ZARA Unsuccessful Opposition against TM “LAZARA”

On April 22, 2024, the Japan Patent Office (JPO) dismissed an opposition filed by Industria de Diseño Textil, SA (INDITEX), owner of the fashion brand “ZARA”, against TM Reg no. 6699667 for word mark “LAZARA” in classes 25 due to dissimilar marks and unlikelihood of confusion with “ZARA”.
[Opposition case no. 2023-900175]


Opposed mark

Opposed mark, consisting of a wordmark “LAZARA” in standard character, was applied for registration by Japanese individual to be used on clothing in class 25 on November 20, 2022, and published for post-grant opposition on May 29, 2023.


Opposition by Inditex

Opponent, INDITEX, one of the world’s largest fashion retailers and owner of the fashion brand “ZARA”, filed an opposition on July 27, 2023 before the lapse of a two-month statutory period and claimed opposed mark “LAZARA” shall be cancelled in contravention of Article 4(1)(xi), (xv) and (xix) of the Japan Trademark Law by citing earlier trademark registrations (TM Reg no. 4108998 and IR no. 752502 in class25) for word mark “ZARA”.

Article 4(1)(xi) is a provision that prohibits the registration of a junior mark that is deemed identical with, or similar to, any earlier registered mark.

INDITEX contended that the opposed mark “LAZARA” is similar to its own trademark “ZARA,” a globally renowned fast-fashion brand given the suffix “LA” is a descriptive word that merely indicates the definite article in Spanish. Besides, the goods in question are identical.

Article 4(1)(xv) prohibits the registration of trademarks that are likely to cause confusion with the business of other entities.

INDITEX contended that the mark “ZARA” has become renowned among relevant consumers in connection with apparel. Given the high degree of resemblance between “LAZARA” and “ZARA” as well as the goods, it is likely that consumers will confuse or misconceive the goods bearing the opposed mark “LAZARA” with “ZARA.”

Article 4(1)(xix) proscribes the registration of a trademark that is identical with or similar to another entity’s famous mark if the trademark is intended for the purpose of gaining unfair profits or causing damage to the entity.

INDITEX contended that the applicant had filed the opposed mark with the intention of obtaining unfair profits through free-riding on the well-known trademark “ZARA”.


JPO decision

The JPO Opposition Board held that “ZARA” has acquired a certain degree of recognition among relevant consumers in Japan and foreign countries as a source indication of clothing, however, the Board denied a high degree of recognition of the mark among the consumers by taking into consideration the produced evidence. The Board criticized “INDITEX produced precedent administrative decisions as evidence that admitted famousness of the mark “ZARA” in Japan. But, famousness of trademark shall be assessed on a case-by-case basis based on relevant facts and evidence produced in each case. Therefore, the precedent decisions would not bind the ongoing case. INDITEX did not reveal sales figure and expenditure for advertisement in connection with apparel bearing the mark ZARA.

Furthermore, the Board found the consumers would perceive the opposed mark “LAZARA” as a whole, which would suggest an unfamiliar foreign word from a visual perspective. If so, “LAZARA” and “ZARA” are evidently dissimilar in appearance and pronunciation because of the distinction between the presence and absence of the letter “LA” in the suffix and the overall sound. As for the concept, it is not comparable since either mark does not give rise to any specific meaning. Consequently, both marks are unlikely to cause confusion due to their dissimilarity.

Additionally, the Board noted that INDITEX had not presented any evidence to substantiate their assertion that the applicant had filed the opposed mark for the purpose of gaining unfair profits or causing harm to INDITEX.

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

French fashion magazine “ELLE” Lost in trademark opposition against “elLle HOTEL”

The Japan Patent Office (JPO) dismissed an opposition filed by HACHETTE FILIPACCHI PRESSE, Société Anonyme (FR) against Japanese TM Reg no. 6681746 for the “elLle HOTEL” mark in class 43 by finding dissimilarity to and less likelihood of confusion with French fashion magazine “ELLE”.
[Opposition case no. 2023-900123, decided on November 29, 2023]


elLle HOTEL

Opposed mark, consisting of a stylized term “elLle” placed above strikethrough word “HOTEL” (see below), was filed on November 25, 2022, for use on hotel and restaurant services in class 43 by Yugen Kaisha Yamaguchi Jitsugo, a Japanese company.

