カテゴリー: Abbreviation

How to prevent registration of your business name by others

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On September 29, 2022, the Japan Patent Office (JPO) dismissed an opposition filed by Karsten Manufacturing Corporation, a manufacturer of golf equipment known as “PING”, against TM Reg no. 6465154 for wordmark “PingCAP” in classes 9, 35 and 42.

[Opposition case no. 2022-900019]

PingCAP

The opposed mark, consisting of the wordmark “PingCAP” in standard character, was filed by Beijing PingCAP Xingchen Technology and Development Co., Ltd., for use on computer programs and computer-related goods and services in classes 9, 35, and 42 on December 7, 2020 (TM App no. 2020-150919).

The JPO examiner granted protection on October 25, 2021, and published for opposition on November 2, 2021.

Opposition by PING

Karsten Manufacturing Corporation, doing business as Ping, Inc., a manufacturer of golf equipment, better known as “PING” filed an opposition against “PingCAP” on January 21, 2022, and disputed, among other things, the opposed mark shall be canceled in contravention of Article 4(1)(viii) of the Japan Trademark Law.

Article 4(1)(viii) is a provision to prohibit the registration of trademarks that contain the representation or name of any person, famous pseudonym, professional name, or pen name of another person, or famous abbreviation thereof.

Karsten argued the term “PING” has been a famous abbreviation of Ping, Inc. (US subsidiary), or Ping Golf Japan Co., Ltd. (a Japanese subsidiary) in view of the substantial reputation of the golf brand “PING”.

The article does not require the famousness of the ‘name of any person where a trademark fully contains a business legal name. In other words, any mark containing a full name or business legal name shall be rejected under the article without the consent of the such person or business entity.

In the meantime, where the mark does not contain a full business name, but a part of the business legal name, the article is applicable only where the business entity can prove the famousness of the literal elements contained in the trademark filed by others.

JPO Decision

The JPO Opposition Board found that, from the totality of the produced evidence, it is unobvious that the cited mark “PING” has become famous as an abbreviation of Ping, Inc. or Ping Golf Japan Co., Ltd, and decided the opposed mark shall not be subject to Article 4(1)(viii).

As mentioned above, the Japan Trademark Law prohibits the registration of a trademark that contains a full business name without the consent of the business entity even though the name has not become famous.

Where a trademark just contains a portion of a business legal name, it is prohibited only where the portion has become famous to indicate the entity.

LE MANS, Unsuccessful Trademark Race spending more than 24 Hours

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On July 29, 2022, the Opposition Board of Japan Patent Office (JPO) dismissed a trademark opposition filed by AUTOMOBILE CLUB DE L’OUEST (A.C.O.), an owner of the mark “LE MANS”, against TM Reg no. 6374059 for wordmark “Le mans de elegance” on apparels in class 25.

[Opposition case no. 2021-900248]

Le mans de elegance

The opposed mark, consisting of the word “Le mans de elegance” in standard character, was applied for use on clothing, garters, sock suspenders, braces [suspenders] for clothing, waistbands, belts [clothing], footwear, masquerade costumes, sports shoes, clothes for sports in class 25 by a Japanese company named Analogue Co., Ltd. on October 15, 2020.

The JPO granted protection on March 12, 2021, and published for opposition on April 27, 2021.

Opposition by ACO

Opponent, AUTOMOBILE CLUB DE L’OUEST, alleged the opposed mark shall be canceled in contravention of Article 4(1)(xi), (xv), and (xix) of the Japan Trademark Law by citing earlier trademark registrations for the LE MANS mark in classes 25.

ACO argued that the mark “LE MANS” is famous to indicate the oldest sports car race “24 hours of Le Mans”. Due to the remarkable reputation of the mark “LE MANS” and the descriptive meaning of the term “de elegance” in relation to apparel, relevant consumers would see the literal element “Le mans” as a prominent portion of the opposed mark. If so, both marks shall be deemed similar from phonetical and conceptual points of view. Besides, there are precedent cases in which the JPO admitted close relatedness between automobile races and clothing. Taking into consideration the above facts, it is likely that relevant consumers would confuse the source of goods in question bearing the opposed mark with 24 hours of Le Mans and its organizer, or an entity systematically or economically connected with ACO.

