カテゴリー: Likelihood of confusion

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

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

Giorgio Armani defeated with trademark battle over V-shaped wing device

In a recent administrative trademark decision , the Opposition Board of Japan Patent Office (JPO) dismissed an opposition filed by Giorgio Armani S.p.A against trademark registration no. 5983697 for V-shaped wing device mark on bags in class 18 due to unlikelihood of confusion.

[Opposition case no. 2017-900384, Gazette issued date: April 26, 2019]

Opposed mark

Disputed mark (see below) was applied for registration on April 24, 2017, by designating bags, wallets, suitcases, hang bags, backpacks and others of class 18 in the name of a Chinese individual.

Going through substantive examination at the Japan Patent Office (JPO), the mark was registered on September 29 of that year (TM Reg no. 5983697).

 

Armani Opposition

To oppose the mark, Giorgio Amani filed an opposition on December 22, 2017.
In the opposition brief, Armani contended that opposed mark is confusingly similar to its registered famous V-shaped wing logo in the shape of “V” letter (see below) by citing its owned IR no. 695685 and thus shall be cancelled in violation of Article 4(1)(xi), (xv) and (xix) of the Japan Trademark Law.

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) prohibits to register a trademark which is likely to cause confusion with a business of other entity.
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.

 

Board decision

To my surprise, the Opposition Board of JPO negated a certain degree of popularity and reputation of Armani V-shaped wing device mark – Armani logo, stating that produced materials are insufficient and non-objective to demonstrate famousness of the cited mark.

Besides, the Board found that both marks are sufficiently distinguishable from appearance in view of overall configuration. From phonetic and conceptual points of view, opposed mark is unlikely to give rise to any specific meaning and pronunciation as well as cited mark.If so, both marks would not be comparable from visual and conceptual points of view. By taking into consideration of above fact findings, the Board found dissimilarity of both marks and held less likelihood of confusion between the marks even if used on bags in class 18.
Based on the foregoing, the Board decided opposed mark is not subject to Article 4(1)(xi), (xv) and (xix) of the Trademark Law and dismissed the opposition totally.

Who associates “Pen-Pineapple-Apple-pen” with Apple Inc.?

The Japan Patent Office (JPO) dismissed an opposition filed by Apple Incorporated, a US corporation, against TM Registration no. 6031236 for word mark “Pen Pineapple Apple Pen” written in alphabets and Katakana characters, and allowed the mark to remain valid. [case no. 2018-900165]

 

Opposed mark : Pen-Pineapple-Apple-Pen

Avex Inc., a Japanese company, filed the mark to the JPO on February 24, 2017 over various kinds of goods/services in class 3,9,14,16,18,20,21,24,25,28,30,32,41,43 (14 classes in total). The JPO admitted registration on March 30, 2018.

 

Opposition by Apple Inc.

Apple Inc., an US multinational IT company, filed an opposition based on Article 4(1)(xi), (xv) and (xix) of the Trademark Law by asserting opposed mark is deemed similar to opponent famous trademark “Apple”, “Apple Pay” and “Apple Pencil”, likely to cause confusion with opponent’s business when used on designated goods and services. Besides, opposed mark was seemingly adopted with an intention to freeride good-will bestowed on opponent famous trademarks.

Article 4(1)(xi) prohibits from registering a junior mark identical or similar to senior registered mark on identical or similar goods/service.
Article 4(1)(xv) prohibits any junior mark likely to cause confusion with others.
Article 4(1)(xix)  prohibits a junior mark identical or similar to others’ famous mark with a malicious intention.
The provisions are available as cause of claims underlying  an opposition when registered in error.

 

JPO decision

The Opposition Board of JPO held opposed mark shall NOT be revocable in accordance with the articles by stating that:

“Opposed mark, solely consisting of literal elements with same size and same font, gives rise to a pronunciation of ‘pen pineapple apple pen’ as a whole. Regardless of slight verbosity, relevant consumers will surely connect the mark with viral hit song “Pen-Pineapple-Apple-Pen or PPAP” by PIKOTARO, internet sensation from Japan, which has become known among the general public remarkably. If so, opposed mark merely gives rise to a meaning of PIKOTARO’s song.  Therefore, opposed mark shall be deemed dissimilar to opponent trademarks from visual, phonetic and conceptual points of view.

