カテゴリー: Alphabetical word

HYATT lost a trademark dispute in Japan: GRAND CLUB vs GRAN CLUB

Posted on

The Japan Patent Office (JPO) did not side with HYATT and dismissed an invalidation petition against TM Reg no. 6186629 for the wordmark “GRAN CLUB” by finding dissimilarity to HYATT’s earlier mark “GRAND CLUB”.

[Invalidation case no. 2022-890018, Decision date: December 14, 2022]

GRAN CLUB

The disputed mark, consisting of the word mark “GRAN CLUB” in standard character was filed by Memolead Wellness Co., Ltd., a Japanese company for use in restaurants, hotels and temporary accommodations, retirement homes, beauty salons, and other services in class 43 and 44 on September 13, 2018, with the JPO. The JPO examiner granted protection on September 10, 2019.

Apparently, the applicant uses the mark on their facility to provide a sports club, fitness gym, spa, beauty salon, sauna, café, and social club in Takasaki City, Gunma Prefecture (Japan).

GRAND CLUB

Hyatt International Corporation has effectively owned earlier TM Reg no. 4604602 for the wordmark “GRAND CLUB” in standard character on hotels, restaurants, beauty salons, and other services in Japan.

Hyatt filed an invalidation petition against “GRAN CLUB” with the JPO on March 18, 2022, and argued the disputed mark shall be invalidated in contravention of Article 4(1)(xi) of the Trademark Law due to a close resemblance between “GRAND CLUB” and “GRAND CLUB” to be used on identical or similar services.

JPO Decision

The JPO Invalidation Board found the disputed mark “GRAN CLUB” does not give rise to any specific meaning as well as the cited mark “GRAND CLUB”.

From the appearance, the Board found both marks are distinguishable by virtue of the presence or absence of the letter “D” in the middle of the marks.

Besides, the Board had a view that it is unlikely relevant consumers audibly confuse “ɡræn-klʌb” with “ɡrænd-klʌb” in view of short phonetic compositions of six or seven sounds.

Hyatt argued “GRAND CLUB” can be called “ɡræn-klʌb” among Japanese consumers based on a lot of hotels and facilities with a mark containing the term “GRAN” that is ordinary called “ɡræn”. However, the Board held the examples are neither direct nor relevant to find “GRAND CLUB” is pronounced as  “ɡræn-klʌb” by relevant consumers.

Given both marks are incomparable to the concept, the Board has a reason to believe both marks give rise to a different impression in the mind of consumers from visual, phonetical, and conceptual points of view.

Based on the foregoing, the Board concluded “GRAN CLUB” and “GRAND CLUB” are dissimilar and declared the validity of the disputed mark.

Trademark dispute: “Swan Angel” vs “ANGEL SWAN”

Posted on

In a recent decision, the Japan Patent Office (JPO) declared invalidation of TM Reg no. 5947687 for the word mark “Swan Angel” in class 41 due to a similarity to “ANGEL SWAN”.

[Invalidation case no. 2022-890031, Decision date: December 1, 2022]

Swan Angel

Disputed mark, consisting of the wordmark “Swan Angel” in standard character, was filed for use on various services including ballet school in class 41 with the JPO by a Japanese individual on October 5, 2016, and registered on May 19, 2017 (TM Reg no. 5947687).

Invalidation petition

On May 10, 2022, just before the lapse of a five-year statute of limitations, an owner of earlier TM Reg no. 5509646 for wordmark “ANGEL SWAN” in standard character filed a petition for invalidation against the disputed mark.

The owner argued disputed mark shall be invalidated in contravention of Article 4(1)(xi) of the Japan Trademark Law by stating “Swan Angel” is confusingly similar to “ANGEL SWAN” and ballet school and other services pertinent to ballet is deemed similar to the service in class 41 designated under the earlier mark since it also relates to ballet.

