Lawsuit against Trial Decision: Case No. (Gyo-Ke) 10061, 2007

Yuasa and Hara Intellectual Property News, Vol.23
Yuasa and Hara, published in 2007
TAKATA, Yuichiro

Lawsuit against Trial Decision: Case No. (Gyo-Ke) 10061, 2007

Overview
The plaintiff (Major League Baseball Properties, Inc.) had filed an appeal against the examiner’s decision to reject registration of the plaintiff’s subject trademark (see below) for goods and services in classes 9, 16 and 41. The trial examiners dismissed the plaintiff’s appeal pursuant to Article 4-1-11 of the Trademark Law, on the grounds that the subject trademark could be pronounced as “[ju:bi:es]” and thus was similar to the cited trademarks 1, 2 and 3 (see below). The plaintiff filed a suit against the commissioner of the Japan Patent Office (JPO) seeking cancellation of the trial decision. The court ruled in favor of the plaintiff, holding that the sound of the subject trademark was “[kΛbs]” only and could not be pronounced as “[ju: bi:es]”.

Article 4-1-11:
This article stipulates that a trademark similar to prior registered trademark(s) should not be registered to avoid confusion as to the origin of goods.

Concept of Similarity:
In practice, the concept of similarity is used in defining the scope of a trademark, since it is difficult to determine the point at which confusion occurs as to the origin of goods. The defined scope of a trademark is deemed to extend to the point where confusion occurs as to the origin of goods.

Judgment of Similarity:
Whether a trademark is similar to another is determined considering the elements of similarity of a trademark comprehensively, namely, the appearance, sound and idea thereof.

Examples of Similar Sounds:
“VANCOCIN” and “BUNCOMIN”; “VULKENE” and “VALCAN”; “HETRON” and “PETRON”; “DANNEL” and “DYNEL”; “VINYLA” and “Binilus”; “CAMPBELL” and “Cambell”; “TYREX” and “TWYLEX”

JPO’s Judgment in the Trial
JPO (defendant in the lawsuit) judged as follows in the appeal trial: “The subject trademark includes a circle and a circular figure of the same thickness enclosed in the circle. The circular figure is made by partly cutting out the right side of a circle. Alphabetical letters “UBS” in a bold font are disposed within the circular figure such that they extend to the cut-out portion. It can hardly be understood that those figurative elements and the letter portion “UBS” are always recognized as inseparable. Observers would rather focus on the letter portion “UBS” as it is easier to read. Thus, it is natural to determine that the subject trademark is simply pronounced as “[ju:bi:es]”.”

Main Issue in the Lawsuit
The main issue to consider with respect to the court decision is whether the sound of the subject trademark is “[kΛbs]” only (inseparable) or it can also be pronounced as “[ju:bi:es]” (separable). To be more specific, if the subject trademark is pronounced only as “[kΛbs]”, it is not similar to the cited trademarks “UBS” and thus the plaintiff’s claim should be regarded as reasonable. On the other hand, if the subject trademark is pronounced only as “[ju:bi:es]” or it can be pronounced as both “[kΛbs]” and “[ju:bi:es]”, the subject trademark and the cited trademarks have the same sound. In this case, these trademarks are similar and the plaintiff’s claim is accordingly considered to be unreasonable.

Examples of Trademark Elements Determined to be Inseparable:
1.“ESI[tronic]” (No. (Gyo-Ke) 10225, 2005) The part “tronic” is not distinctive with respect to the designated service “repair of automobiles” and thus does not generate a sound independently.
2.“USBEAR” (No. (Gyo-Ke) 10829, 2005) The letters are all written in capitals, and the mark does not include a figure of a bear. Accordingly, the person who sees the trademark is likely to recognize it as a unified mark.

Examples of Trademark Elements Determined to be Separable:
1.“MAGICALSHOESOURCE” (No. (Gyo-Ke) 10497, 2006) The mark can be divided into “MAGICAL” and “SHOESOURCE”, and has the sound “[shu:sors] other than “[majikl shu:sors]”.
2.“privateid” (No. (Gyo-Ke) 10589, 2005) This trademark can be read as “[praivet]”. The term “privateid” is not known as a foreign word having a particular meaning. In contrast, “private” is widely known as a word meaning “individual, not public”.

Judgment by the Court
Recognition of Major League in Japan:
Since 1986 to date, all-star games between Major League teams and Japanese teams have been held in Japan every two years and broadcast on TV.
Moreover, more than a few Japanese baseball players have moved to the U.S. to play in the Major League in recent years, which has increased Japanese people’s interest therein. Since 2001, Major League baseball games and programs featuring the Major League have been broadcast in Japan. The game results etc. are reported in Japanese newspapers, on the Internet as well as in sport magazines. Further, some travel agencies have released package tours to watch Major League games.

Recognition of the Chicago Cubs in Japan:
Sammy Sosa was a member of Chicago Cubs when he was selected as MVP of the Japan-U.S. All-Star Series 1998. The Chicago Cubs played friendly matches against the Seibu Lions and the Yomiuri Giants in 2000, which were reported in sports magazines.

Logo of the Chicago Cubs and Use thereof:
The logo of the Chicago Cubs is identical to the subject trademark in shape. The logo has been used on the front side of the team uniform since 1909, and still now it can be seen in the images and videos showing the Chicago Cubs players in their uniform. Japanese companies such as K. K. Sega, K. K. Takara, and Uniqlo have licenses to sell goods bearing the MLB trademarks including team logos. There are also specialty stores called “Major League Baseball Japan Shops” in several cities, where they sell Major League related goods such as baseball hats, uniforms, and T-shirts. Konami manufactures and sells Major League related game software. Major League goods can also be purchased through the official website of the Chicago Cubs.

In general, with respect to trademarks, (1) there are more than a few examples of marks consisting of characters in English etc. such as “Orange”, “ORANGE” and “LAUREL STAR”, with the first letter thereof stylized or depicted in a bigger size, and (2) in case of a mark whose first character is “C”, it is often seen that the “C” in such as “CAMAT” or “Carawit” is written in a bigger size, or that the “C” in such as “CPOP” or “CSV” is expanded to embrace the other letters.

Conclusion
The subject trademark is identical to the logo of the Chicago Cubs in shape. In view of the facts that (1) the name of Chicago Cubs is well known in Japan and the logo thereof is also known to a significant degree, and that (2) in case of trademarks consisting of characters in English etc., it is not rare that the first letter “C” is expanded to embrace the other letters, it is natural to understand that the “circular figure”, or the “C” part in other words, and the “UBS” part of the subject trademark are inseparable and thus the mark is recognized as “CUBS”. It is therefore reasonable to consider that the sound of the subject trademark is “[kΛbs]” only and the mark cannot be pronounced as “[ju:bi:es]”. Thus, the court accepted the plaintiff’s claim that the subject trademark and the cited trademarks are not similar.