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Though Recognized as a Well-known Mark and Defensive Mark in Japan, Intel Corporation Still Lost in The Lawsuit Intel Corporation vs. KK Intelgrow and The Japanese Court's Interpretation Relating to The Application of Famous Trademark Protection Legislation

19

MAY

2020

Senior Mark recognized as well-known mark

in Japan by Intel Corpration Inc.

Junior Mark

by KK IntelGrow

INTEL

Registered Defensive Mark

under Reg. 4456379

Class 09

Reading (katakana): interu

Reg. No. 4980761

Filing date: Jan. 19, 2006

Registration date: Aug. 18, 2006

Classes 19 & 37

Other registered trademarks owned by Intel Corp. in Japan, inter alia, including:

Reg. No. 4362619

Filing date: October 23, 1997

Registration date: Feb. 18, 2000

Classes: 14, 16, 18 & 25

Following our introduction on the Japanese position on the protection of well-known trademarks implied from the judgment by the Japanese Supreme Court in Case H10 (Gyo-HI) No. 85 as published earlier[2], we would like to continue to help you recall an interesting case of Intel Corporation vs. KK Intelgrow, which was heard in 2013 by the Japanese Intellectual Property High Court[3] to together view if Japan is confronted with any obstacles when it puts its substantive legislation on protection of well-known mark into practice?

Summary of the case

Intel Corporation owns multiple trademark registrations for the verbal element INTEL, including the Japanese version of Katakana[4] wherein consists of the trademark INTEL under registration no. 4362619 covering classes 14, 16, 18 and 25 dated February 18, 2000. On January 19, 2006, KK Intelgrow filed an application for registration of the sign INTELGROW in the form of Japanese Katakana and on August 18, 2006 it was granted registration no. 4980761 by the JPO under classes 19 and 37.

On August 18, 2011, Intel Corporation filed cancellation action[5] against the junior mark INTELGROW because of a breach of Articles 4(1)(vii), 4(1)(viii), 4(1)(xi), 4(1)(xv) and 4(1)(xix) of the Japanese Trademark Law[6] [5]. In our opinion, the use of multiple grounds for cancellation by Intel Corporation mentioned above implies that Intel Corporation wants to increase the likelihood of successful cancellation, and to demonstrate its drastic efforts to fight the act of dilution over its global famed brand name INTEL. On July 20, 2012, the JPO issued a decision rejecting the cancellation action with the following main arguments:

  1. A trademark falls into Article 4(1)(viii) if it contains the name or abbreviation of another person on the condition that the owner of junior mark intentionally obtains that name or abbreviation. Therefore, the argument presented by the owner of senior mark Intel is not enough to meet this regulation. It is obvious that the abbreviation "Intel" comprising the wording form in Japanese Katakana, which is widely known, including both dealers and traders in the field of semiconductors and integrated circuits at the time the junior mark INTELGROW was filed in 2006. The junior mark INTELGROW is made of the same typeface, size and appearance as a word so it shall be considered a coined word. Accordingly, it cannot be recognized as the abbreviation of name of other. In other word, KK Intelgrow does neither have to obtain a consent letter from Intel nor does it violate Article 4(1)(viii).

  1. The JPO held that INTELGROW is not confused with Intel and does not also violate Article 4(1)(xi) when considering the form of expression, pronunciation and connotation because (a) Intelgrow is pronounced into a continuous sound as intelgrow, not separately creating an "intel" sound, (b) INTELGROW is different from Intel as to structure and form of expression, thus there is no likelihood of confusion in terms of their appearance, and (c) because INTELGROW does not make sense, these brands in question cannot be compared about their meaning.

  1. The junior mark INTELGROW does not fall within the scope of applicability of Article 4 (1)(xv) – a likelihood of confusion with the goods, services associated with the business activity of others - as INTEL also means a metal sheet or a thin wood used to make room for printing widths therefore it would be not appropriate to conclude that the word merely comes from the complainant. On the other hand, Intel-branded products and building materials registered under the junior mark INTELGROW completely differ in quality, purpose and consumption channel. Moreover, INTELGROW-branded construction service has very little connection with the goods Intel is using. Thus, in consideration with the similarity between the trademarks, relationship between goods, services, and the natural needs of customers, the likelihood of confusion in terms of the origin of commerce is extremely minimal, therefore INTELGROW does not infringe upon the rights to the well-known trademark INTEL.

  1. Similar to the above analysis, INTELGROW is neither identical nor similar to the senior mark INTEL so it does not infringe upon the senior mark INTEL that is deemed to be well-known among the public in Japan or abroad under Article 4(1)( xix).

  1. As regards the possibility of violating public order or policy, construction services associated with INTELGROW do not negatively affect social order or social morality, so the junior mark does not violate Article 4(1)(vii).

