NIKE unsuccessful in registering JUST DO IT on cosmetics

In a recent decision, the Appeal Board of Japan Patent Office (JPO) dismissed an appeal filed by NIKE Innovate C.V., who attempted to register a word mark “JUST DO IT” in standard character on cosmetics and other goods classified in class 3 by means of “defensive mark” under Article 64 of the Japan Trademark Law.
[Appeal case No. 2015-23031, Gazette issued date: February 23, 2018]

 

DEFENSIVE MARK

According to Article 64, famous brand owner is entitled to register its brand as “defensive mark” with respect to dissimilar goods/services that are not designated under the basic registration, where the owner shall demonstrate that the mark has acquired remarkable prestige in relation to the goods/services on which the mark has been substantially used, and thus there will be likely to occur confusion with the owner if an identical or similar mark is used on dissimilar or remotely associated goods/services with basic registration.

 

JUST DO IT

NIKE Innovate C.V. owns trademark registration no. 4206837 for the word mark “JUST DO IT” on apparels, shoes and sportswear and other goods in class 25 since 1998.

NIKE sought to register the mark as defensive mark on cosmetics (class 3) on October 22, 2014 (Trademark application no. 2014-88774). Examiner refused the application by stating that it is unclear whether the mark has been used in connection with applicant’s goods of class 25. If so, the mark can be recognized merely as a commercial slogan to represent sports event. Consequently, examiner considers the mark has not become well-known mark as a source indicator of applicant.

To contest the refusal, NIKE filed an appeal on December 15, 2015.

 

BOARD DECISION

The Appeal Board likewise questioned whether “JUST DO IT” has been used as a source indicator of apparel, shoes, or sportswear.

Board admitted a certain degree of popularity and reputation on the term “JUST DO IT” as a corporate message from NIKE, however, upheld the refusal by stating that the produced advertisement and evidences regarding “JUST DO IT” are insufficient and vague to connect the term with goods designated under basic registration.


Apparently, the Board underestimated “JUST DO IT” on the grounds that NIKE failed to advertise the term in a manner closely connected with specific goods.

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

 

Defensive mark

Article 64 of the Japanese Trademark Law stipulates definition and requirements for defensive mark registration.

“Where a registered trademark pertaining to goods is well known among consumers as that indicating the designated goods in connection with the business of a holder of trademark right, the holder of trademark right may, where the use by another person of the registered trademark in connection with goods other than the designated goods pertaining to the registered trademark or goods similar thereto or in connection with services other than those similar to the designated goods is likely to cause confusion between the said other person’s goods or services and the designated goods pertaining to his/her own business, obtain a defensive mark registration for the mark identical with the registered trademark in connection with the goods or services for which the likelihood of confusion exists.”

A trademark may be registered as a defensive mark with respect to dissimilar goods/services that are not covered by the primary registration, where the owner of the trademark can demonstrate that the mark has acquired remarkable prestige in relation to the goods/services on which the mark has been substantially used, and thus there is a likelihood of confusion that consumers would conceive a connection between those dissimilar goods/services and the registered owner.

Obtaining a defensive mark registration is seemingly a desirable way to protect a well-known, registered mark from infringement. At the outset, the owner can prevent the registration from challenging a non-use cancellation. Besides, there are provisions in the Japanese Trademark Law that allow the owner of a defensive mark to take action against a third-party for infringement of the mark by its use on dissimilar goods/services that are covered by the defensive mark registration. In the meantime, the  provision does not specify that owner may take action against a non-identical or deceptively similar mark by a third-party. In this respect, many of famous-mark owners hesitate to apply for a defensive mark registration. Since standard trademark registration provides a broader protection to compel third-party to cease an unauthorized use of similar mark as well, they feel less incentive to register a defensive mark in light of costly proceeding and a large volume of evidence. It is true that the owner has registered the mark as standard trademark by designating goods/services unrelated to their ordinary business.

Nevertheless, a defensive mark remains effective for famous-mark owners. It is largely because defensive mark registration signifies the mark to be certified well-known by the Japan Patent Office (JPO). Japanese well-known trademarks are posted for public review on the JPO website.

https://www2.j-platpat.inpit.go.jp/chomei/list_e.cgi?LIST_TYPE=ALL&ZUKEI=&HIT=0&ID=0&START=1&SIZE=50&STIME=147145037593765056623354

A defensive mark also serves to act as a blocking mechanism against junior applications that seek to take advantage of the reputation associated with the well-known mark.