{"id":5906,"date":"2019-11-04T18:39:13","date_gmt":"2019-11-04T18:39:13","guid":{"rendered":"https:\/\/www.darts-ip.com\/?p=5906"},"modified":"2024-07-05T16:46:51","modified_gmt":"2024-07-05T16:46:51","slug":"masters-vs-konami","status":"publish","type":"post","link":"https:\/\/clarivate.com\/intellectual-property\/blog\/masters-vs-konami\/","title":{"rendered":"Augusta National Loses Fight for the MASTERS Family of Marks in Japan"},"content":{"rendered":"

Article by author, Ms. Mami Gosho (\u4e94\u6240\u4e07\u5b9f), who is a research associate (\u52a9\u6559) at Keio Univ (\u6176\u5fdc\u7fa9\u587e\u5927\u5b66) on linguistic (\u8a00\u8a9e\u5b66).<\/p>\n

 <\/p>\n

AUGUSTA NATIONAL, INC. v. KONAMI HOLDINGS CORPORATION<\/h2>\n

(Darts-ip Ref.: darts-110-639-G-ja<\/a>,\u00a0IP High Court 2019.2.6,\u00a0\u5e73\u621031(\u884c\u30b1)10154, Request for Cancellation of Trial Decision)<\/p>\n

\u00a0<\/b><\/strong><\/p>\n

AUGUSTA NATIONAL, INC.<\/b><\/strong>, Plaintiff<\/p>\n

Plaintiff\u2019s marks:\u00a0MASTERS<\/b><\/strong>\u00a0<\/b><\/strong>(in standard characters), Reg. No. 1325831<\/p>\n\n\n\n
\"MASTERS\"<\/span>
\nReg. Nos. 2198446 & 1934194<\/span><\/td>\n		 <\/p>\n

\u00a0 <\/span><\/p>\n

\"MASTERS\"<\/span>
\nReg. No. 2715796<\/span><\/p>\n

 <\/td>\n<\/tr>\n<\/tbody>\n<\/table>\n

 <\/p>\n

KONAMI HOLDINGS CORPORATION<\/b><\/strong>, Defendant<\/p>\n

Mark: KONAMI SPORTS CLUB MASTERS (or \u201c<\/b><\/strong>\u30b3\u30ca\u30df\u30b9\u30dd\u30fc\u30c4\u30af\u30e9\u30d6\u30de\u30b9\u30bf\u30fc\u30ba<\/b><\/strong>\u201d<\/b><\/strong>\u00a0<\/b><\/strong>in Japanese) <\/b><\/strong>(Reg. No. 5712040)<\/p>\n

 <\/p>\n

The world-famous MASTERS<\/b><\/strong>\u00a0tournament has been annually conducted by plaintiff, Augusta National, Inc. since 1934. Meanwhile, KONAMI SPORTS CLUB<\/b><\/strong>\u00a0has been engaged by defendant, Konami Holdings Corporation, an industry leader in sports business in Japan as one of the Konami Group companies. The defendant is the owner of the mark, KONAMI SPORTS CLUB MASTERS <\/b><\/strong>(hereafter, \u201cMark\u201d).<\/p>\n

 <\/p>\n

The plaintiff filed with the Japan Patent Office (JPO) an invalidation request against the Mark (for golf-related goods and services in classes 16, 25 and 41) on the basis of the followings:<\/p>\n

1) The Mark is similar to the plaintiff\u2019s marks(Article 4-1-11)<\/p>\n

2) There is a likelihood of confusion between the Mark and the plaintiff\u2019s marks for consumers (Article 4-1-15)<\/p>\n

3) Unfair use of the Mark to take a free-ride on the fame, reputation and goodwill of the plaintiff\u2019s marks(Article 4-1-19)<\/p>\n

4) The Mark is liable to cause damage to public order and morality(Article 4-1-7)<\/p>\n

 <\/p>\n

However, the JPO dismissed the plaintiff\u2019s request on June 25, 2018 (Darts-ip Ref.:\u00a0darts-356-694-F-ja<\/a>). The plaintiff filed a lawsuit for cancellation of the JPO decision, but the IP High Court upheld the decision on February 6, 2019, finding that 1) the plaintiff\u2019s marks and the defendant\u2019 Mark are not similar to each other in terms of appearance, sound and concept, 2) there is no likelihood of confusion between the opposing marks in connection with the designated goods and services, 3) there are no specific facts and evidence to support the plaintiff\u2019s allegations of defendant\u2019s unfair use of the Mark and likewise 4) there are not enough facts and evidence to support the plaintiff\u2019s allegations of the damage to public order or morality caused by the Mark.<\/p>\n

 <\/p>\n

The details of the plaintiff\u2019s allegations and the findings thereon by the IP High Court are as follows (Only substantive matters):<\/p>\n

 <\/p>\n

Mark\u2019s Similarity<\/i><\/em><\/h3>\n

The plaintiff maintains that the term \u201cMASTERS\u201d is exclusively associated with the MASTERS tournament in conjunction with golf-related goods and services; thus, the public always associates \u201cMASTERS\u201d, which is the dominant part of the Mark with the plaintiff\u2019s \u201cMASTERS.\u201d Hence, the Mark, despite comprised of two or more words, is confusingly similar to the plaintiff\u2019s marks.<\/p>\n

