Apple Inc. Defeated in Trademark case over the name ‘MAC’ in Japan

The Opposition Board of Japan Patent Office (JPO) dismissed an opposition filed by the U.S. tech giant, Apple Inc. against trademark registration no. 5986073 for a word mark “Face2Mac” due to unlikelihood of confusion with Apple’s famous trademark “Mac”.
[Opposition case no. 2018-900002, Gazette issued date: May 31, 2019]

Opposed mark

Opposed mark, consisting of a word mark “Face2MAC” in standard character, was filed in the name of Allied Telesis Holdings K.K., a Japanese company deploying in business field of network devices and cyber securities.

The mark was filed to JPO on January 31, 2017 and admitted registration on October 6, 2017 over the goods of “computer software; telecommunication machines and apparatus; electronic machines and apparatus; network cameras” in class 9, and other services in class 37, 42 and 45.

Opposition by Apple Inc.

During a two-months opposition period after registration, Apple Inc. filed an opposition.

Apple argued that opposed mark “Face2Mac” shall be retroactively cancelled in violation of Article 4(1)(xv) of the Trademark Law since opposed mark contains (i) a famous trademark “Mac” of Apple Inc. and (ii) a term “Face” which reminds consumers of Apple’s well-known mark “FaceID” and “FACETIME”. If so, relevant consumers and traders are likely to confuse or misconceive opposed mark with Apple or any business entity systematically or economically connected with opponent.

Article 4(1)(xv)

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 Opposition Board did not question a remarkable degree of popularity and reputation of trademark “Mac” as an abbreviated source indicator of opponent’s personal computers ‘Macintosh’.

In the meantime, the Board considered both marks distinctively give rise to a different impression in the minds of relevant consumers from visual, phonetical and conceptual points of view. Besides, the Board emphasized the term “MAC” is commonly used as an abbreviation to indicate ‘Media Access Control’ in business field of computers and telecommunications. According to produced evidences by opponent, Apple Inc. has continuously used the mark “Mac” with a big ‘M’ and small letters ‘ac’, but not in a configuration of “MAC” at all. Therefore, it is rather presumed that relevant consumers at the sight of opposed mark shall conceive of media access control from “Face2MAC”, than Apple’s famous trademark.

Based on the foregoing, the Board concluded that relevant consumers of goods in question are unlikely to confuse opposed mark with Apple Inc. or any business entity systematically or economically connected with opponent.

Thus, opposed mark is not subject to Article 4(1)(x), and valid as a status quo.


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

Trademark dispute over Shogun Emblem of the Samurai Era

In a recent appeal trial over trademark dispute, the Trademark Appeal Board within the Japan Patent Office (JPO) overturned the Examiner’s determination and held that a combination mark with Tokugawa crest image and literal elements written in Chinese characters is dissimilar to, and unlikely to cause confusion with a senior trademark registration for the “TOKUGAWA CREST” device mark in connection with pickled plums of class 29.
[Appeal case no. 2018-6893, Gazette issue date: March 29, 2019]

 

TOKUGAWA CREST

The Tokugawa clan was the family that established the Edo shogunate, also known as the Tokugawa shogunate, (1603–1867), the final period of traditional Japan, a time of internal peace, political stability, and economic growth under the shogunate (military dictatorship) founded by Tokugawa Ieyasu. The Tokugawa shogunate continued to rule Japan for a remarkable 250 years and ended in 1868, with the Meiji Restoration when the Emperor regained power.

The Tokugawa crest was a circle in closing three leaves of the awoi (a species of mallow, found in Central Japan) joined at the tips, the stalks touching the circle (see below).

This gilded trefoil is gleaming on the property of the shogun and mausoleum even now in Japan.

 

YUME-AWOI

Kabushiki Kaisha Kiwa-Nouen Products, a Japanese merchant dealing with plums and its products filed a trademark application for a combination mark with Tokugawa crest image and literal elements written in Chinese characters (see below) covering pickled plums in class 29 on June 21, 2016 [TM application no. 2016-72127].

Three Chinese characters “紀州梅” in the upper right of the mark lacks distinctive since the term means plums made in Kishu, the name of a province in feudal Japan (the area corresponds to nowadays Wakayama Prefecture and southern Mie Prefecture), as a whole. Two characters “夢葵” in the center of the mark to be pronounces as “yume-awoi” is obviously a coined word and distinctive in relation to pickled plums.

