April 2014, Issue no. 19

Office cannot first issue a notification of allowance 3. "Kawasaki" Trademark Application / IP High Court on Design A and B. Instead, the examiner must wait Decision for the completion of the examination for each of Designs A, B and C. In this respect, a revised HIGASHITANI, Yukihiro Implementing Regulation is expected to relax such Shobayashi International Patent & Trademark Office procedural restriction and allow the issuance of a notification whenever an examination is completed [Case ] 2012 (Gyo-ke) 10002 on a design by design basis. Judgment Issued on September 13, 2012 Intellectual Property High Court. 3-2. Partial Design Protection The Bill allows requesting to be made for partial [Snapshot] design protection, the same as for the national filing Kawasaki Heavy Industries, Ltd. (the “applicant”) of designs. Meanwhile, it will depend on the was established as a shipyard in 1896. The applicant jurisdiction regarding the technicalities of how a is one of the major heavy industrial companies in claim seeking partial protection will be made. The Japan and has been engaged in manufacturing and Government will consider the technical procedures selling two-wheeled motor vehicles, aircraft, railway necessary for identifying the part to be protected. rolling stock, seaborne vessels and other machinery. End On the other hand, “Kawasaki” is also known as the name of a large city in Kanagawa Prefecture in Japan. Moreover, “Kawasaki” is a common surname in Japan. Indeed, the “Kawasaki” included in “Kawasaki Heavy Industries, Ltd.” was the surname of the founder of the company. The applicant successfully obtained the registration of the trademark (Reg. No. 4465066) in 2001 in respect of the goods “motorboats navigated with motorbike steering and their parts/fittings, two- wheeled motor vehicles and their parts and fittings” in Class 12 after proving that the mark had obtained secondary meaning as a mark that identifies the applicant’s products through use. That is, the trademark was recognized as a well-known trademark in respect of the above goods in Class 12. The applicant subsequently filed an application with the JPO for the subject trademark, which is the same as the trademark (App.No.2009-52869, the “subject trademark”) in respect of “apparel products” such as “clothing, belts for clothing, headgear for wear, gloves and mittens (clothing), neckties, aprons (clothing)” in Class 25. The Board of Appeals at the JPO rejected the application for the subject trademark under Article 3, Para. 1, Items 3 & 4 of the Japan Trademark Law on the grounds that the trademark consists solely of a mark indicating, in a generic way, the origin or place of sale of the designated goods and that consists solely of a mark indicating, in a generic way, a common surname. Further, the Board of Appeals stated that it could not determine that the subject

3 trademark had acquired a secondary meaning as the name “Kawasaki.” In the applicant’s second brand applicant’s trademark in respect of “apparel products” image survey of almost the same scale, in which under Article 3, Para. 2 of the Japan Trademark Law the trademark was shown to participants in based on the evidence submitted by the applicant. connection with apparel products such as caps, The applicant then appealed to the Intellectual T-shirts, jackets, etc., only 10.4% associated such April 2014, Issue no. 19 Property High Court. mark with the city name “Kawasaki.” Furthermore, in these surveys there were almost

[Issue] no participants who associated the subject (1) Whether the subject trademark consists solely of trademark with the surname “Kawasaki.” Hence, a mark indicating, in a generic way, the origin or the subject trademark is neither a mark solely place of sale of the designated “apparel indicating in a generic way, the origin or place of products”, and whether it consists solely of a sale of the designated goods, nor a mark solely mark indicating, in a generic way, a common indicating in a generic way, a common surname. surname; in other words, whether the trademark is inherently distinctive or non-distinctive. Issue (2): Acquired distinctiveness (i) Even if the goods/services for which an applicant (2) Whether it can be determined that the subject has been using its trademark for many years are trademark has acquired a secondary meaning as different from the designated goods/services of the applicant’s trademark in respect of the an application for this trademark, the trademark designated “apparel products” in Class 25. is registrable for the designated goods/services Further, in making the above determination, can under Article 3, Para. 2 if the trademark can also the fact that the same trademark has already be recognized as being distinctive for the been determined to be well known as the designated goods/services. applicant’s trademark in respect of the goods (ii) The subject trademark has obtained a reputation “motorcycles and other goods related thereto” in as a brand of motorcycles and related products. Class 12 be taken into consideration. The trademark has been used for the applicant’s main products, i.e., motorcycles, since the 1970s. [Summary] The IP High Court overturned the earlier Moreover, since the 1980s this trademark has decision by the Board of Appeals at the JPO. The IP been used as the house (corporate) mark of the High Court found that the subject trademark (i) is applicant and its group companies in respect of inherently distinctive and registrable, and (ii) has their businesses in relation to sea, land, air and acquired a secondary meaning as the applicant’s outer space, gas turbines, machinery, and trademark in respect of the designated “apparel motorcycles, etc. products” in Class 25. The following reasons were given: (iii) Since 1989, the subject trademark has also been used by the applicant’s 100%-owned subsidiary Issue (1): Inherent distinctiveness for apparel products. Sales for the past three (i) It is notable that the subject trademark is years of apparel products bearing the subject described not in a simple gothic font but in an trademark total around 500 million yen. This is extremely fat font type which is similar to Arial not a substantial amount when compared to the Black font type. Thus, the trademark has a total gross sales of clothing in 2010 in Japan of 15 distinctive appearance giving a dynamic, heavy, trillion yen; however, 500 million yen is not an solid impression to those seeing the trademark. insignificant amount. (ii) In the applicant’s first brand image survey of (iv) The applicant’s two brand image surveys showed more than 1000 people ranging in age from 18 to that the majority of participants recognized the 69 years old, in which the subject trademark was trademark as being a reference to motorcycles, shown separately to the participants from the sports products or a business brand. Even in the designated “apparel products”, more than 50% second survey, in which the trademark was associated such mark as being a reference to shown to participants with apparel products, motorcycles. Only 3.1% associated it with the city more than 80% of the respondents recognized the

