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Bottom line: The Board held that “EXTRA COLD” is descriptive for retail/wholesale services for beer in Class 35 and providing beer in Class 43.

Well, this may seem quite a straightforward case, but in fact it was not so simple to get the invalidation decision.

Asahi Group Holdings K.K., the holder, file an application for “EXTRA COLD” in standard character for various goods/services in Classes 14, 16, 18, 24, 25, 28, 35 and 43 including “retail/wholesale services for food and beverages; providing food and beverages” in September 2010.

The application was provisionally refused on the ground of confusing similarity with a prior mark, but inherent distinctiveness was not questioned.  Asahi filed an argument and eventually it matured into registration in June 2011.

Kirin Holdings K.K. filed an opposition (under post-grant opposition system) on the ground that the mark is not inherently distinctive with respect to “providing food and beverages” in Class 43.  Kirin presented evidences and argued that there is a specific manner of serving beer chilled to a few degrees above its freezing point, which is colder than usual.  The Board dismissed Kirin’s opposition, finding that the consumer may recognize the meaning of the term “extra cold” being especially cold, but that it will not indicate “the manner of serving beer at a temperature just above the freezing point” (Opposition No. 2011-900326, November 15, 2011).

Heineken Brouwerijen BV raised an invalidation action against the registration for “EXTRA COLD” in November 2012, as it barred Heineken’s registration for “Heineken / SERVED / EXTRA COLD”.  The invalidation request was made specifically with respect to “retail/wholesale services for beer” in Class 35 and “providing beer” in Class 43.

Heineken’s evidences added up to 130, from which the Board paid attention to the fact that Heineken had been offering beer chilled down to 0 to -2 degrees centigrade (32 to 28 degrees Fahrenheit) using “Extra Cold” since May 2008 in Japan followed by Asahi since May 2010.  The Board also noted that there were some other breweries outside Japan using “Extra Cold” when serving beer at a temperature of 2-3 degrees centigrade (both temperature zones are lower than usual).

The Board concluded that the term “EXTRA COLD” merely describes the quality of services, because the consumer will easily recognize that the term “EXTRA COLD” refers to beer served especially cold (chilled to 0 to -2 degrees).

Asahi, the holder, argued that the consumer would only understand “EXTRA COLD” means especially cold which has only a vague meaning with respect to the designated services.  The Board was not convinced by this argument.  It held the opinion that the consumer will understand that the beer is served colder than usual, even they would not realize specifically that the beer is served at a temperature around or below 0 degrees.

And so the Board sustained the invalidation.

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