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

Royal Copenhagen successful in removing FLORA DANICA on bags and apparels

The Opposition Board of Japan Patent Office (JPO) decided to cancel trademark registration no. 5681437 for word mark “FLORA DANICA” covering various types of bags in class 18, apparels and shoes in class 25 as a consequence of opposition trial raised by ROYAL COPENHAGEN AS, one of Europe’s oldest porcelain manufacturers in Denmark.
[Opposition case no. 2014-900278]

Trademark Opposition

Opposed mark was filed by a Danish corporation on January 23, 2014. Without receiving any office action from the JPO examiner, it was smoothly granted registration on May 30, 2014. Upon payment of registration fee on June 19, 2014, it was published for opposition on July 29, 2014.

On the very final day of statutory period to file an opposition (two months from the publication provided under Article 43bis of the Trademark Law), ROYAL COPENHAGEN challenged to an opposition disputing validity of opposed mark due to a likelihood of confusion with renowned Flora Danica porcelain, made 1790-1803 at the Royal Copenhagen Porcelain Manufactory, decorated with botanical drawings of Denmark’s flora.

The opposition relied on Article 4(1)(xv) of the Trademark Law to prohibit a junior mark likely to cause confusion with other business entity’s well-known goods or services from being registered to the benefit of brand owner and users’ benefits.

Article 4(1)(xv)

Trademark Examination Guidelines set forth factors to be taken into consideration in the assessment of a likelihood of confusion under the article.

  • The degree of similarity between the trademark as applied and the other entity’s mark;
  • The degree to which the other entity’s trademark is well known;
  • Whether the other entity’s trademark consists of a coined word or contains a distinctive feature;
  • Whether the other entity’s trademark is used as a house mark;
  • Whether there is the possibility of proximity in business as a result of diversified management;
  • Whether there is any relationship between goods, services or goods and services;
  • Whether there is any commonality between the consumers of goods, etc. and other actual states of transactions.

Click here to access the guidelines.

Board decision

In the disputed opposition, the Board found that “FLORA DANICA” has acquired a high degree of population and reputation among relevant traders and consumers as a source indicator of ceramic products manufactured by ROYAL COPENHAGEL and remained the status quo continuously.

The Board assessed both marks are deemed unquestionably identical or similar. Besides, both opposed goods in classes 18, 25 and ceramic products are all closely related to daily life, and consumers are likely to show strong preference for design and fashion of goods in selection of these goods. ROYAL COPENHAGEN deals with handkerchiefs, scarfs, perfumes, cuffs, wallets, aprons, bags as well.

Base on the foregoing, the Board concluded that relevant traders and consumers of the goods in question are likely to confuse or associate the goods using Opposed mark with opponent or any business entity economically or systematically connected with ROYAL COPENHAGEN. Thus, Opposed mark is subject to cancellation due to Article 4(1)(xv) of the Trademark Law.


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

IP High Court reversed JPO decision pertinent to a likelihood of confusion between men’s fashion magazines and male cosmetics

In a judgement pronounced on November 14, 2017, the IP High Court of Japan ruled to reverse JPO decision which negated a likelihood of confusion between MEN’S CLUB brand men’s fashion magazine and the same brand male cosmetics.[Court case no. H29(Gyo-ke)10109]

MEN’S CLUB magazine

The lawsuit was filed by a publisher of the MEN’S CLUB magazine who unsuccessfully challenged to invalidate TM registration no. 5858891 for a word mark “MEN’S CLUB” in standard character covering goods of male cosmetics in class 3 (hereinafter referred to as “Disputed mark”).

MEN’S CLUB magazine has been continuously published past six decades since 1965 in Japan.

 

TM Registration 5858891 – MEN’S CLUB on male cosmetics

Disputed mark was applied for registration on January 7, 2016, registered on June 17, 2016 without receiving any office action from the Japan Patent Office (JPO) examiner.

On April 5, 2017, plaintiff demanded for a trial to invalidate disputed mark in violation of Article 4(1)(xv) and (xix) of the Trademark Law by citing MEN’S CLUB brand men’s fashion magazines used by plaintiff.

The Trial Board of JPO decided that disputed mark shall neither fall under Article 4(1)(xv) nor 4(1)(xix), and dismissed the invalidation petition entirely [case no. 2016-890063].

