOME / BRITISH COUNTRY SPIRIT”

POLO BCS Co., Ltd., plaintiff of the case, is a Japanese business entity, promoting apparel products bearing trademarks of “POLO BRITISH COUNTRY SPIRIT”, “POLO BCS”, and “POLO HOME”.

 

POLO BCS filed a trademark registration for the mark “POLO HOME / BRITISH COUNTRY SPIRIT” as shown in below on January 5, 2015 by designating clothing and other goods in class 25. [TM application no. 2015-305]

 

In fact, POLO BCS, a registrant of the word mark “POLO” on class 25 in Japan since 1997 (TM registration no. 1434359 and 2721189), granted trademark license to Ralph Lauren in the year of 1987 and since then continuously allows RL to use the mark “POLO” in Japan.

 

JPO decision

The Japan Patent Office (JPO) rejected the applied mark based on Article 4(1)(xv) of the Trademark Law on June 3, 2016. The refusal relies on a prominent portion of the mark “POLO” is likely to cause confusion with RALPH LAUREN when used on apparel products, being that “POLO” becomes remarkably well-known for an abbreviation of POLO RALPH LAUREN among relevant consumers with an ordinary care.

Article 4(1)(xv) is a provision to prohibit any mark from being 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.

POLO BCS filed an appeal against the refusal on August 16, 2016, but its attempt resulted in failure [Appeal case no. 2016-12344].
To contest the JPO decision, POLO BCS appealed to the IP High Court filed immediately.

 

IP High Court decision

The court admitted a high degree of reputation and popularity of Ralph Lauren and “POLO” as an abbreviation of Polo Ralph Lauren in connection with apparel products by taking account of following fact findings.

  1. The first collection for Polo brand was launched in the US by a designer Mr. Ralph Lauren in 1967.
  2. Annual sales of Ralph Lauren exceed 7 billion USD in 2013 around the globe.
  3. In 1976, Ralph Lauren launched Polo brand and shops in Japan.
  4. According to brand perception survey of 900 randomly selected Japanese consumers ages 20 to 69 conducted in 2010, 81.8% of consumers recognize Ralph Lauren.
  5. Annual sales of 26.7 billion JPY in Japan (fiscal year 2008) accounts for 6% of global sales of Ralph Lauren.

Besides, the court found close similarity between applied mark and “POLO” by Ralph Lauren given a tiny font size of “BRITISH COUNTRY SPIRIT” in the configuration of applied mark and less distinctiveness of the word “HOME” in relation to apparel for home use.

Plaintiff argued to consider the fact that RL has used the “POLO” mark in Japan under license from plaintiff. But the court negated the argument stating that such fact would not mean consumers recognize the mark as a source indicator of plaintiff. In addition, plaintiff argued originality and fame of the word “POLO” as a source indicator of Ralph Lauren by citing Polo Game, organizations for the game, e.g. US POLO ASSOCIATION, HURLINGHAM POLO, and a generic name of Polo shirts. Court considered such circumstances would mean less originality of the mark “POLO”, but never deny fame of the mark as a source indicator of Ralph Lauren as long as consumers doubtlessly connect it with Ralph Lauren.

Based on the foregoing, the IP High Court concluded it is obvious that relevant consumers are likely to confuse or misconceive a source of the applied mark with Ralph Lauren or any entity systematically or economically connected with RL when used on clothing in class 25.


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

IP High Court denied registering 3D Shape of Nursing Care Bed

The Japan IP High Court ruled on December 29, 2018 and did not side with Paramount Bed Co., Ltd., a Japanese manufacturer and distributor of medical and nursing care product, who filed an appeal against refusal decision by JPO to TM Application no. 2015-29155 for 3D mark representing the shape of home care bed.
[Heisei 30 (Gyo-ke) 10060, Court ruling date: November 28, 2018]

 

3D shape of home care bed

Disputed mark, representing three-dimensional shape of nursing care bed, was filed on March 31, 2015 by designating nursing care bed and mattress in class 20. The Japan Patent Office (JPO) refused the mark due to a lack of distinctiveness.

