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CONTENTS1. Recent developments in “non-traditional trademarks”

2. Design Protection, The Hague Convention became Accessible in Japan from May 2015.

3. Tokyo District Court Allows 3-D Trademark Owner’s Trademark Infringement Claim Against Importer of 3-D Printed

Nylon Bags

4. Recent trends of Three-dimensional trademarks in Japan

5. Recent JPO Appeal/Trial Board Decisions

6. Recent IP High Court Decisions

(1) Cases in which the distinctiveness of the marks was discussed

(2) IP High Court and District Court Cases in 2014 where similarity between the marks was discussed

(3) Well-known marks among consumers outside Japan (2014)

the japan Trademark Association

1. Recent developments in “non-traditional

trademarks”

HIGASHITANI, Yukihiro

Shobayashi International Patent & Trademark office

Non-traditional trademarks, namely, (i) Sound marks,

(ii) Motion marks, (iii) Position marks, (iv) Hologram

marks and (v) Color per se marks have been

registrable since April 1, 2015, with the revision of

the Japanese Trademark Law. These new trademarks

can be registered through the International

Trademark Application process under the Madrid

Protocol as well.

The Japan Patent Office recently released figures for

the filing and grant of registration for non-traditional

trademarks, see below.

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TotalBreakdown

Sound Motion Position Hologram Color

Number of applications granted registration 43 21 16 5 1 0

Number of application(at April 1, 2015) 481 151 32 103 3 192

Total number of application(as of October 23, 2015) 1,039 321 70 214 11 423

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The largest number of non-traditional trademark

filings has been for color per se marks, but

interestingly no Grant of Registration has been

issued yet in relation to these marks. In order to

obtain registration of a color per se mark, applicants

must prove that the mark has acquired secondary

meaning as their trademark, and thus it appears that

such a burden of proof is not easy to establish. If

letters, devices and other aspects, which motion

marks, position marks or hologram marks consist of

are not distinctive, then the trademarks as a whole

is not considered to be distinctive as well.

Sound marks consisting merely of usual sounds

which the products/goods to be covered by the

applications emit, single tone, natural sound or

sounds which are recognized as music, are not

considered to be distinctive, in principle.

Examples of non-traditional trademarks which have

been granted are as follows:

Sound marks:

Class 5- Medicine and Drugs

Position marks:

Class 3- Cosmetics, Soaps, etc.

Class 25- Pants, Longs, Short-pants, Sweat pants, etc.

Motion marks:

Class 33- Rice wine (sake), Liqueur, Fruit liquor, etc.

Class 25- Clothing, Garters, Sock suspenders, Braces,

Footwear, etc.

Hologram marks:

Class 36- Issue of gift cards and providing

information thereabout

Finally, an application for a sound mark must include

a graphic representation of the mark such as the

musical notation (including the tempo of the sound)

or a verbal description of the sound as well as a

CD-R or DVD-R recording of the sound (in MP3

format).

Also, an application for a color mark must include

the color number(s) with a special color

identification system such as the Pantone, or “RGB”

combination ratio of the color(s) as well as a clear

description of the color(s).

・The above-mentioned data and examples are

excerpts from the Ministry of Economy, Trade and

Industry’s and the Japan Patent Office’s news

release dated October 27, 2015.

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2. Design Protection, The Hague Convention became

Accessible in Japan from May 2015.

NAKAMURA, Tomohiro

Konishi & Nakamura

Japan began accepting International Design

Applications on May 13, 2015. While this is certainly

good news, there are certain key points that foreign-

based filers of International Designs need to be

aware of.

(1) Substantive Examination Remains Unchanged

Even after joining the Hague system, the substantive

examination system has remained unchanged. Every

design for which protection is sought will be subject

to an examination for novelty and creativity. An

enforceable design right will be granted if the design

passes the substantive examination and is issued a

design right. In this sense, an international

registration on the WIPO Registry simply presents a

legal notice at an international level and does not

create a right which is enforceable in Japan.

(2) Advisability of Providing Drawings showing Six

Views

While it is not a requirement under the Design Act, it

is highly likely that the examiner will require the

applicant to provide further drawings if a design is

applied for a three-dimensional product which was

represented by, for example, a single drawing such

as a perspective view. Usually, in the event of a

perspective view drawing being used to represent a

design in an application, the examiner routinely

issues an objection and treats the application as

being automatically abandoned and as not providing

protection in Japan unless further drawings are

provided.

(3) Convention Priority Claim, Must File a Certified

Document

While it is essential to claim Convention Priority in

the form of an International Application if an

applicant is seeking the benefits of priority, the

applicant is also required to submit a certified copy

of the home country application to the Japan Patent

Office within three (3) months from the date of

International Publication. If such certified document

is not filed, it is not possible to obtain the benefits of

Convention priority.

(4) Novelty Grace Period, Requirement to State and

File Document

Japan allows a six (6) month grace period for the

novelty of a design. If an applicant for an

International Design requests the benefit of such

grace period, it must state that it wishes to take

advantage of such grace period in the form of an

International Application or by notifying the Japan

Patent Office of such request within thirty (30) days

from the date of International Publication. Following

this statement, the applicant must also submit a

Statement of Proof, certifying that the design

disclosed within six (6) months from the date of the

International Application and that the disclosure

meets the requirements set forth under the Design

Act. It is advisable to have the Statement of Proof

prepared and certified by a third party. The

Statement of Proof must be filed within thirty (30)

days from the date of International Publication.

(5) Compensation for Infringing Unissued Design

An applicant may claim compensation from a person

who intentionally copies a design filed in an

International Application after such design has been

disclosed in such International Publication. The

claim for compensation can be made as long as

registration of the design in the International

Application is eventually granted by the Japan

Patent Office.

(6) Deferment of Publication

Japan has declared that it will allow International

Applicants to request a deferment of an Intentional

Publication for up to 30 months. Please note,

however, that the substantive examination will not

proceed until such time as an International

Publication of the filed design takes place.

