Eiichi Fukushima July 6 2009 Crossed in LOVE: No Happy Ending for Defendant in Cosmetics Trademark Case Nishimura & Asahi | Intellectual Property - Japan Eiichi Fukushima Intellectual Property BackgroundFactsPatent Office Decision IP High Court DecisionCommentOn April 27 2009 the IP High Court reversed a Patent Office trial decision that had invalidated the trademark registration for the mark LOVECOSME, rejecting the claims of similarity to the various registered trademarks for LOVE owned by the trademark owner. The court ruled that the mark LOVECOSME was not similar to the various registered trademarks for LOVE under Article 4(1)(11) of the Trademark Law (127/1959, as amended). Background Article 4(1)(11) of the law provides that registration cannot be obtained:"in the case of a trademark which is identical or similar to, another person's registered trademark applied for prior to the filing date of the trademark application concerned and which is used on the designated goods or designated services covered by the trademark registration referred to or on similar goods or services." Facts The plaintiff, K K Natural Plants, filed an application with the Patent Office for the mark LOVECOSME in Japanese katakana characters for cosmetics in Class 3 on March 13 2006. The mark was registered at the Patent Office under Registration 5046619 on May 11 2007. The defendant, K K Club Cosmetics, filed a petition on July 18 2007 for an invalidation trial hearing with the Patent Office, alleging that the registration breached Article 4(1)(11). Patent Office Decision On September 9 2008 the Patent Office allowed the defendant's petition for a trial hearing and invalidated the registration. It reasoned that: the element 'cosme' was an abbreviation of 'cosmetic' (denoting beauty products) and did not function to distinguish the goods from others, meaning that the main element having this function was 'love'; thus, the trademark LOVECOSME was considered to produce the sound and meaning of 'love'; and the defendant cited six registered trademarks owned by it (shown below) which included 'love' in English or Japanese katakana characters and which also produced the sound and meaning of 'love'.Therefore, the Patent Office decided that LOVECOSME should be considered similar to the cited trademarks and deemed that the mark fell under Article 4(1)(11). It should therefore be invalidated under Article 46(1). IP High Court Decision The plaintiff appealed to the IP High Court. On April 27 2009 the court reversed the trial decision.Similarity under Article 4(1)(11) The court considered that the similarity of the trademarks under Article 4(1)(11) should be examined as a whole in view of the impression, recollection and imagination of dealers and consumers as prompted by the appearance, meaning, sound and other characteristics of the trademarks used on identical or similar goods or services, and also considering the circumstances of the transactions in such goods or services.Furthermore, the court stated that similarity cannot be determined on the basis of a trademark with a component from a combination trademark which is combined with multiple other components, except where (i) such a component is recognized as giving a strong and controlling impression to dealers and consumers, such that its function is to distinguish the goods or services from others as to their source, or (ii) it is recognized that all other components would not produce a sound or meaning having a function to distinguish the goods or services. Structure of LOVECOSME trademark In connection with the element 'love', the court noted that the word 'love' is familiar in Japan as a noun with meanings such as 'passion', 'affection' or 'favour' and as a verb indicating such meanings as 'to love a person', 'to make love' or 'to feel love'. However, in connection with the element 'cosme', the court noted that the word 'cosmetic' in English or Japanese katakana characters is recognized as denoting beauty products, but it did not find that the word was generally considered to denote beauty products at the time that the application was filed for the trademark or at the time of the decision regarding the registration thereof in Japan. Therefore, it could not be admitted that the element 'cosme' was recognized as the abbreviation of the word 'cosmetic', although 'cosme' was understood to have the meaning 'beauty products' among some women with an interest in the beauty business.The trademark LOVECOSME is represented in Japanese katakana characters in standard lettering, without a hyphen or space, as consisting of five short sounds; therefore, dealers and consumers recognize and understand this trademark as a unified and continuous mark. Thus, the court considered that the trademark LOVECOSME produced the appearance and sound