In the lawsuit, plaintiff argued the Board misconstrued Article 4(1)(xv), thus erred in judgment to apply the article on the case.

Article 4(1)(xv)

Article 4(1)(xv) of the Trademark Law provides that a mark shall not be registered where it is likely to cause confusion with the goods or services pertaining to a business of another entity.

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.

IP High Court decision

The IP High Court ruled that the Board erred in applying Article 4(1)(xv) based on following reasons.

  • Both marks, consisting of MEN’S CLUB, are almost identical
  • MEN’S CLUB brand men’s fashion magazine has acquired a high degree of popularity and reputation among relevant consumers as a result of substantial use over decades, notwithstanding lack of creativity in the mark
  • Male cosmetics are considerably associated with men’s fashion magazines since they are often featured in men’s fashion magazines
  • Consumers of men’s fashion magazines are likely to consume male cosmetics

Based on the foregoing and the degree of ordinary care taken by relevant consumers, the court concluded that consumers of male cosmetics would conceive the MEN’S CLUB brand men’s fashion magazine and then associate the cosmetics with goods produced by plaintiff or a business entity who has systematical or economical connection with plaintiff in error.

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

 

 

Mattel failed in a trademark opposition to block “Salon BARBIES”

JPO dismissed an opposition by Mattel, Inc. – maker of the world-famous Barbie doll – who claimed “Salon BARBIES” is likely to cause confusion or association with famous Barbie doll when used on restaurant and fan club services. [Opposition case no. 2016-900395]


Opposed mark

Opposed mark, TM Registration no. 5881203, was filed on March 10, 2016 by designating various services in class 35 and 43 including restaurant, accommodation club services, business management analysis and others.

JPO granted to register opposed mark with no finding of refusal grounds and published for registration on October 11, 2016.


Opposition

On December 12, 2016, Mattel, Inc., an American multinational toy manufacturing company, opposed an application to register the mark Salon BARBIES (see above).

In the opposition, Mattel cited two senior trademark registrations.

  • TM Registration no. 5383631 for word mark “BARBIE” in standard character (classes 9, 14, 18, 24, 25, 28, 35)
  • TM Registration no. 589632 for the BARBIE logo (classes 9, 15, 20, 21, 25, 28)

Mattel argued that Opposed mark is subject to cancellation in violation of Article 4(1)(xv) of the Trademark Law on the grounds that its BARBIE mark had acquired such fame that, upon seeing the opposed mark used on restaurant and fan club service, the average consumer would be led to infer the existence of a connection to the owner of the famous brand.

Besides, Opposed mark is objectionable in violation of Article 4(1)(xix) as well since it would presumably aim to dilute or do harm to remarkable prestige bestowed to BARBIE mark.


Board decision

The Opposition Board admitted BARBIE mark has acquired a high degree of popularity and reputation as a source indicator of dolls among relevant traders and consumers at the time of both the application and the grant of registration of Opposed mark.
In the meantime, the Board denied similarity of both marks in visual, phonetical and conceptual points of view.
Based on dissimilarity of the marks, the Board concluded relevant traders and consumers are unlikely to confuse or associate the services using Opposed mark with opponent or any business entity economically or systematically connected with Mattel.
Therefore, Opposed mark shall not be cancelled due to Article 4(1)(xv) of the Trademark Law.

Article 4(1)(xix) is applicable only where both marks are identical or similar.
Besides, from the totality of the circumstances, the Board found no fact and evidence to show or infer that Opposed mark was filed with malicious or fraudulent intent on the part of registrant to hinder the business of opponent. Thus, Opposed mark shall remain valid in light of Article 4(1)(xix) as well.

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

V&W is unlikely to cause confusion with VW emblem

In a recent trademark opposition involving the circular Volkswagen logo, the Opposition Board of Japan Patent Office (JPO) decided that famous VW emblem is entirely dissimilar to, or unlikely to cause confusion with, the word mark “V&W” in standard character when used on retail services for automobiles [Opposition Case no. 2017-900009].