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3. Tokyo District Court Allows 3-D Trademark

Owner’s Trademark Infringement Claim Against

Importer of 3-D Printed Nylon Bags

ENARI, Fumie

Takino, Kawasaki & Associates

[Case Number] 2014 (Wa) 31446

Judgment Issued on May 21, 2014

Tokyo District Court

[Facts]

The plaintiff, Hermes International, which is a French

Corporation manufacturing and selling bags,

couture, accessories, etc., owns a 3-D trademark

registration for a configuration of a hand bag known

as the “Hermes Birkin bag” based on acquired

distinctiveness under TM Reg. No. 5438059,

registered on September 9, 2011 in Japan, as shown

below.

[1/3] 　　　 [2/3] 　　 [3/3]

The defendant, DHS Corp Co., Ltd., which is a

Japanese Corporation importing, exporting and

selling clothing, accessories, footwear, jewelry,

furniture, interior goods, sports goods, etc.,

imported 330 nylon bags (known as “Ginger Bags”)

with a feature of the “Hermes Birkin bag” printed

thereon (hereinafter referred to as “the Defendant’s

Goods”) from South Korea and sold 192 bags

through an Internet shopping website in Japan.

The plaintiff submitted the following claims against

the defendant:

1. an injunction against importing and selling the

Defendant’s Goods by alleging that (a) since the

Defendant’s Goods were similar to the plaintiff’s

registered trademark, such acts would constitute

infringement of the plaintiff’s trademark right

based on Article 36(1) of the Trademark Act, and

(b) since the Defendant’s Goods were similar to

the plaintiff’s well-known designation of goods

and would cause confusion among consumers or

purchasers and/or since the Defendant’s Goods

were similar to the plaintiff’s famous designation

of goods, such acts would fall under Article 2(1)1,

Article 2(1)2, and Article 3(1) of the Unfair

Competition Prevention Act, and

2. compensation for damages totaling JP 3,823,000

yen, namely, JP 823,000 yen for the defendant’s

earned profits based on Article 38(2) of the

Trademark Act and Article 4 and 5(2) of the Unfair

Competition Prevention Act, and JP 2,000,000 yen

for damage to reputation, and JP 1,000,000 yen for

attorneys’ fees based on Article 709 of Civil Law.

[Issues]

I. How to determine the similarity of a 3-D trademark to

a 2-D trademark.

II. Whether the defendant’s printed bags are

considered to be similar to the plaintiff’s 3-D

registered trademark.

III. Whether the Defendant’s Goods are similar to the

plaintiff’s well-known designation of goods and

cause confusion among consumers and/or

whether the Defendant’s Goods are similar to the

plaintiff’s famous designation of goods.

IV. The amount of damages.

[Court Decision]

The Court firstly discussed the general principles

regarding the determination of the similarity between

the two marks, referring to the Supreme Court

decision on the issue, No. 1964 (Gyo-tsu) 110,

rendered on February 27, 1968, ruling that the

determination of the similarity between two marks

needs to be made on the basis of whether there is

likelihood of confusion as to the source of goods

when the applied-for mark is used on the same or

similar goods on which the cited trademark is used,

and also, the determination must be made based on

the actual situations of transactions of the goods as

far as it can be made clear, in order to consider the

overall impression, recollection, and association

which the applied-for mark gives to the general public

by the appearance, meaning and sound of the mark.

In this case, the Court found that:

(a) Even if the plaintiff’s prior trademark is a 3-D

trademark, the aforementioned general principle

should be applied to this case.

(b) However, since the Defendant’s Goods partly

contain a 2-D mark, the method of comparing the

defendant’s mark with the plaintiff’s mark in

terms of appearance should be examined, with

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consideration of the uniqueness of a 3-D

trademark in which, mainly, the configuration

itself is distinctive.

(c) Whereas a 3-D trademark is composed of a

configuration only or of a composite (a

configuration and a 2-D mark), since the whole

configuration cannot be viewed at one time, one

or more “specific perspective(s)” from which the

general public usually views the subject 3-D

trademark should be found, and it should be

considered that the specific feature(s) which the

general public views from the “specific

perspective(s)” is/are what makes the 3-D

trademark distinctive.

(d) In such a case, if the specific feature(s) of the 3-D

trademark is/are similar to a certain 2-D mark, it

shall be considered that, basically, both marks

are similar to each other in appearance.

(e) Furthermore, the issue of which perspective(s)

should be the “specific perspective(s)” of the

subject 3-D trademark must be determined

objectively case by case.

Regarding this case, the Court upheld the plaintiff’s

claim of trademark infringement by holding that (a)

whereas the front side of the plaintiff’s 3-D trademark

can be regarded as one of the “specific perspectives”

of the relevant 3-D mark, the views of the respective

front sides of the plaintiff’s 3-D mark and of the

Defendant’s Goods are similar to each other, and so,

both marks are similar to one another in appearance,

and (b) the defendant’s mark does not create any

particular meaning or sound which would be quite

different from those of the plaintiff’s 3-D trademark,

and (c) there does not seem to be specific actual

situations of transactions of the goods by which the

defendant would overcome the presumption of

negligence.

Regarding the defendant’s claim that the general

public can clearly differentiate the plaintiff’s goods

from the Defendant’s Goods by materials and prices,

the Court dismissed such claim by holding that the

defendant failed to overcome the determination that

the marks in question are similar to each other and

that the Defendant’s Goods would cause confusion

with the plaintiff’s goods.

In this case, the Court also upheld the plaintiff’s

claim that the defendant’s act of importing and

selling the Defendant’s Goods fell under Article 2(1)1

and 2(1)2 of the Unfair Competition Prevention Act

by holding that (a) the defendant’s designation of

goods is similar to the plaintiff’s well-known

designation of goods and would cause confusion

with the plaintiff’s designation of goods, and so (b)

the defendant’s designation of goods is similar to the

plaintiff’s famous designation of goods.

