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

Who associates “Pen-Pineapple-Apple-pen” with Apple Inc.?

The Japan Patent Office (JPO) dismissed an opposition filed by Apple Incorporated, a US corporation, against TM Registration no. 6031236 for word mark “Pen Pineapple Apple Pen” written in alphabets and Katakana characters, and allowed the mark to remain valid. [case no. 2018-900165]

 

Opposed mark : Pen-Pineapple-Apple-Pen

Avex Inc., a Japanese company, filed the mark to the JPO on February 24, 2017 over various kinds of goods/services in class 3,9,14,16,18,20,21,24,25,28,30,32,41,43 (14 classes in total). The JPO admitted registration on March 30, 2018.

 

Opposition by Apple Inc.

Apple Inc., an US multinational IT company, filed an opposition based on Article 4(1)(xi), (xv) and (xix) of the Trademark Law by asserting opposed mark is deemed similar to opponent famous trademark “Apple”, “Apple Pay” and “Apple Pencil”, likely to cause confusion with opponent’s business when used on designated goods and services. Besides, opposed mark was seemingly adopted with an intention to freeride good-will bestowed on opponent famous trademarks.

Article 4(1)(xi) prohibits from registering a junior mark identical or similar to senior registered mark on identical or similar goods/service.
Article 4(1)(xv) prohibits any junior mark likely to cause confusion with others.
Article 4(1)(xix)
  prohibits a junior mark identical or similar to others’ famous mark with a malicious intention.
The provisions are available as cause of claims underlying  an opposition when registered in error.

 

JPO decision

The Opposition Board of JPO held opposed mark shall NOT be revocable in accordance with the articles by stating that:

“Opposed mark, solely consisting of literal elements with same size and same font, gives rise to a pronunciation of ‘pen pineapple apple pen’ as a whole. Regardless of slight verbosity, relevant consumers will surely connect the mark with viral hit song “Pen-Pineapple-Apple-Pen or PPAP” by PIKOTARO, internet sensation from Japan, which has become known among the general public remarkably. If so, opposed mark merely gives rise to a meaning of PIKOTARO’s song.  Therefore, opposed mark shall be deemed dissimilar to opponent trademarks from visual, phonetic and conceptual points of view.

The Board admits a high degree of reputation or popularity of “APPLE” as a source indicator of opponent’s business in connection with PC, its accessories, software and smartphones, however, provided that both marks are distinctively dissimilar and ‘APPLE’ is a dictionary word commonly known among relevant public to mean the round, red or yellow, edible fruit of a small tree, the Board considers it is unlikely that relevant consumers and traders would confuse or associate opposed mark with opponent’s mark “APPLE”.

Besides, opponent alleged that PIKOTARO might compose the song inspired by “APPLE PENCIL” and ludicrously promoted with an intention of free-riding opponent’s goodwill. However, the Board was unable to find out any fact to assume malicious intention of the free-riding by applicant from the totality of the circumstances.”


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

Trademark Opposition: “DISCOVERY” vs. “DISCOVERER”

In a recent administrative decision to trademark opposition filed by Jaguar Land Rover Limited who alleged trademark registration no. 6011666 for word mark “DISCOVERER” designating goods of “batteries and cells, telecommunication machines and apparatus, recorded video discs, and other goods” belonging to class 9 owned by a Japanese business entity is confusingly similar to “DISCOVERY” famous for four-wheel-drive vehicles produced by the opponent, the Opposition Board of Japan Patent Office (JPO) dismissed the opposition due to an unlikelihood of confusion.

[Opposition case no. 2018-900086, Gazette issue date: January 25, 2019]

 

Opposed mark – DISCOVERER

Opposed mark (trademark registration no. 6100666) just consists of a term “DISCOVERER” in a plain roman type and its transliteration in a Japanese katakana character.

The mark was filed on April 24, 2017 by designating “batteries and cells, telecommunication machines and apparatus, recorded video discs, and other goods” belonging to class 9.

JPO, going through substantive examination, admitted registration and published for opposition on February 13, 2018.

