Introduction: Trademark owner’s active performance in claiming trademark distinctiveness and public awareness may help the trademark authorities to apply examination standard more strictly in the cases.

Abstract:  Mr. Issey Miyake is a renowned Japanese fashion designer who is praised as one of the “Top 10 greatest souls of fashion in 20th century” and is famous for his creative fashion design and exhibition around the world. The brand “Issey Miyake” he established covers the fashion products including clothing, perfumes, bags and it enjoys high reputation in the industry.

A Hong Kong company, trying to take advantage of reputation of “Issey Miyake”, registered several trademarks for “ISSEY-CHARMING” in the classes of fashion products, which were clearly imitation of our client’s “Issey Miyake” . Due to the difference between “ISSEY-CHARMING” and “Issey Miyake” as a whole, the two marks were less likely to be determined similar, by applying examination standard mechanically. Therefore, in addition to argue the distinctiveness of the trademark “Issey Miyake”, we also submitted much evidence to prove the awareness of trademark “Issey Miyake” among the public and emphasized a direct reference  between the trademark and our client has been established. We further argued that it would not only cause great damages to our client but also would cause confusion and misunderstandings among the public once “ISSEY-CHARMING” is put into use. The Trademark Appeal Board finally supported our arguments and determined the two trademarks similar, and consequently invalidated a series of malicious trademark registrations for “ISSEY-CHARMING”.