Trademark Opposition: “HP” versus “HP MAKER”

In a trademark dispute between “HP” and “HP MAKER”, the Japan Patent Office (JPO) dismissed an opposition filed by Hewlett-Packard, an American multinational information technology company, holding that there is no likelihood of confusion when the “HP MAKER” mark is used on the service of website creation.
[Opposition case no. 2017-900253, Gazette issued date: March 19, 2018]

HP MAKER

Oppose mark, consisting of “HP MAKER” in standard character, was filed on November 16, 2015 by designating website-related services, e.g. “Creation and maintenance of web sites for others; computer programming” in class 42. JPO permitted registration of the opposed mark on April 25, 2017 [TM registration no. 5948103].

Opponent contended that relevant consumers of the web-related services are likely to cause confusion the opposed mark “HP MAKER” with Hewlett-Packard or any business entity systematically or economically connected with opponent since trademark “HP” has already become famous among not only relevant consumers of computers but also general public in Japan as an abbreviation of Hewlett-Packard. If so, opposed mark shall be cancelled on the basis of Article 4(1)(x) and (xv) of the Japan Trademark Law.

Board decision

The Opposition Board admitted a high degree of reputation and popularity of the “HP” mark in connection with computer-related goods as a source indicator of opponent and its business, however, questioned such reputation prevails in the services of class 42 from totality of the circumstances and evidences provided by opponent.
Besides, finding that “HP” is also known as an abbreviation of homepage, the Board held opposed mark “HP MAKER” rather gives rise to a meaning of “person or tool to create homepage” from its configuration in the minds of relevant consumers with an ordinary care when used on the website-related services in dispute.
Based on the foregoing, the Board concluded that there is no likelihood of confusion between the marks and allowed the “HP MAKER” mark to remain valid.


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

Japan IP High Court Ruling – Shape of “Unit Shelf” functions as a source indicator of Ryohin Keikaku

The Japan IP High Court has affirmed an earlier ruling by the Tokyo District Court, and sided with Ryohin Keikaku Co., Ltd, an operator of the MUJI retail chain, in a lawsuit accusing CAINZ Corporation, the second largest DIY store chain in Japan, of violating the Unfair Competition Prevention Act (UCPA) by distributing ready-to-assemble storage rack “Joint System Shelf” which is allegedly an imitation of MUJI’s “Unit Shelf”.

CAINZ (appellant) contested the early ruling made an error of judgment  in finding that relevant consumers conceive the shape of “Unit Shelf” as a source indicator of Ryohin Keikaku (appellee) based on the research results which showed approx. 98 percent of general consumers were unable to associate the shape with appellee, and 9 merchants out of 10 who daily deals with living ware and furniture could not identify the shape as “Unit Shelf”.

Besides, appellant claimed appellee violated clean hands doctrine and thus abused the right given he pursued the case knowing that his act to promote the “Unit Shelf” constitutes infringement of  design right belonging to a third party.

The IP High Court ruled the research was neither adequate nor persuasive  enough to negate distinctive function of “Unit Shelf” as a source indicator, stating that it just targeted people in their 20s to 40s despite consumers of goods in dispute cover whole generations having an interest in household furniture. The questionnaire to ask a specific name of retail shop was far from the case. Some of the researched merchants have business with appellant. In addition, opinions of 10 merchants are way too insufficient  to bolster appellant’s allegation.

Fact that an entity who suffered damage by unfair misconduct of competitor admittedly infringes design right belonging to third party  does not immediately hinder him from making a legal claim based on the UCPA. Being that appellant’s act to promote  the “Joint System Shelf” is likely to cause confusion with appellee’s “Unit Shelf”, the court finds  higher degree of necessity to put a restriction on appellant’s misconduct. From the foregoing findings, the court ruled in favor of appellee and dismissed the allegations as well as abuse of right.


When you conduct market research pertinent to trademark, you should be more careful to decide questionnaire and respondent. Non-existence of design or trademark registration does not guarantee risk-free transaction of a similarly shaped goods with hot-selling product if the shape functions as source indicator.

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

Tissot Loses Trademark Opposition over the POWERMATIC mark

In a recent decision, the Opposition Board of Japan Patent Office (JPO) dismissed an opposition filed by TISSOT S.A., a member of Swatch Group, who contended that trademark registration no. 5950175 for a word mark “PowerMatrix” designating, inter alia, watches in class 14 shall be cancelled in violation of Article 4(1)(xi) and (xv) of the Japan Trademark Law due to a conflict with senior domestic trademark registration and international trademark registration for the “POWERMATIC” mark in class 14.
[Opposition case no. 2017-900258]

PowerMatrix

Opposed mark, consisting of a term “PowerMatrix” written in a plain alphabetical letter, was applied for registration on October 24, 2016 in the name of Kyland Technology Co. Ltd., a Chinese corporation, by covering various goods and services in classes 7,9,11,12,38 and 42 as well as watches in class 14. As a result of substantive examination, JPO granted registration (TM Reg no. 5950175) on May 26, 2017.

