Trademark Dispute over Pendant Lamp Shade

In a decision to the invalidation trial claimed by LUIS POULSEN A/S, a Danish company, the Trial Board of Japan Patent Office (JPO) upheld the petition and invalidated TM registration no. 5643726 for a combination mark containing the pendant lamp shade design (see below) in violation of Article 4(1)(xix) of the Trademark Law.
[Invalidation case no. 2017-890003, Gazette issue date: September 28, 2018]

 

Disputed mark

Disputed mark, consisting of a literal element “R&M Interior Store”, “R&M” logo in the shape of shield and the pendant lamp shade design (see below), was filed on June 14, 2013 by a Japanese business entity, designating wholesale or retail services for lighting apparatus and others in class 35.

Going through substantive examination, the JPO admitted registration on January 17, 2014. Three years after the registration, LUIS POULSEN A/S filed an invalidation action against disputed mark on January 4, 2017.

 

Invalidation trial

During the invalidation trial, LUIS POULSEN A/S argued disputed mark shall be invalidation based on Article 4(1)(xix) since the applicant filed the mark, confusingly similar to trademark registration no. 5825191 for 3D mark in the shape of unique pendant lamp shade (see below) well-known for “PH5” created by a Danish designer Poul Henningsen, with a malicious intention to damage claimant.

According to supporting evidence produced to the trial, “PH5” lamp was originally designed in 1958. It has been promoted for sale in the marketplace of Japan since 1976. More than 500,000 lamps have been produced and sold around the globe. To bolster its reputation, LUIS POULSEN submitted a written declaration by Danish Ambassador to Japan. Besides, 3D shape of “PH5” lamp shade is successfully registered by finding acquired distinctiveness as a result of substantial use and uniqueness finally to serve as a source indicator (TM Registration no. 5825191).


Article 4(1)(xix)
 prohibits to register a trademark which is identical with, or similar to, other entity’s famous mark, if such trademark is aimed for unfair purposes, e.g. gaining unfair profits, or causing damage to the entity.

 

Board decision

The Board found that:

  1. 3D shape of “PH5” lamp has become famous as a source indicator of LUIS POULSEN among relevant domestic consumers well before the filing date of disputed mark as a result of continuous marketing activities in Japan since 1976.
  2. In the assessment of trademark similarity, it is unquestionable that the pendant lamp shade design depicted in disputed mark closely resembles “PH5”. From overall appearance, relevant consumers and traders will conceive the portion of the pendant lamp shade design plays a dominant role in disputed mark.
  3. The fact that applicant promoted similar lamp shade as “reproduct” or “generic product” of “PH5” convinces us that applicant has been aware of prospective controversy and causing damage to business interest of LUIS POULSEN.

Based on the above findings, the Board concluded that applicant filed a similar mark to “PH5” well-known for a pendant lamp shade of LUIS POULSEN with a malicious intention to gain unfair profits or cause damage to claimant. Thus, disputed mark shall be invalidated in violation of Article 4(1)(xix) of the Trademark Law.


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

Cancellation of Trademark Registration Filed with Malicious Intent

The Opposition Board of JPO declared cancellation of trademark registration No. 5778852 for the mark composed of a prancing horse design and term “Cavallino Lampanti” (Opposed mark) covering the goods in class 18 and 25 on the grounds that Opposed mark was registered with malicious intent to resemble a renowned horse emblem of opponent, Ferrari S.p.A., known for “cavallino rampante”, and free ride remarkable reputation bestowed on the opponent marks. [Opposition Case No. 2015-900335]

ferrari-opposition

In the opposition decision, the Board did not clearly admit similarity of the horse design depicted in both marks regardless of conceptual similarity, however, concluded the term “Cavallino Lampanti” of Opposed mark and a name “cavallino rampante” of Opponent mark are highly similar in both appearance and sound.

Besides, admittedly Opponent marks have been well known among general public in Italy even prior to an application date of Opposed mark. Opponent has promoted several goods belonging to class 18 and 25 e.g. bags, necktie, T-shirts, wallets, shoes to Japanese customers as well.

Based on the above facts, presumably an applicant of Opposed mark must have been acquainted with such circumstances and Opponent’s business. If so, it is not deniable to conclude that Opposed mark was filed with malicious intent to harm Opponent business and free ride valuable reputation bestowed on famous brand.

As a conclusion, the Board cancelled Opposed mark based on Article 4 (1) (xix) of the Trademark Law.

 

Article 4(1)(xix)

“No trademark shall be registered if the trademark is identical with, or similar to, a trademark which is well known among consumers in Japan or abroad as that indicating goods or services pertaining to a business of another person, if such trademark is used for unfair purposes (referring to the purpose of gaining unfair profits, the purpose of causing damage to the other person, or any other unfair purposes, the same shall apply hereinafter).”

 

Article 4(1)(xix) aims to prevent unauthorized entities from registering a well-known mark in foreign country even if the mark itself has not yet acquired high recognition in Japan to the extent relevant domestic consumers become aware of such situation in foreign country. The article plays a significant role in attacking a fraudulent trademark registration where it designates goods or services remotely associated with business of a famous brand owner.

1187hirai%e4%bf%ae%e6%ad%a3003_2Masaki MIKAMI – Attorney at IP Law (Japan)

MARKS IP LAW FIRM http://www.marks-iplaw.jp/