“F1 HEATER” was cancelled due to a likelihood of confusion with “F1” when used on electric heaters

The Opposition Board of Japan Patent Office (JPO) decided to cancel a trademark registration for word mark “F1 HEATER” in favor of an opponent, Formula One Licensing BV.
[Opposition case no. 2016-900251]

F1 HEATER

Opposed mark “F1 HEATER” was filed on December 4, 2015 by designating electric heaters in class 11 and granted for registration on March 24, 2016.
Upon a payment of statutory registration fee, the opposed mark was published in gazette on June 14, 2016.

Opposition by Formula One

Formula One Licensing BV, managing the trade marks for the FIA Formula One World Championship, filed an opposition based on Article 4(1)(xv) of the Trademark Law by complaining that relevant public is likely to confuse or misconceive electric heaters using the opposed mark with goods derived from opponent group or any entity economically or systematically connected with opponent.

Likelihood of confusion

The Opposition Board admitted “F1” has become famous as an indicator of car races and automotive for race managed by the opponent among relevant consumers in Japan.
In the assessment of trademark similarity, the Board considered a word “HEATER” is less distinctive in relation to electric heaters. If so, consumers and traders are likely to conceive that the opposed mark contains the term “F1” from appearance and confuse a source of electric heaters with FIA, opponent or any entity economically or systematically connected with opponent. Accordingly, the opposed mark should be cancelled in violation of Article 4(1)(xv) retroactively.

Opposed mark owner voluntarily waived trademark registration during the opposition trial prior to a decision.

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

 

 

JPO concluded a famous smart phone cover glass brand “Gorilla Glass” is unlikely to cause confusion with “2.5D Gorilla Glass 3” when used on bracelets, personal ornaments, and jewelery

In a trademark opposition between Corning Inc. (USA) and LG Electronics Inc. (KOREA), the Opposition Board of Japan Patent Office (JPO) dismissed the opposition against trademark registration no. 5862676 for word mark “2.5D Gorilla Glass 3”.

“Gorilla Glass” vs “2.5D Gorilla Glass 3”

Corning Inc. opposed to register the word mark “2.5D Gorilla Glass 3” designating goods of bracelets, personal ornaments, and jewellery in class 14 based on Article 4(1)(xv) of the Trademark Law by asserting a likelihood of confusion with his famous smart phone cover glass brand “Gorilla Glass”.

Famous smartphone cover glass

The Opposition Board admitted a certain level of awareness of trademark “Gorilla Glass” in association with smart phone cover glass and scratch-resistant and durable glass for electronics devices. In the meantime, the Board denied famousness of the trademark among relevant consumers and traders to deal with bracelets, personal ornaments, and jewellery.

Assessment of trademark similarity

In the assessment of trademark similarity, the Board held that dominant portion of the opposed mark is considered “2.5D Gorilla Glass” by deleting “3” at the ending of the mark. If so, it is groundless to assess similarity of mark simply based on literal elements of “Gorilla Glass” from both marks.

Likelihood of confusion

As long as the cited mark “Gorilla Glass” has not become famous in association with bracelets, personal ornaments and jewellery, relevant consumers at first sight of the opposed mark are unlikely to confuse or misconceive a source of origin from Corning Inc. or any business entity economically or systematically connected with the opponent.
[Opposition case no. 2016-900303]

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

American heavy metal band, METALLICA failed in an opposition against trademark METALICA

In a recent Japan trademark opposition decision, the Opposition Board of JPO ruled that a word mark “METALICA” (Opposed mark) is unlikely to confuse with “METALLICA” well known for an American heavy metal band in connection with goods of class 9 and 14. [Opposition case no. 2016-900260]

Opposed mark

Opposed mark, solely consisting of a word “METALICA” written in a plain alphabetical letter, was filed on June 25, 2015 in the name of LG Electronics Incorporated, a Korean corporation, by designating various electronics, such as, smart phone, cell phones, personal digital appliance (PDA), audio stereo, music players of class 9 and watch, personal ornaments of class 14. JPO granted to register the mark on May 20, 2016 under TM registration no. 5851357.

 

Opposition

The Japan Trademark Law provides that anyone is entitled to file an opposition against new trademark registration within two months from the publication date of gazette under article of 43bis.