Intel Corporation appealed against the JPO decision to the Intellectual Property High Court and the Court issued a ruling on April 18, 2013 upholding the JPO’s decision. In this ruling, there is the court’s noteworthy comments regarding a provision on prohibiting registration of a trademark identical or similar to a well-known trademark among Japanese or overseas consumers, saying that because the usage of INTELGROW is not likely to obstruct or cause harm to Intel's reputation, esteem and charisma; INTELGROW were also neither registered with the purpose of making illegal profits nor causing damage to others so the court concluded that the JPO did not make any mistakes when it determined the case.

Furthermore, the court acknowledged that the plaintiff, Intel Corporation was successful in expanding its brand name's influence in the field of semiconductors, integrated circuits, PCs and servers, there was no evidence to support the viewpoint that the Intel brand name was become famous outside those areas. There is also no evidence that Intel is engaged in the field of house or building materials. In addition, the fact that Intel invoked the fact that it has successfully registered INTEL as a defensive trademark[7] does not necessarily mean that the senior mark Intel has become well-known for all such protected goods and services.

Many have criticized the Intellectual Property High Court’s judgement on the IntelGrow case mentioned above, saying that the judiciary was inconsistent in protecting famous trademark. Remembering that on December 20, 2007, it was duly Intel Corporation that objected to the junior mark "INTELLASSETTE GROUP" (this mark contains the element "INTEL") in classes 35, 36 and 41 and the Intellectual Property High Court declared to cancel the validty of the registered junior mark because it held that the junior mark contained a famous sign in violation of Article 4(1)(8) of the Japanese Trademark Law. However, in the second case on October 20, 2009, the Intellectual Property High Court rejected Intel’s claim for cancellation against the registered trademark "INTELLASSET" in class 35[8].

Our additional comments

1. Japan is operating its own theory on the protection of well-known trademark by relying on its defensive mark registration mechanism together with the legal concept “likelihood of confusion” or “likelihood of association” interpreted in a too broad sense by the Japanese Supreme Court[9]. However, with the failure of Intel Corporation mentioned above it seems that Japan will probably abolish its defensive mark[10] registration system by reason of ineffectiveness and expensiveness?

2. The conclusion by the Japanese IP High Court that INTELGROW does not infringe upon the rights to the famous trademark INTEL seems very similar to the view of the European Court of Justice in CASE C-252/07 leading to the decision that INTELMARK does not infringe upon the rights of the famous trademark INTEL, although Japan does not apply the "change in the economic behavior"[11] standard of the European Union nor does it operate the anti-dilution doctrine like the US[12].


Bross & Partners has had experience in assisting the clients to prepare and submit dosier and relevant evidence asking for recognition of well-known trademark in Vietnam. We also helped some clients successfully defend against well-known trademark claims in Vietnam, Cambodia and Thailand. Should you have any query, please contact us at vinh@bross.vn or 84-903 287 057.

Bross & Partners, a renowned and qualified Patent, Design, Trademark and Copyright agent of Vietnam, constantly ranked and recommended by the Managing Intellectual Property (MIP), World Trademark Review (WTR), Legal 500 Asia Pacific, AsiaLaw Profiles, Asia IP and Asian Legal Business, is providing clients all over the world with the reliable, affordable contentious and non-contentious IP services including enforcement, anti-counterfeiting, litigation regarding trademark, trade name, industrial design, patent, copyright and domain name.



[1] The article uses and/or extracts some contents from the research report under the “Project on protection of well-known trademark under Vietnamese law - Situation and Solution" co-authored by attorney Le Quang Vinh (a registered IP practitioner of Bross & Partners) and Dr. Phan Ngoc Tam (Ho Chi Minh City’s University of Law) sponsored by the INTA and Ministry of Science and Technology that was officially announced on November 17, 2017 in Hanoi and then published into a book by the Technical and Scientific Publishing House in 2017. See our article in Vietnamese version published on October 19, 2018 at the link: http://bross.vn/newsletter/ip-news-update/Intel-Corporation-thua-kien-KK-Intelgrow-va-cach-ly-giai-cua-toa-an--Nhat-Ban-lien-quan-den-viec-ap-dung-phap-luat-noi-dung-ve-bao-ho-nhan-hieu-noi-tieng

[2] The detail of the case can be found at the link (only Vietnamese): http://bross.vn/newsletter/ip-news-update/Quan-diem-cua-Nhat-Ban-ve-bao-ho-nhan-hieu-noi-tieng--nhin-tu-phan-quyet-cua-cua-Toa-an-toi-cao-trong-Case-H10-GyoHi-No-85

[3] The Intellectual Property High Court (知的財産高等裁判所, Chiteki-zaisan kōtō-saiban-sho) is the first IP specialized court established in Japan on April 1, 2005. The IP high court has jurisdiction to hear second instance for civil cases of infringement of inventions, designs, trademarks and copyrights, and it is designated as a court of first instance with jurisdiction over all administrative cases against the JPO's decisions regarding inventions, designs and trademarks. However, except for patent infringements, the second instance trial jurisdiction for IPR infringement cases can be heard by the Osaka High Court, the Tokyo High Court ((東京高等裁判所 Tōkyō Kōtō Saibansho) and the higher courts including the IP High Court. See Tomokatsu TSUKAHARA, Professor, Attorney at Law, Intellectual Property High Court of Japan, Japan Patent Office Asia-Pacific Industrial Property Center, JIPII, 2013, page 2.