JPO decision

In an assessment of the similarity of marks, the JPO Invalidation Board stated:

Both the disputed mark and the cited mark consist of the two English words, “Swan” and “Angel”, commonly known among general consumers in Japan and it is reasonable to assume that relevant traders and consumers at the sight of both marks will see the words being placed in reverse order.

Even if there is a difference in the order of two words between the marks, the Board has no reason to believe the difference gives rise to any distinct meaning as a whole.

If so, relevant traders and consumers are likely to recognize the respective marks as a combination of “swan” and “angel” in sound and concept irrespective of the reversed order.

In this respect, both marks look similar in appearance because of the same words, font, and alphabet.

Based on the foregoing, the Board found the disputed mark “Swan Angel” is confusingly similar to the cited mark “ANGEL SWAN” from visual, phonetical, and conceptual points of view.

Taking account of another factor that respective services pertinent to ballet are deemed identical or similar as well, the Board concluded the disputed mark shall be retroactively invalidated in contravention of Article 4(1)(xi).

ZOOM vs ZOOM PHONE

Posted on

In a trademark opposition disputing the similarity between “ZOOM” and “ZOOM PHONE” in relation to the SaaS service of class 42, the Japan Patent Office (JPO) found both marks dissimilar and sustained registration of TM Reg no. 6527182 “ZOOM PHONE” owned by Zoom Video Communications Inc.

[Opposition case no. 2022-900213, decided on October 26, 2022]

ZOOM PHONE

Zoom Phone is a cloud-based phone system, which allows you to place and receive calls via laptop or smartphone through the Zoom application.

Zoom Video Communications Inc. filed a trademark application for the wordmark “ZOOM PHONE” in standard character for use on web conferencing services; the transmission of instant messages; telepresence conferencing services; network conferencing services;　teleconferencing services;　videoconferencing services; audio teleconferencing; web messaging services in class 38, and software as a service [SaaS] in class 42 with the JPO on December 18, 2020.

The mark was registered on March 14, 2022, and published for opposition on March 23, 2022.

Opposition by Zoom

On May 23, 2022, before the lapse of a statutory period of two months counting from the publication date, Zoom Co., Ltd., an owner of the trademark “ZOOM” in Japan, filed an opposition and argued the opposed mark shall be partially canceled in contravention of Article 4(1)(xi) of the Japan Trademark Law by citing earlier registrations for word mark “ZOOM” in class 9.

The opponent argued that the opposed mark consists of two words, “ZOOM” and “PHONE”. The term “PHONE” lacks distinctiveness in relation to SaaS service since it makes use of telecommunication devices, inter alia smartphone. Therefore, the term “ZOOM” shall be a prominent portion as a source indicator of the opposed mark. If so, the opposed mark is deemed similar to the cited mark “ZOOM”.

JPO decision

The Opposition Board found the opposed mark shall be visually and phonetically considered in its entirety due to alphabets of the same font and size, and overall sound easily pronounced.

Even if the respective word has a specific meaning, relevant consumers would see the opposed mark as a coined word since the term “ZOOM PHONE” is not included in any dictionaries.

If so, the Board has a reason to believe the opposed mark shall be considered as a whole, and thus it is not allowed to compare the literal portion “ZOOM” of the opposed mark with the cited marks in assessing the similarity of the mark.

Based on the above findings, the Board assessed the similarity of both marks and held that:

The opposed mark gives rise to a pronunciation of ‘zuːm-foʊn’, but no specific meaning. In the meantime, the cited marks give rise to a pronunciation of ‘zuːm’ and the meaning of ‘the effect of a camera moving toward or away from a subject by using a zoom lens. Obviously, there is a clear distinction between the marks by virtue of the presence of the term “PHONE” from visual, phonetic, and conceptual points of view.

Consequently, the JPO decided the opposed mark “ZOOM PHONE” is dissimilar to the cited mark “ZOOM” and dismissed the opposition entirely.

