GEOGRAPHICAL INDICATION BOURBON LOSES TRADEMARK OPPOSITION

In a recent decision, the Japan Patent Office (JPO) has dismissed the opposition filed by Distilled Spirits Council of the United States (DISCUS), a US non-profit organization which represents the interests of producers and traders of spirit drinks, including Bourbon whiskey, against trademark registration no. 5927252 for the word mark “ROYCE’ BOURBON” for bourbon whiskey in class 33.

[Opposition case no. 2017-900181, Gazette issued on March 29, 2019]

ROYCE’ BOURBON

Opposed mark (see below) is a combination of “ROYCE” with apostrophe and “BOURBON” written in a plain roman type.

ROYCE’ BOURBON was filed in January 25, 2016 by a Japanese confectionery company, ROYCE’ Confect Co., Ltd., headquartered in Hokkaido, for bourbon whiskey in class 33.

JPO, going through substantive examination, admitted registration and published for opposition on April 4, 2017.

TRADEMARK OPPOSITION

On June 2, 2019, before the lapse of a two-months opposition period, DISCUS filed an opposition, arguing that the word ‘BOURBON’ in the mark applied for would allow consumers to establish a link between the geographical indication Bourbon and “bourbon whiskey”. Therefore, the use and registration of the mark by unrelated entity to Bourbon County, Kentucky (USA) would dilute and exploit the reputation of the geographical indication [Bourbon]. Opposed mark shall be prohibited from registration based on Article 4(1)(vii) of the Trademark Law as well as Article 4(1)(xvi) since the mark is likely to offend public order and cause misconception in quality.

BOARD DECISION

The Board admitted Bourbon is an indication of origin/geographical indication from the United States to represent an American Whiskey produced mainly in the southern part of Kentucky State. However, the Board considered opposed mark shall neither offend public order nor cause misconception in quality, stating that:

To the extent opposed mark just covers “bourbon whiskey”, appropriate use of the mark would not disorder fair deal and international trade practice. If so, the Board finds no clue to conclude the applicant adopted the mark with intentions to free ride the reputation of the geographical indication [Bourbon].

Likewise, as long as the Bourbon denomination may be used only for products manufactured in Kentucky by regulations, the designated goods “bourbon whisky” is unquestionably from the US. If so, opposed mark ROYCE’ BOURBON would not cause qualitative misconception in the minds of relevant consumers in relation to “bourbon whiskey” at all.

Based on the foregoing, the Board decided opposed mark shall not be objectionable under Article 4(1)(vii) and (xvi), and granted registration a status quo.

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

PUMA Triumphs in Trademark Battle over Iconic Jumping Cat Logo

After eight years of prolonged dispute, PUMA SE could achieve a victory over trademark battle involving famous its iconic jumping cat logo. The Japan IP High Court has overturned decisions by the Japan Patent Office (JPO) which said that a trademark application for a jumping cat-like creature was unlikely to cause confusion with an iconic jumping cat logo owned by sportswear brand Puma.

[Judgment of 26 March 2019 in Case H29(Gyo-ke)10206 and 10207]

PUMA Jumping Cat Logo

PUMA SE (former “Puma AG Rudolf Dassler Sports”), branded as PUMA, is a Germany-based multinational outfit that is famous for manufacturing one of the most sophisticated sportswear and athletic shoes in the world.

Its iconic jumping cat logo (see below), designed in 1967, has been undoubtedly one of the most famous brand logos in the world.

Single cat device

A Japanese individual filed a trademark for the single cat device (see below) on April 12, 2008 by designating T-shirts and caps in class 25. JPO registered the marks on February 25, 2011.

[TM Registration no. 5392943]

[TM Registration no. 5392944]

Opposition / Invalidation Trial

On May 27, 2011, PUMA SE filed an opposition against the mark based on Article 4(1)(xv) of the Trademark Law and asserted relevant consumers or traders are likely to confuse or misconceive a source of the single cat device mark with PUMA or a business entity systematically or economically connected with PUMA when used on designated goods in class 25 because of a high reputation and close resemblance between PUMA jumping cat logo and single cat device.

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.

The Opposition Board admitted a high degree of popularity and reputation of the jumping cat logo in relation to sportswear as well as apparel, including T-shirts and caps, as a source indicator of PUMA SE, however, the Board dismissed the opposition due to the dissimilarity of both marks (Opposition case nos. 2011-900191 and -900192).

Subsequently, PUMA SE requested for an invalidation trial and sought to annul the mark based on Article 4(1)(xii) and (xv) of the Trademark Law on February 25, 2016, the final deadline of five years from registration. However, the Invalidation Trial Board totally dismissed PUMA’s allegations on the same grounds (Trial case nos. 2016-890014 and -890015).