Trademark opposition

German car giant Volkswagen AG filed an opposition against TM registration no. 5888513 for word mark “V&W” written in standard character (Opposed mark) on the grounds that Opposed mark violates Article 4(1)(xi), 4(1)(xv) and 8(1) of the Trademark Law based on senior trademark registrations for the VW emblems and a word mark “VW”.
The opposed mark designates retail services or wholesale services for automobiles and various other goods in class 35.

Volkswagen argued Opposed mark gives rise to a pronunciation of “vi: dʌb·l·juː” by omitting “&” since the prevalent symbol representing a word of “AND” is just to connect “V” and “W”, and relevant traders and consumers are prone to omit the symbol in pronouncing the entire mark in light of transactional customs at present. If so, Opposed mark is deemed similar to the VW emblem as well as “VW” in visual, phonetical and conceptual point of view.

Besides, the VW emblem has acquired substantial popularity and reputation as a source indicator of famous automobile maker, Volkswagen. Thus, it is highly likely that relevant traders and consumers confuse the source of retail service for automobiles and its parts using Opposed mark “V&W” with opponent or a business entity systematically or economically connected with the opponent.

 


Board decision

The Board admitted the VW emblem has become famous for a source indicator of opponent by taking into consideration of the facts that opponent’s cars with the VW emblem have been continuously imported to Japan since 1978 at the latest and ranked in the top 3 of new imported automobile registrations for the past three years.

In the meantime, the Board denied high awareness of the word mark “VW” as a source indicator of opponent. A mere definition of VW to indicate the opponent in a dictionary is insufficient since the term is often seen in conjunction with corporation name “Volkswagen” in newspaper, magazines and newsarticle on a website.

In the assessment of trademark similarity, the Board concluded that “V&W” is obviously dissimilar to the VW emblem and “VW” in appearance, pronunciation and meaning. Due to substantial distinction between the marks, relevant traders and consumers are less likely to confuse or associate “V&W” with opponent and any business entity systematically or economically connected with opponent.

Based on the foregoing, the Board dismissed opposition and allowed “V&W” to survive.


It is noteworthy that a mark consisting of two alphabetical letters written in a plain font design is considered less distinctive in Japan. In this respect, IR no. 1272004 for the word mark “VW” did not function to broadly protect the VW emblem in favor of Volkswagen.

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

SISLEY, French luxury beauty brand, failed in a trademark opposition against the mark “SISLOY”

In a recent decision, the Opposition Board of the Japan Patent Office dismissed an opposition filed by CFUB Sisley, a French producer of cosmetics and fragrances, founded in 1976 against the word mark “SISLOY” written in a standard character.
[Opposition case no. 2016-900379]

Opposed mark

Mark in dispute, consisting of a word “SISLOY” written in a standard character, TM Registration no. 5878006, was applied for registration in March 11, 2016 in the name of U STYLE Co., Ltd., a Japanese legal entity, by designating goods of cosmetics, perfumes, creams, soaps etc. in class 3. Based on the results of substantive examination by the JPO, the mark was granted for protection without any refusal or oppositions on August 4, 2016 and subsequently published for opposition on October 4, 2016.

 

Trademark opposition claim by Sisley

Sisley filed an opposition and demanded the JPO to cancel the oppose mark in violation of Article 4(1)(xv) of the Trademark Law.

Article 4(1)(xv) is a provision to prohibit any trademark which is likely to cause confusion with a third party or its business from being registered for protection.

Sisley cited a registered “SISLEY” trademark (TM Registration no. 1873095) which consists of alphabetical letters and Japanese katakana letters to pronounce Sisley, as well as a non-registered “sisley” trademark solely written in lower-case alphabetical letters (herein after collectively referred to as “SISLEY trademarks”).

Sisley alleged that SISLEY trademarks has acquired a high degree of popularity and reputation among relevant traders and consumers of cosmetics worldwide.

According to the evidence, annual sales in Japan amounts to about 2 billion yen continuously. Sisley occupies 1% market share in Japan

To bolster the argument, Sisley referred to the past favorable decision in an opposition against a word mark of “SYSLEY” in which the JPO admitted famousness of “SISLEY” as a source indicator of skin care cosmetics.

Based on SISLEY trademarks known for French luxury beauty brand, Sisley argued that relevant traders and consumers are likely to conceive Sisley at the sight of goods with opposed mark, or confuse the goods comes from any business entity economically or systematically associated with Sisley in error by taking into consideration of close similarity between “SISLEY” and “SISLOY”.