JPO decision

The JPO found “The 24 hours of Le Mans” has been known for a major car race, however, questioned whether the term “LE MANS” has also become famous to indicate the race from the totality of the circumstances and the produced evidence by pointing out a fact that the term “LE MANS” has been frequently used with “24”. Consequently, the Board held the mark “LE MANS” has not acquired a certain degree of reputation and popularity as a source indicator of auto races among relevant consumers in Japan.

The Board assessed the similarity of mark in its entirety and found the opposed mark is dissimilar to the mark “LE MANS” from visual, phonetical, and conceptual points of view by stating that the cited mark gives rise to a meaning of a city in northwestern France.

In view of a low degree of similarity between the marks and recognition of the mark “LE MANS”, the Board has no reason to believe relevant consumers would confuse a source of goods in question bearing the opposed mark with the opponent.

Based on the foregoing, the Board dismissed the entire allegations and decided the opposed mark to remain valid as the status quo.

No confusion between “InstaShop” and “Instagram”

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On July 27, 2022, the Appeal Board of Japan Patent Office (JPO) disaffirmed the examiner’s rejection and found TM Application no. 2019-152946 for “InstaShop” with device mark is dissimilar and thus unlikely to cause confusion with a famous mark “Insta” known as an abbreviation of “Instagram”.

[Appeal case no. 2021-12444]

InstaShop

The applied mark consists of a red rectangle with rounded corners, a motif depicting a white shopping basket, the term “InstaShop” in white with large font, and “Convenience delivered” in black with a smaller font (see below).

The mark was filed in the name of InstaShop DMCC, a UAE corporation, for use on ‘online ordering services; price comparison services; import-export agency services; compilation of information into computer databases; providing commercial information and advice for consumers in the choice of products and services; retail services and wholesale services for foods and beverages, clothing, footwear, bags, cosmetics, and others in class 35 and ‘car transport; truck transport; packaging of goods; freight brokerage; delivery of goods; warehousing; rental of warehouse space and others’ in class 39 on December 5, 2019.

The JPO examiner rejected the mark due to a likelihood of confusion with the famous mark “Insta”, known as an abbreviation of “Instagram” in connection with application software for posting and sharing images and videos, online social networking services, advertising, and publicity services based on Article 4(1)(xv) of the Japan Trademark Law.

Article 4(1)(xv) is a provision to refrain from registering a junior mark that is likely to cause confusion with other business entities’ well-known goods or services.

The applicant filed an appeal on September 16, 2021, and argued the unlikelihood of confusion with Instagram.

JPO decision

The JPO assessed the term “InstaShop” can be a prominent portion of the applied mark and play a role in source indicator per se, but it shall be dissimilar to the “Insta” mark from visual, phonetical points of view. Even if the concepts are not comparable, by taking into global consideration the impression, memory, and association that respective mark gives to consumers and traders, the Board has a reason to believe that both marks are distinctively dissimilar.

Being that the applied mark contains figurative elements and other words “Convenience delivered”. Due to the difference, the applied mark as a whole has a low degree of similarity to the “Insta” mark.

Besides, the Board does not find the services in question have a close association with goods and services of Instagram in view of purpose, business field.

Even if the “Insta” mark has acquired a certain degree of reputation and popularity mainly among young consumers in their teens and twenties, the Board has no reason to believe relevant consumers are likely to associate and confuse a source of the services in question bearing the applied mark with Instagram because of a low degree of similarity of marks and relatedness with respective goods and services.

Based on the foregoing, the Board decided to disaffirm the examiner’s rejection and grant registration of the applied mark.

DIOR Failed to Cancel Trademark “DIORLV”

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The Japan Patent Office (JPO) did not side with Christian Dior Couture in a trademark opposition against TM Reg no. 6305075 for word mark “DIORLV” in class 25 by finding dissimilarity and unlikelihood of confusion with a world-renowned fashion brand “Dior”.

