Shoichi Okuyama - Lady Gaga TM Update

Lady Gaga
and Misgivings of the JPO?
Dr. Shoichi Okuyama
AIPPI Japan
Okuyama & Sasajima
3
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
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.
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
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.
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.
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
What’s Lady Gaga is doing outside
Japan
 Europe
 The U.S.
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
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.
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.?
`