The mark is actually in use on high-class pickled plums produced by applicant.

Tokugawa Museum

Going through substantive examination by the JPO examiner, applied mark was totally refused registration based on Article 4(1)(vi), (vii), (xv) of the Trademark Law on the ground that the mark contains a device resembling the Tokugawa crest which becomes famous as a source indicator of ‘Public Interest Incorporated Foundation The Tokugawa Museum’.
If so, using the mark on the designated goods by an unauthorized entity may free-ride goodwill vested in the Tokugawa crest and anything but conductive to the public interest. Besides, relevant consumers are likely to confuse or misconceive pickled plums using applied mark with goods from The Tokugawa Museum or any business entity systematically or economically connected with the museum.

Article 4(1)(vi) is a provision to refuse any mark which is identical with, or similar to, a famous mark indicating the State, a local government, an agency thereof, a non-profit organization undertaking a business for public interest, or a non-profit enterprise undertaking a business for public interest.

Article 4(1)(vii) of the Trademark Law prohibits any mark likely to cause damage to public order or morality from registration.

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.

 

Applicant filed an appeal against the refusal on May 21, 2018 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:

It becomes trade practice to print family crest on the packaging of food products. Especially, trefoil awoi crest has been commonly used on the packaging of specialty products or souvenir from Aichi (Owari), Wakayama (Kishu) and Ibaragi (Mito) Prefectures where descendants from clan founder Tokugawa Ieyasu’s three youngest sons governed during the Edo shogunate. Besides, from appearance, Tokugawa crest image in applied mark looks like a background pattern and thus relevant consumers are unlikely to aware that the pattern serves the legally defined role of a trademark because the image is colored washier than literal elements. If so, two Chinese characters “夢葵” of the mark functions primarily as a source indicator.

Based on the foregoing, the Board considered, given the Tokugawa crest image in the applied mark does not play a role of source indicator at all, both marks are dissimilar and unlikely to cause confusion from visual, phonetic and conceptual points of view even if the Tokugawa crest becomes famous as a source indicator of Public Interest Incorporated Foundation The Tokugawa Museum in fact. Likewise, the Board found no specific reason to cause damage to public order or morality from applied mark.


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

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

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

HISAMITSU unsuccessful in registering a shape of “Salonpas”

The Appeal Board of Japan Patent Office (JPO) disallowed registration of a shape of famous Japanese pain relief patches in the name of “Salonpas” manufactured by Hisamitsu Pharmaceutical Co., Inc. due to lack of inherent distinctiveness in relation to poultices, class 10. [Appeal case no. 2017-12694]

Salonpas

Hisamitsu Pharmaceutical Co., Inc. filed a trademark application for a shape of Over-The-Counter Topical Pain Patch known for “Salonpas” (see below) by designating pharmaceutical preparations, gauze for dressings, bandages for dressings, adhesive plasters and other goods in class 5 [TM application no. 2015-7479].

Salonpas is a product of Hisamitsu Pharmaceutical, a company whose history dates back to the mid-1800s. Salonpas was introduced in 1934 and was first distributed in Asia. The FDA approved the Salonpas Pain Relief Patch for the US market in 2008. Approximately 20 billion Salonpas transdermal patches have been sold in the last 20 years. Salonpas has been acknowledged as World’s No.1 OTC Topical Analgesics in patch format.

 

JPO Examination

The JPO examiner totally refused the application based on Article 3(1)(iii) of the Japan Trademark Law stating that the applied mark can be easily seen as a shape of poultices and the shape does solely consist of a common configuration to achieve the basic function of poultices. If so, the applied mark lacks distinctiveness as a source indicator.

Article 3(1)(iii) is a provision to prohibit any mark from registering where the mark solely consists of elements just to indicate, in a common manner, the place of origin, place of sale, quality, raw materials, efficacy, intended purpose, quantity, shape (including shape of packages), price, the method or time of production or use.

 

To dispute the refusal, Hisamitsu filed an appeal on August 28, 2017.

