European Trademark On The Word "nihonto" And Pending For "katana"

[Surfson]

Einarsson also needs to realize that we are not trolls.  We are NIHONTO collectors that object to his attempts to own the name of the subject of our collecting hobby.  I agree with Brian and others who said that we should simply boycott his site, banish him from NMB and not do any business with him until he makes it clear that he will relinquish his claims on the words nihonto and katana.  

[DaveT]

I defended a US trademark where a UK retailer copied my logo and trading name, he filled for the Trademark before I could.  The result was that I won and he had to destroy his stock. 

This Nihonto Trademark is ridiculous, but please let me assure you that no amount of speculation will stop the trademark from being enforced by its owner. 
The TM and device must be challenged, and it needs money and a very good Trademark Lawyer to fight this.

[Surfson]

That may be true Dave, but we don't need a lawyer to boycott his site, banish him from NMB and not do any business with him!

[DaveT]

Agreed, and that his mistake to upset a community and customer base. Silly move, however, if you want the trademark removed it will need to go legal.

 

He has already forced one person to not use the word in his trading name, so this is very much out of the boards control.

[Brian]

I haven't banned him here yet, as I would like to offer him the right of reply, and if he would just clarify that he doesn't intend blocking regular sites from using the word Nihonto, all should be fine. But he seems to be avoiding that.
There WILL be challenges to his trademark, and it does not require much money to do that. Lawyers not needed for a general challenge like this.
If no response in a day or 2, then I will take a stand and remove him here, and push for the same on all his FB pages, and the sword bodies to which he belongs.
Reviews on his commercial page should reflect the attitude shown to the entire Nihonto community.

[Surfson]

Perfectly reasonable approach Brian, and I already noticed his failure to answer your pithy questions!  Cheers, Bob

[Shugyosha]

Sorry, I’ve been out of action due to the long weekend in the UK.

I’ve had a look at EUIPO as Michael suggested but have immediately run up against the issue of how we fund opposing an application for a trademark or applying for the revocation of one. The fees are:

An application for opposition = €320

An application for revocation or declaration of invalidity = €630

I'm happy to make a contribution to this, say €200, is anyone else willing to contribute?

 

​Best,

John

[DaveT]

I'm in. We need a PayPal fund set up. 

[CSM101]

I think that we should discuss the whole situation in Utrecht. Many of us will be there (I still hope for that).

 

And then we should decide, what to do. Money shouldn´t be the problem.

 

 

Uwe G.

[Gakusee]

Timing is of the essence.

 

A notice of opposition needs to be submitted within 3 months of application, which has already elapsed

 

“ A notice of opposition may be filed within a period of three months following the publication of the EU trade mark application. The official publication date is the date on which the application is published in Part A1 of the European Union Trade Marks Bulletin. The notice of opposition and payment of the EUR 320 opposition fee must be received by the Office within this time limit.”

 

So this cannot be handled any more by an opposition process as that deadline expired at the end of April (3 months after 25 Jan which is when the application for TM was published).

 

So this needs to go down the route of error.

 

I am supportive in principle and perhaps Brian could collect via private messages the feedback, expressions of financial support, etc.

[Stephen]

I gave him a one star review, one cant do a zero, He messaged me to please remove as we have never had a transaction. 

 

 Hi Stephen, It seems, like you and many others, are jumping to conclusions based on the trolls. We have not interacted at all in the past and I think that you are very unfair setting one star when we have had no interaction business wise. There are 3 others that set one star like you and all are retracted now. I would like to ask you to remove it and welcome you to make a review when we have had business on interaction. This in no debate only a request. I will have to report this to Facebook if you do not retract it because I think you are unfair. I have said my piece and wish you all the best. /Martin

 

SUN 4:24AM

Clear the air on NMB and ill cosider

 

 

 

Seen Sun 4:46am

 

 

So far i've heard nothing from him, FB or seen a post by him here.