 

Board decision

The Opposition Board considered the evidence is insufficient and less objective to convince the Board of the fame of SISLEY trademarks in the marketplace of Japan.

Due to the lack of objective evidence, the Board denied a high degree of popularity and reputation of SISLEY trademarks as a source indicator of skin care cosmetics in view of a trivial market share.

Regarding the past opposition decision to admit famousness of the mark “SISLEY”, the Board held the decision was irrelevant on the case because it never made things clear whether SISLEY trademarks still maintained such famousness at the time of application filing of the opposed mark, given eight years already passed since then.

Besides, the Board concluded that finding the difference of “O” and “E” at fifth letter is not negligible, the oppose mark and SISLEY trademarks are distinctively dissimilar in the aspect of appearance, pronunciation and meaning.

Based on the foregoing, it should decide that the relevant traders and consumers are unlikely to confuse or misconceive the opposed mark with SISLEY trademarks even when used on cosmetics and other designated goods

 

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

JPO cancelled “UMBROID” due to a likelihood of confusion with an English sporting goods brand “Umbro”

The Opposition Board of Japan Patent Office (JPO) decided to cancel trademark registration no. 5861532 for a word mark “UNBROID” written in standard characters covering various goods of class 18 based on a high degree of popularity of “Umbro”, similarity of marks, and close association between goods.

Mark in question

Opposed mark “UMBROID” was filed on January 6, 2016 by designating the goods of “industrial packaging containers of leather; bags and the like; pouches and the like; vanity cases; umbrellas and their parts; handbag frames; purse frames; horseshoes; walking sticks; canes; metal parts of canes and walking-sticks; handles for canes and walking sticks; clothing for domestic pets” in class 18 under the name of YOUM COMPANY CO., Ltd. As a result of substantive examination by the JPO examiner, the mark was registered smoothly without any objections on June 24, 2016 and published for opposition on July 26.

DESCENTE LTD., a Japanese sporting goods trading company, as an assignee of Japanese trademark rights pertinent to “UMBRO” from Umbro International Limited, filed an opposition in violation of Article 4(1)(xv) of the Trademark Law.

Article 4(1)(xv)

No trademark shall be registered if the trademark is likely to cause confusion in connection with the goods or services pertaining to a business of another person.

Board decision

The Board admitted a high degree of popularity and reputation of “Umbro” as a source indicator of sportswear, sports shoes and sports bags distributed by the opponent among soccer fans and apparel consumers.

In assessing similarity of marks, the Board considered the opposed mark consists of a combination of two words, “UMBRO” and “ID”. Given “ID” is a commonly used term to mean any means of identification, it is less likely to function as a source indicator nowadays when used in commerce. If so, relevant traders and consumers at the sight of opposed mark would impressively pay attention to a portion of “UMBRO” and associate the mark with a famous sports brand. Therefore, both marks are deemed substantially similar, Board concluded.

Besides, the goods in question are mainly purchased by fashion conscious consumers. Consumers of sportswear, sports shoes and sports bags are also of strong interest to sports and fashion in general. Given both goods are substantially consumed by same entities, it should be considered that they are closely associated.

Based on the foregoing, the Board found a likelihood of confusion between “UMBROID” and “Umbro” when used on the goods in question, and thus the opposed mark was registered in error in violation of Article 4(1)(xv). [Opposition case no. 2016-900307]

 

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

 

 

 

 

SKY ROVER is unlikely to cause confusion with LAND ROVER when used on wallets, school bags, handbags and trunks

The Opposition Board of Japan Patent Office decided to dismiss an opposition claimed by Jaguar Land Rover Limited who alleged trademark registration no. 5844561 for the mark “SKY ROVER” with figurative elements (see below) designating goods of “wallets, school bags, handbags, and trunks” in class 18 owned by a Taiwanese is confusingly similar to “ROVER”, “LAND ROVER”, “RANGE ROVER” famous for four-wheel-drive vehicles produced by the opponent.