METALLICA filed an opposition against the mark “METALICA” by citing IR no. 858989 for a word mark of “METALLICA” covering goods of class 3, 6, 9, 14, 16, 25, and asserted to cancel Opposed mark based on article 4(1)(viii) and 4(1)(xv) of the Trademark Law.

 

Article 4(1)(viii)

Article 4(1)(viii) prohibits to register a mark containing the portrait of another person, or the name, famous pseudonym, professional name or pen name of another person, or famous abbreviation thereof (except those the registration of which has been approved by the person concerned). The article aims to protect personal right of living person or legal entity.

Opponent, METALLICA, a partnership corporation established by members of the band, alleged that Opposed mark “METALICA” can be conceived of the opponent or US famous heavy metal band due to identical appearance and pronunciation with “METALLICA”.

The Board dismissed the allegation of Article 4(1)(viii) by stating that “METALICA” does not contain “METALLICA” in a precise and strict sense.

 

Article 4(1)(xv)

Article 4(1)(xv) prohibits to register a mark which is likely to cause confusion in connection with the goods or services pertaining to a business of another person.

Opponent alleged relevant consumers are likely to confuse or misconceive goods with Opposed mark “METALICA” as goods from opponent in view of similarity of both marks and substantial reputation acquired among rock music fanatics.

The Board admits widespread reputation of “METALLICA” among traders and consumers relating to goods and service of rock music, such as music CD and music live performance. In the meantime, famousness of the mark “METALLICA” on any goods and service unrelated to music was denied.

In the assessment of similarity, the Board admitted both marks are deemed similar in appearance, sound, concept. However, the goods designated under Opposed mark are remotely associated with T-shirts, caps, posters, badges, music videos and goods or service related to American rock music of METALLICA’s interest.

Based on the forgoing, the Board concluded that “METALICA” is unlikely to confuse or misconceive with “METALLICA” in connection with goods of class 9 and 14.

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

TM Cancellation – Violation of public order based on high levels of consumer recognition in China

In an opposition claimed by Advanced Optronic Devices (ASIA) Co., Ltd, a Hong Kong corporation, JPO decided to cancel TM registration no. 5740919 designating LED lightning apparatus in class 11 (Opposed mark), registered on February 13, 2015, owned by a Chinese corporation resided in Qingdao City, Shandong Province due to violation of public order and standards of decency based on facts that Opposed mark is almost identical with Cited mark well-known for a source indicator of AOD group, inter alia, among relevant Chinese traders and consumers  of LED products, and it is likely that neighboring opposed owner has noticed Cited mark in advance.[Opposition Case no. 2015-900154, May 26, 2017]

Trademark Law prohibits to register a mark filed by unauthorized entity if Japanese consumers are acquainted with the mark becoming famous in foreign countries.  This case is noteworthy chiefly for cancelling a mark famous among Chinese consumers.

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

Famous sportswear brand “PUMA” unsuccessful in setting aside registration of “KUMA” mark

In a recent Japan trademark opposition decision, the Opposition Board ruled that famous PUMA logo for sportswear was dissimilar to the “KUMA” mark with bear design for goods in class 25, so as to cause confusion.

In the case, Opposition case no. 2016-900308, the Board was faced with considering whether the KUMA device mark of Applicant for “clothing; headgears; T-shirts; sportswear; sports shoes” in class 25 was confusingly similar to Opponent’s famous PUMA logo for “sportswear”.

In concluding that confusion was unlikely, the Board stated that two “key considerations” in making such a determination were famousness of Opponent’s mark and the similarity between the trademarks. With regard to the former factor, the Board admitted remarkable reputation and famousness of the PUMA logo among relevant public in Japan. The Board nonetheless reached its conclusion of dissimilarity – most likely on the fact that difference in the first letter generates distinctive impression in the mind of consumers since “KUMA” means bears (wild animals) in Japanese.

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

“MAMAS & PAPAS” failed in an opposition to invalidate trademark registration for the mark “PAPA’S&MAMA’S”.