ELLE vs Ellenail

Posted on

The Japan Patent Office (JPO) dismissed an opposition filed by HACHETTE FILIPACCHI PRESSE, Société Anonyme (FR) against Japanese trademark registration no. 6452048 for stylized wordmark “Ellenail” by finding dissimilarity to and less likelihood of confusion with French fashion magazine “ELLE”.

[Opposition case no. 2021-900440, Decision date: October 7, 2022]

Ellenail

The opposed mark, consisting of the term “Ellenail” with stylization (see below), was applied for registration on August 14, 2020, for goods and services relating to nail care and polish in classes 3, 18, 21, and 44 by es social management, Inc., a Japanese company.

The company opens “Ellenail” nail salons in Tokyo.

The JPO granted protection on October 6, 2021, and was published for opposition on October 26, 2021.

Opposition by ELLE

On December 17, 2021, 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, filed an opposition with the JPO.

In the opposition, HFP contended that the opposed mark 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 refrain from registering a junior mark that is identical with, or similar to, any 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, to the benefit of the brand owner and users.

HFP argued that the opposed mark consists of two words, “Elle” and “nail”. It is obvious that the term “nail” lacks distinctiveness in connection with nail-related goods and services. Besides, in view of the fact that the term “nail” is an English word familiar among general consumers in Japan, the term “Elle” shall be considered a prominent portion of the opposed mark. Therefore, the opposed mark as a whole is similar to HFP’s earlier registrations for the mark “ELLE” which has acquired a substantial degree of reputation and popularity. Because of it, relevant consumers are likely to confuse or misconceive the opposed mark with HFP or any business entity systematically or economically connected with the opponent at the sight of the goods and services in question bearing the opposed mark.

JPO decision

The Board admitted the “ELLE” mark has acquired a high degree of reputation and popularity among relevant consumers and traders as a source indicator of the fashion magazines.

In the meantime, the Board found the opposed mark shall be assessed in its entirety from visual and conceptual points of view. Facts that the word “nail” is descriptive in relation to the goods and services in question and the term “Ellenail” is a combination of two different languages, namely “Elle” in French and “nail” in English, shall not be a good reason to consider the word “Elle” a prominent portion of the opposed mark because of a tight combination of two words. By finding this, the Board concluded the opposed mark is dissimilar to the “ELLE” mark.

Taking into consideration a quite low degree of similarity between the marks, and a remote association between nail-related goods and services and the opponent business, the Board had no reason to believe that relevant consumers would mistakenly assume the opposed goods or services originate from the same source as or are associated with, the opponent.

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

General Motors defeated in trademark opposition over HUMMER

Posted on

The Japan Patent Office (JPO) dismissed a trademark opposition claimed by General Motors LLC against TM Reg no. 6387036 for “HEAVYDUTY HUMMER” with “HH” device by finding dissimilarity to and the unlikelihood of confusion with the automotive brand “HUMMER.

[Opposition case no. 2021-900295, Gazette issued date: September 30, 2022]

HEAVY DUTY HUMMER

The opposed mark, consisting of a word “HEAVYDUTY HUMMER” and “HH” device (see below), was filed with the JPO on February 18, 2021, for use on bicycles in class 12 and tent in class 22.

By virtue of the accelerated examination procedure, the mark was granted protection in two months (April 21, 2021) and published for opposition on June 1, 2021.

Opposition by General Motors

On August 2, 2021, before the lapse of a two-month opposition period, General Motors LLC filed an opposition by citing earlier TM Reg no. 2682898 for the wordmark “HUMMER” in classes 6,9,12,13,22.

In the opposition, GM contended that the opposed mark 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 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.

GM argued that the opposed mark is similar to earlier registration for the mark “HUMMER” and relevant consumers are likely to confuse or misconceive the opposed mark with GM or any business entity systematically or economically connected with the opponent due to the high popularity of the opponent’s automotive brand “HUMMER” and the close resemblance between the opposed mark and “HUMMER”.