The JPO granted registration of the mark on March 16, 2023, and published it for post-grant opposition on March 27, 2023.

According to the allegations, the applicant newly opened a fashion hotel named “HOTEL elLle” in 2022.

captured from https://www.hotel-ellle.com/

Opposition by ELLE

On May 26, 2023, before the lapse of a two-month opposition period, HACHETTE FILIPACCHI PRESSE, Société Anonyme (hereinafter referred to as HFP), a French company responsible for the well-known women’s magazine ELLE, which had the largest readership of any fashion magazine in the world, with culturally specific editions published on six continents in the early 21st century, filed an opposition to the “elLle HOTEL” mark.

In the opposition, HFP contended that the opposed mark shall be canceled in contravention of Article 4(1)(vii), (xi), (xv) and (xix) of the Japan Trademark Law.

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

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

HFP argued that the opposed mark is similar to HFP’s earlier registrations for the mark “ELLE” and relevant consumers are likely to confuse or misconceive the opposed mark with HFP or any business entity systematically or economically connected with the opponent due to a remarkable reputation of opponent’s fashion brand “ELLE” and the close resemblance between the opposed mark and “ELLE”.


JPO decision

The Board admitted the “ELLE” mark has become famous among relevant consumers and traders as a source indicator of the opponent in connection with magazines, online magazines as well as fashion and daily items.

In the meantime, the Board questioned whether the mark “ELLE” has acquired a certain recognition in relation to the service in question.

Besides, the Board found the literal portion “elLle” would play a significant role in indicating a source of the opposed mark when used in the services of class 43. However, the Board held the term “elLle” shall be assessed in its entirety, and there is no reason to find relevant consumers consider it as “elle”. If so, the opposed mark is dissimilar to the “ELLE” mark even though respective concept is not to be compared.

Taking into consideration a low degree of similarity between the marks, the Board had no reason to believe that relevant consumers would mistakenly assume the opposed goods originate from the same source as or are associated with, the opponent when used on services in question.

Based on the foregoing, the Board decided to dismiss the opposition entirely.

JPO decision to trademark dissimilarity, Unbelievable or Believable?

On November 9, 2023, the JPO Appeal Board reversed the examiner’s rejection to TM Application no. 2021-98849 for word mark “ADEAM/ICHI” by finding dissimilarity to earlier trademark registrations for word mark “ICHI”.
[Appeal case no. 2022-19409]


Earlier TM registrations “ICHI”

Following trademarks have been effectively registered since 2015 at the latest.

  • TM Reg no. 4736544 (soaps and detergent, incense, cosmetics in class 3)
  • TM Reg no. 5756228 (clothing, waistbands, belts [clothing] in class 25)
  • TM Reg no. 5991461 (bags and pouches, wallets, umbrella, walking sticks in class 18)

Junior mark “ADEAM/ICHI”

On August 6, 2021, FOXY Corporation filed a word mark consisting of “ADEAM” with larger roman-font and “ICHI” with smaller gothic-font in two lines (see below) for use on various goods and services in classes 3,14,16,18,24,25, and 35.

The JPO examiner rejected the applied mark due to a conflict with the earlier TM registrations for the mark “ICHI” owned by other entity based on Article 4(1)(xi) of the Japan Trademark Law on September 6, 2022.

Subsequently, the applicant filed an appeal against the rejection on December 1, 2022 and disputed dissimilarity of mark.


JPO Appeal Board decision

To my surprise, the Appeal Board found the applied mark is dissimilar to the cited marks and decided to cancel the examiner’s rejection by stating that:

Since the term “ICHI” of the applied mark is placed just beneath the term “ADEAM” in the middle about a quarter of the font size, from appearance, the term “ADEAM” occupies a large portion of the applied mark in its entirety. Thus, relevant consumers would have an impression that the term “ADEAMN” is considered as a dominant portion to identify a source of goods and service.

