カテゴリー: Likelihood of confusion

Adidas triumphs over 3-stripe trademark battle

After six years of prolonged dispute, Adidas AG could achieve a victory over trademark battle involving famous 3-stripe design. In a recent trademark invalidation appeal, case no. 2016-890047, the Trial Board of Japan Patent Office (JPO) decided in favor of Adidas AG to retroactively null trademark registration no. 5430912 for three lines device mark (see below) due to a likelihood of confusion with Adidas’ famous 3-stripe design.

Disputed mark

Disputed mark was filed on March 2, 2011 by a Japanese business entity, designating shoes in class 25 and registered on August 5, 2011 (Registration no. 5430912).

To oppose the registration, on October 18, 2011, Adidas AG filed an opposition against disputed mark based on Article 43bis of the Trademark. But the Opposition Board of JPO overruled the opposition and decided to admit registration of disputed mark on June 27, 2012. Four years later, Adidas AG filed an invalidation appeal with an attempt to retroactively null disputed mark based on Article 4(1)(xv), 46(1)(i) of the Trademark Law.

The Japan Trademark Law provides where a trademark has been registered for five years or more, an invalidation appeal based on Article 4(1)(xv) shall be dismissed unless the trademark was aimed for registration with a fraudulent purpose.

It is presumed that the provision urged Adidas to take an invalidation action eventually since the appeal date is just one week before a lapse of five years from registration.

 

Invalidation trial

Adidas AG repeatedly argued a likelihood of confusion between Adidas’ famous 3-stripe design and disputed mark because of a high degree of popularity and reputation of 3-stripe design as a source indicator of Adidas sportswear and sports shoes, visual resemblance between the marks.

Board decision

The Board found that:

  1. Adidas’ 3-stripe design has acquired a substantial degree of reputation well before the filing date of disputed mark as a result of continuous marketing activities in Japan since 1971.
  2. Occasionally, Adidas promotes shoes depicting various types of 3-stripe design with a slight modification to length, width, angle, outline or color of the stripe.
  3. Disputed mark gives rise to the same visual impression in the mind of consumers with 3-stripe design by taking account of similar graphical representation consisting of three lines in parallel leaning to the left. Difference in detail is negligible since it can be perceived as a variation of Adidas shoes given actual business circumstances.

Based on the above findings, the Board concluded that relevant consumers and traders are likely to confuse shoes using disputed mark with Adidas’ famous 3-stripe design or misconceive a source from any entity systematically or economically connected with Adidas AG. Thus, disputed mark shall be invalidated in violation of Article 4(1)(xv) of the Trademark Law.

Apple Inc. failed in a trademark opposition to block “Apple Assist Center”

The Japan Patent Office dismissed a trademark opposition claimed by the U.S. tech giant, Apple Inc. against trademark registration no. 59923763 for word mark “Apple Assist Center” in class 35, 36, and 43 by finding less likelihood of confusion.
[Opposition case no. 2017-900155]

“Apple Assist Center”

Opposed mark “Apple Assist Center” was filed by a Japanese business entity on July 22, 2016 by designating the services of “secretary services; telephone answering and message handling services; reception services for visitors” in class 35, “rental of business and commercial premises; management of buildings; providing information in the field of buildings for business and commercial use” in class 36, “rental of conference room; rental of exhibition room” in class 43.
As a result of substantive examination, the JPO admitted registration on February 17, 2017 and published for registration on March 21, 2017.

Apple’s Opposition

To oppose against registration, Apple Inc. filed an opposition on May 17, 2017.

In the opposition brief, Apple Inc. asserted the opposed mark shall be cancelled in violation of Article 4(1)(xv) of the Japan 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. 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.

Board Decision

The Opposition Board admitted a remarkable degree of reputation and population of opponent trademark “Apple” in the field of computers, smart phones, audio devices etc., however, gave a negative view in relation to goods and services remotely associated with Apple products by taking account of arguments and evidences Apple Inc. provided during the trial.

Besides, in the assessment of mark similarity, the Board found “Apple Assist Center” and “Apple” are dissimilar since they are sufficiently distinguishable in visual, phonetic, and conceptual point of view. The Board considered that the word of “Assist Center” does not immediately give rise to a descriptive meaning in relation to the designated service of class 35, 36, and 43. Given that “Assist Center” is deemed a coined word, it is not permissible to separate a element of “Apple” from the opposed mark.