The Opposition Board of Japan Patent Office issued a decision denying the opposition filed by MAMAS & PAPAS HOLDINGS LIMITED, a UK-based retailer and manufacturer supplying prams, pushchairs, baby products, furniture and maternity wear, and declared to sustain trademark registration no. 5853559 for the mark “PAPA’S&MAMA’S” in Class 18 and 44. [Opposition case no. 2016-900270]


Opposed mark

Opposed mark was filed by PAPA’S&MAMA’S Co. Ltd., designating goods of bags and pouches in class 18 and services of aesthetician services, beauty care and hairdressing in class 44 on March 15, 2016 and granted for protection on May 27 of the year.


 Opponent

MAMAS & PAPAS HOLDINGS LIMITED alleged to cancel the registration due to violation of Article 4(1)(xi) and 4(1)(xv) of the Japan Trademark Law in an opposition by citing his senior registered marks of “MAMAS & PAPAS”.


Opposition

The Opposition Board dismissed an opposition based on Article 4(1)(xi) by stating the ground as follows.

 Sound

Five sounds of opposed mark among 9 sounds in total are identical with opponent mark, however, overall pronunciations are clearly distinguishable due to reverse order of “PAPA” and “MAMA” so that both marks are deemed dissimilar in verbal point of view.

Meaning

Admittedly, both marks may give rise to a meaning of father and mother from word of “PAPA” and “MAMA” respectively. But difference coming from possessive form and plural form inevitably causes non-negligible gap in connotation as a whole.

Appearance

Likewise, both marks are deemed comparatively dissimilar in visual point of view by taking into consideration of reverse order of “PAPA” and “MAMA”, possessive form and plural form.

Conclusion

Taking account of fact that opponent mark has not acquired remarkable reputation as well, the Board decided to conclude both marks are unlikely to cause confusion in the mind of consumers and thus entirely dissimilar.


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

“WORLD SERIES OF FIGHTING” is less likely to cause confusion with “WORLD SERIES” owned by Major League Baseball Properties, Inc.

The Opposition Board of JPO (Japan Patent Office) dismissed an opposition claimed by Major League Baseball Properties, Inc., a US corporation managing trademark portfolio pertinent to US major league baseball, and determined to sustain trademark registration no. 5858151 for word mark “WORLD SERIES OF FIGHTING” [Opposition case no. 2016-900288].

WORLD SERIES OF FIGHTING

The mark in question consists of a standard character mark “WORLD SERIES OF FIGHTING” covering the goods of apparels, shoes, caps, underwear, uniforms and sportswear (class 25) and the service of entertainment or events relating to Mixed Martial Arts (class 41).

OPPOSITION by Major League Baseball Properties, Inc.

Major League Baseball Properties, Inc. filed an opposition based on the grounds that (i)WORLD SERIES OF FIGHTING” conflicts with senior trademark registrations for the mark “WORLD SERIES” owned by the opponent due to similarity between marks, (ii) there finds a likelihood of confusion with the source between marks because of high recognition of “WORLD SERIES” to indicate the annual championship of baseball games between the champions of the two major baseball leagues in the United States, the American League and the National League.

Similarity between marks

In evaluating the similarities between marks, the Board analyzed the similarity in the sight, sound and meaning of the marks.
The Board concluded “WORLD SERIES OF FIGHTING” is easily distinguishable from “WORLD SERIES” in appearance and pronunciation as a consequence of “FIGHTING” at the end of the mark in question. Besides, “WORLD SERIES OF FIGHTING” gives rise to meaning of a series of global events pertinent to martial art match. In the meantime, “WORLD SERIES” can be conceived to mean the championship games between major baseball leagues in the United States. Evidently, both marks are dissimilar from a conceptual point of view.
Accordingly, both marks are deemed dissimilar.

Likelihood of confusion

As long as both marks are distinctively dissimilar in the sight, sound and meaning as mentioned supra, relevant consumers at an ordinary care are unlikely to confuse or associate the source of the mark in question with the opponent when used on goods and services in dispute even if “WORLD SERIES” has become well-known for a source indicator of the opponent among consumers in Japan.

Accordingly, the Board concluded the opposition should be denied since it lacks grounds to be sustained.


I have no idea why the Board denied a likelihood of confusion between marks despite admitting a widespread reputation of “WORLD SERIES”.
As long as opposed mark contains a famous mark “WORLD SERIES” entirely, it should be cancelled on the goods of class 25 at least in view of similarity between goods in dispute.

