Intel fails to invalidate 'intel' mark for construction goods and services
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 of the Nice Classification (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)(7), 4(1)(8), 4(1)(11), 4(1)(15) and 4(1)(19) 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.
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) 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) 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)) covered by the trademark registration referred to or on similar goods or services."
Article 4(1)(15) 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) 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 (other than the trademarks mentioned in each of the preceding Items) in respect of such goods or services."
Article 46(1) provides that:
"where a trademark registration falls under any of the following items, a trial 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."
Intel owns the registration for the mark INTEL (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, which was registered on August 18 2006 (Registration 4980761):
On August 18 2011 Intel demanded a trial for invalidation of the INTELGROW trademark under Articles 4(1)(8), 4(1)(11), 4(1)(15), 4(1)(19) and 4(1)(7) of the Trademark Law.
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.
With regard to Article 4(1)(8), the office held that 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 for the INTELGROW trademark.
The INTELGROW mark 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).
With regard to 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:
- The INTELGROW trademark produced only the continuous sound 'Intelgrow' and did not produce the sound 'Intel'.
- The INTELGROW trademark was clearly different from the INTEL trademarks in structure and appearance, and therefore the marks were not confusingly similar in appearance.
- 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).
With regard to Article 4(1)(15), the office held that 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" covered by 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 covered by 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).
With regard to Article 4(1)(19), the office found that, as the INTELGROW trademark was not identical or similar to the INTEL trademarks, it did not violate Article 4(1)(19).
Concerning Article 4(1)(7), it was clear that the registration 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).
With regard to Article 46(1)(1), the office found that, as the registration of the INTELGROW trademark did not violate any of the above-mentioned articles, it could not be invalidated by virtue of Article 46(1)(1).
Intel Corporation appealed to the IP High Court. The court upheld the Patent Office's decision on the grounds that the latter 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.
With regard to Article 4(1)(8), the court noted that 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 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 would 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 well known 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.
The court then turned to 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.
With regard to 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 (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.)
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 being 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 was 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.
With regard to 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.
Turning to Article 4(1)(7), the court found that, although the INTELGROW trademark included 'Intel', this would be recognised as an inseparable component of 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.
As none of the plaintiff's assertions for cancellation had legal grounding, the court rejected the claims and ruled in favour of the defendant.
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 where applicants may have an unfair intention to freeride on, or use, famous foreign brands.
Eiichi Fukushima, Nishimura & Asahi, Tokyo
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