 

Appeal Board’s decision

The Appeal Board, however, upheld the examiner’s decision on the ground and dismissed Hisamitsu’s allegation by stating that relevant consumers and traders shall conceive of a mere qualitative representation to indicate the shape of poultices and plasters at the sight of applied mark given similar indications are depicted on the packages of other supplier’s goods on the market (see below).

 

Based on the foregoing, the Board consequently refused to register the mark based on Article 3(1)(iii) of the Trademark Law.


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

JPO denied registering GRAND CANYON as trademark

In a recent appeal decision, the Japan Patent Office (JPO) upheld examiner’s refusal and decided to reject trademark “GRAND CANYON” in connection with clothing and shoes of class 25 due to lack of distinctiveness. [Appeal case no. 2017-16166]

 

GRAND CANYON

UNITIKA LTD., a Japanese textile company, applied for registration of word mark “GRAND CANYON” in relation to clothing, shoes and other goods of class 25 on September 26, 2016.

JPO examiner totally refused the application due to lack of distinctiveness based on Article 3(1)(iii) of the Trademark Law by stating that THE GRAND CANYON, a steep-sided canyon carved by the Colorado River in Arizona, one of America’s most famous and awe-inspiring natural attractions, recognized by UNESCO as a World Heritage Site, has been known for a famous tourist spot. Since relevant traders and consumers in Japan are familiar with circumstances that variety of souvenirs and gifts are on sale at tourist spot, presumably consumers will consider the applied mark just as a geographical indication in connection with the designated goods, not a source indicator.

 

Article 3(1)(iii)

Article 3(1) of the Trademark Law is a provision to prohibit descriptive marks from registering.

Section (iii) of the article aims to remove any mark merely or directly suggesting quality of goods and services.

“Article 3(1) Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered, unless the trademark:

(iii) consists solely of a mark indicating, in a common manner, in the case of goods, the place of origin, place of sale, quality, raw materials, efficacy, intended purpose, quantity, shape (including shape of packages), price, the method or time of production or use, or, in the case of services, the location of provision, quality, articles to be used in such provision, efficacy, intended purpose, quantity, modes, price or method or time of provision;”

 

To dispute the refusal, UNITIKA filed an appeal on May 12, 2017.

UNITIKA argued “GRAND CANYON” shall be registrable in connection with clothing by citing several trademark registrations of the name granted by the JPO. In fact, UNITIKA is an owner of trademark registration for the same mark on goods of class 24 and 25 since 2005.

 

Appeal Board’s decision

The Appeal Board, however, upheld the examiner’s decision on the ground and dismissed UNITIKA’s allegation by stating that relevant consumers and traders at the sight of applied mark depicted on clothing shall conceive of a famous World Heritage Site in US.

Existing trademark registrations for the mark “GRAND CANYON” will not affect the decision since distinctiveness of trademark is variable as time goes by – with the lapse of time.

 

Criteria for Trademark Examination Guideline

Trademark Examination Guideline (TEG) pertinent to Article 3(1)(iii) provides that where a trademark is composed of a geographical name in foreign country or sightseeing area, the mark is deemed as “the place of origin” of goods or “the place of their sale”, provided that consumers or traders generally recognize that the designated goods will be produced or sold at the place indicated by the geographical name.

Trademark Examination Manual, 413.103.01 sets forth criteria to examine trademarks related to foreign geographical name.

In the cases of (a) the name of a capital, (b) the name of a state, (c) the name of a prefecture, (d) the name of a state capital, (e) the name of a province, (f) the name of the capital of a province, (g) the name of a county, (h) the name of the capital of a prefecture, (i) a former country name, (j) an old regional name, (k) the name of a district, (l) the name of a city, or special district, (m) the name of a busy downtown street, and (n) the name of a sightseeing area, even though these names may not be directly described in a dictionary or other documents/material as the place of origin, the place of sales (location of transaction) of the goods, or the location of provision of services (location of transaction), if a factor exists that establishes a connection between the goods and the name as the place of sales (location of transaction), or the location of the provision of services (location of transaction), in principle, the trademark will be refused on the grounds that it indicates the location where the goods are sold (location of transaction) or the location of provision of services (location of transaction)


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

Serapian Loses Trademark Opposition against S device mark

The Italian-based fashion house Stefano Serapian S.r.l., known for its briefcases, handbags and purses opposed the registration in Japan of the trademark S logo owned by the Japanese company, Kabushiki Kaisha Overseas.

