Christian Louboutin lost an unfair competition dispute in Japan

This blog has published news here and here about  Christian Louboutin‘s struggles to protect its red-sole ladies’ shoes around the world. After failing to register a trademark for its red sole in Japan the company tried to protect it against the Japanese competitor Eizo Collection Co., Ltd. based on the Unfair Competition Prevention Law.

Eizo produces ladies’ shoes including one with red soles.

Being unhappy with this Christian Louboutin filed a lawsuit in order to prohibit such use claiming an established reputation for its red soles.

The Tokyo District Court wasn’t impressed and dismissed the case which provoked an appeal.

The IP High Court upheld the lower Court’s position. Reaching this conclusion the Court considered that Louboutin’s shoes and those of Eizo are in different price segments. More expensive products require more attention in the process of purchasing as a rule of thumb. In addition, the Court pointed out that most shoes bear the producer’s brand apart from the visual aspects, this is true even in the case of online sales.

When it comes to the claimed reputation, the Court considered that it was not proved sufficiently. The provided research showed that 51,6% of the women between their 20s and 50s living only in big cities associate the red soles with Louboutin. According to the Court, this was not enough for a remarkable reputation to be established in the market as a whole.

Source: Masaki Mikami, Marks IP Law Firm.

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Hyatt lost a trademark dispute in Japan

The Japan Patent Office has issued an interesting decision relating to trademark similarity which might be viewed as debatable in some countries.

The case at hand concerns the registered trademark GRAN CLUB by a Japanese company for classes 43 and 44 – restaurants, hotels and temporary accommodations, retirement homes, beauty salons, and so on.

Against this mark, an invalidation procedure was initiated by the well-known multinational hospitality company Hyatt International Corporation on the grounds of their earlier mark for GRAND CLUB being protected and used for the same services.

The Patent Office found both marks dissimilar due to the fact that the first word in the later mark has no specific meaning and the presence of the letter D in the earlier sign. The Office considered this as enough reason for consumers not to be confused.

Hyatt argued that their mark was being pronounced ɡræn-klʌb where D was a silent letter but the Office considered there was no evidence that consumers in Japan pronounce the word in that way.

In a contrast, such a dispute in Europe most likely will end with a conclusion for similarity. The reason is that one letter difference at the end of a word is not enough to overcome the similarity thread in most cases especially when the other words are identical and the goods and services are similar.

However, this case not only shows that trademark practice varies in different countries but that language perception and understanding can play a decisive role in some situations.

Source: Masaki MIKAMI – Marks IP Law Firm.

General Motors lost a trademark dispute over its trademark HUMMER

 

Masaki MIKAMI reports another interesting trademark case from Japan focusing our attention on the famous Hummer SUV. The dispute concerns the following trademark application filed in Japan in 2021 for class12 – bicycles and class 22 – tents:

Against this application, an opposition was initiated by the US car manufacturer General Motors LLC on the ground of its earlier mark HUMMER in classes 6,9,12,13,22.

The company considered both signs similar enough to cause consumer confusion, especially taking into consideration the popularity and reputation of the earlier mark.

The Japan Patent Office, however, dismissed the claim for the existing reputation of the US company’s mark amongst the consumers in Japan. The reason was the fact that these SUVs had been selling in the country but in 2010 their production was suspended. There was no solid evidence for continuous sales, market shares, advertisements, etc., that could suggest clearly that the mark had an established reputation in the country.

When it comes to the signs themselves, the Office found them dissimilar from visual and phonetic points of view. Conceptually both marks have no specific meaning for Japanese consumers at all. According to the Office, the first part of the mark applied for HEAVYDUTY, which has no meaning for the consumers, was distinctive enough in order to make the difference between the signs. This in conjunction with the graphic elements was enough to overcome the similarity between the marks.

Nivea lost a trademark dispute in Japan

The well-known German producer of cosmetics Beiersdorf AG has recently faced some legal challenges in a trademark dispute in Japan.

The case concerns a trademark application for “NYFEA” filed by a Chinese company in classes  3, 8, 9, 10, 11, 16, and 21. Some of the goods covered were cakes of toilet soap, cleansing milk for cosmetic purposes, detergents, beauty masks, nail varnish, dentifrices, perfume, and incense.

