(JP Patent) Fees for Patent Examination Requests to Be Revised Lower

The JPO decided to reduce the fee for patent examination request.
http://www.jpo.go.jp/cgi/linke.cgi?url=/tetuzuki_e/ryoukin_e/feespatent_revised.htm

Is "swaro" an abbreviation of swarovski?

Opposition 2010-900206

Decision: keep the registration.

           * Japan adopts after grant opposition system

Trademark: swaro beauty (device)

Owner of the mark: (Japanese company)

Opponent: Swarovski AG.

Class 10   Esthetic massage apparatus for household purposes;

Class 11   Electric apparatus for beauty for household purposes

Reason of opposition

Since the present mark contains a word “swaro,” which is equivalent to the well-known abbreviated name of “Swarovski,” registration of the present mark without getting permission by Swarovski AG shall not be registered.

Decision of the opposition

There is no evidence showing “Swaro” is well known to the public as an abbreviated name of the opponent. In addition, as words “swarobeauty” in the present mark has unity as a whole, it shall not be deemed third party’s abbereviated name is contained in the present mark.

Abercrombie's deer mark is not well known in Japan?

Opposition 2010-900177

Decision: keep the registration.

           * Japan adopts after grant opposition system

Owner of the mark: Urban Elk SPS.

Opponent: Abercrombie & Fitch Europe SA.

Class 18 Bags and the like, etc.

Reason of the opposition

Since the present mark is similar to the cited trademark which has been well known to the Japanese customers and this application was filed with a purpose of dishonest benefit, the present trademark right shall be canceled.

Reason of decision

The cited trademark was not deemed as well-known mark at the filing date of the present trademark (September 7, 2009), and the present trademark is deemed as NOT similar to the cited trademark in appearance, pronunciation and connotation. In addition, there are no evidences showing that the present trademark is used for the purpose of dishonest benefit, such as penalizing to Abercrombie & Fitch. Consequently, the present mark does not fall under Trademark Act Section 4 (1)19.

「KIDS」 is not distinctive word?

Appeal against decision of refusal No.2009-15059
Relevant article: Trademark law 4-1-11
Result: approval to register (not similar to the cited trademark)
Class 35
Decision date: September 28, 2010

<Reason of decision>
As the present mark consists of a word “Kids” with device, considering relation the mark with the designated services of the present application, “Kids” represents quality of services. The part of the mark "Kids" does not fulfill a function as a trademark. Therefore, it should be deemed that the present mark is NOT similar to the cited trademark.

Can you agree with this decision?

JP Appeal Judge on non-use"D.U.E.T"

Trademark:D.U.E.T
Class: 9
Appeal No.2009-300833
Type of appeal: cancellation based on non-use
Result: shall be cancelled the registration
Judgement date: 2010/4/12
Key Point: pronunciations of two mark are different.
Relevant article: 50
contents of article: Where a registered trademark (including a trademark deemed identical from common sense perspective with the registered trademark, including a trademark consisting of characters identical with the registered trademark but in different fonts, a trademark that is written in different characters, Hiragana characters, Katakana characters, or Latin alphabetic characters, from the registered trademark but identical with the registered trademark in terms of pronunciation and concept, and a trademark consisting of figures that are considered identical in terms of appearance as those of the registered trademark; hereinafter the same shall apply in this article) has not been used in Japan in connection with any of the designated goods and designated services for three consecutive years or longer by the holder of trademark right, the exclusive right to use or non-exclusive right to use, any person may file a request for a trial for rescission of such trademark registration in connection with the relevant designated goods or designated services.

JP Appeal Judge on distinctiveness_"SKIN ENHANCER"

Trademark:スキンエンハンサー/SKINENHANCER
Class: 3
Appeal No.2009-14124
Type of appeal: appeal against decision of refusal
Result: shall be registered
Judgement date: 2010/6/2
Key Point: -
Relevant article: 3-1-3_4-1-16
contents of article: "3-1-3_Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered, unless the trademark:consists solely of a mark indicating, in a common manner, in the case of goods, the place of origin, place of sale, quality, raw materials, efficacy, intended purpose, quantity, shape (including shape of packages), price, the method or time of production or use etc. 4-1-16_Notwithstanding the preceding Article, no trademark shall be registered if the trademark: is likely to mislead as to the quality of the goods or services;"

JP Appeal Judge on distinctiveness_"WEIGHT MANAGEMENT"

Trademark:WEIGHT　MANAGEMENT
Class: 5
Appeal No.2009-13339
Type of appeal: appeal against decision of refusal
Result: shall be registered
Judgement date: 2010/5/19
Key Point: -
Relevant article: 3-1-3
contents of article: Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered, unless the trademark consists solely of a mark indicating, in a common manner, in the case of goods, the place of origin, place of sale, quality, raw materials, efficacy, intended purpose, quantity, shape (including shape of packages), price, the method or time of production or use, or, in the case of services, the location of provision, quality, articles to be used in such provision, efficacy, intended purpose, quantity, modes, price or method or time of provision.