To challenge the validity of the administrative decisions, PUMA appealed to the IP High Court.

IP High Court ruling

After eight years of prolonged dispute, the IP High Court set aside the administrative decisions and ruled in favor of PUMA.

In the ruling, the Court pointed out a fact that designated goods, T-shirts and caps in question have a close association with sportswear and apparel of PUMA’s great interest in the aspect of usage, purpose and consumers/traders. Both goods are purchased by general consumers. Besides, the Court confirmed PUMA jumping cat logo has unquestionably acquired a high degree of popularity and reputation among relevant consumers and traders with an ordinary care even before a filing date of disputed mark. It is true that there exists visual difference between PUMA jumping cat logo and disputed marks, however, admittedly overall impression of both marks is too similar in appearance. Disputed marks do not give rise to any specific meaning and pronunciation. In the meantime, the cited mark gives rise to a meaning and pronunciation of famous sports brand “PUMA”. If so, the Court assumes the difference in sound and concept shall be less obvious on the case.
By taking above facts into considerations, the Court affirmed relevant consumers of T-shirts and caps (class 25) are likely to associate the goods with PUMA and thus confuse its source with PUMA or a business entity systematically or economically connected with PUMA SE.

Based on the foregoing, the Court annulled the Board decisions and ruled to invalidate disputed marks based on Article 4(1)(xv).

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

Is Marie-Antoinette a name of French Queen consort or a trademark?

The Japan Patent Office (JPO) ordered to dismiss an invalidation trial against IR no. 1238820 for word mark “Marie-Antoinette” by finding the mark shall be irrevocable under Article 4(1)(vii) of the Trademark Law. [case no. 2017-68002]

Tempting Brands Netherlands B.V. (NL), filed an international registration for the mark over goods of “Bleaching preparations [deodorants] for cosmetic purposes; perfumery, essential oils, cosmetics, hair lotions; dentifrices; cosmetic soaps, soaps for personal use; douching preparations for personal sanitary or deodorant purposes [toiletries]” in class 3 and others in class 9, 18 and 25 on Dec. 5, 2014 claiming priority based on Benelux TM application dated Aug. 22, 2014, and designating Japan which granted registration of the mark on Feb. 10, 2017.

To challenge, an invalidation trail was filed against the mark. Claimant, a Japanese business entity asserted the mark shall be invalidated in violation of Article 4(1)(vii) of the Trademark Law on the grounds that the mark “Marie-Antoinette” written in a plain letter represents the late ill-fated queen consort of King Louis XVI of France who has been highly well-known as a symbolic queen of beauty among relevant public not only in France but also Japan and other countries. If so, it is extremely harmful to prestige of “Marie Antoinette” and social affections on the historical figure to admit an exclusive right on the name to any unrelated entity. It may inevitably offend public order and morals

Article 4(1)(vii) of the Trademark Law prohibits any mark likely to cause damage to public order or morality from registration. Trademark Examination Guidelines provides “Name of a well-known or famous historical personage likely to free-ride on public measures derivative from the personage and damage the public interests in face” as an example to apply the article.

The Invalidation Trial Board decided the mark shall not be subject to the article due to the following reason.

It is unquestionable that “Marie-Antoinette” represents a name of queen consort of King Louis XVI of France and becomes famous in France as well as Japan. In the meantime, the Board could not see a fact that the name has been made use of for revitalization of local communities or tourism industry. If so, it is quite unlikely to happen that the mark could offend public order and morals when used on goods of class 3. Besides, the Board has no reason to believe registration of the mark would cause disrespect for France and French people as well as international fidelity. Besides, there finds no circumstances to conclude the mark is proscribed to use by other legislation and applicant apparently filed the mark with a malice or fraudulent intent to be blamed. Based on the foregoing, the international registration shall be deemed valid since the Board was unable to find out any relevant facts to apply the article on the case.

It is not freely allowed to use and register a name of historical personage as trademark. JPO rejected “Darwin” and “Monet” based on Article 4(1)(vii), but allowed registration of “Elvis”.

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

Adidas Fails in Trademark Battle over Adidas Trefoil Logo

The Opposition Board of Japan Patent Office (JPO) held in an opposition filed by Adidas AG (Opponent) that trademark registration no. 5897540 for the XIAT device mark (Opposed mark) shall remain as valid as ever and entirely dismissed Adidas’ claims in the opposition based on Adidas Trefoil logo.
[Opposition case no. 2017-900038, Gazette issued on March 30, 2018]

Opposed mark

Opposed mark (see below) was applied for registration on June 10, 2016 by designating apparels and shoes of class 25 in the name of a Chinese business entity and published for registration on November 18, 2016 without confronting with office action from the JPO examiner.