Based on the foregoing, the Board decided that, unless Apple Inc. demonstrates possibility to embark on business related to the designated services and overlapping of consumers between Apple products and the opposed mark, relevant consumers are unlikely to confuse or misconceive a source of the opposed mark with Apple Inc. or any entity systematically or economically connected with the opponent.

It surprises me that the Board considered “Assist Center” does not lack distinctiveness in relation to business support services.

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

Adidas successful in invalidating three bones device mark

In a trademark invalidation appeal, case no. 2017-890017, the Trial Board of Japan Patent Office (JPO) decided in favor of Adidas AG to retroactively null trademark registration no. 5799460 for three bones device mark (see below) due to a likelihood of confusion with Adidas’ famous 3-stripe design.

Disputed mark

Disputed mark was filed on May 1, 2015 by a Japanese business entity, designating the goods of clothing for pets in class 18 and registered on October 16, 2015.

Subsequently after the registration, Adidas AG filed an opposition against disputed mark on November 26, 2015. Since it ended in vain, Adidas AG challenged inadequacy of the decision and registration by means of invalidation trial.

Invalidation trial

During the invalidation trial, Adidas AG argued a likelihood of confusion between Adidas’ famous 3-stripe design and disputed mark because of a high degree of popularity and reputation of 3-stripe design as a source indicator of Adidas sportswear and sports shoes, visual resemblance between the marks, and close relatedness of its consumers and commodity goods.

Board decision

The Board found that:

  1. Adidas’ 3-stripe design has acquired a substantial degree of reputation well before the filing date of disputed mark as a result of continuous marketing activities in Japan since 1971.
  2. Three bones device mark visually resembles with 3-stripe design by taking account of the same graphical representations allocating three trapezoids in different length in parallel to be seen it constituting a triangle in overall appearance.
  3. It becomes apparent that distributors of sports gears, apparels, bags, and shoes also deal with clothing for pets nowadays.

Based on the above findings, the Board concluded that consumers who are accustomed to the circumstance, are likely to confuse clothing for pets using disputed mark with Adidas’ famous 3-stripe design or misconceive a source from any entity systematically or economically connected with Adidas AG. Thus, disputed mark shall be invalidated in violation of Article 4(1)(xv) of the Trademark Law.

It should be noteworthy that a decision to dismiss opposition is not appealable under the Japan Trademark Law. If opposed party wants to argue the decision, there is no way other than invalidation trial.

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

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

Royal Copenhagen successful in removing FLORA DANICA on bags and apparels

The Opposition Board of Japan Patent Office (JPO) decided to cancel trademark registration no. 5681437 for word mark “FLORA DANICA” covering various types of bags in class 18, apparels and shoes in class 25 as a consequence of opposition trial raised by ROYAL COPENHAGEN AS, one of Europe’s oldest porcelain manufacturers in Denmark.
[Opposition case no. 2014-900278]

Trademark Opposition

Opposed mark was filed by a Danish corporation on January 23, 2014. Without receiving any office action from the JPO examiner, it was smoothly granted registration on May 30, 2014. Upon payment of registration fee on June 19, 2014, it was published for opposition on July 29, 2014.

On the very final day of statutory period to file an opposition (two months from the publication provided under Article 43bis of the Trademark Law), ROYAL COPENHAGEN challenged to an opposition disputing validity of opposed mark due to a likelihood of confusion with renowned Flora Danica porcelain, made 1790-1803 at the Royal Copenhagen Porcelain Manufactory, decorated with botanical drawings of Denmark’s flora.

The opposition relied on Article 4(1)(xv) of the Trademark Law to prohibit a junior mark likely to cause confusion with other business entity’s well-known goods or services from being registered to the benefit of brand owner and users’ benefits.

Article 4(1)(xv)

Trademark Examination Guidelines set forth factors to be taken into consideration in the assessment of a likelihood of confusion under the article.

  • The degree of similarity between the trademark as applied and the other entity’s mark;
  • The degree to which the other entity’s trademark is well known;
  • Whether the other entity’s trademark consists of a coined word or contains a distinctive feature;
  • Whether the other entity’s trademark is used as a house mark;
  • Whether there is the possibility of proximity in business as a result of diversified management;
  • Whether there is any relationship between goods, services or goods and services;
  • Whether there is any commonality between the consumers of goods, etc. and other actual states of transactions.

Click here to access the guidelines.