Opposed mark

Overseas filed an application to register S logo (see below) designating, among others, bags, purses, pouches and leather goods in class 18 on April 27, 2017. Going through substantive examination at the Japan Patent Office (JPO), it was registered on October 20 of that year (TM Reg no. 5990450).

Serapian Opposition

A trademark opposition proceeding filed on January 15, 2018, Serapian contended that opposed mark is confusingly similar to its registered famous “S” device mark (see below) by citing its owned IR no. 1117130 and thus shall be cancelled in violation of Article 4(1)(xi) and (xv) of the Japan 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.

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 consumers.

Theoretically, Article 4(1)(xv) is applicable to the case where a mark in question is deemed dissimilar to well-known brand, but still likely to cause confusion because of a high degree of popularity and reputation of the brand.

 

The Ruling

The Opposition Board of JPO negated a certain degree of popularity and reputation of Serapian’s “S” device mark, 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 appearance in view of overall configuration. From phonetic and conceptual points of view, it is apparent that respective mark would not be perceived as an alphabetical letter ‘S’, but a geometric figure device without any specific concept and pronunciation. If so, both marks would not give rise to similar appearance, sound and meaning at all.

Even if taking account of originality of “S” device mark, as long as it remains unclear whether Serapian “S” device mark has become popular among relevant consumers in Japan, the Board had no reason to admit a likelihood of confusion.

As a conclusion, the Board decided opposed mark is not subject to Article 4(1)(xi) and (xv) of the Trademark Law and dismissed the opposition accordingly.

[Opposition case no. 2018-900017, Gazette issue date December 28, 2018]


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

Is Polaroid Photo Frame trademarked?

In a recent decision, the Appeal Board of Japan Patent Office (JPO) admitted trademark registration for the Polaroid Photo Frame design mark (see below) in relation to services of photo printing, digital on-demand printing, processing of photographic films, photographic retouching (class 40).
[Appeal case no. 2017-9599, Gazette issue date: June 28, 2018]

 

Polaroid Photo Frame

Disputed mark (see below), apparently looking like Polaroid Photo Frame, was filed in the name of PLR IP Holdings, LLC, the ex-owner of the Polaroid brand and related intellectual property, by covering services of photo printing, digital on-demand printing, processing of photographic films, photographic retouching under class 40 on June 24, 2015.

As a result of substantive examination by the JPO examiner, disputed mark was refused due to a lack of inherent distinctiveness based on Article 3(1)(vi) of the Trademark Law.

Article 3(1)(vi) is a comprehensive provision to prohibit any mark lacking inherent distinctiveness from being registered.

Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered, unless the trademark:
(vi)
 is in addition to those listed in each of the preceding items, a trademark by which consumers are not able to recognize the goods or services as those pertaining to a business of a particular person.

 

Appeal Board decision

The Appeal Board sided with applicant and overruled examiner’s refusal decision by stating that the Board could not detect actual use of the applied design as a representation of shape or quality in connection with the designated services.

Besides, it is questionable to conclude that disputed mark, a combination of White Square and black rectangle, solely consists of a very simple and common sign. If so, the Board considers disputed mark is capable of serving as a source indicator so that consumers may distinguish the source with the clue of disputed mark.

Based on the foregoing, the Board admitted trademark registration of the Polaroid Photo Frame device mark in class 40.


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

Google victorious in trademark dispute for YouTube icon

The Trial Board of Japan Patent Office (JPO) recently upheld Google’s invalidation petition against TM Reg. no. 5665763 for the “Video Blog” mark in combination with figurative element (see below) due to similarity to YouTube icon and a likelihood of confusion with Google business.
[Invalidation case no. 2017-890005, Gazette issue date: July 27, 2018]

TM Registration no.5665763

Opposed mark, consisting of two words “Video Blog” in English and Japanese in two lines, and figurative elements depicted in between the words, was applied for registration on August 13, 2013 in respect of broadcasting services for internet in class 38.

Without confronting with a refusal during substantive examination, opposed mark was registered on April 25, 2014.