[4] Katakana (片仮名, かたかな, カタカナ, Japanese pronunciation: [katakana]) is a Japanese syllabary, one component of the Japanese writing system along with hiragana, kanji and in some cases the Latin script (known as rōmaji). The word katakana means "fragmentary kana", as the katakana characters are derived from components or fragments of more complex kanji, etc. See more at: https://en.wikipedia.org/wiki/Katakana

[5] The exact term used in this case should have been "trial for invalidation". But we use the term “cancellation action” in replace because “cancellation action” is used more popular than "trial for invalidation". According to the JPO (see https://www.jpo.go.jp/english/faqs/appeals.html), trial for invalidation means a revocation procedure for an exclusive right granted in favor of an invention or utility model, design or trademark, that has been indicated in a title of protection but it should have been rejected by law. The legal consequence of trial for invalidation, if approved, is that the trademark rights granted will be deemed to never exist.

[6] Except for Articles 4(xi), 4(xv) and 4(xix) as cited and analyzed on the previous pages [a 190-page study report], Article 4(1)(vii) and 4(1)(viii) of the Japanese Trademark Law that prohibit respectively trademark applied-for is likely to cause damage to public policy and containing images of other people, or names, pseudonyms, occupation names or someone else's nickname, or that famous abbreviation [extracted literally: contains the portrait of another person, or the name, famous pseudonym, professional name or pen name of another person, or famous abbreviation originally (except those the registration of which has been approved by the person concerned]

[7] Although no definition of defensive trademark is available in the Japanese trademark law, according to the JPAA, defensive mark creates a wider protection for a famous mark, which can prohibit a third party from using or registering a famous mark for goods and services but dissimilar to those of famous mark. If a trademark is famous for a certain goods or services, its mark can be register-able provided that the trademark satisfies the requirements, namely, (a) requirement A: A trademark is famous in Japan for a certain goods/services as indicator of source demonstrating goods/services of a famous mark owner, and (b) requirement B: There is a likelihood of confusion between trademarks when a third party use the famous mark in connection with goods/services but it’s not identical or similar to those of famous mark. More read at the link: https://www.jpaa.or.jp/old/?page_id=18006

[8] See: http://fujimarks.jp/english/pdf/sp01_042.pdf

[9] http://bross.vn/newsletter/ip-news-update/Quan-diem-cua-Nhat-Ban-ve-bao-ho-nhan-hieu-noi-tieng--nhin-tu-phan-quyet-cua-cua-Toa-an-toi-cao-trong-Case-H10-GyoHi-No-85

[10] You may refer to our article on “defensive trademark” published (only Vietnamese) at the link: http://bross.vn/newsletter/ip-news-update/Lieu-Nhat-Ban-co-the-se-huy-bo-che-dinh-nhan-hieu-bao-ve-defensive-mark-%E2%80%93-che-dinh-duoc-xem-hoc-thuyet-rieng-cua-Nhat-Ban-ve-bao-ho-nhan-hieu-noi-tieng-vi-ly-do-khong-hieu-qua-va-ton-kem%E2%80%93-hay-khong

[11] To understand CASE C-252/07 in connection with INTEL vs. INTELMARK, please view our published article (in Vietnamese only) at the link: http://bross.vn/newsletter/ip-news-update/Quan-diem-cua-Lien-minh-Chau-Au-ve-van-de-xac-dinh-pham-vi-bao-ho-cua-nhan-hieu-noi-tieng-nhin-tu-vu-Intel-Corporation-Inc-vs-CPM-United-Kingdom-Limited-Case-C-25207--1316

[12] View more the US’s own position on the protection of well-known mark that is relied on its anti-dilution doctrine through the case of Coach Services, Inc. v. Triumph Learning LLC briefed and commented by us in earlier article (only Vietnamese) available at the link: http://bross.vn/newsletter/ip-news-update/Su-van-hanh-cua-Dao-luat-chong-lu-mo-nhan-hieu-TDRA-cua-Hoa-Ky-ve-bao-ho--nhan-hieu-noi-tieng-nhin-tu-vu-Coach-Services-Inc-v-Triumph-Learning-LLC-1315

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