​Still waiting but not holding my breath

[Brian]

More threats? Report you to FB?
How about his ethics being part of whether someone will deal with a business or not? He continues to play the "trolls" card, but refuses to admit he has no bad intentions. And can't explain the Katana application, even though it isn't part of his logo or business.
I say post MORE 1 star reviews. Will do the same myself. Since he refuses to answer legitimate questions here or on FB.  That is not the actions of someone with a clear conscience.
Has anyone approached the NBTHK, or big Nihonto dealers in Europe? People like the Germans, Belgians, Zenon etc etc. They stand to lose the most if (when?) he decides to cash in on the trademark.

[Stephen]

Too cheap to start a Website Nihonto.Eu. c o m?

how easy would that have been

Maybe someone should file for that then you could take him down. LOL

[Darcy]

It reminds me of when Amazon patented "one click" ordering (nobody ever thought of less than two clicks! It's an invention!)

 

It would seem to me that his trademark application is issued by someone who doesn't know that Nihonto is not a made up word.

 

I fail to see how it is enforceable, as it's like trademarking the word "Spoon". If you have a company named "Spoon Innovatech Software Industries" you should be able to trademark the word Spoon only in that context. If he wants to have "Nihonto Europe" then perhaps he can have that and could argue as having a right to that in order to prevent other people from infringing. 

 

But trademarking "Nihonto" on its own is the same as trademarking "Europe" on its own, it's a generic word, it just happens to be that the trademark office didn't realize it is such in a foreign language. Similarly someone in China is not going to get a Chinese trademark for the English word for "car". 

 

Brian asked about 10 direct questions which could have had clear answers. Basically,

 

Brian: "Are you going to use this trademark to give people s**t who don't deserve it?"

 

Answer: "I'm a nice guy do you see it in my character to do this?"

 

That kind of political talk show non-answer works in the context, but if someone like this refuses to make a clear statement then I think it is fair to assume the worst. 

 

The next person he attacks, basically that is the time for people to rally behind the victim and pony up a defense. As well whatever can be challenged now should be challenged. 

 

I dodged this by changing my website but trademarking the word "nihonto" is going to blindside about 80% of people involved in this hobby, whether a collector with their own website or a sword polisher or a dealer. 

 

Since this guy won't offer a simple and clear statement, I would say again, it's fair to conclude the worst.

 

I wouldn't recommend harassing him by leaving 1-star reviews, that can ultimately blow up in your face. Though it is emotionally satisfying and feels fair when someone else is doing something inappropriate, it's better to take the high ground and keep an eye on his behavior.

 

Make this a sticky thread in NMB so it shows up in Google search for anyone he attacks.

 

Make it clear how the community feels about trademarking "nihonto". 

 

Those of us who have actual real legal experience should probably continue to coach the rest of us in what kind of response we should be attempting. One person who has the time and wants to be the lead should kind of structure a community response.

 

If a letter is drawn up as a community response I would sign it and I am willing to bet that any dealer with the word "nihonto" in their website name is going to sign it too. 

 

I think as well that the community here should vote with their wallets. If there is going to be an aggressive trademark troll, customers need to decide if it is in their best interests to support that kind of cancer (ultimately if all searches on "nihonto" go to his site, the answer is pretty clear). 

 

Also I would suspect that Katana is not going to go down, but this should be the time to complain about Katana and refer to Nihonto as something invalid and explain the reasons. 

 

As well I think this is an issue for the NBTHK and NTHK and the EU branch as well as American branches should motivate themselves to comment on this, though this is more a decision for their leadership (I am not a member of either but a lot of you reading this are). I suggest if the issue concerns you, write to your branch president.

 

Also this will blindside both NBTHK and NTHK as it would not permit them to use the "N" word anymore.

 

Obviously both have publication histories going back a long way in Europe and the USA and that will defend the use of Nihonto as a generic word. 

 

Anyway just my thoughts, I think this is an important issue and the community should rally. 

 

I'll repeat:

 

1. Don't troll this guy. He will be judged on his behavior and you will be judged on yours. Take the high ground. 

 

2. Taking steps to ban him and so forth I think is not good either, keep a communications channel open, but as well keep this thread sticky so that his customers understand how he is treating the rest of the community. 