  

Paramount Bed argued acquired distinctiveness as a source indicator of Paramount nursing care bed through substantial use of the mark and its unique shape.
According to the argument, Paramount has distributed more than 145,000 sets of nursing care bed and mattress which 3D shape is identical with the applied mark. The company spent USD 2,400,000 to advertise the bed in newspaper and USD 20,000,000 in TV commercial during the past five years. Paramount produced on-line questionnaire results which showed more than 60 % of relevant traders have recognized the shape as a series of Paramount Bed.

 

IP High Court ruling

The IP High Court dismissed the allegation entirely, stating that the produced evidences are unpersuasive to conclude the 3D shape acquired distinctiveness as a source indicator of Paramount Bed’s business because of below-mentioned reasons.

  1. As long as nursing care beds are likely to be used by general public, questionnaire results answered by traders are insufficient to demonstrate acquired distinctiveness among relevant consumers.
  2. Given the shape of applied mark occasionally appears while nursing care bed is in operation and the bed has coverlet on it in ordinary days, it is questionable whether relevant consumers have perceived the shape of applied mark as a source indicator.
  3. Besides, catalogs and advertisements pertinent to Paramount nursing care bed show configurations of the bed other than the shape of applied mark.

Based on the foregoing, the court upheld JPO decision.


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

Luis Vuitton victory in trademark battle for remake use

In a trademark battle involving famous Louis Vuitton Monogram for remake use, the Japan IP High Court ruled in favor of Louis Vuitton and ordered appellant to pay 1.7 million JP-Yen for damages on October 23, 2018.

Custom-made Remake

Appellant has produced shoes, caps and other fashion items by making use of material of secondhand Louis Vuitton goods (see below) and promoted the items as a custom-made remake, e.g. LOUIS VUITTON REMAKE DENIM CAP/BLUE, through internet.

Unfair Competition Prevention Act

Louis Vuitton filed a lawsuit and demanded to stop selling the items as well as payment for the damage on the grounds that appellant’s act constitutes unfair competition under Article 2(1)(ii) of the Japan Unfair Prevention Act.

Article 2(1)(ii) of the Unfair Competition Prevention Act is a provision to prohibit any person from using a famous source indicator of another person without permission.

Appeal

Appellant argued they become popular among relevant consumers as a business entity to produce a custom-made remake from secondhand of genuine brand. If so, since consumers are fully aware that the items are remake, neither faked goods nor brand-new article, confusion is unlikely to happen in the mind of consumers. Besides, appellant insisted as long as the Louis Vuitton Monogram is not used as a source indicator but design, the Unfair Competition Prevention Act is not applicable to the items.

IP High Court decision

The IP High Court decisively dismissed appellant’s allegations and decided the monogram on the items still plays a role of source indicator in view of remarkable reputation of Louis Vuitton Monogram. It can be easily presumed that average consumers at sight of the items shall conceive Louis Vuitton. Even if the items are sold as a custom-made remake or with any description to appeal the items made from secondhand, such facts will not affect the decision on the merit.
[Heisei 30 (Ne)10042]


The Unfair Competition Prevention Act is essential to the case where actual confusion would not happen in fact regardless of unauthorized commercial use of famous brand.

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

Japan IP High Court: Cancellation of trademark right due to inappropriate use by licensee

The IP High Court ruled on September 26, 2018 to totally cancel TM Reg. No. 1809362 for the mark “TOP-SIDER” on the ground that use of the registered mark by licensee is likely to cause confusion with goods from a business entity other than trademark owner.
[Case no. Heisei30(Gyo-ke)10053]

TM Registration – “TOP-SIDER”

Registered mark in question, consisting of the word “TOP-SIDER” written in plain Gothic font (see below), was registered in 1985 over the goods of clothing, coats, shirts and others in class 25 and  has been validly renewed over three decades .

Licensee’s Use

Mizujin  Co., Ltd, a  non-exclusive licensee of the registered mark in question, used “TOP-SIDER” logo on T-shirts (see below).