JPO decision

The Board negated a certain degree of reputation and popularity of the HUMMER mark among relevant consumers and traders as a source indicator of GM by stating:

“From the produced evidence, the opponent allegedly has used the cited mark as a brand name for four-wheel drive vehicles since 1999 that have been imported and sold in Japan since at least 2002. However, GM terminated its production in May 2010. Besides, being that there is no clear evidence to demonstrate the timing, sales volume, sales amount, market share, scale of marketing, and advertising in relation to “automobiles” and “bicycles” in Japan, the Board has no reason to find the cited mark has been widely recognized by the relevant public as a source indicator of the opponent business.”

In assessing the similarity of mark, the Board found that the literal portion “HEAVYDUTY HUMMER”, represented in the same font and the same size, gives a coherent and unified impression from appearance. The sound is not particularly redundant and can be pronounced in a series without difficulty. The term “HEAVYDUTY” is anything but an English word that is commonly used in Japan. If so, it is not permissible to separate and extract the term “HUMMER” from the opposed mark and compare it with the cited mark.

Based on the above findings, the Board compared the opposed mark with the cited mark in its entirety.

“In the presence or absence of the HH device and the term HEAVYDUTY, both marks are clearly distinguishable and there is no risk of confusion in appearance and sound. Since both marks do not give rise to any specific meaning, both marks are not comparable in concept.”

Consequently, the Board concluded that relevant traders or consumers would not confuse or misconceive a source of the opposed mark with GM or any entity systematically or economically connected with the opponent when used on any goods in question and allowed the opposed mark to survive.

How to prevent registration of your business name by others

Posted on

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.

ZARA Unsuccessful in Trademark Opposition against ZARAHA

Posted on

The Japan Patent Office (JPO) dismissed a trademark opposition claimed by INDITEX, S.A. against TM Reg no. 6423743 for the wordmark “ZARAHA” by finding dissimilarity of the mark and unlikelihood of confusion with a famous fashion brand “ZARA”.

[Opposition case: 2021-900373, Decision date: September 8, 2022]

ZARAHA

ZARAHA BEAUTY CO., LTD., a Japanese company, filed a word mark “ZARAHA” in standard character for use on beauty care cosmetics and preparations (cl. 3); retail services for beauty care cosmetics (cl. 35); beauty arts instruction (cl. 41); aesthetician services, beauty salon services (cl. 44) with the JPO on October 15, 2020 (TM App no. 2020-127458).

The applicant opens the ZARAHA BEAUTY shop in Tokyo to provide beauty salon services. Click here.

The JPO granted protection of the applied mark on July 6, 2021, and published for opposition on August 24, 2021

Opposition by INDITEX

Inditex, S.A., an international fashion manufacturer, and distribution group filed an opposition against the wordmark “ZARAHA” by citing its flagship brand “ZARA” on October 21, 2021.

Inditex argued the opposed mark shall be canceled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law by taking into consideration the remarkable reputation of “ZARA” as a famous fashion brand, resemblance of both marks, and close association between apparels and cosmetics, beauty care-related services.

JPO Decision

The JPO Opposition Board admitted a certain degree of the reputation of the mark ZARA as a source indicator of the opponent’s apparel. However, the Board questioned if “ZARA” has acquired a substantial degree of popularity among relevant consumers of the goods and services in question from the totality of the produced evidence.

Besides, the Board found that “ZARAHA” and “ZARA” shall be easily distinguishable in appearance and pronunciation. Conceptually, both marks are not similar because they do not give rise to any specific meaning. Therefore, the Board has a reason to believe both marks are dissimilar.

Given that “ZARA” has not become famous among relevant consumers of the goods and services in question, and a low degree of similarity between the marks, it is unlikely that the consumers confuse a source of cosmetics and beauty care-related services bearing the opposed mark “ZARAHA” with Inditex.