Opposition

The Japan Trademark Law provides that anyone is entitled to file an opposition against new trademark registration within two months from the publication date of gazette under Article of 43bis.

Tissot S.A. filed an opposition against opposed mark “PowerMatrix” by citing senior registrations for the word mark “POWERMATIC”, and alleged that opposed mark shall be cancelled based on Article 4(1)(xi) and 4(1)(xv) 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.
  • Article 4(1)(xv) prohibits to register a mark which is likely to cause confusion in connection with the goods or services pertaining to a business of another person.

POWERMATIC

Tissot argued POWERMATIC has been used on luxury Tissot watches in Japan as an indication of high-end automatic movement for the watches since 2013.

By taking account of increasing sales amount of approx. 1 million CHF in 2015 and substantial advertisement through newspapers, magazines and web-media, the POWERMATIC mark has acquired a certain degree of popularity and reputation among relevant public in Japan as well as its house mark, Tissot.

In appearance and sound, “PowerMatrix” and “POWERMATIC” are confusingly similar because of coincidence of initial eight alphabetical letters among ten in total. If so, opposed mark is likely to cause confusion with the Tissot luxury watch installing “POWERMATIC” automatic movement when used on watched in class 14.

BOARD DECISION

The Board negated a certain degree of popularity and reputation of the “POWERMATIC” mark, stating that produced materials are insufficient and non-objective to demonstrate famousness of the cited mark. Given that the Tissot POWERMATIC watch was firstly distributed in Japan since 2013, a three-year-duration before the filing of opposed mark seems too short to become popular among relevant consumers in fact.

Besides, the Board concluded that difference in appearance and sound is not negligible in view of overall configuration of both marks. If so, it is unlikely that relevant consumers and traders confuse or misconceive watches using the opposed mark with a product from Tissot and the entity systematically or economically connected with Tissot.

OMEGA unsuccessful in cancelling OMEGA mark

The Japan Patent Office dismissed a trademark opposition claimed by a Swiss luxury watchmaker, OMEGA SA against trademark registration no. 5916814 for the OMEGA mark in class 41 by finding less likelihood of confusion due to remote association between watches and services in class 41.
[Opposition case no. 2017-900136]

Opposed OMEGA mark

Opposed mark (see below) was filed by a Japanese business entity on April 28, 2016 by designating the services of “fortune-telling; educational and instruction services relating to arts, crafts, sports or general knowledge; providing electronic publications; Art exhibition services; Reference libraries of literature and documentary records; production of videotape film in the field of education, culture, entertainment or sports; photography etc.” in class 41.


As a result of substantive examination, the JPO admitted registration on January 27, 2017 and published for registration on February 28, 2017.

OMEGA’s Opposition

To oppose against registration, OMEGA SA filed an opposition on April 28, 2017.

In the opposition brief, OMEGA SA asserted the opposed mark shall be cancelled in violation of Article 4(1)(xv) of the Japan Trademark Law by citing the owned luxury watch brand of OMEGA (see below).

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. Theoretically, Article 4(1)(xv) is not applicable to the case where a mark in question is objectionable under Article 4(1)(xi), which prohibit a junior mark from registering if it is deemed identical with or similar to any senior registration. Article 4(1)(xv) plays a key role where a junior mark designates remotely associated or dissimilar goods or services with that of a well-known brand business.

Board Decision

The Opposition Board admitted similarity of both marks and a remarkable degree of reputation and population of opponent OMEGA mark in relation to watches, however, questioned whether such reputation has prevailed even among relevant consumers of designated services in class 41 as long as opponent failed to produce sufficient evidences regarding the issue.

Based on remote association between watched and services designated under the opposed mark, the Board decided that, by addressing less creativity of the OMEGA mark originating from a familiar Greek alphabet even to Japanese with an ordinary care, relevant consumers of designated services in class 41 are unlikely to confuse or misconceive a source of the opposed mark with OMEGA SA or any entity systematically or economically connected with the opponent.