 

Opposition by Land Rover “DISCOVERY”

On April 6, 2018, before the lapse of a two-months opposition period, Jaguar Land Rover Limited filed an opposition, stating that relevant consumers are likely to confuse or misconceive opposed mark with opponent or any business entity systematically or economically connected with Land Rover due to high popularity of “DISCOVERY” for Land Rover SUV and similarity between “DISCOVERY” and “DISCOVERER”.

 

Article 4(1)(xv)

Jaguar Land Rover sought to retroactively cancel opposed mark in relation to all designated goods in class 9 based on Article 4(1)(xv) of the 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.

 

Board decision

The Board negated a certain degree of popularity and reputation of opponent mark “DISCOVERY”, 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 visual, phonetic and conceptual points of view and deemed dissimilar.

Even if car makers are looking at ways to speed up development of self-driving and recent cars consist of batteries and telecommunication apparatus in fact, given non-originality of opponent “DISCOVERY” mark and remoteness between opposed goods and vehicles, the Board held that relevant consumers of opposed goods are unlikely to confuse or associate “DISCOVERER” with opponent or any business entity systematically or economically connected with Jaguar Land Rover Limited.

Thus, opposed mark shall not be revocable to Article 4(1)(xv) of the Trademark Law and dismissed the opposition entirely.


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

KANGOL: Assessing the Similarity Between Hairbands and Head wear

In a trademark opposition trial to seek cancellation of TM registration no. 6028674, the Opposition Board of Japan Patent Office (JPO) dismissed the opposition claimed by Kangol Limited, an English clothing company famous for its head wear, because of dissimilarity between hairbands and head wear.
[Opposition case no. 2018-900149, Gazette issue date: December 28, 2018]

Opposed mark

Opposed mark, consisting of the word “KANGOL” and a kangaroo device (see below), was filed in the name of Crown Creative Co., Ltd., a Japanese business entity on June 23, 2017, and admitted registration on March 16, 2018 over the goods of hairbands and others in class 25.

It is doubtless opposed mark exactly looks the same with the KANGOL trademark owned by Kangol Limited.

 

Opposition by Kangol

On June 11, 2018, Kangol Limited filed an opposition based on its-own senior TM registration no. 5036704 for the Kangol mark (see below) over the goods of head wear, helmets, night caps and hoods in class 25.

 

In the opposition brief, Kangol asserted opposed mark shall be cancelled in violation of Article 4(1)(xi) 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.

Since the marks of the respective parties are identical, Kangol focused on arguing the designated goods, inter alia hairbands, of opposed mark is similar to hear wear.

 

Similarity of goods

Trademark Examination Guidelines (TEG) [Part III Chapter 10: Article 4(1)(xi)] set forth criteria to determine similarity of goods.
In principle, similarity of goods is evaluated whether or not the relevant goods are likely to cause confusion as if they are goods manufactured and sold by the same business entity, when an identical or similar trademark is used for the designated goods of the trademark as applied and the cited trademark due to circumstances such that normally the goods are manufactured and sold by the same business entity.
To assess the similarity of goods, the following criteria are comprehensively taken into consideration.

(i) Whether both goods are produced by the same suppliers.
(ii) Whether both goods are distributed through the same sales channel.
(iii) Whether both goods are made from the same materials and achieve the same quality.
(iv) Whether both goods are for the same usage.
(v) Whether both goods are purchased by the same consumers.
(vi) Whether respective goods constitutes finished goods or a component of other goods.

 

Board decision

In the assessment of similarity between hairbands and head wear, the Board totally denied, based on the above criteria, Kangol’s allegations by stating that:

It is true that both goods are used for many purposes and can be made from various kinds of materials. Hairbands are used for cold protection or decoration just like with head wear. Some of hairbands and head wear use cloth or rubber as a material. However, suppliers, sales channel, consumers, usage and materials of both goods are substantially different in general. If so, relevant consumers and traders are unlikely to conceive both goods with the Kangol mark would come from the same source.

Accordingly, JPO decided opposed mark shall not be subject to Article 4(1)(xi) and valid as a status quo.