Furthermore, the Court upheld a part of the

plaintiff’s claim on compensation for damages by

holding that the defendant should pay JP 2,358,400

yen to the plaintiff, namely, JP 658,400 yen for the

defendant’s earned profits, JP 1,500,000 yen for

damage to the reputation of the plaintiff, and JP

200,000 yen for attorneys’ fees.

[Comments]

This is the first 3-D trademark infringement case

involving a plaintiff’s mark being a 3-D trademark

and a defendant’s mark having a confusingly similar

2-D feature.

Regarding how to determine the similarity between

a 3-D trademark and a 2-D trademark, the Trademark

Examination Guidelines of the Japan Patent Office (JPO)

indicates that a 3-D trademark is determined, in

principle, as similar in appearance to a 2-D trademark

when the 2-D trademark presents an appearance similar

to that of the 3-D trademark when it is viewed from

“specific perspective(s).”

The court decision in the present case appears to be

reasonable, and seems to be completely in accordance

with the aforementioned indication of the Examination

Guidelines and the Tokyo High Court decision in case

No. H12 (Gyo-ke) 234, in which the Court maintained

the JPO’s appeal decision that an octopus-shaped 3-D

proposed mark was similar to a prior 2-D registered

trademark because the views from the specific

perspective of both marks in question were quite

similar to each other.

Regarding Article 2(1)1 of Unfair Competition

Prevention Act, I think that a more detailed judgment

about the confusion between the plaintiff ’s

trademark and the defendant’s bags would have

been preferable because the prices of the

defendant’s bags, which were made from nylon, were

from approximately JP 15,000 yen to JP 20,000 yen,

whereas the real Hermes Birkin bags, which are

made of real leather, were from JP 500,000 yen to

more than JP 3,000,000 yen, but since the defendant

did not submit a sufficient reply in this case, the lack

of detail could not be helped.

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4. Recent trends of Three-dimensional trademarks in

Japan

SATO, Shunji

TMI Associates

(1) Introduction

It was not until 2007 that the IP High Court (“IPHC”)

opened the door for the registration of three-

dimensional trademarks for goods and/or the shapes

of containers for goods in its “Mini Maglite” case.

Since then, we have seen an increasing number of

three-dimensional trademarks being allowed at the

JPO Appeal Board level. The JPO Appeal Board,

which had hitherto stubbornly refused the

registration of three-dimensional trademarks, has

now begun to allow the registration of three-

dimensional trademarks at the JPO Appeal Board

level.

(2) “Golf Club” Case in 2011

In 2011, the JPO Appeal Board allowed the

registration of the shape of a golf club by recognizing

acquired distinctiveness through use, despite the

fact that the golf club bore a word trademark (in this

case “ROYAL COLLECTION”) and a device mark

(“RC”). In its decision, the JPO Appeal Board

considered the fact that the golf club has been used

for over fifteen years as well as the uniqueness of

the shape itself which is not shared by other golf

clubs in the market.

(3) “Stressless Chair” Case in 2012

Soon after the “Y-chair” case in 2011, where the IPHC

allowed the registration of three-dimensional

trademarks for the shape of a chair for the first time,

the JPO Appeal Board also acknowledged the three-

dimensional trademark status of the “Stressless

Chair” filed by the Norwegian company, Ekornes

ASA. In the “Stressless Chair” case, the JPO Appeal

Board judged that the three-dimensional shape of

the chair in question had acquired a sufficient level

of distinctiveness through use.

(4) Three-Dimensional Trademarks Expanding to

Include Stationery/Utensils

Since 2011, there have been several JPO Appeal

Board decisions allowing the registration of three-

dimensional trademarks for stationery goods, such

as a case involving an eraser called “KADOKESHI”

which has been sold by KOKUYO for over 8 years,

and a case regarding a utility knife sold by OLFA. In

addition, this year we have seen the JPO begin to

allow the registration of three-dimensional

trademarks for the shapes of study notebooks at the

JPO Examination level, without the need to bring the

case to the JPO Appeal Board.

(5) Iconic HONDA “Super Cub” Scooter

In 2014, the JPO Appeal Board granted a three-

dimensional trademark registration for the shape of

the Super Cub, the world’s largest selling vehicle.

This is the first time a three-dimensional trademark

has been applied to a vehicle in Japan. The JPO

Appeal Board recognized that the shape of HONDA’s

popular and classic scooter has acquired secondary

meaning due to the fact that it has been sold for

more than 50 years since its introduction in 1958.

(6) Conclusion

Considering that an increasing number of three-

dimensional trademarks for shape marks have been

allowed at the JPO examination or JPO Appeal Board

level, it appears that the JPO now has no hesitation

in registering three-dimensional trademarks provided

that the requisite criteria have been met. An

applicant who wishes to obtain a three-dimensional

trademark for a shape mark needs to show as much

evidence as possible during the JPO examination

when the JPO issues an Office Action. It is no longer

necessary for such applicant to wait until the

registration at the JPO Appeal Board or the IPHC

stage to achieve registration.

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Appeal No. Trademark in question

Goods/services in question (Classes) Registered? Reason

Appeal

2013-21184 Computers and their peripherals, etc. in Class 9 Yes

The Appeal Board found the mark to be a characteristic geometric configuration and distinctive, despite it having been found to be an indistinctive simple outline for circling words, etc. at the examination stage.

2013-25918 Health fryer Fryers in Class 11 Yes

Considering there was no fact of the mark being used as a general name for such kind of devices, the mark was not considered to be a descriptive wording for merely indicating the quality of the designated goods.

2013-650074

Prepared meat; seasoned meat and poultry; prepared entrees consisting primarily of meat or poultry in Class 29

Yes

Considering there was no fact of the mark being used as an indication of quality of the designated goods, the mark only suggested the meaning of “big meat balls fully filled with meat” and was therefore distinctive enough to be registered.

