Intellectual Property - Japan
IP High Court upholds INTELGROW trademark
Author
Contributed by Nishimura & Asahi
Eiichi Fukushima
July 08 2013
Introduction
Background
Facts
Patent Office decision
IP High Court decision
Comment
Introduction
On April 18 2013 the IP High Court upheld the Japan Patent Office's refusal to invalidate
the registration for the INTELGROW trademark for goods in Class 19 and services in
Class 37 (construction, construction consultancy, operation, check or maintenance of
building equipment). The court determined that the INTELGROW mark registered in the
name of KK Intelgrow should not be invalidated due to the existence of the registered
trademark INTEL and other cited trademarks owned by Intel Corporation, which relied
on Articles 4(1)(8), 4(11), 4(15), 4(19) and 4(7) of the Trademark Law (127/1959, as
amended). The court refused to invalidate the INTELGROW mark and did not apply
these provisions of the law.
Background
Article 4(1)(7) of the law provides that registration cannot be obtained "in the case of
trademarks liable to contravene public order or morality".
Article 4(1)(8) of the law provides that registration cannot be obtained:
"in the case of trademarks containing the portrait of another person or the name,
famous pseudonym, professional name or pen name of another person or the
famous abbreviation thereof (except where the consent of the person concerned
has been obtained)."
Article 4(1)(11) of the law provides that registration cannot be obtained:
"in the case of trademarks which are identical with, or similar to, another person's
registered trademark applied for prior to the filing date of the trademark
application concerned and which are used on the designated goods or
designated services (meaning the goods or services designated in accordance
with Article 6(1) (including its application under Article 68(1)) - hereinafter
referred to as 'the designated goods or designated services') covered by the
trademark registration referred to or on similar goods or services."
Article 4(1)(15) of the law provides that registration cannot be obtained "in the case of
trademarks which are liable to cause confusion with goods or services connected with
another person's business (other than the trademarks mentioned in Items (10) to (14)".
Article 4(1)(19) of the law provides that registration cannot be obtained:
"in the case of trademarks which are well known among consumers in Japan or
abroad as indicating the goods or services as being connected with another
person's business, and trademarks identical with or similar thereto, and which
are used by the applicant with an unfair intention (intention to gain an unfair
profit, intention to cause damage to such other person and other unfair intentions
- hereinafter the same) (other than the trademarks mentioned in each of the
preceding Items) in respect of such goods or services."
Article 46(1) of the law provides that:
"where a trademark registration falls under any of the following items, a trial for
invalidation of trademark registration may be demanded for the invalidation of
the trademark registration. In such a case, if two or more designated goods or
designated services are covered by the trademark registration, a trial may be
demanded with respect to each of such designated goods or designated
services:
(1) where the registration has been effected contrary to Articles 3, 4 (1),… of the
law."
Facts
Intel Corporation owns the registration for the mark INTEL under Registration 4362619
in Classes 14, 16, 18 and 25 (with a registration date of February 18 2000) and other
registrations for the INTEL mark in English, Japanese Katakana and device marks in
various classes.
On January 19 2006 KK Intelgrow filed a trademark application for the INTELGROW
mark shown below (in Japanese Katakana standard lettering) for goods and services
in Classes 19 and 37, respectively, which was registered on August 18 2006
(Registration 4980761).
インテルグロー
On August 18 2011 Intel demanded a trial for invalidation of the INTELGROW trademark
under Articles 4(1)(8), 4(11), 4(15), 4(19) and 4(7) of the Trademark Law.
Patent Office decision
On July 20 2012 the Patent Office issued a trial decision refusing to invalidate the
INTELGROW trademark. The decision was made with respect to the relevant sections
of the Trademark Law.
Article 4(1)(8)
A trademark is deemed to contain another person's name or abbreviation if it objectively
and intentionally captures the name or abbreviation of the person in question; it is thus
insufficient simply to physically incorporate the name or abbreviation.