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

Lee unsuccessful in removing Leeao from trademark registration

The Japan Patent Office dismissed a trademark opposition claimed by the second largest manufacturer of jeans in the United States, The H.D. Lee Company, Inc. (LEE) against trademark registration no. 5990967 for the Leeao logo mark in class 25 by finding less likelihood of confusion with “Lee” because of remarkable dissimilarity between the marks.
[Opposition case no. 2017-900381]

 

Leeao

Opposed mark “Leeao” (see below) was filed by a Japanese business entity on April 28, 2017 by designating clothing and clothes for sports in class 25.

Going through substantive examination, the JPO admitted registration on September 29, 2017 and published for registration on November 21, 2017.

LEE’s Opposition

To oppose against registration, LEE filed an opposition on December 20, 2017.
In the opposition brief, LEE asserted the opposed mark shall be cancelled in violation of Article 4(1)(xi) of the Japan Trademark Law given a high reputation and popularity of opponent mark “Lee” in the business field of jeans having longer history than LEVIS and similarity of opposed mark with its owned senior trademark registration no. 1059991 for the “Lee” logo mark (see below) over clothing in class 25 effective since 1974.

LEE argued opposed mark gives rise to a pronunciation of ‘liː’ from the first three letters, allegedly a prominent portion of opposed mark, since remaining elements are rarely perceived as letters of “ao” from its appearance.

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.

Where opposed mark is considered similar to opponent mark and designated goods of opposed mark is identical with or similar to that of opponent mark, opposed mark shall be retroactively cancelled in violation of Article 4(1)(xi). In this regard, since LEE’s senior registration covers clothing in class 25, similarity of goods is indisputable in the case.

 

Board Decision

The Opposition Board, based on the fact-finding that Lee jeans has been distributed in Japan for five decades and its frequent appearance in media, admitted a high degree of popularity and reputation of “LEE” logo as a source indicator of opponent jeans among general consumers.

In the meantime, the Board completely denied similarity between the marks on the grounds that:

  1. Opposed mark, from appearance, shall not be seen as a combination of “lee” and “ao” unless “ao” does clearly give rise to a descriptive meaning. If so, opposed mark shall constitute one word as a whole and be deemed sufficiently distinctive in concept as well.
  2. In the meantime, relevant consumers of goods in question shall conceive opponent mark as a source indicator of famous “Lee” jeans.
  3. If so, both marks are completely distinguishable from three aspects of appearance, sound, and concept.

Accordingly, JPO sided with opposed mark and decided it shall not be cancelled based on Article 4(1)(xi) in relation to opponent mark.


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

Apple successful in a trademark opposition to block “PriPhone”

Apple Inc. achieved a victory over trademark battle involving famous “iPhone”.
In a recent trademark opposition, case no. 2017-900319, the Opposition Board of Japan Patent Office (JPO) decided in favor of Apple Inc. to cancel trademark registration no. 5967983 for word mark “PriPhone” due to a likelihood of confusion with Apple’s famous “iPhone”.

“PriPhone”

Opposed mark “PriPhone” was filed by a Japanese business entity on December 26, 2016 by designating the goods of “mobile phones; smart phones; downloadable image and music files; telecommunication machines and apparatus; electronics machines, apparatus and their parts” in class 9.
The JPO admitted registration on July 28, 2017 and published for registration on August 22, 2017.

Apple’s Opposition

To oppose the registration, Apple Inc. filed an opposition against “PriPhone” on October 20, 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 given a remarkable reputation of opponent mark “iPhone” since nearly a quarter of Japanese have favorably used iPhone as a personal device to connect with internet.
Apple argued the opposed registrant knowingly included famous “iPhone” trademark on the ground that the company promotes protective cases, covers for iPhone.

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 both marks are dissimilar, but likely to cause confusion among relevant consumers because of a related impression attributable to reputation of the well-known mark.

Board Decision

The Opposition Board admitted a remarkable degree of reputation and popularity of opponent trademark “iPhone” among general consumers which occupies the highest share (54.1% in 2012) of the smart phone market for past five years consecutively.

