ESPRIT CORPORATION

RESULTS IN ARGUMENT, TRIAL & OPPOSITION

April 16, 2012

Esprit Corporation

□ Results in Trademark Cases in Japan

1. Trademarks Registered after Reasons of Refusal are Overcome

Speaking of registration rate of trademark application, it may be risen if trademark search is strictly conducted, and that we do not take on any application which may have a possibility of rejection. It is also natural for the registration rate to goes up if goods or services designated in an application are deleted or amended following the order of the Examiner. In recent years, however, it is getting harder and harder to overcome a reason of refusal by only submitting an argument without amending goods or services.

In the following trademark application cases, almost all the trademarks were registered by arguments without submitting any amendments, except for the case of Registration No. 4715088 for “ウェルス”, in which some designated goods were reduced.

As you may understand when you see the reason of refusal of this case, it was not easy case to overcome the rejection. We take on such a trademark application as a delicate application like this, and have been achieving good results of over 90% registration rate at present without submitting amendments.

With a unique and original search technique for trademark search, we always try to find out the grounds of counterargument, and to pay our attention to have persuasiveness of counterarguments.

1) Results by Argument

Applied Provision of Trademark Law	Registration No.	Applied for Trademark	Reason of Refusal / Cited Mark
3-1-3 4-1-16	4816311	“マイクロ技法＼ Micro Skills”	Counseling skills which are widely introduced and practiced also in Japan.
3-1-6	4816312	“マイクロ技法研究会”	This mark shows an organization having purpose of research on counsel by using micro skills.
3-1-6	5025247	“心理教育実践センター”	It only describes the meaning of level of “central institution actually doing psychological education”
3-1-6	4710889	“Wealth”	It only makes perceive the meaning of “wealth or property,” and the origin of the mark cannot be recognized in “reception of deposit etc. “
3-1-6	4710888	“ウェルス”	Idem
4-1-11	4906293	“ジェイフレーム＼J-FRAME”	“FRAME”
4-1-11	5048318	“K－SHOW”	“SHOW”
4-1-11	4056746	“メディカコートo”	“メディカ”
4-1-11	4233120	“Power Level”	“REVEL”
4-1-11	4074834	“だいな♡あいらん”	“ダイナ”
4-1-11	3326863	“CFC”	“GFC”
4-1-11	5021217	“TEPCO SYSTEMS”	“TEPCO”
4-1-11	4794741	“BRAVIO＼ブラビオ”	“PREVIO”
4-1-11	4997391	“AOB”	“AOP”
4-1-11	3275782	“ポピ＼Hopi”	“ホビー＼HOBBY”
4-1-11	3280069	“コンポクリーン＼ CONPOCLEAN”	“COMPUCLEAN”
4-1-11	4258253	“ｎｅｏｃｕｒｅ”	“キュア”
4-1-11-	4151194	“C－POINT＼シーポイント”	“POINT”
4-1-11	4783818	“DAMO＼ダモ”	“DERMO”

 

2) Victories in Oppositions or Appeals against Examiner’s Decision of Refusal

Applied Provision of Trademark Law	Registration No. / Appeal No.	Trademark	Grounds of Refusal, Opposition and Invalidation
4-1-11-	5042666 / Dissatisfaction 2006-19251	“メイシー＼美姿茶”	“メーシ”
4-1-11	4761298 / Dissatisfaction 2003-14837	“V－ROAD”	“株式会社ロード”
3-1-3 4-1-16	4715088　Refusal + Opposition 2003-90858	“three-dimensional trademark (Robot)”	The mode of the use cannot be imagined in other goods than “machines and apparatus for amusement park, toys, and dolls.”
3-1-3 4-1-16	4661356 / Dissatisfaction 2000-16873	“サツマガオ”	It can be recognized as grating of サツマイモ and アサガオ.
3-1-3 4-1-16	5058812 / Opposition 2007-900462	“あずきらて (Standard Character)”	There are lots of usage of “あずきラテ” all over Japan.
3-1-6	5105130 Dissatisfaction 2006-9393	“マクロビアン”	It can be recognized as a meaning of planning, organization, holding, etc. of a seminar of “マクロビオティック” for practical persons.

1. Victory in Appeal for Invalidation

Applied Provision of Trademark Law	Registration No. / Appeal No.	Trademark	Grounds of Refusal, Opposition and Invalidation
4-1-10 Appeal side	4637117 irritate 2003-35179	“ルナ”	“LUNAR”

 

1. Others

There were pretty many cases of trial for cancellation of trademark under the non-use, but there was no lost case for the past twelve years.

　 There is only one lost case in an opposition proceeding this year.