Justice Manmohan Singh of the Delhi High Court has remarked in a judgment, “The world is a global village.” This sentiment captures the essence of our interconnected era, where globalization and interconnected markets continually redefine our world. Today, the judgments handed down in courtrooms across the globe can have far-reaching consequences and the ripples of these legal decisions extend far beyond their local jurisdictions, influencing economies and industries worldwide.
Welcome to “A View from Afar,” a series dedicated to examining international judgments and their far-reaching impacts. Through this series, we aim to bridge the gap between diverse legal systems and their global repercussions, offering you a panoramic view of the intricate interplay between law and commerce.
We will delve into landmark rulings from various corners of the world, unpacking the legal reasoning behind such decisions and scrutinizing their practical implications. Each article will provide a thorough analysis, shedding light on how these judgments affect not only the parties directly involved but also affect the regulatory frameworks, corporate strategies, and market dynamics on a global scale.
Whether it is a judgment delivered in the United States or the European Union, we will share our views on its profound impact in other jurisdictions navigating through the labyrinth of international jurisprudence.
Join us in this further instalment of “A View from Afar” as we delve into the nuances of several rulings issued by the Japan Patent Office (JPO) that provide significant insights into how trademark disputes are adjudicated.
I would like to begin by acknowledging the insightful postings by Mr. MikamiMakasi of Marks IP Law firm who recently shared three notable decisions of Japan Patent Office (JPO) inH WORLD HOLDINGS v. REWARDS, CF-1 Co., Ltd. v. The Peninsula, and TRILITH STUDIOS v. TRILITH which provide valuable lessons in the nuanced approach employed by the JPO in determining trademark similarity, likelihood of confusion, and the application of legal principles under Japan’s Trademark Law.
- H WORLD HOLDINGS v. REWARDS (Appeal Case No. 2024-1366, Decided on August 6, 2024)
H WORLD HOLDINGS SINGAPORE PTE. LTD. filed a trademark application on August 2, 2022, for a mark consisting of a circled “H” and the word “REWARDS,” in connection with services in Classes 35 and 43. The application was rejected by the JPO Examiner due to an alleged conflict with a previously registered mark on record, “REWARDS,” in Classes 35 and 39. The Examiner’s rejection was based on Article 4(1)(xi) of Japan’s Trademark Law, which prohibits the registration of a junior mark that is identical to or similar to an earlier registered mark.
Source – Judgement
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On January 25, 2024, H WORLD HOLDINGS filed an appeal against the rejection. The JPO Appeal Board reversed the examiner’s refusal, offering a detailed analysis of the dissimilarities between the two marks. The Board focused on three primary elements: visual appearance, phonetic distinctiveness, and conceptual differences.
The Board considered the visual structure of the applied mark, which combines a circled “H” and the word “REWARDS.” The Board noted that while both the junior and senior marks contain the word “REWARDS,” the inclusion of the circled “H” significantly altered the overall appearance of the junior mark. The JPO found that the juxtaposition of the “H” and “REWARDS,” despite the slight separation, created a coherent visual impression distinct from the standalone word “REWARDS” in the earlier mark.
On the phonetic front, the JPO determined that the pronunciation of “H REWARDS” differs markedly from “REWARDS” due to the addition of the letter “H.” This introduction of an additional sound at the beginning of the mark was found to alter the overall tone and cadence, making the two marks phonetically distinct.
Conceptually, the JPO highlighted that “H REWARDS” as a whole did not evoke a specific meaning, as it appeared to be a coined term, whereas the word “REWARDS” in the earlier mark carries a clear meaning related to something given in recognition of good behaviour or performance.
The JPO’s decision underscored that trademark similarity assessments involve more than a mere comparison of individual components. Instead, a holistic evaluation of the overall impression—encompassing visual, aural, and conceptual aspects—guides the determination of whether marks are similar. Despite the word “REWARDS,” being common in both the marks the presence of the circled “H” was enough to differentiate the two marks. The Board concluded that there was no likelihood of consumer confusion, and thus, the rejection under Article 4(1)(xi) was overturned, allowing the registration of “H REWARDS.”
