The 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.
Adidas won an opposition against the following application for a figurative trademark, applied for Class 25 by a Chinese company:
Against this sign, Addidas opposed its following earlier national trademark in Japan in Class 25 too:
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)
The UK restaurant chain for Japanese cuisine Wagamama won a trademark dispute against an application for a new trademark Wakayama applied for prepared meals, instant meals” and other food products “all consisting principally of noodles.
According to the restaurant chain, this trademark was confusingly similar to their one, what’s more, it could take advantage from Wagamama reputation on the market.
According to the applicant, there was no conflict between both signs because their trademark covers different letters.
The UK IPO has issued a decision stating that the later mark can create a consumer confusion due to the high level of visual and aural similarities in the presence of identical and similar goods. The different letters in the applied for trademark cannot overcome this negative outcome.
Nintendo 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
The UK football club Aston Villa lost an opposition against the following trademark that was applied for classes 12, 25, 35:
Against this mark Aston Villa evoked its following earlier mark in class 25:
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
The Japan Patent Office dismissed an opposition filed by BENTLEY MOTORS и ASTON MARTIN against the following Japanese trademark application for Class 12:
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:
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.
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:
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:
This 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.