2013-650023 iPrint

Industrial printing machines and apparatus; industrial inkjet printing machines and apparatus, etc. in Class 7

YesThe mark was no longer descriptive and was considered to be a coined word for the designated goods after amendment.

2014-1627 GARDENA Classes 24 & 25 Yes

GARDENA is a name of a city in California U.S.A. but such city is not familiar to consumers in Japan as a place of origin or sales area for the designated products, and thus it has no such meaning.

2013-13389 Class 43 No

The Italian word Crocchetta is a croquette ( コロッケ ) in Japanese, and thus it is considered to signify the type of food to be served in the shop.

5. Recent JPO Appeal/Trial Board Decisions

HIROSE, Fumihiko

HIROSE Int’l Patent & Trademark

SAITO, Megumi

FUKAMI PATENT OFFICE, p.c.

KATO, Tomoko

ITOH INTERNATIONAL PATENT OFFICE

Distinctiveness of Marks (Article 3 of the Japan Trademark Act)

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2013-16023 HOLLYWOOD MADE Classes 25 Yes

According to the results of the search made by the JPO, the term HOLLYWOOD MADE is not used for the sales of clothing, and consumers would not recognize the mark as the place of origin of the goods.

2012-685012 NATURAL HONEY Class 3 No

Honey can be used as a material contained in soap. Natural Honey would be considered to be a honey and was therefore lacking in distinctiveness.

2012-20419

SMART BOTTLEスマートボトル(“smart bottle” in

Katakana)

Coffee, Mineral water, etc. in Classes 30 & 32 No

“Smart Bottle” is used for “smart and well-shaped containers or bottles” in the fields of food or beverages. Therefore, it was recognized as describing the quality of the designated goods.

2013-650082 SERVICE CLOUD

Business management services, etc.in Class35,Providing user access to a global computer network, etc. in Class 38,Providing temporary use of on-line non-downloadable software, etc. in Class 42, and On-line social networking services in Class 45

YesThere was no fact of the mark being used as an indication of quality for “Cloud computing services”.

2014-24652 LONG ISLAND Clocks and watches, etc. in Class 14 Yes

“Long Island” is not well known worldwide. Therefore, the trademark in question was not recognized as being the place of origin or the place of sale of the designated goods.

2014-2248 STRESS CONTROL Deodorant for body, etc. in Class 3 Yes

There was no fact of the mark being used as an indication of quality for the designated goods “Deodorant for body”.

2013-10634 SUPER HIT Cosmetic and perfumeries, etc. in Class 3 No

Such words are being used by consumers to convey the meaning of a great success or blockbuster.

2013-10231 FTD Medicines in Class 5 Yes

Such word could be used as an abbreviation for “Frontotemporal dementia” but had no direct or concrete meaning for describing the nature of goods

2013-299 TIVOLI Class 30 Yes

“TIVOLI” is not well known among Japanese consumers as a geographical name. No fact was found of “TIVOLI” being used as the place of origin or the place of sale of the designated goods.

2014-10400 CFO Class 41 No

CFO is a term commonly used as an abbreviation for “Chief Financial Officer” and it was not considered to be a distinguishable part of the mark.

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2013-6885 LG21 Class 29 Yes

LG stands for “Lactbachillus Gasseri” in the field of lactic acid bacteria beverages, whereas LG21 has acquired distinctiveness through long term extensive use of such mark.

2014-1568 pearl placenta Classes 1 & 3 No

The terms “pearl” and “placenta” have a concrete meaning and they were considered to be raw materials for producing Medicines and/or Cosmetics.

2013-24925 Direct Response Classes 9 &12 No

In the field of automobiles, the term “direct response” is commonly used to convey the meaning of quick and direct reaction to a driver’s operation of the accelerator or brake pedal.

2014-650064Fabrics, etc. in Class 24 Clothing, footwear, etc. in Class 25

YesThe trademark in question was not considered to be a very simple or common mark.

2014-4055キッズタブレット(“kids tablet” in Katakana)

Electronic machines, apparatus and their parts, etc. in Class 9

No

The word “tablet” is commonly used for “tablet computers”, and “kids tablet” can be easily recognized as conveying the meaning of “tablet computers for kids”. Accordingly the trademark in question was lacking in distinctiveness.

2014-14708 Auto Gear ShiftAutomobiles and their parts and fittings, etc. in Class 12

Yes

There was no fact of the mark being used as an indication of quality of the designated goods, and the trademark in question was considered to be a coined phrase for the designated goods.

2014-10227Eyeglasses and goggles and their parts/fittings in Class 9

YesThe trademark in question is not indicated in a common manner, and is essentially distinctive.

Opposition No.

Trademark in question

Goods/Services in question(Classes) Registered? Reason

Opposition

2013-900255ボール

(“ball” in Katakana)

Edible meat; meat products; processed marine products; processed vegetables and processed fruits; prepared foods, etc. in Class 29

No

Since various spherically-shaped products are being manufactured and sold in the field of groceries, consumers can easily recognize such mark as being the shape of the designated goods. Thus, the mark is only descriptive of the shape of the designated goods and is therefore indistinctive.

2014-685004 Extraordinary Oil Cosmetics, shampoos, etc. in Class 3 Yes

The English word “extraordinary” is not familiar to general Japanese consumers. Furthermore, there is no fact of “extraordinary” being used in the market as an indication of the quality of cosmetics and shampoos.

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Appeal No. Trademark in question

Decision= / ≠ Prior Trademark(s)

Goods/Services(Classes)

Reason

Appeal

2013-17475 ≠No.1

No.2

Classes18, 24, 25 & 26

Dissimilar since the trademark in question is one inseparable word in the same font and same size of lettering. The pronunciation arises as a whole [return + coordinate]. The difference in the initial pronunciations of [return] and [rental] makes the pronunciations as a whole distinguishable. Both marks are dissimilar in terms of pronunciation.