Against this application, an opposition was filed by Beiersdorf AG based on an earlier mark NIVEA for the same goods. The company claimed a reputation of its mark stating trade use in the country since 1968 accompanied by strong sales and many advertisement campaigns. What’s more, the mark written in Japanese Katakana character was included in the Patent Office’s database with famous trademarks.

Surprisingly or not so, the Patent Office dismissed the opposition. First of all the Office didn’t consider the signs similar enough. The main argument for this was the difference between letters YF and IV which creates different phonetic and visual perceptions. There was no base for conceptual similarity as well.

Another important reason for the failure of this opposition was the fact that apart from stating its trademark reputation, the German company did not submit any evidence to support its claims. The fact that Katakana’s character version of the mark is proven famous mark was not enough for the assumption that the sign in Latin was famous too. Here evidence for sales, advertisements and market shares were necessary.

Source: Masaki MIKAMI, Marks IP Law Firm.

A trademark dispute for LE MANS in Japan and its association with the famous car racing

The Japan Patent Office has recently ruled in a trademark dispute that focuses our attention on the world’s well-known car racing “24 hours of Le Mans”.

Everything started with a national trademark application for “Le mans de elegance” in class 25 – clothing, garters, sock suspenders, braces [suspenders] for clothing, waistbands, belts [clothing], footwear, masquerade costumes, sports shoes, clothes for sports.

This application triggered opposition by AUTOMOBILE CLUB DE L’OUEST (ACO) based on several earlier marks for LE MANS  in class 25.

According to ACO, the earlier marks were famous amongst consumers in Japan in relation to the oldest car racing in the world “24 hours of Le Mans”. The company stated that de elegance part in the later mark was descriptive of the goods in class 25. This made the first part Le mans identical to the AOC’s marks. What’s more the company argued that there is a relation between clothes and car racing citing a previous Patent Office practice on that matter.

The Office, however, wasn’t impressed and dismissed the opposition. While it was true that “24 hours of Le Mans” was a popular event, the submitted evidence didn’t prove that LE MANS alone is famous too.

According to the Office, the signs were not similar enough from a phonetic, visual, and conceptual point of view, especially the fact that Le man associates with a town in France.

Source: Masaki Mikami, Marks IP Law Firm.

Apple lost a trademark dispute for MAC in Japan

One interesting trademark dispute from Japan shows us how difficult sometimes is famous trademarks to be invoked in opposition procedures.

The case concerns a trademark MACLOGIC filed by a local company in Japan for classes 9 and 42 – mainly computer software and design.

Against this mark, an opposition was filed by Apple Inc based on an earlier mark from MAC accompanied by a claim of trademark reputation. According to Apple, the mark applied for was similar to the earlier one due to the identical first part MAC, which was famous amongst Japanese consumers in relation to the company’s laptops and software. This was able to create consumer confusion in regard to the source of trade origin of the goods and services.

The Japan Patent Office, however, didn’t find both marks similar enough from a phonetic, visual, and conceptual point of view.

What’s a more, the Office considered the earlier mark reputation as established only for some consumers in the country but not for the public in general. Because of this, the opposition was dismissed.

The interesting moment in this decision was the fact that the reputation of a mark amongst the relevant consumers was not enough in order for this claim to be well established for the proceeding.

Source: Masaki MIKAMI, Marks IP Law Firm.

Puma won a dispute over figurative trademarks in Japan

Masaki MIKAMI reports about a dispute over figurative trademarks in Japan. The case at hand concerns a trademark application for the following figurative mark applied for class 25:

Against this sign an opposition was filed by the German sportswear manufacturer PUMA on the ground of the following early famous sign in class 25 too:

Puma has been using this sign for most of its sports shoes since 1958. The company submitted evidence for the available reputation of its mark in Japan, amongst other annual sales of 15 billion yen and 4% market share.

The Patent Office agreed that the earlier sign has a strong reputation in the market. In the assessment of the signs, the Office concluded significant similarities to the extent that the new sign can be perceived as a reversed version of the earlier sign.

Taking into account the identity and similarity between the goods in both marks, the Office considered both marks as similar enough to create consumer confusion about the source of trade origin.