It was clear that the abbreviation 'Intel' (including its rendering in Japanese Katakana)
is widely known, including to traders and dealers of the semiconductors and integrated
circuits handled by the petitioner at the time of the application of the INTELGROW
trademark.
The INTELGROW trademark consisted of the word 'INTELGROW', with the same
lettering, size and spacing. The letters were uniform and appeared as a whole word,
which was thus understood as a coined word. Therefore, the trademark was not
recognised as containing the famous abbreviation of another person. Thus, the mark
did not require the petitioner's consent and did not violate Article 4(1)(8).
Article 4(1)(11)
The Patent Office held that the INTELGROW and INTEL trademarks were not
confusingly similar to each other in appearance, sound and meaning on the following
grounds:
l
The INTELGROW trademark produced only the continuous sound 'Intelgrow' and did
not produce the sound 'Intel'.
l
The INTELGROW trademark was clearly different from the INTEL trademarks in
structure and appearance, and therefore the marks were not confusingly similar in
appearance.
l
As the INTELGROW trademark had no specific meaning, the trademarks could not
be compared with each other in terms of meaning.
Based on these findings, the INTELGROW trademark did not violate Article 4(1)(11).
Article 4(1)(15)
The word 'Intel' is also the name of the thin wooden or metal plate used to create space
intervals of a certain width in printing; therefore, it was not proper to conclude that the
word derived only from the petitioner.
The products bearing the INTEL trademarks and the "building or construction
materials" that were the designated goods of the INTELGROW trademark were different
in terms of quality, purpose and distribution channels, and were thus considered
different products. Further, the designated services of the INTELGROW trademark –
construction – had a very limited connection to the goods using the INTEL trademarks.
In view of the alleged similarity of the trademarks, the connection between the goods
and services in question and the common nature of the customers, it was held that the
likelihood of confusion as to the source of origin was minimal. Therefore, the
INTELGROW trademark did not violate Article 4(1)(15).
Article 4(1)(19)
As the INTELGROW trademark was held not to be identical or similar to the INTEL
trademarks, it did not violate Article 4(1)(19).
Article 4(1)(7)
It was clear that the construction of the INTELGROW trademark did not in itself
adversely affect public order or morality; nor did any use of the mark for the designated
goods or services adversely affect public order. The mark therefore did not violate Article
4 (1)(7).
Article 46(1)(1)
As the registration of the INTELGROW trademark did not violate any of the abovementioned articles, it could not be invalidated by virtue of Article 46(1)(1).
IP High Court decision
Intel Corporation appealed to the IP High Court. The court upheld the Patent Office's
decision on the grounds that the Patent Office had made no error in concluding that the
INTELGROW trademark did not violate the relevant articles of the Trademark Law. The
court upheld the decision in light of the following facts.
Article 4(1)(8)
The INTELGROW trademark consisted of the word 'Intelgrow' in standard Katakana
lettering with uniform lettering, size and spacing. Furthermore, the sound 'Intelgrow'
produced from this mark could be pronounced continuously (without a pause); thus, it
was proper to consider the mark as a unitary and inseparable coin word.
Although the word 'Intel' was included in the INTELGROW trademark, it was embedded
within the total structure of the mark as a component and could not be perceived
independently. Thus, the mark did not recall the plaintiff and the Patent Office had made
no error in concluding that it did not fall into the category of a "trademark containing the
abbreviation of another person" under Item 8.
Although the plaintiff asserted that 'Intel' could easily be evoked by the INTELGROW
trademark because it was famous as the plaintiff's abbreviation, the court held that the
indication was not famous as the plaintiff's abbreviation in respect of products other
than integrated circuits or semiconductors. Further, it could not be assumed that the
INTEL mark was famous merely by virtue of its registration as a protective trademark.
Although the plaintiff asserted that the elements 'Intel' and 'grow' could be recognised
separately, since the word 'grow' is familiar as an English word, it was difficult to see
how it could be read or perceived that 'Intel' would 'grow' from the word 'Intelgrow', even
if the meaning of 'grow' is commonly understood. The court thus held that the Patent
Office had made no error in concluding that the INTELGROW trademark did not violate
Item 8.