The Board admits a high degree of reputation or popularity of “APPLE” as a source indicator of opponent’s business in connection with PC, its accessories, software and smartphones, however, provided that both marks are distinctively dissimilar and ‘APPLE’ is a dictionary word commonly known among relevant public to mean the round, red or yellow, edible fruit of a small tree, the Board considers it is unlikely that relevant consumers and traders would confuse or associate opposed mark with opponent’s mark “APPLE”.

Besides, opponent alleged that PIKOTARO might compose the song inspired by “APPLE PENCIL” and ludicrously promoted with an intention of free-riding opponent’s goodwill. However, the Board was unable to find out any fact to assume malicious intention of the free-riding by applicant from the totality of the circumstances.”

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

Trademark Opposition: “DISCOVERY” vs. “DISCOVERER”

In a recent administrative decision to trademark opposition filed by Jaguar Land Rover Limited who alleged trademark registration no. 6011666 for word mark “DISCOVERER” designating goods of “batteries and cells, telecommunication machines and apparatus, recorded video discs, and other goods” belonging to class 9 owned by a Japanese business entity is confusingly similar to “DISCOVERY” famous for four-wheel-drive vehicles produced by the opponent, the Opposition Board of Japan Patent Office (JPO) dismissed the opposition due to an unlikelihood of confusion.

[Opposition case no. 2018-900086, Gazette issue date: January 25, 2019]

 

Opposed mark – DISCOVERER

Opposed mark (trademark registration no. 6100666) just consists of a term “DISCOVERER” in a plain roman type and its transliteration in a Japanese katakana character.

The mark was filed on April 24, 2017 by designating “batteries and cells, telecommunication machines and apparatus, recorded video discs, and other goods” belonging to class 9.

JPO, going through substantive examination, admitted registration and published for opposition on February 13, 2018.

 

Opposition by Land Rover “DISCOVERY”

On April 6, 2018, before the lapse of a two-months opposition period, Jaguar Land Rover Limited filed an opposition, stating that relevant consumers are likely to confuse or misconceive opposed mark with opponent or any business entity systematically or economically connected with Land Rover due to high popularity of “DISCOVERY” for Land Rover SUV and similarity between “DISCOVERY” and “DISCOVERER”.

 

Article 4(1)(xv)

Jaguar Land Rover sought to retroactively cancel opposed mark in relation to all designated goods in class 9 based on Article 4(1)(xv) of the Trademark Law.

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 Board negated a certain degree of popularity and reputation of opponent mark “DISCOVERY”, stating that produced materials are insufficient and non-objective to demonstrate famousness of the cited mark.

Besides, the Board found that both marks are sufficiently distinguishable from visual, phonetic and conceptual points of view and deemed dissimilar.

Even if car makers are looking at ways to speed up development of self-driving and recent cars consist of batteries and telecommunication apparatus in fact, given non-originality of opponent “DISCOVERY” mark and remoteness between opposed goods and vehicles, the Board held that relevant consumers of opposed goods are unlikely to confuse or associate “DISCOVERER” with opponent or any business entity systematically or economically connected with Jaguar Land Rover Limited.

Thus, opposed mark shall not be revocable to Article 4(1)(xv) of the Trademark Law and dismissed the opposition entirely.

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

Serapian Loses Trademark Opposition against S device mark

The Italian-based fashion house Stefano Serapian S.r.l., known for its briefcases, handbags and purses opposed the registration in Japan of the trademark S logo owned by the Japanese company, Kabushiki Kaisha Overseas.

Opposed mark

Overseas filed an application to register S logo (see below) designating, among others, bags, purses, pouches and leather goods in class 18 on April 27, 2017. Going through substantive examination at the Japan Patent Office (JPO), it was registered on October 20 of that year (TM Reg no. 5990450).