[Opposition case no. 2020-900352, Gazette issued date: November 26, 2021]

“DIORLV”

The opposed mark, “DIORLV” in standard character, was sought for registration by a Chinese individual to be used on underwear, coats, pajamas, swimsuits, raincoats, footwear, caps and hats, gloves, trousers, skirts, yoga shirts, yoga pants in class 25 on December 25, 2019.

The JPO examiner granted protection of the opposed mark on October 13, 2020, and published for opposition on November 4, 2020.

Opposition by Christian Dior

To contend registration within a statutory period of two months counting from the publication date, Christian Dior Couture filed an opposition on December 25, 2020.

In the opposition, Christian Dior asserted the opposed mark shall be canceled in contravention of Article 4(1)(viii), (xi), (xv), (xix) of the Japan Trademark Law on the grounds that the opposed “DIORLV” mark contains the term “Dior”, an abbreviation of a world-renowned fashion brand “Christian Dior” and the opponent. Besides, the opposed mark will be perceived as a combination of abbreviation of two famous brands, “Christian Dior” and “Louis Vuitton.” If so, it is reasonable to consider the term “DIOR” as a prominent portion of the opposed mark that gives rise to the same sound and concept with the senior registered mark “Dior” owned by the opponent.

JPO decision

The Opposition Board of JPO admitted a substantial degree of reputation and popularity of “Dior” as an abbreviation of “Christian Dior” and the opponent in relation to fashion items, e.g., women’s dresses, bags, shoes, jewelry, glasses, watches, fountain pens, lighters.

In the meantime, the Board did not find the term “DIOR” as a prominent portion of the opposed mark. Based on the overall assessment of similarity, the Board held both marks dissimilarity by stating that:

  1. From appearance and pronunciation, “DIORLV” and “Dior” look sufficiently different with or without “LV” in the suffix position.
  2. Both marks are distinguishable in concept since “DIORLV” does not give rise to any specific meaning. “Dior” has a meaning of world-renowned fashion brand “Christian Dior.”

Given a low degree of similarity of the marks, it is unlikely that relevant consumers would recognize a source of goods in question bearing the opposed mark from Christian Dior Couture or any entity systematically or economically connected with the opponent.

Furthermore, the Board has no reason to believe the term “DIOR” of the opposed mark is separable from the term “LV” and independently plays a role in the source indicator. Accordingly, the opposed mark shall not be construed to contain a famous abbreviation of the opponent.

Based on the foregoing, the JPO dismissed the entire opposition and decided the opposed mark shall remain valid as the status quo.

HUGO BOSS Unsuccessful in Blocking “BOSS”

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German luxury fashion house Hugo Boss failed in their attempt to block Japanese TM Reg no. 6218609 for word mark “BOSS” on SaaS and order processing services.

[Opposition case no. 2020-900096, Gazette issued date: August 27, 2021]

Opposed mark

Opposed mark, filed on January 22, 2019, by Rakuten, Japanese electronic commerce and online retailing company, consists of the word “BOSS” in standard character (see below).

The services sought for registration are order processing services in class 35 and providing computer programs on e-commerce, software as a service (SaaS), and other related services in class 42. Rakuten is using the opposed mark “BOSS” as an abbreviation of ‘Back Office Support System’ to indicate their service for sales order management and automated shipping system.

The JPO admitted registration on June 22, 2020, and published for post-grant opposition on February 12, 2020.

Opposition by Hugo Boss

HUGO BOSS Trademark Management GmbH & Co KG filed an opposition against the opposed mark on April 3, 2020, and claimed the opposed mark “BOSS” shall be canceled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law.

Article 4(1)(xi) is a provision to prohibit registering a junior mark that is identical with, or similar to, any senior registered mark.

Article 4(1)(xv) is a provision to prohibit registration of a trademark which is likely to cause confusion with the business of other entities.