Sperry Top-Sider

Sperry Top-Sider LLC, a US business entity, famous for “Sperry Top-Sider” deck shoes, filed a cancellation trial against the registration based on Article 53 of the Japan Trademark Law and argued that above use by Mizujin shall be inappropriate since it is likely to cause confusion with “Sperry Top-Sider”.

Cancellation trial based on Article 53

JPO sided with Sperry and decided to entirely cancel the registration. To contend, trademark owner appealed to the IP High Court and alleged cancellation of the decision.

Article 53 of the Trademark Law provides that trademark right is subject to cancellation if use of the mark by licensee causes confusion with respect to another’s business and trademark owner is liable for failure to supervise with an ordinary care.

IP High Court decision

The IP High Court upheld the JPO decision, stating that:

  1. Apparently from totality of the circumstances, trademark owner must have noticed above use by Mizujin.
  2. ”TOP-SIDER” logo contains figurative elements to be seen as cloud and yacht, and looks quite similar to the Sperry mark.
  3. “Sperry Top-Sider” logo has become well-known for Sperry’s deck shoes among traders and general consumers.
  4. Since T-shirts and shoes are offered for sale to wear at same apparel shops, they are closely related with each other in view of sales channel as well as consumers.
  5. Thus, the Court finds that above use by licensee is likely to cause confusion with respect to Sperry business on deck shoes.

It is noteworthy that trademark owner is entitled to grant a licensee the right to use registered mark, however, by doing so , it enhances a risk to lose trademark right if he is careless to supervise the licensee’s inappropriate use and cause confusion.

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

IP High Court: “VANSNEAKER” is confusingly similar to famous “VANS” sneakers

The IP High Court ruled on August 29, 2018 to uphold the Japan Patent Office (JPO) decision to cancel TM Reg. No. 5916735 for the mark “VANSNEAKER” over shoes in class 25 due to a conflict with TM Reg. No. 5245474 for famous mark “VANS”.
[Case no. Heisei30(Gyo-ke)10026]

VANSNEAKER

Disputed mark “VANSNEAKER” in the standard character format was filed on July 25, 2016 and registered next January by designating shoes in class 25 in the name of VAN Jacket Inc., a Japanese business entity, who succeeded to apparel business of “VAN” brand all the rage in the 60’S.

Opposition by VANS Incorporated

VANS Incorporated, a US business entity, established in California 1966,  famous for “VANS” sneakers, filed an opposition  by citing its own senior registered mark “VANS” in standard character format over shoes in class 25. The JPO decided to cancel disputed mark in breach of Article 4(1)(xi) of the Trademark Law on the ground that it is confusingly similar to famous “VANS” mark from a conceptual point of view. [Opposition case no. 2017-900135]

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.

Appeal to the IP High Court

To contend, VAN Jacket appealed to the IP High Court and demanded cancellation of the decision.

VAN Jacket alleged in the court that JPO decision was based on an erroneous assumption of fact because it considered the portion of “VANS” plays a dominant role in source indicator. Given disputed mark “VANSNEAKER” consists of one word in its entirety, it is unlikely that consumers perceive the last letter “S” of “VANS” functions to represent an initial letter of “SNEAKER” as well.

Court decision

The IP High Court, however, dismissed the arguments by VAN Jacket, stating that:

  1. Cited mark ”VANS” has become famous among Japanese general consumers in connection with sneakers and shoes both at the time of filing application and registration of disputer mark.
  2. “NEAKER” does not give rise to any specific meaning. In the meantime, “SNEAKER”, combining “S” with “NEAKER” adjacent to it, is an English word familiar among relevant public to mean a type of the designated goods (shoes).
  3. It becomes usual to prevent successive letter in a coined mark consisting of two words where first word ends with a letter and send word starts with the same letter.
  4. Based on the foregoing, consumers at sight of disputed mark shall pay attention to a distinctive portion of “VANS” and are likely to conceive that the mark consists of two words, “VANS” and “SNEAKER” by omitting first or the last letter “S” of respective words.
  5. Consequently, the Court finds that disputed mark is likely to cause confusion with famous “VANS” sneakers when used on shoes.

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