Article 4(1)(11)
As mentioned, the INTELGROW trademark was held to be presented in a unitary
manner and construed as an inseparable word, and the separate elements 'Intel' and
'grow' could not be perceived separately by general consumers and dealers. Moreover,
only the sound 'Intel' could be produced from the structure of the INTEL trademarks and
no special concept could be evoked from it. The court thus held that both marks were
sufficiently different in terms of pronunciation, appearance and concept.
Regardless of the similarity of the designated goods and services, the court thus held
that the Patent Office had made no error in concluding that the INTELGROW trademark
did not violate Item 11.
Article 4(1)(15)
Although it was admitted that the plaintiff had succeeded in expanding the brand
influence of the INTEL trademarks in the fields of semiconductors, integrated circuits,
personal computers and servers, there was no evidence to support the view that the
INTEL trademarks had become famous beyond these fields. Further, there were no
indications that the plaintiff was engaged in the sale or business of housing or building
materials. In addition, the mere fact that a protective trademark has been registered
does not necessarily mean that the trademark has become famous in all fields of
goods or services covered by the mark.(1)
The court found that the INTEL trademark had not become famous in fields other than
semiconductors, integrated circuits, personal computers and servers. The court also
noted that the INTEL trademark is famous as the abbreviated name of Italian football
team Internazionale Milano.
In view of these facts, the court held that there was no likelihood of confusion as to the
source of origin, since the goods and services for which the INTELGROW trademark is
used could not reasonably be misunderstood as connected to the plaintiff or persons
related to the plaintiff.
Concerning the actual use of the INTELGROW trademark, it was established that the
defendant was a limited company that had been established in 1956 and engaged in
the sale of housing and building materials using the INTELGROW trademark with the
trade name 'KK Intelgrow', and had 136 employees, including associate members. The
defendant was not engaged in the manufacture or sale of semiconductors, integrated
circuits and related products. The court therefore upheld the Patent Office's decision
that the INTELGROW trademark did not violate Item 15.
Article 4(1)(19)
As use of the INTELGROW trademark was unlikely to hamper the reputation, esteem
and customer appeal of the INTEL trademarks, and the INTELGROW trademark had
not been registered with the intention to derive unfair profit or cause damage to other
persons, the court concluded that the Patent Office had made no error in concluding
that the INTELGROW trademark did not violate Item 19.
Article 4(1)(7)
Although the INTELGROW trademark included 'Intel' in its construction, this should be
recognised as an inseparable component of 'Intelgrow' and the INTELGROW
trademark, rather than as an independent element; therefore, the INTELGROW
trademark did not recall the plaintiff's INTEL trademarks.
The court held that there were no other circumstances under which use of the
INTELGROW trademark for the designated goods and services would disturb public
order. The court thus upheld the Patent Office's decision that the mark did not violate
Item 7.
IP High Court conclusion
As none of the plaintiff's assertions for cancellation had legal grounding, the court
rejected these claims and ruled in favour of the defendant.
Comment
There has been much criticism of the court's decision. However, the court is expected to
be more flexible in dealing with foreign party interests where international trademarks
are involved. It is also believed that the court's reasoning would not withstand the strong
criticism of foreign observers of international trademarks.
Moreover, it is expected that from now on, the IP High Court and the Patent Office will be
more flexible in dealing with applications whose applicants may have an unfair
intention to free ride or use famous foreign brands unfairly.
For further information on this topic please contact Eiichi Fukushima at Nishimura &
Asahi by telephone (+81 3 5562 8500), fax (+81 3 5561 9711) or email (
e_fukushima@jurists.co.jp).
Endnotes
Under Japanese law, famous brands such as Intel may obtain a protective
trademark, which affords a greater level of protection for the registered mark than
ordinary trademark registration. However, as the court indicated in this case, such
registration does not necessarily broaden the scope of trademark protection.
(1)
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