Serapian Opposition

A trademark opposition proceeding filed on January 15, 2018, Serapian contended that opposed mark is confusingly similar to its registered famous “S” device mark (see below) by citing its owned IR no. 1117130 and thus shall be cancelled in violation of Article 4(1)(xi) and (xv) of the Japan Trademark Law.

 

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.

Theoretically, Article 4(1)(xv) is applicable to the case where a mark in question is deemed dissimilar to well-known brand, but still likely to cause confusion because of a high degree of popularity and reputation of the brand.

 

The Ruling

The Opposition Board of JPO negated a certain degree of popularity and reputation of Serapian’s “S” device mark, stating that produced materials are insufficient and non-objective to demonstrate famousness of the cited mark.

Besides, the Board found that both marks are sufficiently distinguishable from appearance in view of overall configuration. From phonetic and conceptual points of view, it is apparent that respective mark would not be perceived as an alphabetical letter ‘S’, but a geometric figure device without any specific concept and pronunciation. If so, both marks would not give rise to similar appearance, sound and meaning at all.

Even if taking account of originality of “S” device mark, as long as it remains unclear whether Serapian “S” device mark has become popular among relevant consumers in Japan, the Board had no reason to admit a likelihood of confusion.

As a conclusion, the Board decided opposed mark is not subject to Article 4(1)(xi) and (xv) of the Trademark Law and dismissed the opposition accordingly.

[Opposition case no. 2018-900017, Gazette issue date December 28, 2018]

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

LUIS POULSEN Victory over trademark infringement lawsuit for Pendant Lamp Shade

On December 27, 2018, the Tokyo District Court sided with Luis Poulsen A/S, a Danish company, in a lawsuit for trademark infringement against R&M Japan Co., Ltd. who imported into Japan and sold lighting apparatus allegedly identical with or confusingly similar to a registered 3D mark in the shape of unique pendant lamp shade well-known for “PH5” and awarded damages of 4.4 million JPY. [Case no. Heisei 29(Wa)22543]

 

Luis Poulsen “PH-5”

Luis Poulsen A/S has manufactured and sold lighting apparatus with a unique lamp shape well-known for “PH-5” in Japan past four decades. The shape was successfully registered as a 3D mark by the JPO in 2016 as a result of demonstrating acquired distinctiveness of the shape as a source indicator in connection with goods of ramp shade in class 11 (see below) [Trademark registration no. 5825191].

 

Infringing product

R&M Japan, Defendant, imported into Japan and sold lighting apparatus which apparently looks identical with the shape of PH-5 (see below).

Defendant argued that the Court should dismiss the complaint in its entirely.

According to the court decision, defendant admitted to reproducing a design which has terminated its exclusive right after the lapse of statutory period and thus became public domain.

Defendant also disputed there happened no damages to plaintiff on the grounds that the company put consumers on notice to offer replica designer lighting or free generic design items in the marketplace. There exists a remarkable price gap between genuine PH-5 and defendant product. If so, claimed damages shall not be linked to defendant’s act.

 

Court decision

The Tokyo District Court ruled in favor of Luis Poulsen by stating that:

  1. It is unquestionable that infringing product constitutes trademark infringement given the same shape with registered 3D mark representing “PH-5” owned by plaintiff.
  2. Provided that the 3D shape of “PH-5” has been successfully registered as a trademark in Japan, expiration of design right shall not prevent the owner from enforcing trademark right against the shape once registered as design right.
  3. Even if infringing product was offered to sell on notice of replica designer lighting or free generic design items at a lower price than genuine PH-5, it shall not deny a fact that infringing product is likely to compete with plaintiff.

Based on the foregoing, the Court ruled that R&M Japan committed a trademark infringement and awarded Luis Poulsen 4.4 million JPYen for damages.

R&M Japan once challenged validity of trademark registration for the 3D mark of PH-5, but resulted in vain. click here.

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