Adidas Trefoil logo

Adidas AG, opponent, filed an opposition on February 9, 2017 and claimed that opposed mark shall be cancelled in violation of Article 4(1)(vii) and 4(1)(xv) of the Japan Trademark Law due to a conflict with Adidas Trefoil logo (see below).

Article 4(1)(vii)

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

Trademark Examination Guidelines set forth examples to apply the article, e.g. trademarks generally considered contrary to the international faith, trademarks whose registration is utterly unacceptable for lack of social reasonableness in the background to the filing of an application for trademark registration.

Given a high degree of reputation and popularity of Adidas Trefoil logo, Adidas asserted, applicant must have been aware of the trefoil logo and filed opposed mark with a malicious intention to impermissibly cause the disorder in domestic and foreign trade

Article 4(1)(xv)

Article 4(1)(xv) prohibits to register a trademark which is likely to cause confusion with a business of other entity.

Adidas argued that the figurative element of opposed mark evidently gives rise to a same impression with the Trefoil logo in view of basic configurations consisting of two or three laurel leaves intersected by two or three stripes in parallel.

Besides, applicant has filed more than 253 trademark applications during the past 18 months. Some of them were refused by the JPO due to a conflict with famous mark.
Below mark is also subject to opposition contested by Adidas AG.

By taking into account famousness of the Trefoil logo, visual resemblance between the marks, and free-riding on opponent reputation and goodwill, relevant consumers are likely to cause confusion with Adidas at the sight of apparels or shoes using opposed mark.

Opposition Board decision

The Opposition Board admitted a high degree of reputation and popularity to the iconic Adidas Trefoil logo in relation to sport shoes, sportswear, sports gear at the time of initial filing and registration of opposed mark.

In the meantime, the Board negated similarity and likelihood of confusion between the marks, stating that opposed mark never gives rise to a meaning and pronunciation of trefoil. From visual point of view, it is sufficiently distinguishable from the Trefoil logo. Fact that opposed mark happens to closely resemble a portion of the Trefoil logo is of little significance since Adidas Trefoil logo has acquired remarkable reputation in its entirety. If so, the Board feels it is unlikely that relevant consumers can perceive opposed mark as a cutout from the Trefoil logo.

Besides, even if it becomes suspicious whether applicant has a bona fide intention to use opposed mark, it is not objectionable under Article 4(1)(xv) since the Board finds both marks are dissimilar to the extent that there exists less likelihood of confusion.

Due to less likelihood of confusion between the marks, the Board is unable to foresee a circumstance to offend public order and morals from registering opposed mark and give harmful effect to the international faith.

Based on the foregoing, the Board concluded opposed mark shall not subject to Article 4(1)(vii) as well as (xv) and granted registration a status quo.

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

JPO decided to invalidate the word mark “Bord’or” in relation to wines

In a decision to the invalidation trial jointly claimed by INSTITUT NATIONAL DE L’ORIGINE ET DE LA QUALITE and CONSEIL INTERPROFESSIONNEL DU VIN DE BORDEAUX, the Invalidation Board of Japan Patent Office (JPO) ordered to invalidate TM registration no. 5737079 for a word mark “Bord’or” in script fonts (see below) in violation of Article 4(1)(vii) of the Trademark Law.
[Invalidation case no. 2016-890075]

TM Registration no. 5737079

Mark in dispute (see above), owned by a Japanese legal entity, was filed on October 9, 2014 by designating various types of alcoholic beverages including wines in class 33. After an initial application, applicant requested the JPO to expedite substantive examination. In accordance with the request, JPO examiner put a priority on the mark and admitted to grant registration in three months subsequent to substantive examination.

Accelerated Examination

JPO applies the accelerated examination system to trademark application on the condition that the application meets the following condition.

Applicant/licensee uses or will use applied mark on one of designated goods/services at least, and there exists an urgency to registration, e.g. unauthorized use by third parties, basic application to international registration,
All designated goods/services are actually or shortly used by applicant/licensee, or
Applicant/licensee uses or will use applied mark on one of designated goods/services at least, and all the goods/services are designated in accordance with a standard description based on Examination Guidelines for Similar Goods and Services.

Accelerated examination system enables applicant to obtain examination results in less than two months on average, which is four months shorter than regular examination.

