lady gaga and misgivings of the jpo? dr. shoichi okuyama aippi japan okuyama & sasajima

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Lady Gaga and Misgivings of the JPO? Dr. Shoichi Okuyama AIPPI Japan Okuyama & Sasajima

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Page 1: Lady Gaga and Misgivings of the JPO? Dr. Shoichi Okuyama AIPPI Japan Okuyama & Sasajima

Lady Gaga and Misgivings of the JPO?

Dr. Shoichi Okuyama

AIPPI Japan

Okuyama & Sasajima

Page 2: Lady Gaga and Misgivings of the JPO? Dr. Shoichi Okuyama AIPPI Japan Okuyama & Sasajima
Page 3: Lady Gaga and Misgivings of the JPO? Dr. Shoichi Okuyama AIPPI Japan Okuyama & Sasajima

IP High Court decision

Handed down on December 17, 2013

2nd Division presided by Judge Misao Shimizu

who headed a local district court for two years before coming back to IP

Affirmed a JPO decision which rejected a TM application filed by Ate My Heart Inc. owned by Lady Gaga

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Page 4: Lady Gaga and Misgivings of the JPO? Dr. Shoichi Okuyama AIPPI Japan Okuyama & Sasajima

Trademark in question

“LADY GAGA” in standard characters

Goods “Records, music files that may be received and stored using the Internet, movie films, recorded video disks and tapes” in class 9

Narrowed down from goods and services in classes 3, 9, 14, 16, 18 and 25 in the parent application

The parent successfully resulted in a registration covering other goods and services

perfumes, printed matters, management of fan clubs, provision of information on music through websites, etc.

Page 5: Lady Gaga and Misgivings of the JPO? Dr. Shoichi Okuyama AIPPI Japan Okuyama & Sasajima

JPO decision

JPO Appeal and Trial Department made a decision to reject this application on January 28, 2013 on two grounds:

The lack of distinctiveness, and

The possibility of confusion as to the contents of the goods if used for goods unrelated to Lady Gaga

This is a regular practice at the JPO

Page 6: Lady Gaga and Misgivings of the JPO? Dr. Shoichi Okuyama AIPPI Japan Okuyama & Sasajima

Lack of distinctiveness (Ground 1)

Lady Gaga is well known as the name of a popular American musician

If the TM “LADY GAGA” is used for the designated goods (music files, etc.), dealers and consumers would consider the TM as indicating a singer who is singing songs contained in the goods, or a person who appears in video and sings songs; that is, they would consider the TM as showing the quality and contents of the goods. Therefore, it does not function as a mark distinguishing goods of the applicant from those of others.

Plaintiff argued:

“Distinctiveness” should not be judged based on the specific manner of use (this time, use for music files)

Under the current practice, if the applicant is Lady Gaga Inc. instead of Ate My Heart Inc., a registration would be granted. This is strange.

Page 7: Lady Gaga and Misgivings of the JPO? Dr. Shoichi Okuyama AIPPI Japan Okuyama & Sasajima

Possibility of confusion (Ground 2)

If the TM “LADY GAGA” is used on products unrelated to Lady Gaga among the designated goods, it possibly causes confusion as to the quality of the goods.

Plaintiff argued:

According to the JPO decision “who is playing is closely related to the quality of the goods,” but the quality of goods varies even if they are associated with a particular player.

As the JPO noted in its own decision, Lady Gaga is well known and the name represents the goodwill that should be protected by a TM registration

Past registrations: “MICK JAGGER”, “BRITNEY SPEARS”, “BEYONCE’”, “BILLY JOEL”, “JIMI HENDRIX”, “UTASA HIKARU”, etc.

Page 8: Lady Gaga and Misgivings of the JPO? Dr. Shoichi Okuyama AIPPI Japan Okuyama & Sasajima

IP High Court decision

Basically, the panel headed by Judge Shimizu reiterated what the JPO argued without getting into the substance of arguments the plaintiff made

Page 9: Lady Gaga and Misgivings of the JPO? Dr. Shoichi Okuyama AIPPI Japan Okuyama & Sasajima

What’s Lady Gaga is doing outside Japan

Europe

The U.S.

Page 10: Lady Gaga and Misgivings of the JPO? Dr. Shoichi Okuyama AIPPI Japan Okuyama & Sasajima

Lady Gaga wins injunction in Europe

Ate My Heart Inc. v Mind Candy and Moshi Music

Ate My Heart Inc. had CTM registrations for “LADY GAGA” covering sound, video and audio visual recordings, entertainment services and the streaming of audio and video material on the Internet

October 2011, British High Court gave an interim injunction order against “Lady Goo Goo” to stop the release of music sang by Lady Goo Goo, and take down the video on YouTube

Page 11: Lady Gaga and Misgivings of the JPO? Dr. Shoichi Okuyama AIPPI Japan Okuyama & Sasajima

Lady Gaga before the US courts

Ate My Heart Inc. sued Excite Worldwide before the Manhattan Supreme Court in September 2011 to stop the use of “Lady Gaga By Design” for a line of cosmetics and jewelry and also to stop the “frivolous” TM applications for “Lady Gaga” and “Lady Gaga LG”

Lady Gaga believes that Excite’s applications were blocking her application procedures

Lady Gaga also took legal action in 2011 when ice cream made out of breast milk was marketed under the name "Baby Gaga.“ The product has since been removed for hygienic reasons. Also, a pre-grant opposition was filed against a TM application for “BABY GAGA”

Lady Gaga filed a suit against a TM registration, for non-use, on “Gaga Pure Platinum” for cosmetics owned by a small family business for 12 years.

Page 12: Lady Gaga and Misgivings of the JPO? Dr. Shoichi Okuyama AIPPI Japan Okuyama & Sasajima

Was the JPO about to change?

JPAA did an international survey among 27 countries, and found only UK and Hong Kong may deny registrations (reported in its monthly journal)

JPAA submitted an opinion letter to the JPO in October 2012, asking the JPO to change its practice and register the name of a singer or a musical group for recordings and recorded media

This fiscal year ending March 2014, the JPO commissioned AIPPI Japan to carry out an international research on registrability of names of singers and musical groups

Well, how the IP High Court decision will play out?

Any appeal before the Sup. Ct.?

Page 13: Lady Gaga and Misgivings of the JPO? Dr. Shoichi Okuyama AIPPI Japan Okuyama & Sasajima