2013-20342 =(“NOVATIC” in

Katakana)ノバティック

NOVATIC

Class 16

Confusingly similar in terms of appearance and pronunciation since six out of the seven letters are the same and there is only a small difference existing in the latter part of the sounds “TEC” and “TIC”.

2013-21028 ≠ Cables, etc. in Class 9

Dissimilar since the circle device of the trademark in question is broken at the top and bottom, while the prior mark’s circle is broken at the right and left. Thus, the device elements are dissimilar.

2013-20160 ≠Fuel tanks for bikes in Class 12

Dissimilar since, although the marks are similar in terms of pronunciation, they are notably dissimilar in terms of appearance.

2013-20554 Madre ≠ Class 3

Dissimilar since the prior mark is visually recognized as being inseparable, and thus the marks are dissimilar in terms of appearance, pronunciation and meaning.

2014-4368 ≠ BLACK&BLACK

Paper towels, paper napkins, stationery, etc. in Class 16

Dissimilar since Japanese consumers are familiar with the sign “&” and its meaning, and thus, do not omit such pronunciation, and therefore the prior mark is always pronounced as [black and black] and the pronunciations of both marks are dissimilar.

Similarity between Marks and Likelihood of Confusion

(Article 4(1)11 of the Japan Trademark Act)

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2014-4555

EVパワーステーション

(“power station” in Katakana)

≠

≠

No.1 パワーステーション

(“power station” in Katakana)

No.2 Power Station

Class 9

Dissimilar since the trademark in question is one inseparable word in the same font and with the same size of letters and only the pronunciation as a whole arises [EV Power Station], with EV standing for Electric Vehicle, and Power Station meaning Power Generating Station.

2013-15620 INSIGHT ≠ Class 44

Dissimilar since, although the pronunciation is the same, both marks are dissimilar in terms of meaning and appearance.

2013-22971 ＫｉｒＫｅｉ？ ≠K I R K Eキ ル ケ

(“KIRKE” in Katakana)Class 25

Dissimilar since the difference in pronunciation between both marks [kirukei]and[kiruke] has a great influence in marks with such short pronunciations.

2014-2415

(“HAPPINESS” in Katakana)ハピネス

HAPPINESS

≠ Class 30

Dissimilar since the prior mark is visually recognized as being inseparable, namely, as meaning “happiness from Café” and therefore both marks are dissimilar in terms of appearance, pronunciation and meaning.

2014-4368

Super Magna スーパーマグナ (“super magna” in

Katakana)

= MAGNA Chemicals in Class 1

Confusingly similar since the wording “super” has poor distinctiveness in the field of “chemicals” and the distinctive portion of the trademark in question is therefore “Magna”.

2013-22001 Hug ≠ Hag Class 25

Dissimilar since, although the pronunciations arising from the two marks are the same, the meaning and appearance are dissimilar.

2014-868 CLASSIC ≠ Class 16

Dissimilar since “Munsingwear” is a well-known part of the prior mark and “Classic” is a descriptive word having poor distinctiveness and is not considered to be a trademark.

2013-21800 ≠ Class 25

Dissimilar since “HIROKO” is a common Japanese given name, whereas the logo part has distinctiveness and the prior mark has a meaning and will be pronounced as a whole.

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2013-23796 Cappa ≠ CAPA Classes 7, 16 & 35

Dissimilar since the word “Cappa” has a meaning while “CAPA” has no meaning. In marks with short pronunciations, a small difference will cause significant dissimilarity.

2014-3752 ≠Classes 3, 5, 10, 23, 24, 25, 40 & 42

Dissimilar since “A³” will give rise to a pronunciation of “A-cubic”, whereas “A3” will be pronounced as “A-three”. The prior mark “a³” has a pronunciation of “a-cubed” which is different from the “A-cubic” pronunciation of the mark in question.

2014-7834 POLE ≠ PAUL Class 3

Dissimilar since, although the pronunciations rising from the two marks are the same, the meaning and appearance are dissimilar.

2014-6474 ≠ Classes 9, 38, 41 & 42

Dissimilar since, although the pronunciations rising from the two marks are the same, the meaning and appearance are dissimilar.

2013-650028 Multiple-X ≠ Multipull Class 10

Dissimilar since the hyphen binds the mark in question together as one inseparable word and thus the pronunciations arising from these two marks are considered dissimilar.

2013-900310 ≠ SKIN Classes 9+

Dissimilar since SKINS is not considered to be a plural form of SKIN and has no recognized meaning, thus the appearances and pronunciations are distinguishable.

2014-650023 OPEN MIND ≠ Classes 16, 41 & 42

Dissimilar in terms of appearance, pronunciation and meaning, as the existence or non-existence of “the” has a great influence in marks with short pronunciations.

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2014-650038 OMINISTACK ≠ OMNISTACK Class 9

Goods:*Trademark in question: Computer hardware and software for computer servers and data storage virtualization.*Prior mark: Switches, in particular, series of switches for use in data communication networks, particularly for switching packet and cell data traffic.

The marks are dissimilar in terms of their designated goods.

2014-4555 ≠

(“MOFY” in Katakana)

Class 9

Dissimilar in terms of pronunciation, appearance and meaning since one of the pronunciations of the trademark in question,〔mofi:〕is similar to〔mofi〕, but the other pronunciation〔mo:fi:〕is considered dissimilar.

2014-650037 DUNHILL FACET ≠ FACETTE Class 14

Dissimilar since, while “DUNHILL” reminds consumers of the well-known clothing brand from the UK and is strongly distinctive, “FACET” is not recognized as a dominant part of the mark, and therefore the trademark in question is observed as “DUNHILL FACET” as a whole, or as its sole distinctive portion “DUNHILL” and not solely as the less distinctive portion “FACET”.