HUGO BOSS argued that not only tradename “HOGO BOSS but also their mark “BOSS” has been well known for a luxury fashion brand and source indicators of the opponent by producing Deloitte’s annual list of the world’s largest luxury companies on which HUGO BOSS was ranked No.19(2015), No.21(2016), No.23(2017).

In view of a high degree of similarity between the opposed mark and the opponent’s mark “BOSS” (see below), relevant consumers are likely to confuse the source of services bearing the opposed mark with HUGO BOSS.

Board Decision

The JPO Opposition Board admitted a certain degree of the reputation of the “HUGO BOSS” mark as a source indicator of the opponent in connection with fashion items, e.g., clothing, watches, sunglasses, fragrances.

In the meantime, the Board questioned if the word “BOSS” has also acquired such popularity, stating that produced materials are insufficient to find the word perse plays the source indicator since the cited mark contains a famous mark “HUGO BOSS” adjacent to it.

Even if there is a high degree of similarity between the marks, the Board has a reasonable ground to believe the services in question, namely, order processing services (cl.35) and SaaS (cl.42) are less associated with fashion items, e.g., clothing, watches, sunglasses, fragrances.

If so, it is unlikely that relevant consumers at the sight of the opposed mark would conceive or associate it with HUGO BOSS or any entity who is systematically or economically connected with the opponent when used on the services in question.

Based on the foregoing, the JPO dismiss the entire allegations of HUGO BOSS and allowed the opposed mark “BOSS” to survive.

Dolce & Gabbana failed in a trademark opposition to block DolceSport

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The Japan Patent Office dismissed a trademark opposition claimed by the Italian luxury firm, Dolce & Gabbana against trademark registration no. 6259630 for word mark “DolceSport” in class 18, 20, 22, 25, and 28 by finding a less likelihood of confusion with “Dolce & Gabbana.”

[Opposition case no. 2020-900206, Gazette issued date: July 30, 2021]

“Dolce Sport”

Opposed mark, consisting of the word “Dolce Sport” in standard character, was filed by a Japanese company, SIS Co., Ltd. for use on various goods belonging to class 18,20, 22, 25 and 28 with the JPO on May 30, 2019 (TM Application no. 2019-83931).

The JPO admitted registration on June 15, 2020 and published for registration on July 7, 2020.

Opposition by Dolce & Gabbana

Dolce & Gabbana filed an opposition on August 19, 2020 and argued the opposed mark “Dolce Sport” shall be cancelled in contravention of Article 4(1)(xv) of the Japan Trademark Law since relevant consumes are likely to confuse the source of goods bearing the opposed mark with Dolce & Gabbana because of a close resemblance between “Dolce Sport” and a word “Dolce” that has become famous per se as a source indicator of the opponent.

Article 4(1)(xv) is a provision to prohibit registration of a trademark which is likely to cause confusion with the business of other entities.

To apply the article, it is requisite that the mark of other entities has acquired a certain degree of reputation and popularity among relevant consumers in Japan.

Opponent produced evidence to demonstrate the word “Dolce” per se has been used on their goods, e.g. perfume, cosmetics, and bags. See below.

JPO decision

The JPO Opposition Board did not admit the term “Dolce” per se has become famous as a source indicator of Dolce & Gabbana by stating that famous brand “Dolce & Gabbana” is obviously represented adjacent to the term “Dolce” on their goods. If so, the Board has good reason to believe that it would be unclear whether the term has acquired a certain degree of reputation as a source indicator of the opponent from the produced evidence. Besides, the Board questioned whether “Dolce” has been known as an abbreviation of “Dolce & Gabbana” due to the same reason.

Based on the foregoing, the Board decided that, even if the opposed mark “Dolce Sport” has a medium degree of similarity with the “Dolce” and the goods in question are somewhat associated with the opponent business, relevant consumers are unlikely to confuse or misconceive a source of the opposed mark with Dolce & Gabbana by taking account of less originality of the term “Dolce” having a meaning of ‘sweet; dessert’ in Italian language and lack of good-will protectable under Article 4(1)(xv) enough to indicate a source of “Dolce & Gabbana”.