 

3. If he doesn't intend on using his trademark as a blunt weapon to smash competitors and people who irritate him, he is welcome to make a clear statement about that which he has obviously avoided with intent. 

 

4. Someone has to seriously be the head of the spear, someone who knows what they are doing in this field or as close as we can get to it. We all know what happens when people with no sword knowledge come here and start trying to tell us why their Chinese fake is real. In the legal field that is about as much knowledge as most of us have so we do need members of the community with some expertise to be the spearhead. Regardless of any statement he has to make on how he intends to use this thing, basically it's a WMD and the community should be taking steps to disarm it so regardless of one man's personal agenda it can't be used to disrupt the hobby. 

 

Since I changed my site name, as mentioned, I am impacted much less than other dealers but I am willing to stand in solidarity on principle. For life will suck for all if we have to write after the words katana and nihonto. 

[Brian]

As always, an excellent response by Darcy, and I am going to follow all of his advice.
Anyone in Europe close to the big players who is willing to consult with them? Also looking for a legal mind in Europe. There are many in this community.

 

Brian

[Stephen]

Stephen

[Gakusee]

We should probably do a fundraiser on this and rely on the goodwill and beneficence of folks like John and others? Surely there must be EU qualified lawyers among us.

 

The rules are reasonably clear:

 

 

9.3. When can an EU trade mark be declared invalid?

 

There are two types of grounds for invalidity: absolute and relative. Absolute grounds for invalidity include the grounds for refusal that have been examined ex officio during the registration procedure. Relative grounds for invalidity concern earlier rights that take precedence over the EU trade mark in accordance with the principle of ‘priority'.

 

An EU trade mark may be declared invalid by invoking absolute grounds in the following cases:

 

Where the EU trade mark was registered in spite of the existence of an absolute ground for refusal (in particular, if it was non-distinctive or descriptive).

Where the applicant acted in bad faith when filing the application. This mainly concerns cases where the applicant was pursuing illicit aims in filing the application for the trade mark.

An EU trade mark may be declared invalid by invoking relative grounds in the following cases:

 

For the same reasons as those for which notice of opposition may be filed.

Where another earlier right exists in a Member State that permits the use of the trade mark in question to be prohibited. This concerns, in particular, a right to a name, a right of personal portrayal, a copyright and an industrial property right such as an industrial design right.

 

9.4. When should an application for cancellation be filed? Are there particular time limits that should be observed?

 

An application for cancellation is only admissible if the EU trade mark in question has been entered in the EU trade mark Register at the Office. Registrations are published in the European Union Trade Marks Bulletin (Part B). An application for revocation on the basis of non-use is only admissible if the EU trade mark has been registered for more than five years at the date of filing of the request.

 

There is no time limit for filing an application for cancellation. However, if the proprietor of an earlier right acquiesces in the use of a later EU trade mark for a period of five successive years, he or she is no longer entitled to file an application for invalidity on relative grounds (limitation in consequence of acquiescence).

 

 

9.5. Is there a form for requesting cancellation?

 

There are two separate forms for the two types of procedure (declaration of invalidity and revocation), although it is not compulsory to use them. They are available on the website of the Office.

 

 

9.6. How much does an application for cancellation cost?

 

The fee for requesting a declaration of invalidity is EUR 630. The fee for requesting a revocation is EUR 630. The application is not deemed to have been filed until the fee has been paid.

 

 

9.7. In what language should the application for cancellation be filed?

 

The application must be filed in one of the two languages of the EU trade mark concerned, provided that they are languages of the Office. If this is not the case (i.e. if the first language is not a language of the Office), only the second language of the EU trade mark may be used.

 

 

9.8. Is it possible to rely on several grounds for cancellation?

 

An application for cancellation may be based on several different grounds. However, unless a fee for invalidity and a fee for revocation is paid, it is not possible to rely both on grounds for invalidity and for revocation in the same request, as invalidity and revocation are considered two different proceedings with different characteristics.