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

 

“PIKA-Q” is unlikely to confuse with a well-known iconic mascot name, “PIKACHU”

PIKACHU

Opposition Board of the Japan Patent Office (JPO) decided to dismiss an opposition filed by Nintendo Co., Ltd. who claimed trademark registration no. 5845409 for the word mark “ピカキュウ” (to be pronounced as “PIKA-Q”) in a standard character designating goods of “lighting apparatus for automobiles; electric lamps” in class 11 and “retail or wholesale services dealing with the goods” in class 35 should be cancelled due to a likelihood of confusion with senior trademark registrations (Citation 1 and 2) pertinent to a well-known iconic mascot name “PIKACHU”, a fictitious monster appeared in Pokémon of opponent’s commercial interest [Case No. Opposition 2016-900226].

PIKACHU vs. PIKA-Q

JPO admitted “PIKACHU” has attained a certain level of recognition amongst consumers as Pokémon characters name in association with opponent’s game and toy businesses, however, concluded that opposed mark is distinguishable from and distinctively dissimilar to the citations on the following grounds.

– In appearance, the word “ピカキュウ” of opposed mark written in Katakana characters looks similar to “ピカチュウ” in the citations since visual difference in a middle letter of “キ” and “チ” is trivial in light of resembled configuration of respective letter consisting of two horizontal lines and a vertical line.

– But, “PIKA-Q” and “PIKACHU” are phonetically distinguishable as a whole since both terms are different in overall nuance and tone by taking into consideration of a non-negligible effect caused by difference in the third sound of “kyu” and “chu”, and a few phonetic composition of four sounds in total.

– Both marks are deemed incomparably dissimilar in concept on the condition that opposed mark does not give rise to any specific meaning, but the citations are perceived as PIKACHU in Pokémon.

Besides, the Board held that relevant consumers are not only unlikely to associate or misconceive opposed mark used on the goods/services supra with the citations but also connect or confuse a source of the goods/services with opponent or related entities with commercial or organizational interest should it remain unclear whether opponent does or will expand business in association with the goods/services of opposed mark. Finding that any goods licensed by opponent is remotely associated with the opposed goods/services and the citations representing Pokémon characters do not correspond to a so-called “house mark” in opponent business, JPO concluded as mentioned above.

“PIKA-Q” appears a trademark parody originated from well-known iconic mascot name, “PIKACHU”. It is presumed that actual use on LED lamp for automobiles implying a meaning of quality of the lamp (PIKA is an imitative word to describe sudden brightness of lamp in Japanese) may affect to the Board decision.

MASAKI MIKAMI, Attorney at IP Law (Japan)

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

Nintendo sues go-kart company over copyright infringement and disputes over “MariCar” trademark

 

Copyright infringement lawsuit

On February 24, 2017, Nintendo Co., the Kyoto-based video game giant filed a lawsuit with the Tokyo District Court against a Tokyo-based go-kart service operator, MariCar, for alleged copyright violations.

MariCar rents out go-karts that have been modified to run on public roads.

The go-kart service is exceedingly popular with foreign tourists, with many of the participants donning costumes that look similar to Nintendo game characters such as Super Mario.
http://maricar.com/


In the suit, Nintendo claims MariCar violated copyright by renting unauthorized costumes of Nintendo game characters such as Super Mario to its customers and using pictures of them to promote its business.

Nintendo is seeking ¥10 million in damages from the company and an end to the alleged copyright infringement.


Dispute over the MariCar trademark  

Nintendo also alleged in an opposition over the MariCar trademark registration No. 5860284 covering goods and services in class 12 ,35 and 39 that MariCar is an abbreviation of “Mario Kart,” one of its blockbuster game titles, however, the JPO rules against Nintendo to admit go-kart company keep MariCar trademark in a decision dated Jan. 26, 2017 [Opposition No. 2016-900309].

In the opposition, Nintendo claimed that MariCar was widely interpreted by the public as short for “Mario Kart,” citing other examples of popular video games that go by abbreviated nicknames in Japanese, such as “Pokemon” for “Pocket Monsters,” “Pazudora” for “Puzzle & Dragons” and “Sumabura” for “Super Smash Bros.”
Consequently, the Opposition Board of JPO denied it and held the trademark MariCar was neither widely used nor recognized by game users as an abbreviation of Nintendo’s blockbuster video game title “Mario Kart,” adding that it was “an unassociated trademark.”

 


 

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