4 April 2014, Issue no. 19

trademark as being a logo of a corporate brand, a 4. “LADY GAGA” Trademark Application / IP High logo of a product/service brand, or a logo of a Court Decision business brand. ENARI, Fumie Takino Kawasaki & Associates The IP High Court held that the subject trademark has also acquired distinctiveness in respect of apparel [Case Number] 2013 (Gyo-Ke) 10158 products and thus is registrable for such goods. Judgment Issued on December 17, 2013 Intellectual Property High Court [Comments] (1) We consider that the present judgment is [Facts] reasonable. The plaintiff, Ate My Heart Inc., which is a company “Kawasaki” itself is well known as both a city owned and controlled by Lady Gaga, filed a and a surname in Japan. For example, divisional application for registration of “LADY “Munenori Kawasaki” of the GAGA” in standard characters (“the Mark”) for is now active in Major League in the “phonograph records; downloadable music files; United States. The IP High Court, however, exposed cinematographic films; pre-recorded video found that this trademark is inherently discs and video tapes” in Class 9 on March 28, 2011 distinctive because it is stylized as shown based on the parent trademark application in above. It appears that the results of the two Classes 3, 9, 14, 16, 18, 25, and 41 filed on April 12, market surveys contributed greatly to this 2010. The plaintiff received a final decision of finding. rejection mailed on October 4, 2011 from the Japan (2) In this particular case, the IP High Court showed Patent Office (JPO). a new interpretation of Article 3, Para. 2 of the The plaintiff filed an appeal against the Japan Trademark Law (as mentioned in the aforementioned final decision of rejection on above Issue (2) (i)). December 27, 2011, but the appeal board rendered That is, the applicant is a heavy industry an appeal decision dated February 7, 2013 (mailing company and, accordingly, the designated goods date) concluding that the original decision of of the subject trademark, namely apparel rejection should be maintained; the plaintiff then products, are not the main products of the brought an action before the IP High Court on June applicant. 6, 2013, requesting that the Court should rescind the Thus, the applicant could prove that this JPO’s appeal decision. trademark had been well known for the applicant’s main products, whereas the applicant [Issues] could not prove that the trademark had been (1) Whether the Mark is unregistrable under Article well known for apparel products. However, the 3(1)(iii) because the Mark directly indicates the applicant could successfully prove that the content of “phonograph records; downloadable trademark had been distinctive for apparel music files; pre-recorded video discs and video products. tapes” (“the subject goods”). The IP High Court, showing the new (2) Whether the Mark is unregistrable under Article interpretation as mentioned in the above Issue 4(1)(xvi) because the Mark would be likely to (2) (i) and considering and gauging the strength mislead as to the quality or content of the goods of the distinctiveness of the subject trademark as if used on goods which have nothing to do with a house (corporate) mark for their main products Lady Gaga. based on the evidence presented, determined that this trademark is also distinctive in respect [Court Decision] of the apparel products and thus regsitrable The court affirmed the appeal decision, holding as under this Article. It appears that, here too, the follows: results of the two market surveys contributed (1) Considering that Lady Gaga is a globally well- greatly to this finding. known American female musician, if the Mark is

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