IP High Court lacks HEART in cancelling mark under Article 51(1)

The IP High Court has upheld a Japan Patent Office (JPO) decision cancelling the trademark NURSE®/HEART/NURSE HEART (in Japanese Katakana) for unfair use for goods in Class 16 (magazines and newspapers). The court ruled that the trademark owner's subsequent use of the HEART and HEART® marks, which were similar to the petitioner's HEART NURSING trademarks in English, intentionally caused confusion with the petitioner's goods. Therefore, the court cancelled the relevant mark under Article 51(1) of the Trademark Law (127/1959, as amended).

Article 51(1) of the law provides:

"Where the owner of a trademark right intentionally uses a trademark similar to a registered trademark in respect of the same designated goods or designated services, or intentionally uses a registered trademark or similar trademark in respect of goods or services similar to the designated goods or designated services in a way that may be misleading as to the quality of the goods or services or which may cause confusion with goods or services connected with any other person's business, any person may demand a trial for the cancellation of the trademark registration."

On January 21 2010 respondent Kabushiki Kaisha Igaku Shuppan filed a trademark application with the JPO for the word 'nurse' (in English with registered trademark sign) above the words 'heart' (in English) and 'nurse heart' (in Japanese Katakana), to be used for magazines. The application matured to registration on August 27 2010 under Registration 5348154:

Petitioner Kabushiki Kaisha Medica Shuppan began publishing HEART Nursing magazine in 1987, using the HEART NURSING trademark for more than 16 years (until the March 2004 edition). The petitioner subsequently began using a new HEART NURSING trademark from around April 2004.

Petitioner's original trademark

Petitioner's new petitioner

The petitioner alleged that the respondent's use of the HEART and HEART® marks caused confusion with its own trademarks and on April 6 2012 demanded a trial for cancellation of the respondent's original NURSE®/HEART/NURSE HEART trademark under Article 51(1) of the law.

The JPO admitted the petitioner's demand for a trial hearing and on January 8 2013 cancelled the respondent's trademark registration. The JPO based its reasoning on several issues.

The respondent used a mark consisting of the word 'heart' from around August 2011 and used a mark consisting of the word 'heart' with registered trademark sign for a magazine published on December 1 2011. These marks were familiar English words meaning 'heart or cardio'. The 'heart' portion of the respondent's NURSE®/HEART/NURSE HEART trademark was considered its most important part in terms of meaning, and the pronunciation and concept of 'heart' were derived from it.

Both the NURSE®/HEART/NURSE HEART trademark and the HEART marks used by the respondent produced the same pronunciation and concept of 'heart'. The JPO thus held that the HEART marks were similar to the NURSE®/HEART/NURSE HEART trademark. The respondent's use of the HEART marks was therefore considered use of a mark similar to the registered trademark for the designated goods.

In comparing the petitioner's original and new trademarks, it was clear that they were largely identical, with the minor exception of the modification of the letters 'A' and 'R' in 'heart'.

The 'heart' portion of the marks independently distinguished the products for which they were used and thus constituted the main portion. The JPO held that the 'heart' element of the petitioner's trademarks was widely recognised among customers at the August 2011 publication of the respondent's magazine, in view of:

• the petitioner's years of sales and the number of magazine issues that it had published;
• the scope of subscribers to medical magazines;
• the recognition of the petitioner's customers (ie, nurses and doctors); and
• the petitioner's advertising and promotion of its magazines.

The 'heart' portion of the petitioner's trademarks produced the same pronunciation and concept of 'heart' as the respondent's HEART marks. In addition, the 'heart' portion of the petitioner's trademarks and the respondent's HEART marks were both printed in large lettering and in Times New Roman font, and thus gave a similar impression. The respondent's magazine and the petitioner's magazine also both catered to the same subscriber base – the nursing profession.

As such, the JPO held that customers would be confused into thinking that the respondent's goods were related to those of the petitioner (or any party related to the petitioner) based on:

• the widespread recognition of the 'heart' portion of the petitioner's trademarks as referring to the petitioner's magazines;
• the similarity in pronunciation, concept and appearance between the respondent's HEART marks and the petitioner's trademarks; and
• the identical goods and target customers of the petitioner and respondent.