2013-22311 CRYSTALGUARDREVOLUTION =

CRYSTAL GUARDクリスタルガード

(“crystal guard” in Katakana”)

Coating agents, etc. in Class 1

Confusingly similar in terms of pronunciation, appearance and meaning since, in the field of coating agents used for protecting car bodies, chemical companies are likely to adopt trademarks consisting of “ ○○ GUARD”, and in view of this business practice and the relatively long construction of the trademark in question, consumers are likely to shorten it to the initial part of “CRYSTALGUARD”.

2014-3221 ≠ Class 25

Dissimilar since, given that both the words “SMILEY FACE” and the face device give rise to the same meaning of a “smiling human face”, these two elements are always observed in an integrated fashion as a whole. Thus, it is not appropriate to solely extract the face device element and compare it to the prior marks.

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2014-258 ≠ Class 9

Dissimilar since the initial part of the trademark in question will always be observed as “plus omg”, not as “omg” only. The small “+” with a circle cannot be omitted from the pronunciation since it is depicted in a gray-colored rectangle with a well-balanced outlook as a whole. Thus, the trademark in question will always be observed as a whole or as the initial part of “plus omg”, not as “omg” alone.

2013-19836 HYBRID =

No.1 ハイブリッドマット(“hybrid mat” in Katakana)No.2. ハイブリッドマットレス(“hybrid mattress” in Katakana)

Mats, etc. in Classes 7 & 20

Confusingly similar as, in lights of the designated goods, the dominant parts of the prior marks are “ハイブリッド (hybrid)”. Even though the marks are dissimilar in appearance, they are confusingly similar in terms of pronunciation and meaning.

2013-20488 PLAY GEL ≠ PLAY Class 3

Dissimilar since the trademark in question is inseparable. Although “GEL” means “jelly-like material”, the mark is pronounced as a whole, and not as “PLAY” only.

2014-4545 KATANA ≠ Class 9 Dissimilar since the prior mark is considerably designed.

2013-25574- VACS ≠ Class 9

Dissimilar since, although the pronunciation arising from each mark is almost the same, they are dissimilar in terms of appearance.

2014-10152 SEET ≠ SheetCE Class 9

Dissimilar since the prior mark is one inseparable word using the same font and same size of lettering, and it is pronounced as a whole and the marks are therefore dissimilar in terms of pronunciation.

2014-3049 ≠ Class 20

Dissimilar since the trademark in question is pronounced as [ar interior / style ne], and not as [arne].

2013-24111 ≠ BABY Class 14

*Amended Goods: Rings, necklaces, accessories for babies, commemorative accessories for babiesDissimilar in terms of appearance since the “baby” portion of the trademark in question is weak in relation to the designated goods, and the distinctive portion of the trademark in question is therefore the design of the baby’s face.

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ber 2015, Issue no. 202013-680001 =(“TIVOLI” in Katakana)

Class 30

Confusingly similar since the distinctive portion of the trademark in question is “Tivoli” which is famous as the name of a tourist resort city in Italy, or an amusement park in Denmark, and the “Tivoli” of the trademark in question and the prior mark are found to be identical in terms of pronunciation and meaning.

2014-650015 ≠ VOYAGE Class 35

Dissimilar since「agnes b」has acquired a reputation and the extracted part VOYAGE cannot be considered to be an indicator of source without the main brand.

2014-650021 EDWIN JAGGER ≠ EDWIN Classes 3, 8, 20 & 21

Dissimilar since the trademark in question is a full name and comprises an inseparable phrase in the same font and the same size, and EDWIN cannot be separated therefrom.

2014-650069 REDSTER ≠No.1

No.2 RED STAR 35

Classes 9, 18, 25 & 28

Dissimilar since, even though RED STAR will be divided from the design and numeral parts of the prior trademarks and the pronunciation is similar, the marks are dissimilar in terms of appearance and meaning and REDSTER is a coined word.

2014-15430 ≠ Classes 1, 9 & 16

Dissimilar since the appearance is different, plus the〔go〕vs〔co〕pronunciations can be clearly distinguished because of the existence of the relatively weak

〔n〕pronunciation before such difference.

2014-14428 Vitamin IP ≠No. 1 Vitamin Z

No.2 Vitamin X etc.

Class 16

Dissimilar since the trademark in question is one inseparable word from which the Vitamin part cannot be separated.

2013-890025シェルミネラル(“shell mineral” inKatakana)

= Chemicals in Class 1

Similar since the term “mineral” has poor distinctiveness, and the trademark in question is therefore viewed from its sole distinctive portion of “shell” and is thus confusingly similar to the prior marks.

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2014-6262 ≠Summitサミット

(“summit” in Katakana)

Automobiles, parts and accessories in Class 12

Dissimilar since, considering the fact that “GRAND CHEROKEE” is known, to some extent, as a brand of the applicant, this part should be seen as being the distinctive portion of the trademark in question, and the applicant’s automobiles are not considered to be traded by way of using “SUMMIT”.

2013-650039 ≠

No.1

No. 2 FISCO/ フィ スコ

(“fisco” in Katakana)

Class 21

Dissimilar since the trademark in question is pronounced as “fis + coo” (as in cool), while the prior mark is pronounced as “fis + co” (as in column), and the pronunciations are distinguishable due to the difference of the last sounds i.e. “coo” and “co”.

2014-650006 ≠ Classes 9, 11, 12, 37 & 42

Dissimilar since, although the pronunciations arising from the two marks are the same, their appearances and meanings are distinguishable.

2014-11374 SBL ≠ SPL Class 6

Dissimilar since each of the 3 alphabetic letters comprising the two marks are clearly pronounced, and therefore, the marks are sufficiently distinguishable in terms of pronunciation.

2004-18317 ≠

No.1 JMC

No.2

No.3

Class 9

Dissimilar since each of the 3 alphabetic letters comprising the two marks are clearly pronounced, and therefore, the marks are sufficiently distinguishable in terms of pronunciation.