- CF-1 Co., Ltd. v. The Peninsula (Appeal Case No. 2023-4720, Decided on July 25, 2024)
CF-1 Co., Ltd. applied for the trademark “PENINSULA HILLS,” written in Japanese Katakana characters, on January 7, 2022, for use in real estate and hospitality services in Classes 36 and 43. The JPO Examiner rejected the application, citing a likelihood of confusion with “The Peninsula,” a globally renowned luxury hotel brand. The rejection was grounded in Article 4(1)(xv) of the Japan Trademark Law, which prohibits the registration of marks likely to cause confusion with a well-known trademark.
Source – Judgement
We do not claim any copyright in the above image. The same has been reproduced for academic and representational purposes only.
Against the decision of the Examiner,CF-1 Co., Ltd. filed an appeal, challenging the finding that “PENINSULA” was highly recognized by consumers as an abbreviation of “The Peninsula” hotel chain. The applicant argued that the additional element “HILLS” in their mark sufficiently distinguished it from the earlier mark.
The JPO Appeal Board questioned the extent of “The Peninsula” brand’s recognition in Japanand stated that:
“The Peninsula Tokyo” is the only hotel commercially operated by The Hongkong Shanghai Hotels, Limited in Japan. If so, the number of users is quite limited. Even if there are hotels with the name “The Peninsula” operated by the company in foreign countries and then Japanese travellers may stay the hotels, it is insufficient to find a high recognition of the hotel to average consumers since there is no objective data regarding the number of users, its sales, and the ratio of Japanese users and sales.
The Board found that the evidence provided did not sufficiently demonstrate a high degree of recognition among average Japanese consumers. Factors such as the number of hotel users, the company’s sales figures, and the proportion of Japanese clientele were insufficient to establish widespread brand awareness.
Moving to the analysis of the applied mark, the Board considered the visual and phonetic differences between “PENINSULA HILLS” and “The Peninsula.” The addition of the word “HILLS” was found to alter the mark’s overall appearance and pronunciation, with the extra syllables and distinct sound of “HILLS” making the mark clearly distinguishable. Moreover, the Board found that the term “HILLS” added a geographic or topographic dimension, further distancing the applied mark from the concept conveyed by “The Peninsula.”
This decision highlighted the critical role of consumer recognition in trademark disputes involving well-known marks. The ruling emphasizes that well-known status cannot be assumed, especially in markets where a brand’s presence is limited. The inclusion of additional descriptive elements, like “HILLS,” was found to sufficiently differentiate the applied mark, ensuring that the likelihood of confusion was low.
- Trilith IP Holdings v. GAIAMOND Inc. (Invalidation Case No. 2022-890066, Decided on July 8, 2024)
GAIAMOND Inc. filed an application for registration of the wordmark “TRILITH” (junior mark) with the JPO (TM app no. 2021-745) in respect of game trading cards and toys in Class 28. Immediately after the filing, the applicant requested an expedited examination for using the mark in relation to display frame for game trading cards.
We do not claim any copyright in the above image. The same has been reproduced for academic and representational purposes only.
Accordingly, the JPO examiner granted protection of the contested mark in two months on March 15, 2021 (TM Reg no. 6371496).
Trilith IP Holdings, LLC, the owner of an earlier international registration for “TRILITH STUDIOS,” (IR no. 1534597) opposed the registration, arguing that both the marks were similar and covered allied &related goods. The opposition was initially dismissed by the JPO, which found no similarity between “TRILITH” and “TRILITH STUDIOS.”
Undeterred, Trilith IP Holdings applied for an invalidation of the “TRILITH” registration and based their arguments on Article 8(1) of the Japan Trademark Law, which prohibits the registration of a junior mark that is similar to an earlier pending mark. In support of their claim, Trilith IP Holdings argued that the term “STUDIOS” was descriptive and non-distinctive, leaving “TRILITH” as the dominant and distinctive part of their mark.