Besides, the term “ADEAM” is apparently a coined word. The term “ICHI” also does not give rise to a clear meaning. Therefore, conceptually there is no particular difference in assessing distinctiveness of respective term.

The Board has no reason to believe that relevant consumers would focus only on the portion “ICHI” of the applied mark as a source indicator by separating the dominant element “ADEAM”.

If so, it shall not be permissible to compare the literal portion “ICHI” of the applied mark with the cited marks.

In this respect, the examiner made an error in applying Article 4(1)(xi).

Based on the foregoing, the Board granted registration of the applied mark

Trademark dispute: HITACHI vs hitasi

On October 16, 2023, the Japan Patent Office (JPO)dismissed an opposition claimed by Hitachi, Ltd. against TM Reg no. 6621366 for wordmark “hitasi” by finding dissimilarity to and unlikelihood of confusion with “Hitachi”.

[Opposition case no. 2022-900496]

Opposed mark

A Chinese individual filed a wordmark “hitasi” for use on glass, unworked or semi-worked, except building glass; mangers for animals; drinking troughs; toothbrushes, electric; nail brushes; comb cases; make-up brushes; gardening gloves; glass vials; decanters; vacuum bottles [insulated flasks]; oven mitts; place mats, not of paper or textile; drinking straws; bird baths; tanks [indoor aquaria]; utensils for household purposes in class 21 with the JPO on April 5, 2023.

The JPO granted protection of the opposed mark on September 29, 2022 and published it for a post-grant opposition on October 7, 2022.


Opposition by HITACHI

Hitachi, Ltd., founded in 1910, highly diversified Japanese manufacturing corporation that comprises more than 1,000 subsidiaries, including 335 overseas corporations filed an opposition on November 29, 2022 with the JPO and claimed the opposed mark shall be cancelled in contravention of Article 4(1)(xi) and (xv) of the Trademark Law due to similarity to and likelihood of confusion with its famous house mark “Hitachi”.

To bolster their arguments, Hitachi cited the IP High Court ruling dated Jan 27, 2022 that admitted a likelihood of confusion between “HITACHI” and “hihachi” when used on air conditioners for industrial purposes; non-electric cooking heaters for household purposes; non-electric stoves for household purposes in class 11.


JPO decision

The JPO Opposition Board found a high degree of reputation and popularity of the cited mark “HITACHI” as a source indicator of the Hitachi Group and their business.

However, the JPO pointed out a low degree of similarity between the marks by stating that:

  1. From appearance, there is a difference in the letter “s” and “CH”. It would cause non-negligible effect on the overall visual impression of the marks which consist of relatively few letters (sir or seven characters). In this respect, two marks are unlikely to cause confusion visually.
  2. Aurally, there is a difference in the last sound of “si” and “chi”. It would cause non-negligible effect on the overall sound of the marks which consist of three syllables. The Board has a reason to believe that two marks are unlikely to cause confusion phonetically.
  3. From concept, both marks are unable to compare since the opposed mark does not have any specific meaning, whereas the cited mark gives rise to a meaning of “HITACHI” as a source indicator of the claimant.

Given a low degree of similarity of the marks, the Board said, it is unlikely that relevant consumers confuse the source of the goods in question bearing the opposed mark with Hitachi, Ltd. or other entity systematically or economically connected with the claimant even if the cited mark “HITACHI” has been famous trademark

Based on the foregoing, the Board dismissed the entire allegations by Hitachi and decided validity of the opposed mark as the status quo.

Trademark Opposition Case: “DROP” vs “THE DROP”

In a trademark opposition disputing similarity between “DROP” and “THE DROP”, the Japan Patent Office (JPO) decided to cancel TM Reg no. 6556243 for the mark “DROP” in class 35 due to similarity to IR no. 1258281 “THE DROP” in class 20 owned by Fritz Hansen A/S.

[Opposition case no. 2022-900306, decided on October 2, 2023]

Opposed mark “DROP”

Massdrop, Inc., a US e-commerce company, filed trademark application for word mark “DROP” in standard character for use on retail or wholesales services for various categories of goods including furniture in class 35 on October 9, 2018 (TM App no. 2018-126535).