However, the IP High Court found as follows: the term MASTERS is not only associated with the plaintiff\u2019s MASTERS tournament but also widely known as \u201cvarious sports and tournaments for masters or competitors over a certain age.\u201d Further, the term does not play a dominant role for KONAMI SPORTS CLUB, which is famous among Japanese consumers, given the fact that the term MASTERS has been used in many tournament names, including but not limited to golf. Through such recognition and usage, consumers will primarily associate the Mark with \u201cvarious sports and tournaments related to KONAMI SPORTS CLUB\u201d or just with KONAMI SPORTS CLUB. Hence, the Mark is dissimilar to the plaintiff\u2019s marks, including MASTERS and MASTERS & Design, in appearance, sound, and concept.<\/p>\n

 <\/p>\n

Likelihood of Confusion<\/i><\/em><\/h3>\n

The plaintiff alleges that the plaintiff\u2019s MASTERS mark\u00a0is unique as it is applied to golf-related goods and services (while not a coined term), and is so world-renowned for the golf tournament that the Mark is highly likely to cause confusion when applied to the relevant designated goods and services among common consumers and traders, and is likely to cause\u00a0mistake as to affiliation, license or connection with the plaintiff.<\/p>\n

In this regard, the IP High Court found as follows: The plaintiff\u2019s marks are not similar to the Mark, and in golf-related businesses other than the MASTERS golf tournament, the term MASTERS is not assumed to be sufficiently well-known and distinctive for holding an identification function in Japan. Hence, the Mark is not considered likely to cause mistake\u00a0as to the connection and affiliation with\u00a0the plaintiff\u2019s business, even if it is used in connection with the designated goods and services.<\/p>\n

\u00a0<\/b><\/strong><\/p>\n

\u00a0<\/b><\/strong><\/p>\n

Summary and Implications <\/em><\/h3>\n

The heart of the plaintiff\u2019s allegations is that the Mark is associated with the MASTERS tournament as applied to the relevant designated goods and services; however, the IP High Court dismissed all allegations, which assume that the term MASTERS has no meaning other than the MASTERS tournament in the relevant industry, and ignore the distinctiveness of KONAMI SPORTS CLUB.<\/p>\n

The court deemed that 1) the definition of MASTERS has been widely recognized among sports-enthusiasts as the\u00a0collective term for various tournaments for competitors over a certain age, as defined by the dictionary, other than as the abbreviation of the world-famous plaintiff\u2019s golf tournament, and that 2) the term is actually used in many tournament names in Japan, and finally, that 3) in the Mark the word MASTERS alone does not necessarily play a dominant role and does not solely indicate the MASTERS golf tournament since the remaining portion, KONAMI SPORTS CLUB is also\u00a0distinctive given the fact that it is an industry leader in sports business in Japan.<\/p>\n

We can learn from this case that the dominant portion of a composite mark which includes the term of a renowned mark can be determined by the originality and assigned meaning of the term, and the distinctiveness of the term in the specifically designated area of business.<\/p>\n

The plaintiff filed an appeal with the Supreme Court on March 22, 2019, to overturn the lower court decision. The outcome is now expected.<\/p>\n","protected":false},"excerpt":{"rendered":"

Article by author, Ms. Mami Gosho (\u4e94\u6240\u4e07\u5b9f), who is a research associate (\u52a9\u6559) at Keio Univ (\u6176\u5fdc\u7fa9\u587e\u5927\u5b66) on linguistic (\u8a00\u8a9e\u5b66).   AUGUSTA NATIONAL, INC. v. KONAMI HOLDINGS CORPORATION (Darts-ip Ref.:…<\/p>\n","protected":false},"author":164,"featured_media":5917,"comment_status":"open","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"_acf_changed":false,"footnotes":""},"categories":[1],"tags":[486],"class_list":["post-5906","post","type-post","status-publish","format-standard","has-post-thumbnail","hentry","category-uncategorized","tag-darts-ip"],"acf":[],"lang":"en","translations":{"en":5906},"publishpress_future_workflow_manual_trigger":{"enabledWorkflows":[]},"pll_sync_post":[],"_links":{"self":[{"href":"https:\/\/clarivate.com\/intellectual-property\/wp-json\/wp\/v2\/posts\/5906","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/clarivate.com\/intellectual-property\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/clarivate.com\/intellectual-property\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/clarivate.com\/intellectual-property\/wp-json\/wp\/v2\/users\/164"}],"replies":[{"embeddable":true,"href":"https:\/\/clarivate.com\/intellectual-property\/wp-json\/wp\/v2\/comments?post=5906"}],"version-history":[{"count":2,"href":"https:\/\/clarivate.com\/intellectual-property\/wp-json\/wp\/v2\/posts\/5906\/revisions"}],"predecessor-version":[{"id":265474,"href":"https:\/\/clarivate.com\/intellectual-property\/wp-json\/wp\/v2\/posts\/5906\/revisions\/265474"}],"wp:featuredmedia":[{"embeddable":true,"href":"https:\/\/clarivate.com\/intellectual-property\/wp-json\/"}],"wp:attachment":[{"href":"https:\/\/clarivate.com\/intellectual-property\/wp-json\/wp\/v2\/media?parent=5906"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/clarivate.com\/intellectual-property\/wp-json\/wp\/v2\/categories?post=5906"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/clarivate.com\/intellectual-property\/wp-json\/wp\/v2\/tags?post=5906"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}