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

Trademark dispute: LAPPI vs LAPPY

Posted on

In a recent appeal decision, the Japan Patent Office (JPO) disaffirmed the examiner’s rejection and found “LAPPI” is dissimilar to and unlikely to cause confusion with “LAPPY” when used on computer-related goods in class 9.

[Appeal case no. 2022-6493, decided on August 24, 2022]

LAPPI

Kabushiki Kaisha LAPPI filed a trademark application for the wordmark “Lappi” in standard character for use on various goods and services in classes 9, 35, 41, and 42 with the JPO on October 15, 2020.

On March 15, 2022, the JPO examiner rejected the LAPPI mark due to a conflict with earlier trademark registration no. 6360979 for the word mark “Lappy” in standard character in connection with computer-related goods and software of class 9 based on Article 4(1)(xi) of the Japan Trademark Law.

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

The applicant filed an appeal and argued the dissimilarity of mark between “Lappi” and “Lappy” on April 28, 2022.

JPO Appeal decision

The JPO Appeal Board assessed the similarity between the marks from three aspects (visual similarity, aural similarity, and conceptual similarity) and stated:

Visual similarity

“Although the applied mark and the cited mark share the letter “Lapp” from the beginning of the respective word, they differ in the letters “i” and “y” at the end of the word. In a mark consisting of five letters, the difference at the end of the word shall be easily noticeable, visually impressive, and memorable. Therefore, both marks are sufficiently distinguishable from appearance.”

Aural similarity

The difference between the pronunciation of “Lappi” and “Lappy” rests on the presence or absence of a long vowel at the end of the word. The plosive sound in between makes the sound “pi” and “pi:” be pronounced strongly and clearly. In the short three- or four-note configuration, such differences have a significant impact on the overall pronunciation. Therefore, both marks are sufficiently distinguishable aurally.

Conceptual similarity

Being that either mark does not give rise to a specific meaning, the applied mark “Lappi” is incomparable with the cited mark “Lappy” in concept.

Based on the foregoing, the Board held both marks are dissimilar from the totality of the circumstances and decided to disaffirm the examiner’s rejection and grant protection of the applied mark.

NIVEA vs NYFEA

Posted on

On August 2, 2022, the JPO Opposition Board found “NYFEA” is dissimilar to “NIVEA” and unlikely to cause confusion with international skin care major Beiersdorf AG even when used on goods in class 3 including skin-care cream.

[Opposition case no. 2021-900350]

NYFEA

The opposed mark, consisting of a stylized word “NYFEA” (see below), was filed by a Chinese company, Shenzhen VKK Technology Co., Ltd for use on various goods in classes 3, 8, 9, 10, 11, 16, and 21 with the JPO on July 2, 2020.

The application designates cakes of toilet soap, cleansing milk for cosmetic purposes, detergents, beauty masks, nail varnish, dentifrices, perfume, and incense in class 3.

The JPO admitted registration of the NYFEA mark on June 15, 2021, and published for post-grant opposition on July 20, 2021.

Opposition by Beiersdorf AG

The German cosmetics giant, Beiersdorf AG filed an opposition against the NYFEA mark on September 21, 2021, and argued the opposed mark shall be canceled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law due to a conflict or likelihood of confusion with the world’s largest skincare brand “NIVEA”.

Beiersdorf alleged the NIVEA mark has been substantially used on skin-care creams in Japan since 1968. By virtue of effective advertising, sales promotion, and marketing for long years, NIVEA has acquired a remarkable degree of reputation and popularity among relevant consumers in Japan. As matter of fact, the mark “NIVEA” written in Japanese Katakana character is included in the famous trademark database managed by the JPO.

In view of the close resemblance between NIVEA and NYFEA, and the famousness of NIVEA, relevant consumers would confuse the source of the goods in class 3 bearing the opposed mark with the opponent.