The mark was registered on May 16, 2022 (TM Reg no. 6556243) and published for post-grant opposition on May 24, 2022.


Opposition by Fritz Hansen A/S

Fritz Hansen A/S, renowned Danish manufacturer of Scandinavian-style furniture, took a partial opposition action against the “DROP” mark on July 26, 2022 and claimed cancellation of the opposed mark in contravention of Article 4(1)(xi) of the Japan Trademark Law due to similarity to earlier IR no. 1258281 “THE DROP” for use on furniture in class 20 owned by the opponent.

Fitz Hasen argued “THE” is merely a definite article with no particular meaning for Japanese citizens with ordinary care. It commonly happens in Japan that consumers do not pay attention to definite article in the prefix where it is followed by other words. For example, “THE BEATLES” is called just as “BEATLES”. The Japanese title of the movie “The Lord of the Rings” does not include “THE”. Under the circumstance, relevant consumers would consider “DROP” as a prominent portion of the cited mark. Therefore, the opposed mark shall be similar to the cited mark. Besides, the goods “furniture” in class 20 is deemed similar to retail or wholesale services for furniture in class 35.

If so, the opposed mark should be canceled in relation to “retail or wholesale services for furniture” of class 35 under Article 4(1)(xi).


JPO decision

In the decision, the JPO Opposition Board mentioned “THE” is a definite article that functions to specify the following noun, however is usually not translated into Japanese. A basic English word “THE”, familiar among general public in Japan, is less distinctive as a source indicator per se. It is quite possible that relevant consumers and traders at the sight of the cited mark would highly focus on the term “DROP” of the cited mark.

Therefore, the Board has a reason to believe the cited mark gives rise to a pronunciation of “DROP” and a meaning ‘a small round-shaped amount of liquid’.

If so, the opposed mark has the same sound and concept with the cited mark.

A mere difference in appearance is insufficient to find dissimilarity of mark since the opposed mark consists of the same alphabets with “DROP” of the cited mark.

Also, the Board found “furniture” in class 20 shall be deemed similar to “retail or wholesale services for furniture” in class 35 by taking into consideration commercial channels, suppliers and consumers of respective goods and services.

Based on the foregoing, the Board sided with Fritz Hansen A/S and decided a partial cancellation of the opposed mark in relation to “retail or wholesale services for furniture”.

Trademark Opposition: JEEP vs JEIP321

The Japan Patent Office (JPO) dismissed an opposition filed by Fiat Chrysler Automobiles (FCA US) LLC against TM Reg no. 6586965 for the wordmark “JEIP321” to be used on covers and accessories for cars in class 12 by finding dissimilarity to and unlikelihood of confusion with the “JEEP” mark.

[Opposition case no. 2022-900391, decided on September 28, 2023]

Opposed mark

The wordmark “JEIP321” was filed by a Chinese individual for use on steering wheels covers for automobiles, vehicle covers [shaped], upholstery foe vehicles, two-wheeled trolleys, windscreen wipers, anti-dazzle devices for vehicles, ashtrays for automobiles, rearview mirrors, mudguards, cigar lighters for automobiles in class 12 with the JPO on January 25, 2022 (TM App no. 2022-7763).

The JPO admitted registration on July 13, 2022, and published for opposition on July 22, 2022.


Opposition by FCA US LLC

To oppose registration within a statutory period of two months counting from the publication date, FCA US LLC filed an opposition against the opposed mark on September 14, 2022.

FCA argued the opposed mark shall be canceled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law because of the remarkable reputation and popularity of the JEEP mark as a source indicator of Chrysler vehicles and a high degree of similarity between the opposed mark “JEIP321” and the opponent’s famous earlier registered mark “JEEP.”

Article 4(1)(xi) is a provision to refrain from registering a junior mark that is deemed identical with, or similar to, an earlier registered mark.

Article 4(1)(xv) provides that a mark shall not be registered where it is likely to cause confusion with other business entities’ well-known goods or services.