JP Appeal Judge on similarity_"ECOSHARP" and "SHARP"

Trademark:ECOSHARP
Class: 7
Appeal No.2010-13381
Type of appeal: appeal against decision of refusal
Result: shall be refused
Judgement date: 2010/3/30
Key Point: similar to third party's famous mark "SHARP"
Relevant article: 4-1-11
contents of article: Notwithstanding the preceding Article, no trademark shall be registered if the trademark is identical with, or similar to, another person's registered trademark which has been filed prior to the filing date of an application for registration of the said trademark, if such a trademark is used in connection with the designated goods or designated services relating to the said registered trademark; the same shall apply hereinafter), or goods or services similar thereto

JP Appeal Judge on similarity_"ECOSHARP" and "SHARP"

Trademark:ECOSHARP
Class: 7
Appeal No.2010-13381
Type of appeal: appeal against decision of refusal
Result: shall be refused
Judgement date: 2010/3/30
Key Point: similar to third party's famous mark "SHARP"
Relevant article: 4-1-11
contents of article: Notwithstanding the preceding Article, no trademark shall be registered if the trademark is identical with, or similar to, another person's registered trademark which has been filed prior to the filing date of an application for registration of the said trademark, if such a trademark is used in connection with the designated goods or designated services relating to the said registered trademark; the same shall apply hereinafter), or goods or services similar thereto

JP Appeal Judge on similarity_device mark

Trademark:device
Class: 16
Appeal No.2009-13284
Type of appeal: appeal against decision of refusal
Result: shall be refused
Judgement date: 2010/3/19
Key Point: -
Relevant article: 4-1-11
contents of article: Notwithstanding the preceding Article, no trademark shall be registered if the trademark is identical with, or similar to, another person's registered trademark which has been filed prior to the filing date of an application for registration of the said trademark, if such a trademark is used in connection with the designated goods or designated services relating to the said registered trademark; the same shall apply hereinafter), or goods or services similar thereto

JP Appeal Judge on similarity_"Proteaz" and "PROTEUS"

Trademark:Ｐｒｏｔｅａｚ/プロテアス
Class: 10
Appeal No.2009-9303
Type of appeal: appeal against decision of refusal
Result: shall be registered
Judgement date: 2010/4/10
Key Point: -
Relevant article: 4-1-11
contents of article: Notwithstanding the preceding Article, no trademark shall be registered if the trademark is identical with, or similar to, another person's registered trademark which has been filed prior to the filing date of an application for registration of the said trademark, if such a trademark is used in connection with the designated goods or designated services relating to the said registered trademark; the same shall apply hereinafter), or goods or services similar thereto

JP Appeal Judge on non-use_identity of registered mark and mark in use

Trademark:bAccessInside
Class: 38
Appeal No.2009-300869
Type of appeal: cancellation based on non-use
Result: shall be cancelled the registration
Judgement date: 2010/3/16
Key Point: -
Relevant article: 50
contents of article: Where a registered trademark (including a trademark deemed identical from common sense perspective with the registered trademark, including a trademark consisting of characters identical with the registered trademark but in different fonts, a trademark that is written in different characters, Hiragana characters, Katakana characters, or Latin alphabetic characters, from the registered trademark but identical with the registered trademark in terms of pronunciation and concept, and a trademark consisting of figures that are considered identical in terms of appearance as those of the registered trademark; hereinafter the same shall apply in this article) has not been used in Japan in connection with any of the designated goods and designated services for three consecutive years or longer by the holder of trademark right, the exclusive right to use or non-exclusive right to use, any person may file a request for a trial for rescission of such trademark registration in connection with the relevant designated goods or designated services.

