JPO decision: TESLA is dissimilarly pronounced to Tesla

In a recent appeal decision over trademark dispute, the Appeal Board of Japan Patent Office (JPO) overturned the Examiner’s refusal and held the stylized TESLA mark is dissimilarly pronounced to a senior trademark registration for the “Tesla” word mark.

[Appeal case no. 2017-650037, Gazette issue date: February 22, 2019]

 

Stylized TESLA mark

U.S. electric automaker Tesla, Inc. (formerly Tesla Motors, Inc.) filed an application with the Japan Patent Office to register stylized TESLA mark as a trademark for “Articles of clothing, namely, t-shirts, shirts, jackets, hats; headgear, namely, sports hats, caps, sun visors.” in class 25 and “Providing financial services relating to automobiles, namely, automobile financing and lease-purchase financing; financing services for the purchase and leasing of motor vehicles; lease-purchase financing; credit services, namely, providing financing for motor vehicles; providing financial advice in the field of motor vehicles.” in class 36.

 

Senior TM registration for “Tesla”

Going through substantive examination by the JPO examiner, applied mark was completely refused registration based on Article 4(1)(xi) of the Trademark Law due to a conflict with a senior trademark registration no. 5533558 for word mark “Tesla” in standard character for clothing, caps and foot wears in class 25 owned by a Korean individual.

There is criterion that the examiner is checking when assessing the similarity between the marks:

  • visual similarity
  • aural similarity
  • conceptual similarity

and taking into account all these three aspects examiner makes a decision if a mark is similar (at least to some extent) with the earlier mark and if there is a likelihood of confusion for the consumers.

Applicant filed an appeal against the refusal on June 30, 2017 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:

From appearance, both marks are sufficiently distinguishable because the 2nd and last letter of applied mark are too indecipherable to be perceived as a specific term in its entirety.

As long as applied mark does not give rise to any specific sound and meaning as a whole, applied mark is incomparable with cited mark “Tesla” in the aspects of pronunciation and connotation.

Based on the foregoing and criterion to assess similarity of mark, the Board is of a view that the stylized TESLA mark shall be dissimilar to senior registration for the word mark “Tesla” even if the designated goods are deemed identical or similar in class 25.


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

IP High Court ruling: “BULK AAA” is confusingly similar to “BULK HOMME”

On March 7, 2019, the Japan IP High Court revoked a decision by the Japan Patent Office (JPO) to invalidation trial over a dispute of similarity between trademark “BULK AAA” and “BULK HOMME”, ruled “BULLK AAA” shall be retroactively invalid. [Judicial case no. Heise30(Gyo-ke)10141]

 

BULK HOMME

The case was brought into the IP High Court after the JPO decided to dismiss an invalidation trail (case no. 2017-890079) claimed by BULK HOMME Co., Ltd. (Plaintiff), an owner of senior trademark registration no. 5738351 for the mark combined “BULK HOMME” with other literal elements (see below) over goods of cosmetics and skin care products for men in class 3.

 

INVALIDATION TRIAL AGAINST “BULK AAA”

In the invalidation trial, plaintiff asserted trademark registration no. 5931607 for word mark “BULK AAA” in standard character shall be invalid in violation of Article 4(1)(xi) of the Trademark Law since the mark is confusingly similar to “BULK HOMME” and designates cosmetics (class 3) which is undoubtedly identical with or similar to the goods designated under its own senior registration.

Article 4(1)(xi) is a provision to prohibit from registering a junior mark which is deemed identical with, or similar to, any senior registered mark.

Inter alia, plaintiff strongly argued the term “AAA” in disputed mark lacks distinctiveness as a source indicator in relation to cosmetics since “AAA” is a term commonly known to represent the highest possible rating assigned to the bonds of an issuer by credit rating agencies. Given the circumstance, relevant consumes of cosmetics are likely to consider the term in disputed mark a qualitative indication of the goods even if the term has not been used as such indication in connection with cosmetics in fact.

However, the Trial Board of JPO set aside the allegation by stating that disputed mark “BULK AAA” shall be assessed in its entirety. It is groundless to compare a word portion “BULK” of disputed mark with “BULK HOMME” given the Board could not identify any facts to assume relevant consumers of cosmetics conceive the term “AAA” of disputed mark as a qualitative indication. Both marks are sufficiently distinguishable from visual, phonetic, and conceptual points of view and dissimilar as a whole.