Inter alia, FCA pointed out that the literal element “JEIP” shall be considered as a prominent portion of the opposed mark since numerals lack distinctiveness per se. If so, the opposed mark is confusingly similar to the “JEEP” mark from visual and phonetical points of view.


JPO Decision

The JPO Opposition Board admitted a high degree of reputation and popularity of the “JEEP” mark in connection with four-wheeled automobiles.

In assessing the similarity of the mark, the Board found that a prominent portion of the opposed mark “JEIP” and the “JEEP” mark are less likely to cause confusion from visual, phonetical and conceptual points of view by stating that:

“From appearance, there is a difference in the third letter, “I” and “E” between “JEIP” and “JEEP”. The effect would be anything but negligible on the overall visual impression of both marks, since they are composed of only four characters.

Comparing the sound of “JEIP” with “JEEP”, there is a clear difference at the beginning, “dʒeɪ” and “dʒiː” It shall cause a significant distinction on the overall tone and impression in a short three-sound structure to the extent that relevant consumers would not mishear them when pronounced in unison.

Conceptually, both marks are dissimilar because the opposed mark does not give rise to any specific meaning. In the meantime, the opponent mark “JEEP” has a meaning of ‘Jeep brand 4WD vehicles.’”

Even though “JEEP” has become famous in relation to 4WD vehicles, the Board has no reason to believe that relevant consumers would associate the goods in question bearing the opposed mark “JEIP321” with the opponent or any business entity systematically or economically connected with FCA because of a low degree of similarity between the marks.

Based on the foregoing, the Board found the opposed mark shall not be canceled in contravention of Article 4(1)(xi) and (xv), and decided to dismiss the entire opposition.

McDonald Unsuccessful in Trademark Opposition against “mac”

The Japan Patent Office (JPO) did not side with McDonald in opposition against Japanese TM Reg no. 6575774 for stylized wordmark “mac” in class 35 due to dissimilarity to “Mc” and unlikelihood of confusion with McDonald.

[Opposition case no. 2022-900294, decided on August 15, 2023]

Opposed mark “mac”

The opposed mark, consisting of a stylized word “mac” (see below), was filed by Daiya Group Inc. for use on retail services or wholesale services for various goods including, meat, milk, carbonated drinks [refreshing beverages] and non-alcoholic fruit juice beverages, tea, coffee and cocoa in class 35 with the JPO on October 27, 2021.

The applicant has used the opposed mark as a tradename of their drug store “mac”.

Screen capture from Google map

The JPO granted protection of the opposed mark on June 22, 2022 and published it for post-grant opposition on June 30, 2022.


Opposition by McDonald

McDonald International Property Company Limited filed an opposition against the opposed mark on July 20, 2022 with the JPO and claimed cancellation of the opposed mark in contravention of Article 4(1)(x), (xi) and (xv) of the Japan Trademark Law based on earlier trademark registrations and various marks used in relation to their business.

McDonald argued that the mark “Mc” has been remarkably famous as a source indicator of the opponent and it gives rise to a same sound with the opposed mark “mac”. If so, relevant consumers would confuse the source of retail services or wholesale services for meat, milk, carbonated drinks [refreshing beverages] and non-alcoholic fruit juice beverages, tea, coffee and cocoa bearing the opposed mark with McDonald due to close resemblance of the marks and relatedness to food business.


JPO decision

The Opposition Board pointed out McDonald has been regularly using the mark “Mc” in a tight combination with other word. Regardless of the fact that consumers are accustomed to call McDonald as “MAC”, there is no evidence to show the opponent has used “MAC” in connection with their business.

By taking account of insufficient evidence to demonstrate substantial recognition of the cited marks, the Board has no reason to admit famousness of the mark “Mc” as a source indicator of McDonald.

In assessing the similarity of mark, the Board found the cited marks are aurally dissimilar to the opposed mark since they are pronounced as “emˈsiː” or “mækˈkæfˈeɪ” in its entirety. Besides, there is no ground to find visual and conceptual similarity of respective mark. If so, the Board believes the opposed mark is clearly dissimilar to the cited marks.