In the assessment of mark similarity, the Board found “PriPhone” would be perceived containing “iPhone” in the mark, provided that “iPhone”, as a coined word, is deemed a unique and famous trademark. Besides, in view of close connection between smart phones and the goods in question, similarity with respect to consumers, it is undeniable that relevant consumers with an ordinary care are likely to conceive “iPhone” from opposed mark when used on goods in question.

Based on the foregoing, the Board decided that relevant consumers are likely to confuse or misconceive a source of the opposed mark with Apple Inc. or any entity systematically or economically connected with the opponent.
If so, opposed mark shall be cancelled in violation Article 4(1)(xv) of the trademark law.


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

Apple Inc. Lost Trademark Opposition to “SMAPPLE” in Japan

The Japan Patent Office dismissed a trademark opposition claimed by the U.S. tech giant, Apple Inc. against trademark registration no. 5987344 for word mark “SMAPPLE” in class 9 and 37 by finding less likelihood of confusion with Apple.
[Opposition case no. 2018-900006]

“SMAPPLE”

Opposed mark “SMAPPLE” was filed by a Japanese business entity on March 13, 2017 by designating mobile phones in class 9 and repair or maintenance service of mobile phones in class 37.
Going through substantive examination, the JPO admitted registration on September 15, 2017 and published for registration on November 7, 2017.

Apple’s Opposition

To oppose against registration, Apple Inc. filed an opposition on January 5, 2018.

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 given a remarkable reputation of opponent mark “APPLE” in the business field of computers, smart phones, tablets, and any related business.
Apple argued the first two letters of “SM” is descriptive in connection with repair and maintenance service since it is conceived as an abbreviation of “service mark”, to my surprise. In addition, as long as the term “SMAPPLE” is not a dictionary word, relevant consumers at the sight of the term are likely to consider that the opposed mark consists of “SM” and “APPLE”.

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 both marks are dissimilar, but likely to cause confusion among relevant consumers because of a related impression attributable to reputation of the well-known mark.

Board Decision

The Opposition Board admitted a remarkable degree of reputation and popularity of opponent trademark “Apple” in the business field to manufacture and distribute computers, smart phones, audio devices and mobiles phones etc., however, gave a negative view in relation to repair or maintenance service of mobile phones by taking account of insufficient evidences Apple Inc. produced to the Board.

Besides, in the assessment of mark similarity, the Board found “SMAPPLE” and “Apple” are totally dissimilar since they are sufficiently distinguishable in visual, phonetic, and conceptual point of view. The Board also questioned Apple’s argument the first two letters of “SM” does imply a meaning of service mark. If so, it is not permissible to separate a element of “APPLE” from the opposed mark. The mark shall be compared in its entirety. As long as “APPLE” is a familiar English term among relevant public to mean a round fruit with red or green skin and a whitish inside, the term shall not be deemed a coined word.

Based on the foregoing, the Board decided that 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.


I feel the opposed mark rather gives rise to a connotation of “smart apple”, than “service mark” and “apple”.
“Service mark” is not commonly used in our daily life unless he or she has a knowledge of IP law (LOL).

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

ROLEX Unsuccessful in Trademark Battle Over Crown Logo

In a recent trademark decision, the Opposition Board of Japan Patent Office (JPO) dismissed an opposition against IR no. 1263679 filed by Rolex SA, Swiss manufacturer of luxurious watches, based on the iconic Rolex crown.

[Opposition case no. 2017-685031, Gazette issue date: August 31, 2018]

Opposed mark – Crown device

Opposed mark, consisting of a crown device (see below), was filed in the name of PWT A/S, a Danish retailer of clothing, furnishings, and accessories for men, women, and children.
The mark was filed to JPO through the Madrid Protocol (IR no. 1263679) with priority date of June 25, 2014 and admitted national registration on July 28, 2017 over the goods of “Toilet soaps, perfumery, essential oils, cosmetics, perfumed toilet preparations, preparations for cleaning, care and beauty cosmetics of the skin, scalp and hair, deodorizing preparations for personal use” in class 3, “Leather, boxes of leather or leather board, bags of leather for packaging” in class 18, and “Clothing, headgear” in class 25.
During substantive examination, JPO examiner initially issued a refusal due to a conflict with senior registrations for the Rolex crown. However, the JPO withdrew the refusal as a result of PWT’s response to partially delete goods and argue dissimilarity of mark.

