Japanese trademark law contains provision for invalidation of a trademark registration by means of inter partes trial pursuant to Article 46, which acts as a remedy for questionable ex-officio examination by the Japan Patent Office (JPO).
Statistically, approximately 100 invalidation petitions were filed at the JPO in each of the past five years. On average, nearly 40 percentage of these invalidation petitions ended successfully with the invalidation of registered mark in question.
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RITZ v. RITZMARCHE
Ritz Hotel Ltd., a world-famous hotel management company, petitioned for invalidation of trademark registration no. 5594878 for a word mark “RITZMARCHE” (written in Katakana letter) covering “retail services or wholesale services for foods and beverages” in class 35 pursuant to Article 46 of the Trademark Law on the following grounds: (1) Consumers are likely to confuse or associate the mark in dispute with Ritz Hotel due to remarkable reputation bestowed on famous hotel brand, “RITZ”; and (2) “RITZMARCHE” is confusingly similar to senior trademark registrations owned by Ritz Hotel Ltd.
Ground 1 corresponds to Article 4(1)(xv) of the Trademark Law, which prohibits any mark likely to cause confusion with a business of another entity from being registered.
Ground 2 rests on Article 4(1)(xi), which prohibits registration of a junior mark that conflicts with any senior trademark registration due to similarity of both marks and goods/services.
It becomes a common practice to raise several grounds in an invalidation petition. Combination of Article 4(1)(xv) and 4(1)(xi) is a standard tactic in trademark dispute involving a famous brand. Theoretically, Article 4(1)(xv) can’t be applied unless Article 4(1)(x) is inapplicable to the case. Article 4(1)(xi) is useful to the extent the marks as well as goods/services in question are identical or similar. In the meantime, Article 4(1)(xv) targets a wider territory where consumers are likely to confuse the source of origin between marks. In other words, Article 4(1)(xv) becomes helpful only where both marks are dissimilar, or goods/services in question are deemed dissimilar. Due to a wider protection to Article 4(1)(xv), a petitioner who claims the article is required to prove high recognition and substantial use of an opposing mark accordingly.
In the Ritz case, the JPO Trial Board invalidated the registered mark “RITZMARCHE” on the grounds of Article 4(1)(xi).
In the assessment of similarity, the Board considered a term “MARCHE” to be less distinctive or inherently descriptive in connection with “retail services or wholesale services for foods and beverages” of class 35 since the term itself means “market” in French. Besides it can be seen often as a sign to indicate a place where merchants provide foods or beverages directly to consumers in Japan. Meanwhile, average consumers with an ordinary care are unlikely to perceive any descriptive meaning from the term of “RITZ”. Therefore, in the configuration of disputed mark “RITZMARCHE”, it should be allowed to extract the term “RITZ” as a prominent part of the mark.
In comparing the Katakana letter of “Ritz” with alphabetical term “RITZ” of cited marks, both have the same sound. Their meaning is incomparable since both don’t give rise to specific meaning. Both terms are different in appearance, however, it becomes commercially routine to write alphabetical names in Katakana letters for purpose of representing pronunciation of the terms in fact. Based on the foregoing, the Board concluded that “RITZMARCHE” and Ritz Hotel registered marks containing a term of “RITZ” are confusingly similar as a whole, by taking into consideration of relevant factors in commerce pertinent to disputed goods/services. The Board also held that “retail services or wholesale services for foods and beverages” in class 35 is considered similar to food products in class 30 designated under the citations.
The Board didn’t refer to Article 4(1)(xv) at all although Ritz Hotel argued famousness of the cited mark “RITZ” with enormous amount of evidentiary support.
If Ritz Hotel had filed the invalidation action solely based on Article 4(1)(xv), the JPO would have been forced to address the famousness of the mark “RITZ” in order to invalidate “RITZMARCHE”.
New trademark examination guideline
In April 2017, the JPO announced new trademark examination guideline [Revision 13]. The guideline aims to reflect recent judicial decisions and non-traditional trademarks. Among other things, Article 4(1)(xi) is a hot topic due to its significance as a key provision pertinent to assessment of mark similarity. It is now more likely that the JPO admits argument of prominence of a trademark than before, even if the mark consists of other words or figurative elements.