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.

Christian Louboutin failed to register its red sole as a trademark in Japan

The popular shoe manufacturer Christian Louboutin is well-known for the attempt to register the red soles of its shoes as a trademark around the world. This creates a lot of disputes either with the local Patent Offices or with competitors.

One such attempt, this time in Japan, was decided by the Japan Patent Office and the result is not encouraging for the company.

Christian Louboutin tried to register the following figurative trademark in class 25:

The Patent Office issued a refusal based on absolute grounds – lack of distinctive character and the fact that this form has an aesthetic purpose because of which consumers are attracted to buy.

Christian Louboutin appealed by submitting evidence for acquired secondary distinctiveness. The main piece of evidence was an online brand awareness survey covering three cities in Japan. According to the survey, in the case of open-ended questions, 43.35% of the respondents recognized the red sole as a Christian Louboutin product. In the case of closed-ended questions, 53.99% reached that conclusion.

Still, the Patent Office wasn’t impressed. The reason was that this survey covered only locations where the company had stores, it didn’t show consumer awareness on a national level.

In addition, the Office considered that such registration could restrict competition because many other shoe manifacturers had used similar appearance for their products.

What is certain in such difficult cases is the need for good preparation. Only one piece of evidence, including a survey, most likely will not be able to solve the matter. An entire strategy and much more support are necessary in order to color trademark applications to be successful in most countries.


Fiat Chrysler lost a trademark dispute over JEEP in Japan

One new interesting trademark dispute, reported by Masaki Mikami, was solved by the Japan Patent Office.

The case at hand concerns a new trademark application in Japan filed by an individual for the sign JEEPER in class 8 –  hand tools.

Against this application, an opposition was filed by the automotive manufacturer Fiat Chrysler. The ground was an earlier mark JEEP for which the company claimed reputation amongst Japanese consumers due to which arising of confusion was possible.

The Patent Office admitted that the earlier mark JEEP has some level of reputation in the country but disputed the fact that it covers the above-mentioned goods in class 8.

According to the Office, both signs were not similar enough from the visual and phonetic points of view. Conceptually there was no similarity too because the mark applied for had no specific meaning while the earlier mark was associating with 4×4 vehicles.

Based on this the opposition was dismissed in its entirety.

Superman tried but lost a battle in Japan

One interesting dispute from Japan shows how language perceptions and differences can be crucial for trademark similarity.

In the case at hand, the well-known Japanese inventor Dr. Nakamatsu filed an application for the following trademark in classes 5,9,10,25,28, 35, and 45:

The mark was used for face shields which prevent from Covid-19 spreading.

Against this application, an opposition was filed by Warner Bros. Entertainment Inc. based on early registered word and combined marks for SUPERMAN in classes 25 and 28. According to the company, there was a similarity between both signs from a visual, phonetic, and conceptual point of view which can make consumers to associate the latter mark with the superhero character Superman.

The Patent Office, however, disagreed and dismissed the opposition in its entirety. According to the Office, considering the way how the mark applied is represented, including in katakana characters, there was no conceptual and visual similarity. The Office didn’t find specific meaning in the later mark to associate with the superhero character.

That’s an interesting decision which of course is based on national language specifics and perceptions. If this was a case in Europe or the US, most likely the opposition would be successful because the word M.E.N can be interpreted as MEN which is a plural form of MAN, so there is a solid conceptual and phonetic similarity.

Source: Masaki MIKAMI – Marks IP Law Firm.

To be Apple or not to be – a trademark dispute in Japan

Masaki Mikami has published another interesting trademark dispute from Japan this time focusing our attention on the question – To be an apple or not to be.

In the case at hand, we have the following already registered figurative trademark in class 9 – protection covers and cases for smartphones, protection covers and cases for tablets, cases for laptops:

Apple Inc, filed an application for invalidation of the mark based on its following earlier figurative mark in class 9, for which an acquired reputation was claimed:

The Japan Patent Office acknowledged that Apple’s mark has a strong reputation amongst Japanese consumers.

Nevertheless, the Office dismissed the invalidation request finding both signs not confusingly similar.

From a visual point of view, the marks were not similar enough even if the later sign was rotated 90 degrees to the left. According to the Office, the sign does not create the same impression due to some details and overall appearance.

The phonetical comparison was not possible because both signs had no particular sound.

Conceptually, the earlier sign relates to Apple as a company and technology products and services whereas the latter mark has no specific meaning.

Based on this the Office concluded that there is no similarity and from that perspective any reason for invalidation.

Source: Masaki Mikami – Marks IP Law Firm.

Samsung lost an opposition against FUNKY GALAXY in Japan

KING Entertainment Co., Ltd filed in 2019 an application for trademark „Funky Galaxy“ in Japan for Nice classes: 9 (telecommunication machines and apparatus; personal digital assistants; smartphones; electronic machines, and apparatus and their parts.), 16, 35, and 41.

One of the biggest smartphone manufacturers in the world Samsung filed an opposition against this application based on several earlier marks for GALAXY in classes  9, 35 и 41.

According to the company, both signs were confusingly similar especially in the light of the fact that Samsung’s Galaxy phones were some of the most well-sold phones in Japan.

The Patent Office, however, dismissed the opposition in its entirety. Although the Office acknowledged Samsung’s reputation for its Galaxy brand in the country, it found both signs as dissimilar from a phonetic and visual point of view due to the first element in the mark applied for FUNKY.

Conceptually both marks were not similar too because the latter sign has no specific meaning for the consumers in the country while the earlier marks are related to the term Galaxy as a huge space of stars and planets.

Source: Masaki MIKAMI – Marks IP Law Firm.