of 'lovecosme'; it would not be a natural interpretation to consider that it produces the further abbreviated sound 'love'. Structure of cited trademarks It was admitted that in addition to the appearance of each cited trademark, the sound and meaning of 'love' are produced by trademarks 2, 4 and 6.In view of the fact that the cosmetics in the designated goods included "goods such as creams and cleansing preparations which are used for the purpose of beauty appearance or decoration", the element 'love' was considered to have a close connection with the cosmetics included in the designated goods. In light of such connection, the element 'love' could not be considered to have strong distinctiveness and exclusivity if used in connection with the goods designated as 'cosmetics' and included in the designated goods. Manner of use of LOVECOSME and cited trademarksThe designated goods using the trademark LOVECOSME had been sold by mail order, mainly over the Internet. From the evidence submitted, it was not found that the cited trademarks had been widely used before the filing of the trademark LOVECOSME on March 13 2006 or the decision to register the mark on April 20 2007. Comparison of LOVECOSME and cited trademarks The trademark LOVECOSME was found to produce the appearance and sound of 'lovecosme', whereas trademarks 2, 4 and 6 produce the sound 'love' and each has the appearance shown. Thus, the trademark LOVECOSME and all six cited trademarks were found to be dissimilar in terms of appearance and sound.The court found that LOVECOSME can produce various meanings, although there is room to produce the meaning 'cosmetics related to love' in view of the manner of use and customers in question, whereas trademarks 2, 4 and 6 were found to produce the meanings 'passion', 'affection', 'favour', 'to love a person', 'to make love' and 'to feel love'. Thus, the trademark LOVECOSME is dissimilar in meaning to each cited trademark.The court held that it was unclear whether there was a significant difference between the manner of the sale of the designated goods using the trademark LOVECOSME (ie, a largely Internet-based mail order system) and the manner of transactions for the sale of goods using the cited trademarks, which were assumed to be mainly with female customers using the cosmetics.In view of the designated goods, the composition 'love' included in the cited trademarks was considered to be closely connected with the cosmetics included in the designated goods. Therefore, if used on cosmetics included in the designated goods, it could not be considered to have strong exclusivity against all trademarks which incorporate the element 'love'.The judgment on this issue depended entirely upon the circumstances of the transactions and use of the cited trademarks at the time of filing and the time of registration of the trademark in question. However, the defendant did not clarify the circumstances of use of the cited trademarks in this case.Examining the situation as a whole, in view of the impression, recollection and conception of the dealers and consumers brought about by the appearance, meaning and sound of the trademarks involved, and in consideration of the circumstances of the transactions involving the goods in question, the court found no likelihood of misunderstanding and confusion that might lead the owner of the cited trademarks to be identified as the source of the designated goods of the trademark in question. Therefore, the court found the trademark in question to be dissimilar to any of the cited trademarks as a whole. Comment In an earlier case, decided by the court on June 5 2008, the same plaintiff brought an appeal against a Patent Office trial decision which had rejected a trademark application for the following mark filed by the same plaintiff.The court affirmed the Patent Office's decision and rejected the appeal, reasoning that the mark was similar to all six cited trademarks. The mark above has a space between the words 'love' and 'cosmetic'; thus, it was difficult to perceive it as unified and continuous, unlike the trademark in question in the more recent case. These cases show the potential difficulty - and confusion for people whose first language is English - in understanding interpretations or constructions by the Patent Office or Japanese courts involving trademarks in English or Japanese katakana characters. Such marks may include or incorporate English words that are recognized or considered differently from their original English context or meaning in Japanese society. For further information on this topic please contact Eiichi Fukushima at Nishimura & Asahi by telephone (+81 3 5562 8500) or by fax (+81 3 5561 9711) or by email ([email protected]).Endnotes(1) Registrations 542450, 2219231, 2219232, 2431617, 4277280 and 4522976.