To the extent that there is insufficient evidence to support how the term “MAC” has played a significant role in indicating the source of McDonald, the Board held it unlikely that relevant consumers confuse the opposed mark with McDonald when used on the services in question.

Based on the foregoing, the Board dismissed the opposition entirely and decided that the opposed mark “mac” shall remain valid as the status quo.

HERMES Unsuccessful in Trademark Opposition against HERDES

The Japan Patent Office (JPO) did not side with Hermes International in opposition against TM Reg no. 6552637 for the wordmark “HARDES” in classes 14 and 18 by finding dissimilarity to the famous fashion brand “HERMES”.

[Opposition case no. 2022-900287, decided on May 25, 2023]

Opposed mark

RARELEAK Co, Ltd. applied the wordmark “HARDES” in a plain letter (see below) for use on personal ornaments, earrings, bracelets, ankle bracelets, necklaces, rings, watchbands, cuffs, necktie pins, pendants, pins, brooches, watches, key chains in class 18 and leather, bags and pouches, handbags, shoulder bags, suitcases, trunks, wallets, card cases, key cases, and others in class 18 with the JPO on November 5, 2021 (TM App no. 2021-144521).

The JPO examiner granted protection of the mark on April 1, 2022, and published it for post-grant opposition on May 17, 2022.


Opposition by HERMES

Before the lapse of a two-month statutory period counting from the publication date, Hermes International filed an opposition against the opposed mark on July 13, 2022.

Hermes argued the opposed mark shall be canceled in contravention of Article 4(1)(xi) of the Japan Trademark Law in relation to all goods designated by the opposed mark due to a high degree of similarity between “HERDES” and earlier trademark registration nos. 6179160 and 4467434 for the wordmark “HERMES”.

To bolster the argument for similarity, Hermes cited precedent JPO decisions that affirmed similarity between “NEBROS” and “NEGUROSU” (Appeal case no. 2002-22788), “RELARIS” and “ILARIS” (Opposition case no. 2008-900309).


JPO decision

The JPO Opposition Board found both marks are dissimilar by stating:

Visually, there is a difference in the fourth letter, “D” and “M”, between the opposed mark and cited mark “HERMES”. The difference in the fourth letter of marks both consisting of six letters gives the impression that two marks, as a whole, indicate different words. In this respect, both marks are distinguishable in appearance.

Aurally, a difference of the first three sounds would be anything but negligible and cause a substantial impact on the overall pronunciation given a short sound structure (four sounds). Therefore, the Board has a reason to believe relevant consumers can easily distinguish these sounds without confusion.

Conceptually, the opposed mark does not have a specific conception. Meanwhile, the cited mark gives rise to the meaning of “Hermes, and the god of trade, thieves, travelers, and sport”. It is obvious that both marks are unlikely to be confused in terms of conception.

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

Jimmy Choo Unsuccessful in Trademark Opposition against “CHUU”

On April 10, 2023, the JPO dismissed a trademark opposition against TM Reg no. 6523561 for the wordmark “chuu” contested by J. Choo Limited due to the dissimilarity of the mark and unlikelihood of confusion with “Jimmy Choo”.

[Opposition case no. 2022-900189]

Opposed mark “chuu”

PPB Studios Corporation Limited, a Korean fashion and beauty e-commerce company, sought registration of the wordmark “chuu” (see below) for use on apparel in class 25 and retail services for contact lenses, clothing, footwear, and bags in class 35 with the Japan Patent Office (JPO) on March 8, 2021.

The JPO examiner did not raise an objection by citing earlier trademark registration for the stylized mark “CHOO” owned by J. Choo Limited and granted protection on February 28, 2022.


Opposition by Jimmy Choo

The luxury-footwear brand Jimmy Chou, a luxury footwear brand, filed the opposition on May 6, 2022, and contend that the opposed mark “chuu” shall be canceled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law.

Jimmy Choo argued the opposed mark is similar to earlier registration for his company-owned mark “CHOO” (see below) and is likely to cause confusion with Jimmy Choo because of a close resemblance between the opposed mark and his famous mark, and relatedness of the goods in question with Jimmy Choo’s business.