2013-24486 ≠ROCKロック

(“rock” in Katakana)

Footwear in Class 25

Dissimilar since, although the pronunciations arising from the two marks are the same, they are distinguishable in terms of appearance and meaning.

2013-17091 =Platinumプラチナ

(“platina” in Katakana)Class7

Confusingly similar since no meaning arises from “Hoover PLATINUM” as a whole, and thus the trademark in question should be separately observed as “Hoover” and “PLATINUM”.

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2014-17450 SuperTrac ≠ T.R.A.C.Medical devices, etc. in Class 10

Dissimilar since, even though the word “super” is not overly distinctive, the trademark in question should always be observed as one unit due to it being a highly unified mark with no space between “Super” and “Trac”.

2014-3266 ≠ MONSTER Jewelry, etc. in Class 14

Dissimilar since, although “Monster” and “ENERGY” are depicted in a different logo, font and size, the trademark in question should always be observed as one inseparable word due to the highly unified appearance of the mark.

2013-16062 VIA =

Dental devices,medical devices, etc. in Class 10

Confusingly similar since the “SOLUTIONS” portion is likely to be omitted due to its low distinctiveness, and the distinctive portion of the prior mark is therefore “VIA”.

2014-8886 ≠ Class 9

Dissimilar since, although the marks are similar in terms of pronunciation, they are notably dissimilar in terms of appearance and meaning, especially.

2012-8278 = ICE Wristwatches in Class 14

Confusingly similar since “watch” has low distinctiveness, and therefore the distinctive portion of the trademark in question is “ice with device” and the pronunciation and meaning are thus the same as those of the prior mark.

2014-1023 GTX ≠ CTX Class 25

Dissimilar since the difference in the initial pronunciation of “G” and “C” renders the entire pronunciations distinguishable, and the marks are not confusingly similar in terms of appearance.

2013-20160 ≠

No.1 (“bike” in Katakana) No.2

No.3

No.4

Class 25

Dissimilar since the trademark in question is depicted with a well-balanced appearance where “UBIKE” can be viewed as a whole, and therefore the marks are not confusingly similar in terms of pronunciation, meaning and appearance.

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2014-7238 ≠No.1

No.2 Class12

Dissimilar since the trademark in question is considered to be a device mark, and therefore the marks are not confusingly similar in term of appearance, and they are dissimilar in terms of pronunciation and meaning.

2014-24220 ≠ Clothing, etc. in Class 25

Dissimilar in terms of appearance since Japanese consumers are familiar with the color name “blue” and its meaning, and “blue” has poor distinctiveness in the field of “clothing”.

2014-7519

(“bistro BEE” in Katakana)

=Providing foods

and beverages in Class 43

Coffee, Cocoa, Confectionery, Bread and buns, etc. in Class 30 Providing foods and beverages in Class 43

Confusingly similar since the word “bistro” is not recognized as a dominant part of the trademark in question and therefore the marks are confusingly similar in terms of pronunciation and meaning, even though their appearances are dissimilar.

Case No. Trademark in question

Decision= / ≠ Prior Trademark(s)

Goods/Services(Classes)

Reason

Invalidation Trial

2013-890060 ≠ Class 3

Dissimilar since the difference in appearance has a significant effect on the consumers and the pronunciation 〔ku:〕is not considered to be the sole or a main identification of the mark.

Case No. Trademark in question

Decision= / ≠ Prior Trademark(s)

Goods/Services(Classes)

Reason

Opposition

2013-900078 Ccilu － amazon =

No.1 アマゾン(“amazon” in Katakana)

No.2 AMAZON

No.3

Class 25

Confusingly similar since the trademark in question has a relatively long pronunciation as a whole, and it would not always be recognized as one inseparable word. The prior trademark “amazon” is well known among consumers for online shopping, and attention would be focused on the “amazon” portion of the trademark in question.

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2014-900052 SMARTAG ≠No. 1 SMARTNo. 2 SMARTER

etc.Class 1

Dissimilar since the pronunciation of〔sma:tag〕is different from

〔sma:t〕or〔sma:tə:〕

2014-900117 BONOBOS ≠ BONOBO Classes 25 & 35

Dissimilar since “Bonobo” refers to an anthropoid which is not familiar to Japanese consumers and will therefore be considered a coined word and thus it is not considered to have a plural form.

2012-900217 ≠

Bags, etc. in Class 18Clothing, etc. in Class 25

Dissimilar since the marks are visually distinguishable.

2003-35317 POLO GOLF =

No.1 &3 POLO

No.2

No.4

No.5

Cls.25,28

Confusingly similar since “GOLF” is a generic term for “windbreakers and rainwear for golf” among the designated goods and is therefore likely to be omitted, and thus the distinctive portion of the trademark in question is therefore “POLO”.

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Case No.Date

Trademark in question

Goods/services in question (Class)

Decision Yes/No Reason

2014 (Gyo Ke) 10089 Feb. 25, 2015

IGZO

Telecommunication machines and apparatus; electronic machines, apparatus and their parts; batteries and cells; power distribution or control machines and apparatus (Cl.9)

No (Invalidated)

The JPO Trial Board ruled that the registration should be invalidated because “IGZO” indicates the raw materials of the designated goods, for the following reasons:(1) “IGZO” was well known as a term used to describe “In (indium), Ga (gallium), Zn (zinc), and O (oxygen)” at the time of the decision of registration in the field of electronics such as liquid crystal displays and semiconductors; and(2) The designated goods include or are related to liquid crystal displays and semiconductor materials; therefore, the consumers of the designated goods include not only end-consumers but businesses.The IP High Court sustained the JPO Trial Board’s decision.