Petition for invalidation

Japan Trademark Law provides a provision to retroactively invalidate trademark registration for certain restricted reasons specified under Article 46 (1).

Google Incorporated filed a petition for invalidation against opposed mark on January 25, 2017. Google argued it shall be invalidated due to a conflict with famous YouTube icon (see below) and a likelihood of confusion with Google business when used on internet broadcasting services in class 38 based on Article 4(1)(x) and (xv) of the Trademark Law.

Board decision

The Board admitted that YouTube icon has acquired a high degree of popularity and reputation as a sign to play movies and TV shows on YouTube or an icon to start up YouTube application among relevant consumers of broadcasting service for internet.

In assessment of the similarity between two marks, at the outset the Board found that the words “Video Blog” of opposed mark in itself lack distinctiveness as a source indicator in relation to the designated service. If so, the figurative element of opposed mark plays key role as a source indicator. It is unquestionable that the figurative element is highly similar to Youtube icon. Besides, in view of Google’s business portfolio, it is highly predictable that Google launches broadcasting or news distributing business.

Users of Google services are also likely to receive internet broadcasting services.

Based on the foregoing, the Board concluded that, from totality of circumstances and evidences, relevant traders or consumers are likely to confuse or misconceive a source of opposed mark with Google or any entity systematically or economically connected with the opponent and declared invalidation based on Article 4(1)(x) and (xv).


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

LEGO lost a trademark battle in Japan over the mark CATTYLEGO

LEGO has lost a trademark battle it lodged against PETSWEET Co., Ltd., a Taiwanese company, over its registration of the mark “CATTYLEGO” in Japan.
[Opposition case no. 2017-900077, Gazette issued date: Feb 23, 2018]

 

OPPOSED MARK “CATTYLEGO”

PETSWEEY Co., Ltd., a Taiwanese company, applied for trademark registration in Japan for the mark consisting of a word “CATTYLEGO” and rectangle device (see below in right) on June 15, 2016 by designating toys for pets in class 28. Apparently, PETSWEET Co., Ltd. promotes various categories of cat toys, e.g. Cat Tree, Cart Playground as you can review by accessing their website.

The Japan Patent Office (JPO) admitted registration of the mark on November 15, 2016 and published the gazette under trademark registration no. 5902786 on January 10, 2017.

 

LEGO Trademark

LEGO Juris A/S, the world’s largest Danish toy manufacturer, filed an opposition against the mark CATTYLEGO on the final day of a two-month duration for opposition.

LEGO argued that the mark CATTYLEGO shall be cancelled due to a conflict with the famous LEGO trademark (see above in left) based on Article 4(1)(viii), (xi), (xv) and (xix) of the Trademark Law.

 

 

BOARD DECISION

The Opposition Board admitted a high degree of reputation and population of the LEGO trademark as a source indicator of opponent in relation to brick toys by taking account of consecutive promotion of LEGO bricks in Japan for more than five decades, annual sales amount over 8 billion yens (Approx. USD 74 million ), its remarkable share in the sector of kids toys, and almost half of preschools in Japan have adopted the bricks for educational purpose.

In the meantime, the Board negated similarity between the CATTYLEGO mark and the LEGO trademark, stating that it is unconvincing to consider “CATTY” descriptive from overall appearance of the opposed mark. If so, opposed mark is unlikely to giver rise to any meaning and pronunciation in association with LEGO bricks or opponent.

Based on the foregoing, the Board concluded opposed mark shall not subject to Article 4(1)(xi) so long as both marks are dissimilar.

Board also found less likelihood of confusions due to a remote association between toys for pets and brick toys (for kids) in view of different manufacturers, consumers, usage, commercial channel for these goods as well as dissimilarity of the marks.

Article 4(1)(viii) is a provision to prohibit registration of trademarks which contain the representation or name of any person, famous pseudonym, professional name or pen name of another person, or famous abbreviation thereof. A term of “Person” is construed to include a legal entity as well as individual. It is obvious that opposed mark contains “LEGO” which corresponds to an abbreviated name of opponent. However, it is noteworthy that the Board, in adopting the article, dismissed opponent’s allegation by stating that opponent failed to demonstrate the use of the LEGO trademark in a manner that relevant consumers would conceive it as an abbreviation of opponent’s name.