Yamata vs. Yamato

A Japanese company Yamato Mishin Seizo Kabushiki Kaisha applied for legal protection of its trademark «YAMATO» under international registration No.772010 in Ukraine. However the trademark met citation of an earlier registered trademark «YAMATA» under international registration No.678521 owned by a Chinese company Feiyue Group Co., Ltd., which became the reason for the preliminary refusal of granting legal protection to «YAMATO» that was overcome by having the cited trademark recognized invalid.

Ukrainian law provides the possibly of opposing registered trademarks in courts.

Yamato Mishin Seizo Kabushiki Kaisha took the advantage of this possibility to overcome the citation and protect its infringed rights to obtaining legal protection of the international trademark «YAMATO» in Ukraine. With the help of trademark-attorneys and lawyers of the Moscow and Kiev offices of Gorodissky & Partners the Japanese company filed a lawsuit with the court for recognition of the trademark «YAMATA» under international registration No.678521 invalid.

The claims were presented against Feiyue Group Co., Ltd., the owner of the cited trademark, and the Ukrainian PTO.

The international registration of the trademark «YAMATA» was recognized noncompliant with the conditions of granting legal protection on the following grounds:

1) the trademark «YAMATA» can mislead consumers as regards the manufacturer of goods;
2) the trademark «YAMATA» is confusingly similar to the Japanese company name, which is known in the Ukraine and belongs to another entity, who had been granted the right to the company name before the trademark application in respect of the same or identical goods was filed.

To support our claims in the court we presented the following arguments.

The word mark «YAMATA» is phonetically similar to the designation «YAMATO» since the compared indications differ only in their last letters, which sound in the same way when pronouncing the words. According to visual criteria these letters do not affect the distinctiveness of the marks. The semantic meaning of the word «YAMATO» directly concerns Japan, its statehood, territory and culture, which was proved by information from encyclopedias, reference books and tutorials.

Besides, the mark «YAMATO» is the main distinguishing element of the Japanese company name Yamato Mishin Seizo Kabushiki Kaisha, a manufacturer of sewing machines, and has also been used in Ukraine as a short company name and a trademark of the said company since 1989.

On the basis of the above trademark-attorneys and lawyers of Gorodissky & Partners came to the conclusion that the mark «YAMATA» registered in the name of the Chinese company may invoke in consumers’ minds false associations with Japan as the place of origin of goods.

Additionally, in evidence that the mark «YAMATA» may be interpreted by consumers as the indication of Japan to be the place of origin of goods, there were presented some special-purpose mass media publications containing descriptions of «YAMATO» sewing machines of the Japanese manufacturer, specifications of «YAMATO» sewing machines obtained from tutorials, and letters signed by heads of the companies using «YAMATO» sewing machines.

In order to prove the right to the short company name «YAMATO», there were cited some law provisions stating that a short company name shall also enjoy legal protection provided it has actually been used in agreements, advertising, on letter-heads, invoices, goods, and their package.

The fame of the short company name was proved by the use of the mark «YAMATO» as the company name on business documentation, in advertisements, advertising on goods and their package.

The case was considered by the Ukrainian courts several times since the court of cassation cancelled the decisions of the first instance court and the court of appeal and sent the case for reconsideration.

The court appointed expertise twice to indentify if there were any grounds for refusal of granting legal protection to the trademark «YAMATA», that is the grounds for recognition of the international registration of the said trademark invalid.

The first court expertise determined that:

1. the trademark «YAMATA» under international registration No.678521 can mislead consumers as regards the real origin of goods in Class 07 «Sewing machines».

2. the trademark «YAMATA» under international registration No.678521 is confusingly similar to the company name «Yamato Mishin Seizo Kabushiki Kaisha».

However despite the above conclusions of the expertise both the first instance court and further the court of appeal decided that there were no grounds to satisfy the claims.

Disagreeing with such decisions of the courts the Plaintiff filed a cassation petition with the High Commercial Court of Ukraine which satisfied the Plaintiff’s claims and sent the case for reconsideration. In its decision the court of cassation referred to the fact that it was lawful that the first instance court appointed the expertise but unlawful that the court did not indicate the grounds for rejecting the expert’s opinion.

The High Commercial Court of Ukraine also pointed out that determination of the company name is considered to be a legal issue and shall be solved by the court.

When reconsidering the case the first instance court determined that the Plaintiff’s short company name is «Yamato» and appointed one more court expertise. According to the second expert’s opinion the trademark «YAMATA» under international registration No.678521 was recognized confusingly similar to the short company name «Yamato».

Finally the court accepted both experts’ opinions as due evidence and satisfied the Plaintiff’s claims in full.

After recordal of a relevant change with the registry of international trademarks about recognition of registration No.678521 of the mark «YAMATA» invalid in Ukraine the trademark «YAMATO» was granted legal protection.