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Case 1
BB-SPORTS: Successful Invalidation of Registration in Bad Faith

Japanese company BODYMAKER, previously BB-SPORTS, is a leading manufacturer and retailer of martial arts and other sports apparel and equipment. Sun East has represented the company for many years, serving as primary counsel for IP matters both in Japan and overseas.

In 2015, a trademark registration designating various sports and related items was discovered in China, which we believed to have been filed in bad faith. Following an invalidation appeal on behalf of our client, the China Trademark Office issued a decision of invalidation, determining not only that the opposing party’s registration had indeed been filed in bad faith, but that the mark’s true owner, our client, was well-known in regions of China.

The opposing party’s trademark registration was duly invalidated, and our client’s mark acknowledged as well-known.

Case 2
Trademark Prosecution: Arguing Dissimilarity to Achieve Registration

Sun East has represented numerous overseas firms seeking trademark protection in Japan, either via application through the Madrid Protocol or by direct filing. The existence of similar prior trademarks is often a major barrier to registration, and one which can be difficult to overcome.

Japanese trademark practice judges similarity of marks on the basis of three criteria: appearance, pronunciation and meaning. Usually, if similarity between two marks exists with respect to any one of these three, the marks are deemed similar and registration refused.

In 2015, our client, a fast-growing Chinese feed manufacturer seeking trademark protection through the Madrid Protocol for the mark “天馬” in Japan, received a notification of reasons for refusal based on similarity of pronunciation to the prior mark “天満”.

While cases of this sort typically conclude in a decision of refusal, through a combination of careful analysis, persuasive argument and ample evidence, we were successfully able to argue dissimilarity, resulting in the registration of our client's mark.

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