 

 

9.9. Is representation obligatory in order to file an application for cancellation?

 

Yes, for applicants that do not have their domicile, principal place of business or real and effective commercial establishment within the European Economic Area. Such persons must seek representation from a legal practitioner or professional representative whose name appears on the list kept by the Office and whose place of business is within the European Economic Area.

 

 

9.10. Who is responsible for bearing the costs of an application for cancellation?

 

The losing party in cancellation proceedings must bear the fees and costs of the other parties. The costs to be refunded are, however, limited, which means that the person that bears the costs will not have to pay above a certain maximum limit.

 

 

9.11. If an application for cancellation is withdrawn, is the fee still refundable?

 

The fee is not refunded when an application for cancellation is withdrawn. The party that interrupts cancellation proceedings by withdrawing the application must also refund the costs incurred by the other parties up to that point (in accordance with the legal limits), unless a different decision is taken on grounds of equity.

[Kanenaga]

In the heat of the moment, a word of caution may be in order.  Not sure how it works in the EU or in SA, but over here I believe that someone who organizes an economic boycott of a business may be liable for restraint of trade, which is grounds for legal penalties.

 

Les

[PNSSHOGUN]

No explanation, no co-operation and no statement to calm the community. Break out the Tar & Feathers.

[Brian]

We need to find someone or a group or entity in Europe that is going to lodge the appeal/complaint.
Once we know who and the details, then i am prepared to co-ordinate a fund raiser to cover the costs. Europe, get organized!

[Gakusee]

I feel this needs to be fronted by:

- people who are immediately exposed (eg the Swedish blokes or some others with websites including such references)

- people who have time on their hands (retired, part time working or working solely in the nihonto sales space, etc)

- willing to contribute to the greater good of the community

 

 

Legal experience or some sort of professional contract review / drafting experience would be ideal.

 

But again - this cannot be imposed on people. It needs to come voluntarily and willingly.

 

 

I sent an email to a lawyer (who charges c £300 plus VAT per hour) to enquire about U.K. vs wider EU legislation (as the article I found above was U.K. centric). The response was helpful and as follows:

 

“The UK trade mark law is based on an EU directive so, in principle, the position in the EU should be the same as described in the article for the UK, but substituting “EU” for “UK”.

 

In other words, if the people in the EU who deal with antique Japanese swords would recognise the terms “NIHONTO” and “KATANA” as general terms describing particular types of Japanese sword, they can oppose any attempt to register these as trade marks for swords.

 

The ground for opposition is that the words are purely descriptive, and not capable of distinguishing the applicant’s swords from anybody else’s. This is an absolute ground for refusing to register a trade mark, because it would be unfair to allow anyone to monopolise a general descriptive word.”

 

So, whoever fronts the campaign can cite the above and the error in judgement in granting the trademark in the first place.

[Blazeaglory]

Wow...How long has the term "Nihonto" been used now? Decades? Centuries?

[Guest Rayhan]

Ok a legal and TM battle is something I love! Has anyone got started or can give me more background information and I will get a team on it in the UK. We go through the Madrid protocol on TM also and get this issue sorted. let me know where to start please, I am available to go into a detailed discussion at the next Token society meeting in December. Lawyers ready. 

 

Ray

[Surfson]

Ray, you can be our secret weapon...a man of the people.  Of all of the ideas I have heard of, trademarking Nihonto is about as lame as they get!  

[Brian]

I don't think anyone in Europe took it further yet. I expected the various organizations to have a word, but nothing that I heard. Seems they will only react when it affects them, and at some point it will.
I think we need to check how far the "Katana" application went too.

Edit to add: https://euipo.europa.eu/eSearch/#details/trademarks/017894676
Yes, still in process. And the fact that he is seeking to tm it for online auctioneering services and restoration means he could even block eBay in Europe from using the word.

[Guest Rayhan]

So he hasn't gotten to Nihonto as far as the search yields. Thanks for the link Brian will get on it

[raynor]

I did not know there was a lucrative market worth fighting over for kitchen knives THIS big. Swedish steel however, is pretty good..