To contend against the decision, plaintiff filed an appeal to the IP High Court.

 

IP HIGH COURT DECISION

The IP High Court, to the contrary, sided with plaintiff and completely negated fact-findings made by the Trial Board of JPO. The Court held the term “AAA” is recognized as a qualitative indication even when used on cosmetics and thus the word portion of “BULK” is likely to play a dominant role of source indicator. If so, it is never inappropriate to pick up the word “BULK” from disputed mark and compare it with other mark in the assessment of mark similarity.

Besides, “HOMME” is a French term meaning “for men”. From the produced evidences, it seems apparent the term has been used in relation to men’s cosmetics, and consumers are accustomed to it and recognize the meaning. Given the term is depicted in a thinner font than “BULK” in the citation, “BULK” gives dominant impression as a source indicator in the mind of consumers. Accordingly, it is reasonable to pick up the word “BULK” from the citation and compare it with other mark in the assessment of mark similarity.

The Court found that the Trial Board materially erred in the fact-finding and assessing similarity of mark. As long as dominant portion “BULK” of both marks and designated goods are identical, disputed mark shall be invalid based on Article 4(1)(xi).


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

Lee unsuccessful in removing Leeao from trademark registration

The Japan Patent Office dismissed a trademark opposition claimed by the second largest manufacturer of jeans in the United States, The H.D. Lee Company, Inc. (LEE) against trademark registration no. 5990967 for the Leeao logo mark in class 25 by finding less likelihood of confusion with “Lee” because of remarkable dissimilarity between the marks.
[Opposition case no. 2017-900381]

 

Leeao

Opposed mark “Leeao” (see below) was filed by a Japanese business entity on April 28, 2017 by designating clothing and clothes for sports in class 25.

Going through substantive examination, the JPO admitted registration on September 29, 2017 and published for registration on November 21, 2017.

LEE’s Opposition

To oppose against registration, LEE filed an opposition on December 20, 2017.
In the opposition brief, LEE asserted the opposed mark shall be cancelled in violation of Article 4(1)(xi) of the Japan Trademark Law given a high reputation and popularity of opponent mark “Lee” in the business field of jeans having longer history than LEVIS and similarity of opposed mark with its owned senior trademark registration no. 1059991 for the “Lee” logo mark (see below) over clothing in class 25 effective since 1974.

LEE argued opposed mark gives rise to a pronunciation of ‘liː’ from the first three letters, allegedly a prominent portion of opposed mark, since remaining elements are rarely perceived as letters of “ao” from its appearance.

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.

Where opposed mark is considered similar to opponent mark and designated goods of opposed mark is identical with or similar to that of opponent mark, opposed mark shall be retroactively cancelled in violation of Article 4(1)(xi). In this regard, since LEE’s senior registration covers clothing in class 25, similarity of goods is indisputable in the case.

 

Board Decision

The Opposition Board, based on the fact-finding that Lee jeans has been distributed in Japan for five decades and its frequent appearance in media, admitted a high degree of popularity and reputation of “LEE” logo as a source indicator of opponent jeans among general consumers.

In the meantime, the Board completely denied similarity between the marks on the grounds that:

  1. Opposed mark, from appearance, shall not be seen as a combination of “lee” and “ao” unless “ao” does clearly give rise to a descriptive meaning. If so, opposed mark shall constitute one word as a whole and be deemed sufficiently distinctive in concept as well.
  2. In the meantime, relevant consumers of goods in question shall conceive opponent mark as a source indicator of famous “Lee” jeans.
  3. If so, both marks are completely distinguishable from three aspects of appearance, sound, and concept.

Accordingly, JPO sided with opposed mark and decided it shall not be cancelled based on Article 4(1)(xi) in relation to opponent mark.


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

Is GRAND HOME dissimilar or similar to GRAN HOME?

In a recent appeal trial over trademark dispute, the Appeal Board of Japan Patent Office (JPO) overturned the Examiner’s determination and held that a word mark “GRAND HOME” is dissimilar to, and unlikely to cause confusion with a senior trademark registration for the “GRAN HOME” mark in connection with construction, reform or repair service for residential homes and buildings.