Opposition by Rolex

During a two-months opposition period after registration, Rolex SA filed an opposition, stating that relevant consumers are likely to confuse or misconceive opposed mark with Rolex or any business entity systematically or economically connected with Rolex because of high similarity to the iconic Rolex crown (see above) and close association between “watches” and the designated goods in class 3 and 25.

Article 4(1)(xv)

Rolex SA sought to retroactively cancel opposed mark in relation to cosmetics and other goods designated under class 3 and clothing, headgear in class 25 based on 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.

Board decision

The Opposition Board did not question a remarkable degree of popularity and reputation of the ROLEX crown as a source indicator of opponent business.
In the meantime, the Board considered both marks give rise to a different impression in the minds of relevant consumers from overall appearance and found that the degree of similarity of marks is relatively low irrespective of a common crown design with five points and its circle-shaped ends. Besides, the Board negated close association between watches and cosmetics, apparel to the extent that watches, a sort of precision instrument, are not ordinarily manufactured or distributed by same business entity with cosmetics and apparel.

Based on the foregoing, the Board concluded that relevant consumers of goods in question are unlikely to confuse opposed mark with Rolex 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

IP High Court: “VANSNEAKER” is confusingly similar to famous “VANS” sneakers

The IP High Court ruled on August 29, 2018 to uphold the Japan Patent Office (JPO) decision to cancel TM Reg. No. 5916735 for the mark “VANSNEAKER” over shoes in class 25 due to a conflict with TM Reg. No. 5245474 for famous mark “VANS”.
[Case no. Heisei30(Gyo-ke)10026]

VANSNEAKER

Disputed mark “VANSNEAKER” in the standard character format was filed on July 25, 2016 and registered next January by designating shoes in class 25 in the name of VAN Jacket Inc., a Japanese business entity, who succeeded to apparel business of “VAN” brand all the rage in the 60’S.

Opposition by VANS Incorporated

VANS Incorporated, a US business entity, established in California 1966,  famous for “VANS” sneakers, filed an opposition  by citing its own senior registered mark “VANS” in standard character format over shoes in class 25. The JPO decided to cancel disputed mark in breach of Article 4(1)(xi) of the Trademark Law on the ground that it is confusingly similar to famous “VANS” mark from a conceptual point of view. [Opposition case no. 2017-900135]

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.

Appeal to the IP High Court

To contend, VAN Jacket appealed to the IP High Court and demanded cancellation of the decision.

VAN Jacket alleged in the court that JPO decision was based on an erroneous assumption of fact because it considered the portion of “VANS” plays a dominant role in source indicator. Given disputed mark “VANSNEAKER” consists of one word in its entirety, it is unlikely that consumers perceive the last letter “S” of “VANS” functions to represent an initial letter of “SNEAKER” as well.

Court decision

The IP High Court, however, dismissed the arguments by VAN Jacket, stating that:

  1. Cited mark ”VANS” has become famous among Japanese general consumers in connection with sneakers and shoes both at the time of filing application and registration of disputer mark.
  2. “NEAKER” does not give rise to any specific meaning. In the meantime, “SNEAKER”, combining “S” with “NEAKER” adjacent to it, is an English word familiar among relevant public to mean a type of the designated goods (shoes).
  3. It becomes usual to prevent successive letter in a coined mark consisting of two words where first word ends with a letter and send word starts with the same letter.
  4. Based on the foregoing, consumers at sight of disputed mark shall pay attention to a distinctive portion of “VANS” and are likely to conceive that the mark consists of two words, “VANS” and “SNEAKER” by omitting first or the last letter “S” of respective words.
  5. Consequently, the Court finds that disputed mark is likely to cause confusion with famous “VANS” sneakers when used on shoes.

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