JP Appeal Judge on misleading quality"JIMI HENDRIX"

Trademark:JIMI HENDRIX
Class: 9
Appeal No.2008-21635
Type of appeal: appeal against decision of refusal
Result: shall be registered
Judgement date: 2010/3/24
Key Point: -
Relevant article: 4-1-16
contents of article: "Notwithstanding the preceding Article, no trademark shall be registered if the trademark:is likely to mislead as to the quality of the goods or services;"

JP Appeal Judge on similarity_"METHODE"

Trademark:METHODE SWISS
Class: 35
Appeal No.2009-15374
Type of appeal: appeal against decision of refusal
Result: shall be registered
Judgement date: 2010/3/23
Key Point: -
Relevant article: 4-1-11
contents of article: Notwithstanding the preceding Article, no trademark shall be registered if the trademark is identical with, or similar to, another person's registered trademark which has been filed prior to the filing date of an application for registration of the said trademark, if such a trademark is used in connection with the designated goods or designated services relating to the said registered trademark; the same shall apply hereinafter), or goods or services similar thereto

JP Appeal Judge on famous mark_GB TV program "TOP GEAR"

Trademark:「TOP　GEAR」
Class: 9
Appeal No.2009-890045
Type of appeal: invalidation
Result: keep registration
Judgement date: 2009/10/30
Key Point: -
Relevant article: 4-1-15_4-1-19
contents of article: "4-1-19_Notwithstanding the preceding Article, no trademark shall be registered if the trademark:is identical with, or similar to, a trademark which is well known among consumers in Japan or abroad as that indicating goods or services pertaining to a business of another person, if such trademark is used for unfair purposes (referring to the purpose of gaining unfair profits, the purpose of causing damage to the other person, or any other unfair purposes, the same shall apply hereinafter) (except those provided for in each of the preceding items);"

JP Appeal Judge on distinctiveness_ITAYA is a surname or not?

Trademark:ITAYA
Class: 6+
Appeal No.2009-14829
Type of appeal: appeal against decision of refusal
Result: shall be registered
Judgement date: 2010/3/9
Key Point: "ITAYA" is one of typical Japanese family name.
Relevant article: 3-1-4
contents of article: "Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered, unless the trademark consists solely of a mark indicating, in a common manner, a common surname or name of a juridical person;"

JP Appeal Judge on similarity_oneness of the mark"SUNYX"

Trademark:SUNNYX
Class: 9
Appeal No.2009-10898
Type of appeal: appeal against decision of refusal
Result: shall be refused
Judgement date: 2010/2/1
Key Point: -
Relevant article: 4-1-11
contents of article: Notwithstanding the preceding Article, no trademark shall be registered if the trademark is identical with, or similar to, another person's registered trademark which has been filed prior to the filing date of an application for registration of the said trademark, if such a trademark is used in connection with the designated goods or designated services relating to the said registered trademark; the same shall apply hereinafter), or goods or services similar thereto

JP Appeal Judge on similarity_oneness of the mark"CORTE CONTI/CAVALLI"

Trademark:CORTE CONTI/CAVALLI
Class: 33
Appeal No.2009-685005
Type of appeal: opposition
Result: keep registration
Judgement date: 2009/1/8
Key Point: -
Relevant article: 4-1-11
contents of article: Notwithstanding the preceding Article, no trademark shall be registered if the trademark is identical with, or similar to, another person's registered trademark which has been filed prior to the filing date of an application for registration of the said trademark, if such a trademark is used in connection with the designated goods or designated services relating to the said registered trademark; the same shall apply hereinafter), or goods or services similar thereto

JP Appeal Judge on distinctiveness_too simple device?

Trademark:device
Class: 14
Appeal No.2008-900429
Type of appeal: opposition
Result: shall be cancelled the registration
Judgement date: 2009/10/2
Key Point: -
Relevant article: 3-1-3
contents of article: Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered, unless the trademark consists solely of a mark indicating, in a common manner, in the case of goods, the place of origin, place of sale, quality, raw materials, efficacy, intended purpose, quantity, shape (including shape of packages), price, the method or time of production or use, or, in the case of services, the location of provision, quality, articles to be used in such provision, efficacy, intended purpose, quantity, modes, price or method or time of provision.

JP Appeal Judge on distinctiveness_trademark or ground device?

Trademark:device
Class: 14+
Appeal No.2007-650045
Type of appeal: appeal against decision of refusal
Result: shall be registered
Judgement date: 2009/12/22
Key Point: -
Relevant article: 3-1-6
contents of article: Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered, unless the trademark is in addition to those listed in each of the preceding items, a trademark by which consumers are not able to recognize the goods or services as those pertaining to a business of a particular person