LOVECOSME story ends in victory for mark owner

The IP High Court has reversed a decision of the Patent Office in which the latter had invalidated the trademark LOVECOSME (April 27 2009).
Article 4(1)(11) of the Trademark Law (127/1959, as amended) provides that registration cannot be obtained:

"in the case of a trademark which is identical or similar to another person's registered trademark applied for prior to the filing date of the trademark application concerned and which is used on the designated goods or services covered by the trademark registration referred to or on similar goods or services."
On March 13 2006 K K Natural Plants filed an application for the registration of the mark LOVECOSME in Japanese katakana characters for cosmetics in Class 3 of the Nice Classification. The mark was registered at the Patent Office (Registration 5046619) on May 11 2007. On July 18 2007 K K Club Cosmetics filed a petition for an invalidation trial hearing, alleging that the registration breached Article 4(1)(11). K K Club cited six earlier figurative trademarks which included the word 'love' in English or Japanese katakana characters (Registrations 542450, 2219231, 2219232, 2431617, 4277280 and 4522976).
On September 9 2008 the Patent Office allowed K K Club's petition for a trial hearing and invalidated the registration. It reasoned that:

  • the element 'cosme' was an abbreviation of 'cosmetic' (denoting beauty products) and did not distinguish the goods of K K Natural Plants from those of others - meaning that the main element having this function was 'love';
  • the trademark LOVECOSME thus evoked the sound and meaning of 'love'; and
  • the cited trademarks also evoked the sound and meaning of 'love'.
Therefore, the Patent Office decided that LOVECOSME was similar to the LOVE marks and fell under Article 4(1)(11). It thus concluded that the mark should be invalidated under Article 46(1).
K K Natural Plants appealed to the IP High Court, which reversed the trial decision. The court first held that the similarity of the marks under Article 4(1)(11) should be examined as a whole in view of the impression, recollection and imagination of dealers and consumers as prompted by the appearance, meaning, sound and other characteristics of the trademarks used on identical or similar goods or services, and also considering the circumstances of the transactions in such goods or services.

Analyzing the structure of the marks at issue, the court noted that the word 'love' is familiar in Japan as a noun (with meanings such as 'passion', 'affection' and 'favour') and as a verb (indicating such meanings as 'to love a person', 'to make love' or 'to feel love'). In connection with the element 'cosme', the court noted that the word 'cosmetic' in English or Japanese katakana characters is recognized as denoting beauty products, but it did not find that the word was generally considered to denote beauty products at the time that the application was filed or at the time of the registration of the mark. Therefore, it could not be admitted that the element 'cosme' was recognized as the abbreviation of the word 'cosmetic', although 'cosme' was understood to mean 'beauty products' among some women with an interest in the beauty business.

The court pointed out that the trademark LOVECOSME is represented in Japanese katakana characters in standard lettering, without a hyphen or space, as consisting of five short sounds. Therefore, dealers and consumers recognize and understand LOVECOSME as a unified and continuous mark. Thus, the court considered that the LOVECOSME mark produced the appearance and sound of 'lovecosme'; it would not be a natural interpretation to consider that it produced the further abbreviated sound 'love'.

With regard to the cited trademarks, the element 'love' was considered to have a close connection with cosmetics in view of the fact that the cosmetics in the designated goods included "goods such as creams and cleansing preparations which are used for the purpose of beauty appearance or decoration". In light of such a connection, the element 'love' could not be considered to have a strong distinctive character if used in connection with cosmetics.

The court also assessed the manner of use of the marks at issue. The goods covered by the trademark LOVECOSME had been sold by mail order, mainly over the Internet. From the evidence submitted, it was not found that the cited trademarks had been widely used before the filing of the trademark LOVECOSME on March 13 2006 or the decision to register the mark on April 20 2007.

The court then turned to the comparison of the marks. The trademark LOVECOSME was found to evoke the appearance and sound of 'lovecosme', whereas the cited trademarks evoked the sound 'love'. Thus, LOVECOSME and all six cited trademarks were found to be dissimilar in terms of appearance and sound.

The court further found that LOVECOSME can evoke various meanings (eg, 'cosmetics related to love'), whereas the cited trademarks evoked the meanings 'passion', 'affection', 'favour', 'to love a person', 'to make love' and 'to feel love'.

The court also held that it was unclear whether there was a significant difference between the manner of sale of the goods under the LOVECOSME mark (ie, a largely Internet-based mail order system) and the manner of sale of the goods under the cited trademarks (sales to female customers using the cosmetics).

In view of the designated goods, the word 'love' in the cited trademarks was considered to be closely connected with cosmetics. Therefore, if used on cosmetics, it could not be considered to have strong exclusivity against all trademarks which incorporate the element 'love'.

The decision on this issue depended entirely upon the circumstances of the transactions and use of the cited trademarks at the time of filing and the time of registration of the mark in question. However, K K Club did not clarify the circumstances of use of the cited trademarks in this case.

Examining the situation as a whole, the court found that there was no likelihood of confusion among the public. Therefore, it held that LOVECOSME was not similar to any of the cited trademarks.
The case shows the potential difficulty - and confusion for people whose first language is English - in understanding interpretations or constructions by the Patent Office or Japanese courts involving trademarks in English or Japanese katakana characters. Such marks may include or incorporate English words that are recognized or considered differently from their original English context or meaning in Japanese society.

Eiichi Fukushima, Nishimura & Asahi, Tokyo

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