The Risk of A Mark Comprised of a foreign word and the transcription thereof into Japanese Characters: Trademark Non-Use Cancellation against over “ブロマガ” (“BLOMAGA,” in katakana characters) with “BlogMaga” (FC2 vs. Dwango)

The Risk of A Mark Comprised of a foreign word and the transcription thereof into Japanese Characters: Trademark Non-Use Cancellation against over “ブロマガ” (“BLOMAGA,” in katakana characters) with “BlogMaga” (FC2 vs. Dwango)

The 1st blog article from our new JP author, Ms. Mami Gosho (五所万実), who is a research associate (助教) of Keio Univ (慶応義塾大学) on linguistic (言語学) just arrived!

The Risk of A Mark Comprised of a foreign word and the transcription thereof into Japanese Characters:
Trademark Non-Use Cancellation against over “ブロマガ” (“BLOMAGA,” in katakana characters) with “BlogMaga” (FC2 vs. Dwango)

Introduction

In Japanese trademark practice, a mark comprised of a foreign word and the transcription thereof into Japanese characters (such as “HIGUARD” and the transcription thereof into katakana characters, “ハイガード”, phonetically equivalent to high-guard) can be registered. However, this type of marks sometimes confronts the issue whether the transcription is equivalent to the original word in determining the scope of trademark protection. As long as the transcription is found to be conventionally identical with the original word, the use of a part of a registered trademark (i.e., the original word only or the transcription thereof only) is deemed to be the use of the registered trademark.

Article 50 (1) of the Trademark Act (prior to the amendment on December 30, 2018), which addresses proceedings for trial for cancellation of a trademark registration, stipulates that a registered trademark will include “a trademark deemed identical from common sense perspective with the registered trademark, including a trademark consisting of characters identical with the registered trademark but in different fonts, a trademark that is written in different characters, Hiragana characters, Katakana characters, or Latin alphabetic characters, from the registered trademark but identical with the registered trademark in terms of pronunciation and concept, and a trademark consisting of figures that are considered identical in terms of appearance as those of the registered trademark.” (The definition of a registered mark is retained in Article 38 (4), which specifying the presumption of amount of damage, etc.)

FC2 trademark dispute over non-use cancellation against the mark comprised of “ブロマガ” (BLOMAGA) and “BlogMaga” (Darts-ip Ref.: jp-平成30(行ケ)10102 darts-930-404-F-ja)

In the course of a trademark dispute between FC2 and Dwango, the IP High Court ruled on December 20, 2018 to uphold the Japan Patent Office (JPO) decision on March 22, 2018 (Darts-ip Ref.: jp-T2016-300709_J2 darts-912-283-E-ja-2) to cancel the registered trademark comprised of “ブロマガ” (“BLOMAGA,” in katakana characters) and “BlogMaga” owned by FC2 (hereafter, “Mark”) .

blogmaga
Figure 1: FC2’s registered mark (“Mark”) (Reg. No. 5621414)

JPO Decision

A point at issue is whether a part of the Mark, “ブロマガ” (BLOMAGA) used as transcription of “BlogMaga” and “BlogMaga” are respectively deemed to be identical from a common sense perspective with the Mark.

The JPO made a decision that the Mark should be cancelled in connection with the services subject to cancellation on the grounds that neither “ブロマガ” (BLOMAGA) nor “BlogMaga,” both of which FC2 actually used independently of the Mark, are identical with the Mark from a common sense perspective under Article 50 (1) of the Trademark Act.

IP High Court Decision

The IP High Court upheld the JPO decision on the grounds that the two separate marks, neither “ブロマガ” (BLOMAGA) nor “BlogMaga” are identical with the Mark from a common sense perspective in terms of their sound, meaning and appearance despite the presence of the shared term in each mark. Also, it found that there was not sufficient evidence to support the FC2’s allegation that “BlogMaga” is conventionally recognized and indicated as “ブロマガ” (BLOMAGA).

Implications and Comments

The court ruled that “BlogMaga” and “ブロマガ” (BLOMAGA) used as transcription thereof into katakana characters are not conventionally identical. Given the fact that the word “blog” is familiar to Japanese people, who read it as burogu, I believe that the decision was appropriate. On the other hand, it is likely that both marks are viewed as being associated with FC2’s services by the consumers.

We can learn from this case that we should be aware of vulnerability to cancellation for non-use when applying a mark comprised a foreign word and the transcription thereof into Japanese characters (i.e., katakana, hiragana and kanji). It would be better off registering each word separately for protection of trademark rights.

Recently in Japan, the number of marks using foreign words, which include unfamiliar ones to Japanese, has been growing. The issue of specifying not only the meanings but also sounds of those marks is coming more to the fore.

On another note, FC2’s new marks “マガブロ” (“MAGABLO” in katakana characters)” (Reg. No. 6039856) and “magablo” (Reg. No. 6039857) were registered on April 27, 2018.

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