Board decision

In the disputed opposition, the Board found that “FLORA DANICA” has acquired a high degree of population and reputation among relevant traders and consumers as a source indicator of ceramic products manufactured by ROYAL COPENHAGEL and remained the status quo continuously.

The Board assessed both marks are deemed unquestionably identical or similar. Besides, both opposed goods in classes 18, 25 and ceramic products are all closely related to daily life, and consumers are likely to show strong preference for design and fashion of goods in selection of these goods. ROYAL COPENHAGEN deals with handkerchiefs, scarfs, perfumes, cuffs, wallets, aprons, bags as well.

Base on the foregoing, the Board concluded that relevant traders and consumers of the goods in question are likely to confuse or associate the goods using Opposed mark with opponent or any business entity economically or systematically connected with ROYAL COPENHAGEN. Thus, Opposed mark is subject to cancellation due to Article 4(1)(xv) of the Trademark Law.

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

Starbucks Trademark Dispute Brewing Over Bull Pulu Tapioca Logo

The Japan Patent Office (JPO) has rejected an opposition from Starbucks to trademark registration no. 5897739 for the green-and white “BULL PULU TAPIOCA” concentric circle logo with a puppy white bull dog in the center.
[Opposition case no. 2017-900048]

BULL PULU TAPIOCA LOGO

Opposed mark (see below) designating goods of tapioca beverages, tapioca fruit juice beverages in class 32 and retail or wholesale services for tapioca beverages, tapioca fruit juice beverages in class 35was applied for registration on May 10, 2016 by a Japanese individual. As a result of substantive examination, JPO granted a registration on October 28, 2016.

OPPOSITION by STARBUCKS

Subsequently, Starbucks Incorporated, a US coffee chain, filed an opposition based on a conflict with famous Starbucks trademarks.

In the opposition, Starbucks alleged violation of Article 4(1)(vii), (xi) and (xv) of the Japan Trademark Law.

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

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) excludes a junior mark which is likely to cause confusion with goods or services belonging to another business entity.

BOARD DECISION

The Opposition Board of JPO admitted a high degree of reputation and popularity to the iconic Starbucks logo among relevant consumers at the time of initial filing and registration of the opposed mark.

In the meantime, the Board found that both marks are dissimilar due to a distinctive difference in literal elements and design depicted in the center. Besides, by taking account of severe dissimilarity of both marks, the Board denied a likelihood of confusion between the marks as well.

To bolster the public disorder allegation, Starbucks revealed the facts that applicant of the opposed mark was a former CEO of J.J. Co., Ltd., a tapioca drink parlor, and Opposed mark has been used on shop signs and cups for drink managed by J.J. Co., Ltd. in fact (see below).

The Board held that such facts are insufficient to conclude Opposed mark may offend public order and morals if registered.

Accordingly, JPO rejected an opposition challenged by Starbucks.

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

 

 

JPO : KAPAPA is unlikely to cause confusion with Kappa

In a recent trademark opposition, Opposition Board of the Japan Patent Office (JPO) decided the mark “KAPAPA” is unlikely to cause confusion with “Kappa”, one of the world’s largest sport brands founded in 1960s, Italy even when used on sport wears.[Opposition case no. 2017-900115, decisively concluded on August 17, 2017]

Opponent, a Japanese business entity authorized to distribute “Kappa” goods in Japan, filed a trademark opposition against TM registration no. 5912402 for the “KAPAPA” logo mark (see below).

Opposed mark was applied for registration on April 20, 2016 by designating various goods in class 18 and 25, e.g. bags, clothing, sport wears, sport shoes, caps and socks.

Opponent asserted that the opposed mark violates Article 4(1)(xi) and 4(1)(xix) of the Trademark Law by citing senior registrations for the “Kappa” mark.

Based on substantive evidential materials to show the facts the “Kappa” is ranked as 6th sport brand in annual sale and has been promoted in Japan over three decades, the Opposition Board admitted that “Kappa” has acquired a certain degree of popularity and reputation among relevant consumers as a source indicator of workout clothes, gym clothes, athletic wear and soccer wear.

In the meantime, the Board denied similarity between “KAPAPA” and “Kappa” by taking into consideration a distinctive gap in sound and meaning of respective mark as a whole.

As a conclusion, the opposition is groundless since it shall be unlikely that relevant consumers with an ordinary care would confuse or associate “KAPAPA” wears with “Kappa” and any entity systematically or economically connected with opponent, the Board held.