COCO vs COCOMIST – Decision of the Opposition Board of the Japan Patent Office

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Chanel handed a loss in its attempt to block Japanese trademark registration no. 6202587 for wordmark “COCOMIST” to be used on cosmetics, perfumery, fragrances, incense, and other goods in class 3.
[Opposition case no. 2020-900047, Gazette issued date: February 26, 2021.]

COCOMIST

The opposed mark consists of the word “COCOMIST” written in standard character (see below). Applicant, a Japanese company, 196+ Inc., filed it for use on ‘cosmetics, perfumery, fragrances, incense, toiletry preparations’ and other goods in Class 3 on January 7, 2019.

The mark was published for post-grant opposition on December 24, 2019, without confronting any office action from the JPO examiner.

It is apparent that the applicant actually uses the opposed mark on cleaning mist.

Opposition by CHANEL

On February 20, 2020, CHANEL SARL filed an Opposition and argued the opposed mark shall be canceled in contravention of Article 4(1)(xi), (xv), and (xix) of the Trademark Law on the grounds that:

  1. Since 1995, the opponent has owned senior trademark registration no. 2704127 for wordmark “COCO” over cosmetics, perfumery, and fragrances, which has unquestionably acquired a remarkable degree of reputation and popularity as a source indicator of the opponent’s cosmetics as well as a nickname or short name of French fashion designer “Gabrielle COCO CHANEL”, the founder of the Chanel brand.
  2. The term “MIST” lacks distinctiveness in relation to cosmetics. If so, relevant consumers at the sight of the opposed mark would easily conceive “COCO” as a prominent portion when used on goods in question.
  3. In view of the close resemblance between two marks and goods, presumably, the applicant must have applied the opposed mark for use on cosmetics with prior knowledge of the cited mark and fraudulent intention of free-riding on its reputation.

JPO Decision

The JPO Opposition Board admitted a high degree of reputation and popularity of “COCO” as a source indicator of the opponent’s perfumery and fragrances among relevant consumers based on substantial use of the cited mark in Japan but questioned its famousness in relation to other cosmetics except for perfumery and fragrances.

The JPO denied the similarity between the opposed mark and “COCO”, stating that the opposed mark shall be taken as a whole in view of a tight combination of its literal element from appearance. If so, the opposed mark does not give rise to any specific meaning and the Board has no reasonable ground to believe that the opposed mark “COCOMIST” shall be similar to “COCO” from visual, phonetic, and conceptual points of view.

Given a low degree of similarity between the marks, the Board held the opposed mark is unlikely to cause confusion even when used on perfumery and fragrances.

Assuming that both marks are dissimilar, the Board was not convinced that the applicant aimed for free-riding on the goodwill of Chanel.

Based on the foregoing, the JPO dismissed the entire allegations of CHANEL SARL and allowed the opposed mark to register as the status quo.

Ariana Grande Loses Trademark Opposition at Japan Patent Office

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The Japan Patent Office (JPO) dismissed an opposition filed by GrandAri Inc., the owner of a trademark “ARIANA GRANDE”, against TM Reg no. 6202585 for wordmark “Arianna” to be used on cosmetics by finding dissimilarity between “Arianna” and “ARIANA GRANDE.”
[Opposition case no. 2020-900051, Gazette issued date: January 29, 2021.]

Opposed mark

Arianna Co., Ltd. applied for a wordmark “Arianna” registration for use on cosmetics, soaps, and detergents of Class 3 and medical apparatus of Class 10 with the JPO on January 7, 2019 (TM Application no. 2019-000339).

The JPO admitted the registration of the opposed mark on November 29, 2019, and published for opposition on Christmas Eve of the year.

Opposition by GrandAri Inc.

On February 21, 2020, GrandAri Inc. filed an opposition before the JPO and claimed that the opposed mark shall be revocable in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law by citing International Registration no. 1260129 for wordmark “ARIANA GRANDE” and others over the goods of ‘Perfume; eau de parfum; fragranced body care preparations, namely, body lotions, body scrubs’ in Class 3.