JPO decision

To my surprise, the JPO negated the famousness of the NIVEA mark by stating “the opponent failed to produce sales amount, market share, and materials of promotional advertising in our jurisdiction at all. A mere allegation that the opponent promoted skin-care creams bearing the NIVEA mark for over five decades is insufficient to find a remarkable degree of the reputation of the opponent’s mark in Japan. Besides, the Board held a fact that the mark “NIVEA” written in Japanese Katakana character is included in famous trademark database would not affect the above finding. Being that the opponent did not prove a high degree of reputation and popularity of “NIVEA” at the time of filing and registration of the opposed mark with evidence, the Board had no reason to believe the opponent mark remains famous as a source indicator of skin-care goods by Beiersdorf AG.

In the assessment of similarity, the Board found both marks are distinguishable in appearance because of differences in the second and third letters, “YE” and “IV” among five letters in total. Likewise, the difference in the second sound would give rise to a distinctive impression in view of a few phonetic compositions of three sounds in total. Both marks are incomparable to the concept.

Based on the foregoing, the Opposition Board found no reasonable ground to cancel the opposed mark in contravention of Article 4(1)(xi) and (xv) and decided to dismiss the opposition entirely.

Olympic Lose Trademark Race with Olimple

Posted on

In a trademark opposition disputing the similarity and the likelihood of confusion between “Olympic” and “Olimple”, the JPO did not side with the IOC (International Olympic Committee).

[Opposition case no. 2021-900173]

Olimple

The opposed mark, consisting of the term “Olimple” written in the alphabet and the Japanese katakana character (see below), was applied with the Japan Patent Office (JPO) on January 28, 2020, for use on facial skin care gel, cosmetics, soaps, and other goods in class 3 by Olimple Co., Ltd.

The JPO granted protection on February 2, 2021, and published for opposition on March 9, 2021.

The applicant promotes medicated skin care gel for men bearing the Olimple mark.

Image credit: olimple.jp

Opposition by IOC

Opponent, IOC claimed the opposed mark shall be canceled in contravention of Article 4(1)(vi), (vii), (xi) and (xv) of the Japan Trademark Law by citing earlier International Registration no. 1128501 for wordmark “OLYMPIC” covering various goods and services in class 3 and other classes.

IOC argued a close resemblance between “OLYMPIC” and “Olimple” by stating:

  1. Both marks share four of the seven letters. Besides, the two letters at the end of the word, “le” and “IC” looks similar.
  2. The third letters “I” and “Y” of both marks are pronounced as “li” accompanied by the second letter “L”.
  3. Being that consumers are accustomed to several terms with a prefix of “OLYMP”, e.g., “OLYMPISM”, “OLYMPIAN” in connection with “OLYMPIC”, they will see the literal element “Olimp” as a dominant portion of the opposed mark.
  4. If so, relevant consumers are likely to confuse the opposed mark with “OLYMPIC” when used on goods in question.

JPO decision

The JPO did not question the famousness of the OLYMPIC mark as a source indicator of the IOC. However, the Opposition Board negated the similarity between “Olimple” and “OLYMPIC” on the following grounds.

  1. The term “Olimple” shall be deemed as a coined word because it is not a word that appeared in a language dictionary and does not give rise to any specific meaning in relation to the goods in question.
  2. There is a remarkable difference in the presence or absence of Japanese katakana characters. In addition to the difference between upper- and lower-case letters after the second letter, there are distinctions in the third letter “i” and “Y”, the sixth letter “l” and “I”, and the letters “e” and “C” at the end. In the configuration of the relatively short seven-letter alphabet, both marks are sufficiently distinguishable by appearance.
  3. Phonetically, both marks are unlikely to cause confusion as a whole because of a clear difference in the fourth and fifth sounds.
  4. It is obvious that both marks are dissimilar in concept.

The Board did not find a reason to believe relevant consumers would misconceive the source of the opposed mark merely because of close attention to the literal portion of “OLYMP” and “Olimp”, and its similarity.

Based on the foregoing, the JPO dismissed the entire allegations and decided on July 13, 2022, that the opposed mark shall remain valid as the status quo.