GRAND CANYON was refused as a trademark in Japan

horseshoe-bend-page-arizona-colorado-river-86703.jpegThe Japanese Patent Office refused to register as a trademark the phrase  GRAND CANYON  for class 25 – clothes, shoes etc.

The reason behind this decision was the fact that according to the law in Japan and many other countries, signs that indicate a geographical origin in regard with the relevant goods and services are not allowed for registration as trademarks.

In the case at hand, GRAND CANYON  is a well-known US national park, recognized by UNESCO as a World Heritage Site.

What’s more, GRAND CANYON is famous with all sorts of merchandising products known and purchased by consumers around the world, including those in Japan.

From that perspective, it is highly likely consumers to perceive it in connection with the US national park than as a trademark sign.

Source: Masaki MIKAMI, Marks IP Law Firm.

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Adidas won a trademark opposition in Japan

great-torii-of-miyajima-1425480_960_720.jpgAdidas won an opposition against the following application for a figurative trademark, applied for Class 25 by a Chinese company:

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Against this sign, Addidas opposed its following earlier national trademark in Japan in Class 25 too:

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According to the German producer, both signs are confusingly similar because their visual elements create a similar impression in consumers. What’s more, Adidas’s mark has a reputation which increases, even more, the risk of confusion.

The Opposition Board coalesce with Adidas concluding that there is a possibility for consumer confusion because both signs are visually similar for identical goods and all of that is supported by the earlier trademark’s reputation.

Source:  Masaki Mikami, MARKS IP LAW FIRM (JAPAN) 

Asics lost a lawsuit before the EU Court regarding its logo

sneaker-1024978_960_720The well-known Japan producer of  footwear and sports equipment Asics lost a lawsuit before the European Court regarding an opposition filed by the company against the following figurative European trademark for classes 18, 24 и 25:

download (1).pngAgainst this mark, Asics submitted the following earlier EU and Spanish marks in classes 18, 25 и 28:

download.pngThe EUIPO rejected the opposition considering the signs as not confusingly similar. The decision was appealed but the European court upheld it.

According to the to Court:

It should be noted that the mark applied for is composed of four thin straight black lines with a serrated outline. Two of those lines, placed in parallel, go upwards diagonally from left to right and cross, in their middle, two other shorter parallel lines, going downwards diagonally from left to right.

As regards the earlier marks, they are composed of four thick black lines. Two straight lines go downwards diagonally from left to right, while moving slightly apart from each other, and cross two converging curved lines which go upwards from left to right. The convergence and crossing of the straight lines and the curved lines give the earlier marks, which may be perceived as the letter ‘x’ superimposed on the letter ‘v’ or on the character ‘’, an impression of movement.

Thus, even if the consumer does not recall details such as the size or thickness of the lines, the overall impression between, on the one hand, thick lines and curves forming a letter ‘x’ superimposed on a character ‘’ and, on the other hand, thin straight lines that can be perceived as a character ‘#’ inclined backwards to 45 degrees is so different that the consumer will not make a connection between the signs at issue solely on the basis that they are both composed of parallel lines crossing two other longer lines.

In the light of the foregoing, the Board of Appeal found correctly that the overall impression given by the marks at issue was different, which leads to the conclusion that there is no visual similarity.

The Asics’ argument that the signs are similar even more when the way how Asics’ marks are used on some of their products is taken into account was dismissed because the only thing which is relevant for the comparison is the way how signs are registered.

The well-known status of the earlier marks was not be considered too because the Court found that marks weren’t similar enough.

The full text of the decision can be found here.

Nintendo won a copyright lawsuit against a go-kart operator in Tokio

wario-1912622_960_720Nintendo successfully won a copyright lawsuit in Tokio against the local company MariCar Inc., an operator of a go-kart service which provides its customers with costumes that look alike Nintendo’s famous game characters.

In contrast with many countries around the world, it is possible to drive a kart on public roads in Japan.

According to Nintendo, such use of its characters constitute a copyright infringement because the company has never given a permission.

The Court agreed with this claim and imposed a compensation.

This case is a good example of many similar practices, not only in Japan, where companies use famous characters for different entertainments or advertisements without receiving the necessary copyrights from the relevant owners.

Source: The Japan Times

Aston Villa lost an opposition in Japan

Aston Villa v Stoke City - Premier LeagueThe UK football club Aston Villa lost an opposition against the following trademark that was applied for classes 12, 25, 35:

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Against this mark Aston Villa evoked its following earlier mark in class 25:

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According to the Japan Patent Office, both signs are not confusingly similar because the earlier mark includes the abbreviation AVFC besides the lion depiction. Furthermore, the lion character is widely used in heraldic which leads to lower distinctive power. On top of that, there are some differences between the lion depictions themselves.

Source:  Masaki MIKAMI

Bentley and Aston Martin failed against a Japanese trademark application

The Japan Patent Office dismissed an opposition filed by BENTLEY MOTORS и ASTON MARTIN against the following Japanese trademark application for Class 12:

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This mark is used by Toyota and Tsuburaya ( company responsible for the creation of the Ultraman superhero) for advertisement purposes.

The earlier marks specified in the opposition were:

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According to the Patent Office, there was no possibility for consumer confusing despite the fact that the earlier marks had a reputation on the market. The marks were phonetically, visually and conceptually different according to the Office. The graphical resemblance wasn’t sufficient. What’s more this conclusion was supported by the fact that Bentley’s and Aston Martin’s marks coexisting for many years without to create any confusion.

Source:  Masaki Mikami.

Adidas won a trademark case in Japan

Masaki MIKAMI informs about a trademark victory of Adidas in Japan. The case concerns the following registered trademark by a Japanese company for Class 25:

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Adidas filed an opposition against this mark but unsuccessfully. Fore years later the company initiated an invalidation procedure, just before the five years period of acquiescence. Adidas based its move on the following earlier trademark:

adidas-300x261This time, the Patent Office ruled that both signs are similar and the later mark had to be invalidated because:

  • The Adidas’ mark is a mark with a strong reputation in Japan, proved since 1971;
  • The mark hadn’t been changed significantly throughout this period of time;
  • The later mark gives rise to the same visual impression in the consumer’s mind by sharing similar graphical representations.

Source: Marks IP.