JPO decision

The JPO Opposition Board questioned the famousness of the cited mark “CHOO” as a source indicator of the luxury footwear brand “Jimmy Choo” from the produced evidence and totality of the circumstances.

Next, the Board assessed the similarity of marks and found that there are distinctions between the opposed mark and the cited marks in terms of lower-case and upper-case letters, the thickness of the letters, the presence or absence of design, and the difference between the word “uu” and the word “OO” in the latter part of the respective mark. The visual impression that these differences give to the overall appearance of the two marks, both of which consist of four letters, is significantly different, and thus both marks are clearly distinguishable in appearance.

The opposed mark gives rise to the sound of “Chu”, while the cited is pronounced “Chu” or “Cho”. If so, both marks share the same pronunciation and are deemed aurally similar.

Both marks are not comparable conceptually because the respective mark does not give rise to any specific meaning at all.

Based on the foregoing, the Board held “Even if the opposed mark and the cited mark are not comparable in conception and share some similarities in sound, since they are significantly different in impression and clearly distinguishable in appearance, the Board has a reason to believe that the similarity in sound would not outweigh the visual difference. Taking all of the above into consideration as a whole, both marks are dissimilar and not likely to cause confusion as to the origin of the goods or services.

Given the cited mark has not acquired a certain degree of recognition as a source indicator of “Jimmy Choo” among relevant consumers in Japan, there is no reason to find a likelihood of confusion when the opposed mark is used on the goods in question.

Based on the above findings, the JPO Opposition Boards did not side with Jimmy Choo and decided the validity of the opposed mark as the status quo.

L’Oréal loses trademark fight against “NOREAL”

The Japan Patent Office (JPO) dismissed an opposition filed by L’Oréal against TM Reg no. 6520304 for the wordmark “NOREAL” in class 3 due to dissimilarity to the L’OREAL mark and unlikelihood of causing confusion with L’Oréal.

[Opposition case no. 2022-900195, decided on April 5, 2023]

NOREAL

The opposed mark, consisting of the wordmark “NOREAL” in standard character, for use on cosmetics, soaps, shampoos, perfumes, fragrances, and other goods in class 3 was filed by a Japanese individual with the JPO on May 20, 2021.

The JPO examiner, without raising any objection, granted protection of the opposed mark on January 7, 2022. Subsequently, the mark was published for post-grant opposition on March 9, 2022.


Opposition by L’Oréal

Global cosmetic giant L’Oréal filed an opposition on May 10, 2022, and claimed the opposed mark shall be canceled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law.

In the opposition brief, L’Oréal argued, given a close resemblance in appearance and sound between the world-famous mark “L’OREAL” and the opposed mark “NOREAL”, there is a high degree of similarity between the marks and thus relevant consumers of goods in question are likely to confuse a source of cosmetics bearing the opposed mark with L’Oréal or any entity economically or systematically connected with the opponent.


JPO decision

Astonishingly, the JPO Opposition Board found it unobvious from the produced evidence that the L’OREAL mark has been highly recognized as a source indicator of the opponent among a wide range of consumers.

On the assessment of the similarity of marks, the Opposition Board considered a difference between “N” and “L'” at the beginning of respective marks would play a significant role in distinguishing the appearance and sound of wordmark and have a substantial influence on the visual and aural impression of two marks, which consist of relatively few letters, as a whole. Therefore, the Board has a reason to believe that both marks are sufficiently distinguishable in appearance and sound. Since both marks do not give rise to any specific meaning, it is unable to assess the conceptual similarity of the two marks. Based on the above findings, the Board found both marks are dissimilar from visual, aural, and conceptual points of view.

Due to insufficient brand recognition of the L’OREAL mark and the low degree of similarity between the two marks, “NOREAL” and “L’OREAL”, the Board has a reason to believe relevant consumers are unlikely to confuse a source of cosmetics bearing the NOREAL mark with L’Oréal regardless of overlapping goods and consumers.

Based on the foregoing, the JPO did not side with L’Oréal and decided the validity of the opposed mark as the status quo.