[Appeal case no. 2017-13251, Gazette issue date: November 30, 2018]

GRAND HOME

Kabushiki Kaisha GRAND HOME, a Japanese business entity filed a trademark application for a word mark “GRAND HOME” in standard character covering services of reform, repair, maintenance, cleaning and construction for residential homes and buildings in class 37 on May 17, 2016 [TM application no. 2016-53226].

Going through substantive examination by the JPO examiner, applied mark was completely refused registration based on Article 4(1)(xi) of the Trademark Law due to a conflict with senior trademark registration no. 5534717 for word mark “GRAN HOME” written in Japanese character(katakana) for the same services in class 37.

There are basic rules that the examiner is checking when evaluating the similarity between the marks:

  • visual similarity
  • aural similarity
  • conceptual similarity

and taking into account all these three aspects examiner makes a decision if a mark is similar (at least to some extent) with the earlier mark and if there is a likelihood of confusion for the consumers.

Applicant filed an appeal against the refusal on September 6, 2017 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:

  1. From appearance, both marks are distinguishable because of a difference in literal elements. Applied mark consists of alphabetical letters. Meanwhile, the earlier mark consists of Japanese character.
  2. Having compared the sound of applied mark “ɡrænd hoʊm” and earlier mark “ɡræn hoʊm”, there evidently exists a difference in the middle sound. The difference shall not be negligible from overall sound composition as long as the sound “D” in the middle of applied mark is pronounced in a clear and intelligible manner. If so, both marks are aurally distinctive.
  3. Applied mark gives rise to a meaning of ‘large house’. In the meantime, the earlier mark “GRAN HOME” does not give rise to any specific meaning. Hence, both marks are dissimilar from conceptual point of view.
  4. Based on the foregoing, it is unlikely that relevant consumers confuse or misconceive a source of “GRAND HOME” with the earlier mark “GRAN HOME”.

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

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

JPO decision over POWER TECH trademark

In an administrative appeal disputing trademark similarity between TM registration no. 4015750 for word mark “POWERTECH” and a junior application no. 2016-137853 for the “AC POWERTECH” device mark represented as below, the Appeal Board of the Japan Patent Office decided that both marks are deemed dissimilar and reversed examiner’s rejection.
[Appeal case no. 2018-6124, Gazette issued date: October 26, 2018]

 

TM Registration no. 4015750

The cited mark, consisting of a word “POWERTECH” colored in red (see below), was registered on June 20, 1997 by designating various vehicles in class 12.

Junior Application no. 2016-137853

Applied junior mark consists of the following “AC POWERTECH” device mark (see below).

It was applied for registration on December 7, 2016 by designating vehicles in class 12.

The JPO examiner refused the applied mark due to a conflict with senior TM registration no. 4015750 based on Article 4(1)(xi) of the 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.

 

Subsequently, the applicant filed an appeal against the rejection and disputed dissimilarity of both marks.

 

Board decision

In the decision, the Appeal Board held that:

Applied mark is a composite mark mainly consisting of two words of “AC” and “POWERTECH” written in two lines and a black hexagon.

Even if the term “AC” is likely to be used as an indication of type and mode of vehicles in commerce, from appearance of applied mark as a whole, the Board opines that relevant consumers would not conceive the term as indication of type or model. If so, it is questionable whether consumers ignore “AC” in the applied mark and pay considerable attention to the term “POWERTECH”. Thus, it is reasonable to conclude that applied mark shall give rise to a pronunciation nothing but “AC POWERTECH” and no specific meaning.

Based on the foregoing, in the assessment of trademark similarity, the Board decided that:

Obviously, both marks are distinguishable in appearance. Given applied mark does give rise to a pronunciation of “AC POWERTECH” and no meaning, the Board finds no ground to affirm examiner’s rejection from visual, phonetic, and conceptual point of view.


Astonishingly, JPO viewed the applied mark “AC POWERTECH” in its entirety irrespective of significant difference in font size between “AC” and “POWERTECH”.