Adidas triumphs over 3-stripe trademark battle

After six years of prolonged dispute, Adidas AG could achieve a victory over trademark battle involving famous 3-stripe design. In a recent trademark invalidation appeal, case no. 2016-890047, the Trial Board of Japan Patent Office (JPO) decided in favor of Adidas AG to retroactively null trademark registration no. 5430912 for three lines device mark (see below) due to a likelihood of confusion with Adidas’ famous 3-stripe design.

Disputed mark

Disputed mark was filed on March 2, 2011 by a Japanese business entity, designating shoes in class 25 and registered on August 5, 2011 (Registration no. 5430912).

To oppose the registration, on October 18, 2011, Adidas AG filed an opposition against disputed mark based on Article 43bis of the Trademark. But the Opposition Board of JPO overruled the opposition and decided to admit registration of disputed mark on June 27, 2012. Four years later, Adidas AG filed an invalidation appeal with an attempt to retroactively null disputed mark based on Article 4(1)(xv), 46(1)(i) of the Trademark Law.

The Japan Trademark Law provides where a trademark has been registered for five years or more, an invalidation appeal based on Article 4(1)(xv) shall be dismissed unless the trademark was aimed for registration with a fraudulent purpose.

It is presumed that the provision urged Adidas to take an invalidation action eventually since the appeal date is just one week before a lapse of five years from registration.

 

Invalidation trial

Adidas AG repeatedly argued a likelihood of confusion between Adidas’ famous 3-stripe design and disputed mark because of a high degree of popularity and reputation of 3-stripe design as a source indicator of Adidas sportswear and sports shoes, visual resemblance between the marks.

Board decision

The Board found that:

  1. Adidas’ 3-stripe design has acquired a substantial degree of reputation well before the filing date of disputed mark as a result of continuous marketing activities in Japan since 1971.
  2. Occasionally, Adidas promotes shoes depicting various types of 3-stripe design with a slight modification to length, width, angle, outline or color of the stripe.
  3. Disputed mark gives rise to the same visual impression in the mind of consumers with 3-stripe design by taking account of similar graphical representation consisting of three lines in parallel leaning to the left. Difference in detail is negligible since it can be perceived as a variation of Adidas shoes given actual business circumstances.

Based on the above findings, the Board concluded that relevant consumers and traders are likely to confuse shoes using disputed mark with Adidas’ famous 3-stripe design or misconceive a source from any entity systematically or economically connected with Adidas AG. Thus, disputed mark shall be invalidated in violation of Article 4(1)(xv) of the Trademark Law.

Apple Inc. failed in a trademark opposition to block “Apple Assist Center”

The Japan Patent Office dismissed a trademark opposition claimed by the U.S. tech giant, Apple Inc. against trademark registration no. 59923763 for word mark “Apple Assist Center” in class 35, 36, and 43 by finding less likelihood of confusion.
[Opposition case no. 2017-900155]

“Apple Assist Center”

Opposed mark “Apple Assist Center” was filed by a Japanese business entity on July 22, 2016 by designating the services of “secretary services; telephone answering and message handling services; reception services for visitors” in class 35, “rental of business and commercial premises; management of buildings; providing information in the field of buildings for business and commercial use” in class 36, “rental of conference room; rental of exhibition room” in class 43.
As a result of substantive examination, the JPO admitted registration on February 17, 2017 and published for registration on March 21, 2017.

Apple’s Opposition

To oppose against registration, Apple Inc. filed an opposition on May 17, 2017.

In the opposition brief, Apple Inc. asserted the opposed mark shall be cancelled in violation of Article 4(1)(xv) of the Japan 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. Theoretically, Article 4(1)(xv) is applicable to the case where a mark in question designates remotely associated or dissimilar goods or services with that of a well-known brand business.

Board Decision

The Opposition Board admitted a remarkable degree of reputation and population of opponent trademark “Apple” in the field of computers, smart phones, audio devices etc., however, gave a negative view in relation to goods and services remotely associated with Apple products by taking account of arguments and evidences Apple Inc. provided during the trial.

Besides, in the assessment of mark similarity, the Board found “Apple Assist Center” and “Apple” are dissimilar since they are sufficiently distinguishable in visual, phonetic, and conceptual point of view. The Board considered that the word of “Assist Center” does not immediately give rise to a descriptive meaning in relation to the designated service of class 35, 36, and 43. Given that “Assist Center” is deemed a coined word, it is not permissible to separate a element of “Apple” from the opposed mark.

Based on the foregoing, the Board decided that, unless Apple Inc. demonstrates possibility to embark on business related to the designated services and overlapping of consumers between Apple products and the opposed mark, relevant consumers are unlikely to confuse or misconceive a source of the opposed mark with Apple Inc. or any entity systematically or economically connected with the opponent.