Jaguar Land Rover Limited cited ten trademark registrations for “LAND ROVER” or “RANDE ROVER” and produced evidences to demonstrate substantial use in Japan since 1990’s. However, the Board did not approve high levels of consumer recognition to the marks in association with cars due to a failure to disclose sales amount, advertisement or promotional activity and annual car sales in connection with the cited marks. If so, it is unlikely that consumers consider a term of “ROVER” independently from the configuration of cited marks. In the assessment of trademark similarity, both marks are apparently dissimilar as a whole from visual, sound and conceptual point of view even if they contain a term “ROVER” in common.

Besides, by taking into consideration of remoteness of cars and opposed goods (wallets, school bags, handbags and trunks), it is less likely that consumes misconceive or associate the opposed mark with “LAND ROVER” or “RANDE ROVER” nor confuse goods with the opposed mark from any business entity connected with opponent.

Based on the foregoing, the Board decided to sustain registration of the opposed mark since the opposition was totally groundless. [Opposition case no. 2016-900200]

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

“F1 HEATER” was cancelled due to a likelihood of confusion with “F1” when used on electric heaters

The Opposition Board of Japan Patent Office (JPO) decided to cancel a trademark registration for word mark “F1 HEATER” in favor of an opponent, Formula One Licensing BV.
[Opposition case no. 2016-900251]

F1 HEATER

Opposed mark “F1 HEATER” was filed on December 4, 2015 by designating electric heaters in class 11 and granted for registration on March 24, 2016.
Upon a payment of statutory registration fee, the opposed mark was published in gazette on June 14, 2016.

Opposition by Formula One

Formula One Licensing BV, managing the trade marks for the FIA Formula One World Championship, filed an opposition based on Article 4(1)(xv) of the Trademark Law by complaining that relevant public is likely to confuse or misconceive electric heaters using the opposed mark with goods derived from opponent group or any entity economically or systematically connected with opponent.

Likelihood of confusion

The Opposition Board admitted “F1” has become famous as an indicator of car races and automotive for race managed by the opponent among relevant consumers in Japan.
In the assessment of trademark similarity, the Board considered a word “HEATER” is less distinctive in relation to electric heaters. If so, consumers and traders are likely to conceive that the opposed mark contains the term “F1” from appearance and confuse a source of electric heaters with FIA, opponent or any entity economically or systematically connected with opponent. Accordingly, the opposed mark should be cancelled in violation of Article 4(1)(xv) retroactively.

Opposed mark owner voluntarily waived trademark registration during the opposition trial prior to a decision.

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

 

 

JPO concluded a famous smart phone cover glass brand “Gorilla Glass” is unlikely to cause confusion with “2.5D Gorilla Glass 3” when used on bracelets, personal ornaments, and jewelery

In a trademark opposition between Corning Inc. (USA) and LG Electronics Inc. (KOREA), the Opposition Board of Japan Patent Office (JPO) dismissed the opposition against trademark registration no. 5862676 for word mark “2.5D Gorilla Glass 3”.

“Gorilla Glass” vs “2.5D Gorilla Glass 3”

Corning Inc. opposed to register the word mark “2.5D Gorilla Glass 3” designating goods of bracelets, personal ornaments, and jewellery in class 14 based on Article 4(1)(xv) of the Trademark Law by asserting a likelihood of confusion with his famous smart phone cover glass brand “Gorilla Glass”.

Famous smartphone cover glass

The Opposition Board admitted a certain level of awareness of trademark “Gorilla Glass” in association with smart phone cover glass and scratch-resistant and durable glass for electronics devices. In the meantime, the Board denied famousness of the trademark among relevant consumers and traders to deal with bracelets, personal ornaments, and jewellery.

Assessment of trademark similarity

In the assessment of trademark similarity, the Board held that dominant portion of the opposed mark is considered “2.5D Gorilla Glass” by deleting “3” at the ending of the mark. If so, it is groundless to assess similarity of mark simply based on literal elements of “Gorilla Glass” from both marks.

Likelihood of confusion

As long as the cited mark “Gorilla Glass” has not become famous in association with bracelets, personal ornaments and jewellery, relevant consumers at first sight of the opposed mark are unlikely to confuse or misconceive a source of origin from Corning Inc. or any business entity economically or systematically connected with the opponent.
[Opposition case no. 2016-900303]

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