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

“Teddy Bear” versus “Rose Teddy Bear”

The Appeal Board of Japan Patent Office (JPO) ruled that senior trademark registrations for the mark “Teddy Bear” in standard character over goods of trees, flowers, dried flowers, plants, seedlings, saplings in class 21 is unlikely to cause confusion with a junior mark “Rose Teddy Bear” in plain letters even if the mark is used on rose and rose bushes in class 21. [Appeal case no. 2017-18006, Gazette issue date: October 26, 2018]

Senior registrations for the “Teddy Bear” mark

“TEDDY BEAR”, a children’s toy, made from soft or furry material, which looks like a friendly bear, has its origin after Teddy, nickname for Theodore Roosevelt who was well known as a hunter of bears.

In Japan, name of the toy bear has been registered in the name of Nisshin OilliO Group. Ltd. on various goods in class 29, 30, 31 and 32 since 1986.

Junior application for “Rose Teddy Bear”

Junior mark for “Rose Teddy Bear” was applied for registration by a French company on August 10, 2016 over goods of rose, rose trees and other items relating to rose in class 31.

JPO examiner rejected junior mark due to a conflict with the “Teddy Bear” mark based on Article 4(1)(xi) of the Trademark Law on September 5. 2017.

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.

To seek for registration, applicant filed an appeal against the refusal on December 5, 2017.

Appeal Board decision

The Appeal Board set aside a refusal on the grounds that:

(1) From appearance and pronunciation, the term of “Rose Teddy Bear” shall be recognized as one mark in its entirety.
(2) Relevant consumers and traders are likely to conceive the term as a coined word since it does not give rise to any specific meaning as a whole.
(3) Therefore, the refusal based on the assumption that literal portions of “Teddy Bear” in junior mark plays a dominant role made a factual mistake and shall be cancelled consequently.

It seems that the Board decision is not consistent with the Trademark Examination Guidelines (TEG) criteria.

[Chapter III, Part 10 of TEG]
A composite trademark having characters representing an adjective (characters indicating the quality, raw materials, etc. of goods or characters indicating the quality of services, the location of its provision, quality, etc.) is judged as similar to a trademark without the adjective as a general rule.

In this respect, as long as the junior mark designates rose in class 21 and the term “Rose” in the mark further impresses the concept of rose in mind of consumers, the portion of “Rose” should be considered descriptive in relation to designated goods. Otherwise, any combined mark composed of registered mark and a generic term pertinent to the designated goods is deemed dissimilar to the registered mark.


I suppose the Board signaled a narrower scope of right where trademark has evidently its origin from other entity or meaning unrelated to senior registrant.

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

Trademark dispute for XXXX

In a recent trademark appeal trial to seek dismissal of examiner’s refusal, the Appeal Board of Japan Patent Office (JPO) set aside the refusal and allowed registration of TM Application no. 2017-21396 for the XXXX mark because of dissimilarity to a senior registration for “XXXX” mark.
[Appeal case no. 2018-5881, Gazette issue date: October 26, 2018]

 

Applied mark

The mark in dispute (see below left) was applied for registration in the name of Mitsukoshi Isetan, Japan’s largest department store group, on February 22, 2017 by designating goods of clothing; belts in class 25 and retail or wholesale services for clothing, bags and pouches, handkerchief and hair ornaments in class 35.

 

Cited TM registration for “XXXX”

The JPO examiner refused the applied mark due to a conflict with senior TM registration no. 4147840 for the mark “XXXX” (see above right) based on Article 4(1)(xi) of the 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.

Cited mark has been registered since 1998 over goods of clothing, garters, sock suspenders, suspenders [braces], waistbands, belts for clothing, footwear, clothes for sports, special footwear for sports in class 25.

Applicant filed an appeal against the decision on April 27, 2018 and disputed dissimilarity of the marks.

 

Appeal Board decision

The Appeal Board sided with the applicant and negated similarity of both marks by stating that:

Applied mark shall be seen to represent a certain geometric figure. It appears that cited mark represents four alphabetical letters of “X” in line. It means there finds distinguishable gap between geometric figure and alphabetical letters from appearance.
Applied mark does not give rise to any specific pronunciation. In the meantime, cited mark shall have pronunciations of “eks eks eks eks” and “four eks”. Likewise, both marks are sufficiently distinguishable in pronunciation.
Besides, as long as both marks do not give rise to any specific meaning, it is not feasible to compare them in concept.
In view of above aspects, it unlikely happens confusion between the marks and thus deemed dissimilar.

Based on the foregoing, the Board decided applied mark is not subject to Article 4(1)(xi), and admitted registration.


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