May 31, 2019

Trademark News

Trademarks on parody marks

An individual ("Individual"), who is based in Okinawa and sells souvenirs, filed trademark applications for the following marks with the Japan Patent Office ("JPO") and they were registered having overcome office actions.

i) Reg. No. 5392943
Designated goods: T-shirts; headgear for wear. (Class 25)
Mark:


ii) Reg. No. 5392944
Designated goods: T-shirts; headgear for wear. (Class 25)
Mark:


Against these trademark registrations, Puma SE ("Puma") filed invalidation trials with the JPO citing its well-known trademark registration shown below.

Reg. No. 4637003
Owner: Puma SE
Designated goods: clothing; footwear [other than special footwear for sports]; clothes for sports; special footwear for sports; etc. (Class 25)
Mark:


The JPO recognized the well-known status of Puma's trademark but issued decisions on these trials finding that the trademarks of the Individual are not similar to the trademark of Puma. Also, the JPO concluded that there was not a likelihood of confusion on the origin of the goods and the trademarks of the Individual were not contrary to public order on morality. Puma appealed to the IP High Court seeking revocation of these decisions.

The IP High Court made judgements reversing the JPO's decisions. In addition to acknowledging the well-known status of Puma's trademark, the IP High Court found that although there were some differences between the trademarks, namely the details of the silhouette, the existence of the flowered pattern, etc., overall silhouettes are similar and the trademarks would have similar impressions. Consequently, the IP High Court concluded that there was a likelihood of confusion between the goods of Puma and the Individual and cancelled the JPO's decisions (IP High Court Nos. 2017 (gyo-ke) 10206 and 10207).

In the meantime, the Individual also obtained trademark registrations including the following trademark registration.

Reg. No 5392942
Designated goods: T-shirts; headgear for wear. (Class 25)
Mark:

Puma filed invalidation trials against those trademark registrations as well. However, both the JPO and the IP High Court found that the trademarks were not similar to Puma's trademark and there was not a likelihood of confusion on the origin of the goods due to the existence of the word "SHI-SA," which refers to a lion-dog from Okinawan mythology (IP High Court Nos. 2017 (gyo-ke) 10203, 10204 and 10205).