It surprises me that the Board considered “Assist Center” does not lack distinctiveness in relation to business support services.

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

Adidas successful in invalidating three bones device mark

In a trademark invalidation appeal, case no. 2017-890017, the Trial Board of Japan Patent Office (JPO) decided in favor of Adidas AG to retroactively null trademark registration no. 5799460 for three bones device mark (see below) due to a likelihood of confusion with Adidas’ famous 3-stripe design.

Disputed mark

Disputed mark was filed on May 1, 2015 by a Japanese business entity, designating the goods of clothing for pets in class 18 and registered on October 16, 2015.

Subsequently after the registration, Adidas AG filed an opposition against disputed mark on November 26, 2015. Since it ended in vain, Adidas AG challenged inadequacy of the decision and registration by means of invalidation trial.

Invalidation trial

During the invalidation trial, Adidas AG argued a likelihood of confusion between Adidas’ famous 3-stripe design and disputed mark because of a high degree of popularity and reputation of 3-stripe design as a source indicator of Adidas sportswear and sports shoes, visual resemblance between the marks, and close relatedness of its consumers and commodity goods.

Board decision

The Board found that:

  1. Adidas’ 3-stripe design has acquired a substantial degree of reputation well before the filing date of disputed mark as a result of continuous marketing activities in Japan since 1971.
  2. Three bones device mark visually resembles with 3-stripe design by taking account of the same graphical representations allocating three trapezoids in different length in parallel to be seen it constituting a triangle in overall appearance.
  3. It becomes apparent that distributors of sports gears, apparels, bags, and shoes also deal with clothing for pets nowadays.

Based on the above findings, the Board concluded that consumers who are accustomed to the circumstance, are likely to confuse clothing for pets using disputed mark with Adidas’ famous 3-stripe design or misconceive a source from any entity systematically or economically connected with Adidas AG. Thus, disputed mark shall be invalidated in violation of Article 4(1)(xv) of the Trademark Law.


It should be noteworthy that a decision to dismiss opposition is not appealable under the Japan Trademark Law. If opposed party wants to argue the decision, there is no way other than invalidation trial.

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

IP High Court admitted high reputation of Red Bull mark in relation to automobiles as well

In a lawsuit disputing similarity of red-colored bull device marks, the IP High Court nullified the JPO decision in favor of Red Bull GmbH known for Red Bull energy drink, and ruled to invalidate TM registration no. 5664585 (Disputed Mark) on the ground that it is likely to cause confusion with the Red Bull Mark.
[Case no. Heisei29(Gyo-ke)10080,  Judgement date: December 25, 2017]

Disputed Mark, filed on October 4, 2013 by designating various goods for automobiles in class 1,3,4 and 5, e.g. detergent additives to gasoline, was registered on April 18, 2014 by a Korean distributor dealing with goods related to automobiles. Prior to the appeal to the IP High Court, Red Bull was unsuccessful to attack Disputed Mark in an opposition and invalidation trial.

The Court concluded that relevant traders and consumers at the sight of designated goods using Disputed Mark would likely connect it with famous Red Bull Mark, and consequently misbelieve the source of the goods from Red Bull, an entity economically related to Red Bull, or a paerner authorized to use Red Bull Mark in business based on the following findings.

Trademark similarity

Both marks are visually confusing irrespective of differences in detail since the marks share basic configuration of depicting a left-pointing horned red bull in a vibrant motion over yellow and warm color of background. Besides, Disputed Mark gives rise to a meaning of a red-colored jumping bull and Red Bull Mark does a meaning of a red-colored rushing bull. If so, it is obvious that both marks are almost identical or similar in concept. Therefore, Disputed Mark is deemed substantially similar to Red Bull Mark.

High reputation of Red Bull Mark

Red Bull Mark, as a source indicator of plaintiff, becomes well-known not only in the field of energy drinks but also among traders and consumers of goods related to automobiles. Admittedly, it has acquired a high degree of reputation.

Consumers

Consumes of automobile goods are not limited to car enthusiast. They can be purchased by the general consuming public. Plaintiff has distributed various types of goods relating to automobiles and car race with Red Bull Mark for promotional purpose under the scheme of trademark license. It is undeniable that most of the public with an ordinary care are neither precisely familiar with trademark and brand in detail, nor always mindful to manufacturer and source indicators in the selection of goods.


It is noteworthy that the Court admitted high reputation of Red Bull Mark in the field of automobiles as well even if it evidently represents one of sponsors for car racing team

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