 

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

Mattel failed in a trademark opposition to block “Salon BARBIES”

JPO dismissed an opposition by Mattel, Inc. – maker of the world-famous Barbie doll – who claimed “Salon BARBIES” is likely to cause confusion or association with famous Barbie doll when used on restaurant and fan club services. [Opposition case no. 2016-900395]

Opposed mark

Opposed mark, TM Registration no. 5881203, was filed on March 10, 2016 by designating various services in class 35 and 43 including restaurant, accommodation club services, business management analysis and others.

JPO granted to register opposed mark with no finding of refusal grounds and published for registration on October 11, 2016.

Opposition

On December 12, 2016, Mattel, Inc., an American multinational toy manufacturing company, opposed an application to register the mark Salon BARBIES (see above).

In the opposition, Mattel cited two senior trademark registrations.

  • TM Registration no. 5383631 for word mark “BARBIE” in standard character (classes 9, 14, 18, 24, 25, 28, 35)
  • TM Registration no. 589632 for the BARBIE logo (classes 9, 15, 20, 21, 25, 28)

Mattel argued that Opposed mark is subject to cancellation in violation of Article 4(1)(xv) of the Trademark Law on the grounds that its BARBIE mark had acquired such fame that, upon seeing the opposed mark used on restaurant and fan club service, the average consumer would be led to infer the existence of a connection to the owner of the famous brand.

Besides, Opposed mark is objectionable in violation of Article 4(1)(xix) as well since it would presumably aim to dilute or do harm to remarkable prestige bestowed to BARBIE mark.

Board decision

The Opposition Board admitted BARBIE mark has acquired a high degree of popularity and reputation as a source indicator of dolls among relevant traders and consumers at the time of both the application and the grant of registration of Opposed mark.
In the meantime, the Board denied similarity of both marks in visual, phonetical and conceptual points of view.
Based on dissimilarity of the marks, the Board concluded relevant traders and consumers are unlikely to confuse or associate the services using Opposed mark with opponent or any business entity economically or systematically connected with Mattel.
Therefore, Opposed mark shall not be cancelled due to Article 4(1)(xv) of the Trademark Law.

Article 4(1)(xix) is applicable only where both marks are identical or similar.
Besides, from the totality of the circumstances, the Board found no fact and evidence to show or infer that Opposed mark was filed with malicious or fraudulent intent on the part of registrant to hinder the business of opponent. Thus, Opposed mark shall remain valid in light of Article 4(1)(xix) as well.

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

ENRICO COVERI failed to remove “COVERI” from trademark registration

The Opposition Board of Japan Patent Office (JPO) held in an opposition filed by Enrico Coveri Società a Responsabilità Limitata (Opponent) that trademark registration no. 5874843 for a word mark “COVERI” (Opposed mark) shall remain as valid as ever and dismissed claims in the opposition entirely.
[Opposition case no. 2016-900368]

Opposed mark (see below) was applied for registration on November 27, 2015 by designating various kinds of goods in class 25 including apparels and shoes, and published for registration on September 20, 2016without any office action from the JPO examiner.

Opponent claimed that the opposed mark “COVERI” shall be cancelled on the basis of Article 4(1)(vii), (viii), (x), (xi), (xv) and (xix) of the Japan Trademark Law by citing senior trademark registrations for word mark “ENRICO COVERI”, a name of the late Italian fashion designer, in class 18, 24 and 25.

In the opposition decision, the Board concluded that “ENRICO COVERI” and “COVERI” are both dissimilar in appearance, pronunciation and concept.

Besides, the Board did not admit a high degree of popularity and recognition to “ENRICO COVERI” among relevant public in Japan because of insufficient evidence to demonstrate amount of sales, number of stores and expenditure for promotion and advertisement (Opponent has just produced some photographs or articles appeared in fashion magazines).

Based on the fact finding, the Board concluded that opposed mark was not filed in a malicious intent to do harm to the designer’s fame, and “COVERI” shall not be deemed as an abbreviation of “ENRICO COVERI”. Therefore, there finds less likelihood of confusion between “COVERI” and “ENRICO COVERI” even if both marks are used on apparels or shoes.

It is highly advisable to an owner of high-end or luxurious brand, consisting of two or more alphabetical words, to have each word registered as well for the purpose of preventing free-riding and enjoying a broader scope of protection against use by others.

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