The JPO Invalidation Board found merit in the arguments put forth by Trilith IP Holdings. The Board noted that “STUDIOS” was a word which was ‘common-to-trade’and frequently used in the entertainment and gaming industries to describe a production facility or a place where creative work is undertaken. As a result, the term “STUDIOS” was considered descriptive and less distinctive in connection with the cited goods, particularly given the context of game trading cards and toys.
The Board concluded that the term “TRILITH,” a coined and highly distinctive word, was the dominant element of both marks. In comparing the contested mark “TRILITH” with “TRILITH STUDIOS,” the Board determined that the two were similar from both a visual and phonetic standpoint, despite the descriptive addition of “STUDIOS.” Additionally, the goods designated under both marks viz. game trading cards and downloadable video game software were deemed similar, further supporting the finding of likelihood of confusion.
Consequently, the JPO invalidated the registration of “TRILITH” under Article 8(1), effectively recognizing the dominance of the coined term “TRILITH” in both marks.
This case underscores the importance of recognizing dominant elements within trademarks, particularly when descriptive terms are involved. Even though “STUDIOS” was part of the earlier mark, its descriptive nature reduced its significance in the similarity analysis. The ruling reinforces the principle that coined words with high distinctiveness, like “TRILITH,” are likely to be considered dominant, and their presence in a junior mark can lead to a finding of similarity. This decision also emphasizes the first-to-file principle under Article 8(1), where earlier filed marks, particularly those with distinctive elements, receive stronger protection.
Analysis& Author’s Notes
These recent decisions of the Japan Patent Office (JPO) and the facts surrounding them, prompted me to analyse the implications of the same from the perspective of Indian Trademark Law.
India, like Japan, is not a native English-speaking nation, and the majority of its population does not speak English as a first language. This factor is crucial when courts adjudicate trademark disputes involving marks with English terms. Under the Trade Marks Act, 1999, the key test in India revolves around whether there is a likelihood of confusion among consumers, especially with respect to deceptively similar marks. Indian Courts often prioritize this test, looking at the phonetic, visual, and conceptual similarity of marks, particularly when the goods or services in question are identical or similar.
However, a more comprehensive approach could be adopted, one that takes into account not only the outward similarity but also the mens rea, or intention behind adopting the mark. The JPO’s rulings in these cases reflect an understanding that the intention behind the adoption of certain common words or phrases should be examined to determine whether the use was in good faith or intended to cause confusion.
Indian Courts are known for taking a strict view when the goods or services overlap, as they did in Amritdhara Pharmacy v. Satya Deo Gupta, where phonetic similarity led to a finding of deceptive similarity.Had the cases namely, H World Holdings V. Rewards & CF-1 Co., Ltd. v. The Peninsula been litigated in India, the outcome might have differed, with a distinct possibility that the words “REWARDS,” and “PENINSULA” being common, would have led to a finding of deceptive similarity despite the additional components that were considered by the JPO.
The JPO’s decision in TRILITH STUDIOS v. TRILITH provides an excellent example of how the dominant element of a mark can play a decisive role. In India, Courts also place significant weight on the dominant component of a mark, as seen in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. wherein, the Hon’ble Supreme Court of India emphasized that while minor differences may exist between marks, it is the dominant impression on consumers that ultimately matters. However, had this case been litigated in India, the focus might have been more rigid, with a strong likelihood that both marks, sharing the word “TRILITH,” would be considered deceptively similar without delving deeply into the intent behind their adoption. However, the JPO’s approach, which delved into the overall impression created by the combined elements of the mark and its lack of conceptual similarity to the earlier mark, is a more nuanced method and is an example of how authorities can take a balanced view.
Importantly, mens rea or the intention behind adopting a mark should also be evaluated. If the applicant had no intention to confuse consumers or leverage the goodwill of the earlier mark, the Courts should recognize this factor and avoid penalizing honest business practices. Not every case of similarity arises out of bad faith or an intent to deceive and should not always be seen as an attempt to ride on the coattails of the prior mark.By piercing the “veil of intention” in such cases, Courts could make more equitable decisions that balance both consumer protection and fair competition.