Article 4(1)(xi) is a provision to prohibit registering a junior mark that is deemed identical with, or similar to, any senior registered mark.

GrandAri argued that relevant consumers would easily think of American pop superstar from the cited mark “ARIANA GRANDE”. Besides, because of her celebrity and popularity, she is affectionately called by her first name “ARIANA”. In view of the space between “ARIANA” and “GRANDE”, it is highly likely that the consumers would consider the term “ARIANA” as a dominant source indicator at the sight of the cited mark. It is no doubt that the opposed mark “Arianna” is confusingly similar to “ARIANA” since the mere difference of the letter ‘n’ is negligible in appearance and both terms give rise to the same pronunciation.

Article 4(1)(xv) provides that any mark shall not be registered where it is likely to cause confusion with other business entity’s well-known goods or services, to the benefit of brand owners and users’ benefits.

GrandAri argued the cited mark is used on fragrances developed by Ariana herself, which are also called “ARIANA” in the advertisement.

Given a close resemblance between the opposed mark and the “ARIANA” mark, and a certain degree of popularity of the fragrances, firstly sold in November 2015 in Japan, it is likely to cause confusion with the cited mark when the opposed mark is used on the goods in question.

JPO Decision

The JPO admitted a high level of reputation and popularity of American pop singer, “ARIANA GRANDE” in Japan. In the meantime, the JPO questioned, from the produced evidence, whether the term “ARIANA” per se plays a role of the source indicator of Ariana Grande fragrances since it is constantly adjacent to the cited mark “ARIANA GRANDE.”
Consequently, the JPO negated the famousness of the term “ARIANA” as a source indicator of the opponent’s goods.

As for the similarity of the marks, the JPO assessed that relevant consumers would see the cited mark “ARIANA GRANDE” in its entirety because she is known and called by her full name. If so, both marks are distinctively dissimilar since the opposed mark does neither give rise to a pronunciation of “ARIANA GRANDE” nor a concept of American pop superstar.

The JPO dared to assess the similarity between the opposed mark “Arianna” and “ARIANA” and held that “Arianna” is not confusingly similar to “ARIANA” from a phonetical point of view. Due to a low level of similarity of the marks, the JPO does not have any reason to believe that the opposed mark would cause confusion with the cited mark “ARIANA GRANDE” as well as “ARIANA” when used on cosmetics, soaps, and detergents of Class 3.

Based on the foregoing, the JPO dismissed the entire allegations of GrandAri and allowed “Arianna” to survive.

The University of Oxford Failed in Opposition Against “OXFORD” mark

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The Japan Patent Office (JPO) dismissed an opposition filed by Oxford Limited against trademark registration no. 6164941 for composite mark comprised of term “OXFORD” and a square X symbol in class 25, 35,40 by questioning whether the term per se has been known as a source indicator of the University.
[Opposition case no. 2019-900303, Gazette issued date: October 13, 2020]

Opposed mark

Japanese trademark registration no. 6164941 for composite mark comprised of term “OXFORD” and a square X symbol colored in dark blue (see below), was filed on October 26, 2018, by Oxford Corporation Co., Ltd., a Japanese business entity tailoring custom-made suits, over clothing, footwear made in England in class 25, retail or wholesale services for clothing, footwear and other goods in class 35, and dressmaking, treatment or processing of cloth, clothing or fur, custom tailoring services, and others in class 40.

JPO granted to protect the opposed mark and published for registration on August 20, 2019.

Opposition

On October 18, 2019, Oxford Limited, a wholly-owned subsidiary of the University of Oxford, filed an opposition and claimed the Opposed mark shall be canceled in contravention of Article 4(1)(vii), (viii), (xi), (xv) and (xix) of the Trademark Law by citing its own marks (see below).