Claimants’ allegation

Claimants argued disputed mark gives rise to the same pronunciation with BORDEAUX, “ bɔːˈdəʊ”. If so, relevant consumers shall conceive BORDEAUX, a world-famous geographical name known for an origin of French wine. Besides, according to the document produced by applicant to demonstrate actual use of disputed mark on designated goods in requesting accelerated examination, it evidently reveals intention to free-ride or dilute fame of prestigious wine.
Thus, if disputed mark is used on wines originated from areas other than BORDEAUX, it severely does harm to fame and aura of prestigious wine constituted under the strict control of domicile of origin. Then, inevitably it causes disorder to a world of global commerce in a manner inconsistent with international fidelity.

To bolster the allegation, claimants cited precedent trademark decisions involving famous French wine, e.g. ROMANEE-CONTI, BEAUJOLAIS NOUVEAU, CHABLIS. Inter alia, IP High Court ruled a word mark “CHAMPAGNE TOWER” invalid in relation to “CHAMPAGNE” based on Article 4(1)(vii).

Article 4(1)(vii) of the Japan Trademark Law

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

Trademark Examination Guidelines sets forth criteria for the article and samples.

Trademarks that are “likely to cause damage to public order or morality” are, for example, the trademarks that fall under the cases prescribed in (1) to (5) below.

(1) Trademarks which are, in composition per se, characters or figures, signs, three-dimensional shapes or colors or any combination thereof, or sounds that are unethical, obscene, discriminative, outrageous, or unpleasant to people. It is judged whether characters, figures, signs, three-dimensional shapes or colors or any combination thereof, or sounds are unethical, discriminative or unpleasant to people, with consideration given to their historical backgrounds, social impacts, etc. from a comprehensive viewpoint.

(2) Trademarks which do not have the composition per se as prescribed in (1) above but are liable to conflict with the public interests of the society or contravene the generally-accepted sense of morality if used for the designated goods or designated services.

(3) Trademarks with their use prohibited by other laws.

(4) Trademarks liable to dishonor a specific country or its people or trademarks generally considered contrary to the international faith.

(5) Trademarks whose registration is contrary to the order predetermined under the Trademark Act and is utterly unacceptable for lack of social reasonableness in the background to the filing of an application for trademark registration.

Examples that fall under this item

(i) Trademarks that contain characters such as “university” and are likely to be mistaken for the name of universities, etc. under the School Education Act.

(ii) Trademarks that contain characters such as “士（shi）” which are likely to mislead that they represent national qualifications.

(iii) Trademarks of the name of a well-known or famous historical personage which are determined to have the risk of taking a free ride on public measures related to that personage and damage the public interests by inhibiting the performance of such measures.

(iv) Trademarks with figures indicated in a manner that may impair the dignity and honor of national flags (including foreign national flags)

(v) A sound mark related to the services of “medical treatment” which causes people to recognize siren sounds generated by ambulances that are well known in Japan.

(vi) A sound mark which causes people to recognize national anthems of Japan and other countries.

Board decision

Board found in favor of claimants that “BORDEAUX” has acquired a high degree of popularity and reputation among Japanese consumers as a source indicator of wines originated from the Bordeaux district. As long as disputed mark gives rise to the same pronunciation with BORDEAUX, it is undeniable that consumers are likely to connect the disputed mark with BORDEAUX wine or its district. If so, disputed mark free-rides or dilutes lure and image of BORDEAUX wine, and adversely affects domicile of origin strictly controlled by French government.
Consequently, Board decided to invalidate Bord’or in violation to Article 4(1)(vii).

Protection of geographical indication

The Japan Trademark Law contains provisions to protect geographical indication.
In principle, a mark merely consisting of geographical name or location is deemed descriptive and falls under Article 3(1)(iii). Even if a mark is combined geographical indication with other distinctive elements, it is subject to Article 4(1)(xvi) since the mark may mislead the quality when used on goods from other areas.
Regarding a mark indicating a place of origin off wine, Article 4(1)(xvii) plays a significant role.

Article 4(1)(xvii)

No trademark shall be registered if the trademark is comprised of a mark indicating a place of origin of wines or spirits of Japan which has been designated by the Commissioner of the Patent Office, or a mark indicating a place of origin of wines or spirits of a member of the World Trade Organization which is prohibited by the said member from being used on wines or spirits not originating from the region of the said member, if such a trademark is used in connection with wines or spirits not originating from the region in Japan or of the said member.

Geographical indications to be protected under the article can be reviewed by accessing http://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/pdf/appendix2.pdf

In this regard, it should be noted that Article 4(1)(xvii) is applicable to any mark containing a term to represent protected GI in itself. In other words, Article 4(1)(xvii) can’t block “Bord’or” since disputed mark does not contain “BORDEAUX” or its transliteration.

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.