6. Recent IP High Court Decisions

(1) Cases in which the distinctiveness of the marks was discussed

HASE, Reiko

Hogan Lovells Horitsu Jimusho Gaikoku Kyodo Jigyo

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(2) IP High Court and District Court Cases in 2014 where similarity between the marks was discussed

(Hereinafter “=” means “similar” and “≠” means “dissimilar”)

SATO, Shunji

TMI Associates

Case No. Date Challenged mark

Decision = / ≠

Registered Trademark Classes Reason

Trademark Infringement Cases / Unfair Competition Cases

2014 (Ne) 426 Oct 3, 2014

(Osaka High Court Decision)

etc.

≠ 18

25

The Osaka District Court decided that the registered mark and challenged marks were dissimilar, finding that “DeNA” portion of the challenged mark was not dominant. The Osaka High Court also found that the challenged marks should be viewed as being dissimilar and found that the registered mark had not been infringed upon by the challenged marks.

Case No.Date

Trademarkin question

Decision = / ≠

PriorTrademark Classes Reason

IP High Court Decisions (Lawsuits against JPO Appeal Board Decisions)

2013 (gyo KE) 10342

Jun. 11, 2014 =

(LIFESTORE in katakna)

25

The trademark in question was found to be similar to the prior mark in terms of pronunciation and connotation. Thus, the IP High Court upheld the JPO’s Appeal Board decision which found the marks to be similar.

2013 (gyo KE) 10345

May. 21, 2014 = (MAXIMUM

in katakna) 25

The IP High Court upheld the JPO Appeal Board’s decision, finding that the trademark in question and the prior trademark were similar in terms of pronunciation and connotation.

2013 (gyo KE) 10122

Oct. 27, 2014 VIA = 10

The trademark in question was found to be similar to the prior mark in terms of pronunciation and connotation. Thus, the IP High Court upheld the JPO’s Appeal Board decision which found the marks to be similar.

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2013 (gyo KE) 10094

Oct. 29, 2014 = 30

The IP High Court upheld the JPO Appeal Board’s decision, finding that the trademark in question and the prior trademark were similar in terms of pronunciation and connotation.

Case No.Date

Trademarkin question

Decision = / ≠

PriorTrademark Classes Reason

IP High Court Decisions (Lawsuits against JPO Trial Board Decisions)

2013 (gyo KE) 10251

Feb 27, 2014

STELLA STELLA

McCARTNEY

≠ 3

The IP High Court upheld the JPO Trial Board’s decision, finding that the trademark in question and the prior trademark were dissimilar in terms of appearance, pronunciation and connotation.

2013 (gyo KE) 10322

Jun 18, 2014 =

(Tivoli in katakna)

30

The trademark in question was found to be similar to the prior mark in terms of pronunciation and connotation. Thus, the IP High Court upheld the JPO’s Appeal Board decision which found the marks to be similar.

2013 (gyo KE) 10298

Aug 7, 2014 = 25

The IP High Court found that the dominant portion of the trademark in question was “MAGGIE” and further found that such portion was similar to the prior trademarks in terms of pronunciation and connotation. Therefore, the IP High Court upheld the JPO Trial Board’s decision.

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Trial No. Trademark in Question

DecisionY/N

Prior Trademark Classes Result

Invalidation 2014-890049Sept. 1. 2014

周君記 Yes 周君記 30

“ 周君記 ”(ZHOUJUNJI) is a well-known trademark in China for a seasoning for Chinese stew (casserole) which was admitted as a famous trademark in China. The sound arising from the Chinese characters of the trademark-in-question was the same as that of the prior trademark and the mark was registered without the permission of the owner of the mark.

Invalidation 2013-890048Aug.15, 2014

アンドロイドール

(ANDROIDOLL) No ANDROID 16.25

The mark アンドロイドール is comprised of characters of the same size in one inseparable word and it can be pronounced as ANDROIDOLL which is not considered to be confusingly similar to ANDROID.

Invalidation 2014-890037Aug. 15, 2014

LALAVESI Yes LALAVESI 3

LALAVESI had acquired a reputation in the Korean market by the filing date of the Japanese application. It was not considered to be an accidental coincidence that such spelling was selected for the trademark.

Invalidation 2012-890064Mar. 24, 2014

SPCW No SPCW Method 37

S.P.C.Wall Method is a method for construction of covering walls in order to prevent rock falls or landslides. The name of such the construction method is not well known to the market or consumers.

Invalidation 2013-890020June 27, 2014

R-Map Yes R-Map 41

The demandant has been hosting seminars under the name of R-Map which stands for Risk Map for a long time and the registrant used to be a stuff member for such seminars and had bad will against the demandant.

Invalidation 2013-890045Feb.26, 14

ト リ ア スＴ●ＲＩＵＳ Yes ＴＯＲＩＵＳ 12

The trademark in question is closely similar to the well-known name of a shopping mall in Fukuoka Japan run by the demandant. The registrant had previously agreed to withdraw the application as part of an amicable settlement, but chose to keep his interest in the court action and thus had bad will against the demandant.

(3) Well known among consumers outside Japan (2014)

HIROSE, Fumihiko

HIROSE Int’l Patent & Trademark

“Yes” means that a decision was made that the mark in question fell under Article 4(1) 19

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JTA Bulletin is a newsletter issued from time to time when necessity takes place.Subjects covered by the bulletin include trademark protection, unfair competition and anything new and noteworthy to foreign practitioners. All articles on the JTA Bulletin may be accessed on the web site of JTA. URL: http://www.jta.tokyo/english/

Written and edited by the JTA Bulletin Group of International Committee© Yukihiro Higashitani, Tomohiro Nakamura, Fumie Enari, Shunji Sato,

Fumihiko Hirose, Megumi Saito, Tomoko Kato, Reiko Hase

Japan Trademark Association c/o KOSEKI & ASSOCIATES

ROOM NO.402, BENGOSHI BUILDING 2 GO-KAN, 2-18-1 NISHI-SHINBASHI, MINATO-KU, TOKYO 105-0003, JAPAN

TEL: 81-3-6432-4161 FAX: 81-3-5472-1599