Based on the facts of the case, the JPO held that the respondent had used the HEART marks with the intention of causing confusion with the petitioner's products. In addition, one of the respondent's HEART marks included the registered trademark sign, which implied that the respondent had full knowledge of the likelihood of confusion with the petitioner's trademarks. The JPO thus concluded that the respondent's use of the HEART marks for its magazines constituted wilful conduct and invalidated the registration for the respondent's NURSE®/HEART/NURSE HEART trademark in accordance with Article 51(1) of the law.

The respondent appealed to the IP High Court, which affirmed the JPO decision on November 14 2013. The IP High Court decision specifically addressed the respondent's allegations that the JPO had erred in its reasons for invalidating the NURSE®/HEART/NURSE HEART trademark.

The respondent alleged that the JPO had erred in affirming the similarity between the NURSE®/HEART/NURSE HEART trademark and the HEART marks, emphasising the size of the letters in the 'heart' portion and contending that use of the HEART marks did not constitute use of a mark similar to the registered trademark for the designated goods.

Although it was difficult to claim that customers noticed only the 'heart' portion of the trademark – without regard for the 'nurse®' or 'nurse heart' portions – the respondent's use of the 'heart' portion alongside a registered trademark sign was significant. Further, at this stage of the trial the respondent did not contest the fact that the HEART marks constituted use of the NURSE®/HEART/NURSE HEART trademark; on the contrary, the respondent admitted that the 'heart' portion was the centre of the trademark.

In view of these facts, the IP High Court confirmed the similarity between the HEART marks and the NURSE®/HEART/NURSE HEART trademark, which all used the 'heart' portion to distinguish the respondent's products. Therefore, the JPO had not erred in its decision.

The court then turned to the likelihood of confusion. The petitioner began publishing HEART Nursing magazine in 1987, with nurses engaged in the treatment of circulatory diseases as its target readership. Circulation for HEART Nursing magazine exceeded 4,000 for each edition and the total circulation from 1991 to 2011 was 50,000 to 80,000. Moreover, the petitioner promoted its trademarks and the cover pages of its magazine in the programmes and industry journals of the Japan Circulatory Disease Nurse Association from 2004 to 2008.

The respondent's magazine also targeted nurses engaged in the treatment of circulatory diseases and was often sold in the medical treatment section of bookstores with its cover page prominently displayed.

Based on these facts, the IP High Court found that the respondent's HEART marks and the petitioner's HEART NURSING trademarks shared a common pronunciation and concept of 'heart', and the appearance of the petitioner's original trademark was similar to that of the HEART marks, although there were slight differences in the design of the letters 'A' and 'R'. In addition, the HEART marks and the HEART NURSING trademarks were both used on the cover pages of monthly magazines for nurses and were both sold in bookstores with their cover pages on display. As such, the IP High Court held that the HEART marks were similar to the petitioner's HEART NURSING trademarks.

The respondent's and petitioner's magazines were also similar in their target readership and billing as medical magazines in bookstores, and both displayed the trademark HEART on their cover pages in Times New Roman font. Thus, the IP High Court considered them confusingly similar in appearance, as the cover page is the most distinctive part of a magazine, and held that the respondent's use of the HEART marks was likely to cause confusion with the petitioner's magazine.

The court then turned to the issue of intent. The respondent admitted that the petitioner's magazine was the major magazine on circulatory diseases, and that it was typical practice to examine major competing magazines when launching a new magazine. In light of this, the IP High Court held that the respondent should have known about the petitioner's magazine and trademarks when it first used the HEART marks.

In considering the similarity between the HEART marks and the petitioner's HEART NURSING trademarks, as well as their common nature and manner of use, the IP High Court concluded that the respondent had used the HEART marks with the intention of causing confusion with the petitioner's magazine. The IP High Court thus ruled that the JPO had not erred in its decision, and rejected the respondent's claims.

There is little court precedent covering Article 51(1) of the Trademark Law, as few cases have admitted its application. This is not surprising, since a petitioner under Article 51(1) must prove that the trademark owner intended to cause confusion with, or misunderstanding of, the petitioner's goods or services. This case was thus one of the few to apply Article 51(1) successfully (see also "IP High Court confirms cancellation of mark for unfair use"). Although the petitioner's trademark was not registered, the court admitted the respondent's intent to cause confusion.

When future cases under Article 51(1) are brought before the court, the real discussion will focus on whether the circumstances surrounding the use of the respondent's trademark are sufficiently similar to those surrounding the use of the petitioner's trademark; if so, the court will then decide on whether the respondent's use was intended to cause confusion.

Eiichi Fukushima, Nishimura & Asahi, Tokyo