Oxford Limited argued that the University of Oxford is an extremely well-known university worldwide. It has been ranked in 5th and 3rd places in tables of top international higher education institutes. Besides, Oxford Limited has promoted and licensed commercial goods bearing trademarks of the University. In Japan, various licensed goods e.g. apparel, accessories, interiors, stationery, educational toys are distributed via Ingram Co., Ltd., an authorized broker.

Under the circumstances, there is no doubt that relevant consumers at the sight of the term “OXFORD” would conceive the University when used on goods and services in question. If so, the opposed mark shall be deemed similar to and likely to cause confusion with the cited mark since the term “OXFORD” per se plays a dominant role in identifying a source.

JPO Decision

The JPO Opposition Board admitted a high degree of the reputation of “University of Oxford” among the general public. In the meantime, the Board opined that it is questionable if the term “OXFORD” has acquired a substantial degree of popularity as a source indicator of the University from the produced evidence and totality of the circumstances in view of the fact that the term is also a geographical indication, namely, the capital of the county of Oxfordshire.

Based on the foregoing, the Board found relevant consumers would recognize the term “OXFORD” of the Opposed mark just to indicate ‘the capital of the county of Oxfordshire’. Meanwhile, the cited marks give rise to a sound and concept pertinent to the University. The figurative element of both marks is sufficiently distinguishable from appearance. There was a low level of visual, aural, and conceptual similarity between the marks to the extent that relevant consumers would be unlikely to confuse the Opposed mark with the University of Oxford. Therefore, the allegations are groundless and the Opposed mark shall remain valid as the status quo.

I am not convinced with the JPO’s finding of “the term OXFORD of the Opposed mark just to indicate ‘the capital of the county of Oxfordshire”. I firmly believe the term immediately reminds us of the University rather than the name of the capital of Oxfordshire.

Securely Protecting Trademark Abbreviations

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Japanese is prone to abbreviate trademarks. Occasionally, the abbreviation has no resemblance to its original name. A brand owner should be mindful of how the public perceives and uses its trademarks in Japan. Abbreviations or nicknames used by the public are not protected under the respective registrations given that they have no resemblance to the original names.

“Family Mart”, Japan’s second-largest convenience store franchiser since 1973, with more than 15,000 locations, is commonly called “Fa-mi-ma” among consumers. It is true that Family Mark has used only “Family Mart” in the ordinary course of their business for more than three decades. But, eventually, Family Mart decided to adopt the name on their store opened in urban office or commercial buildings.

I suppose it aims at avoiding risks of the “Famima” mark registration by a third party in view of high recognition for the name among relevant consumers and dissimilarity to “Family Mart”. Now, the mark is securely registered in the name of Family Mart.

Trademark abbreviations may serve as a barometer for well-recognition of the mark among the general public in Japan. In this respect, trademark abbreviations would not be a matter only for the Japanese company, but also for foreign brand owners. Where a trademark is composed of five sounds or more, you should mind that the general public in Japan gets to call the mark in abbreviation contrary to the brand owner’s intention. A combination mark is an easy target for abbreviation as well. BOTTEGA VENETA is called “BOTTEGA”. LUIS VUITTON is known as “VITON”. DOLCE & GABBANA is popularly called “DOLU-GABA”. STARBUCKS COFFEE is known as “SUTABA”. TOMMY HILFIGER is called “TOMI-HIRU”. Undoubtedly, the most popular name recognized in the abbreviation is “McDonald”. We seldom call it in the full name. One of the most popular fast-food chains and one of the top franchises in the world has always been called “MAKUDO” or “MAC”.

Using abbreviations, nicknames, and acronyms as trademarks may be appealing from a marketing perspective, however, trademark protection for an abbreviation has to be sought independently from the trademark protection that its extensive version might be already enjoying, and vice versa.

It came to my notice that ABERCROMBIE & FITCH, known for its shortened name “ABA-KURO”, sought Japanese trademark registration of “ABACRO” in English and its Japanese transliteration, but ended in vain due to a conflict with a senior trademark registration “ABERCRO”. A&F was unsuccessfully challenging the senior trademark registration based on non-use grounds.