カテゴリー: Article 4(1)(vii)

BOND GIRL Score Win in Trademark Dispute

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The Japan Patent Office (JPO) declared invalidation of TM Reg no. 6267785 for “BOND GIRL” with a “BG” device mark in contravention of Article 4(1)(vii) of the Trademark Law.

[Invalidation case no. 2022-890013, decided on November 18, 2022]

Disputed mark

A disputed mark, consisting of the stylized word “BOND GIRL” and “BG” logo (see below), was filed with JPO for use on scissors, swords, hand tools, spoons, and forks in class 8 by a Japanese business entity on September 4, 2019, and registered on July 9, 2020.

Apparently, the applicant has used the disputed mark on multi-tools. Click here.

Invalidation petition by Danjaq, LLC

On March 1, 2022, Danjaq, LLC, the holding company responsible for the copyright and trademarks to the characters, elements, and other material related to James Bond on screen, filed a petition for invalidation and argued disputed mark shall be invalid in contravention of Article 4(1)(vii) of the Japan Trademark Law by citing world-famous cinematic heroine “BOND GIRL” in the James Bond film series “007”.

Article 4(1)(vii)

Article 4(1)(vii) of the Trademark Law prohibits any mark likely to cause damage to public order or morality from registration.

In the petition, Danjaq argued “BOND GIRL” has appeared as a love interest of James Bond in the movies for over 55 years since 1962. Due to frequent appearances in magazines, other public media, and various events pertinent to the Japes Bond movie, the name and sign of “BOND GIRL” has been well-known as a cinematic heroine in association with the film series “007”.

If so, it is presumed that the applicant intentionally applied the disputed mark with the aim to monopolize the term. Since the applicant does not have any legal interest with Danjaq, a legitimate owner of trademarks and copyrights pertaining to the 007 movies, it must impermissibly cause not only damage to public order but the disorder in domestic and foreign trade.

JPO decision

The Invalidation Board found, from the produced evidence, the cinematic heroine “Bond girl” has regularly attracted audiences through screens, magazines, and promotional events of the James Bond “007” movie. The sign “BONG GIRL” had further extensive marketing and licensing to companies in vastly different product categories, not only with products associated with motion pictures, e.g. nails, cosmetics, dolls, cards, calendars, and others. Relevant consumers at the sight of the disputed mark would conceive nothing but the cinematic heroine in the film. The Board, therefore, considered that “BOND GIRL” has become worldly famous as a cinematic heroine that appeared in the “007” film series.

The Board continued in analyzing efforts made by Danjaq to enhance the commercial value of “BOND GIRL” by means of trademark registrations in various jurisdictions and licensing to different product categories.

The Board paid attention that the applicant has referred to the James Bond films and the cinematic heroin “Bond girl” in advertisements to promote the BG multi-tools.

Based on the foregoing, the Board found it is impermissible for the applicant, unrelated to Danjaq, to monopolize the term on goods in question and decided to retroactively invalidate the disputed mark in contravention of Article 4(1)(vii) for the purpose of preventing damage to public order.

Failed Opposition by Monster Energy over PREDATOR mark

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In a trademark opposition claimed by Monster Energy Company against TM Reg no. 6471165 for the stylized PREDATOR mark in class 30, the Japan Patent Office (JPO) dismissed the opposition by finding dissimilarity of goods between ‘coffee, tea, cocoa’ and ‘carbonated beverages, energy drink’ in class 32.

[Opposition case no. 2022-900010, decided on November 7, 2022]

Opposed mark

Acer Incorporated, a Taiwanese multinational hardware, and electronics corporation filed a stylized mark “PREDATOR” (see below) for use on various foods including ‘instant coffee, coffee beverages, coffee, tea, cocoa’ in class 30 with the JPO on January 6, 2021.

The JPO examiner granted protection on November 11, 2021 (TM Reg no. 5461165), and the opposed mark was published for opposition on December 7, 2021.

Opposition by Monster Energy

Monster Energy Company filed an opposition on January 13, 2022, and claimed the opposed mark shall be canceled in contravention of Article 4(1)(vii), (xi), and (xix) of the Japan Trademark Law by citing TM Reg no. 6408734 for word mark “PREDATOR” in standard character over ‘carbonated beverages; energy drink’ in class 32.

The opponent argued that ‘instant coffee, coffee beverages, coffee, tea, cocoa’ designated in class 30 shall be deemed similar to ‘carbonated beverages; energy drink’ in class 32 because:
(1) five major Japanese beverage suppliers manufacture and distribute not only the goods in question, but also other beverages identical or similar to the cited drinks e.g., soft drinks, fruit drinks, beverage vegetable juices, and whey drinks.
(2) Both goods are generally sold at convenience stores, supermarkets, department stores, drugstores, and other food outlets, vending machines, and train station kiosks, so they share the same sales locations.
(3) Both ingredients overlap and their uses as non-alcoholic beverages are common. Namely, there are purchased and consumed at teatime, for relaxation during breaks, for hydration, and as drinks during and after meals.
(4) Both goods are consumed by general consumers.

It is indisputable that both marks are similar in sound and meaning. Being that both marks and goods are deemed similar, the opposed mark shall not be registrable under Article 4(1)(vi) of the Japan Trademark Law.

JPO decision

The JPO Opposition Board found similarities in both marks.

However, the Board did not uphold the argument pertinent to the similarity of goods by stating that:

Although it is true the main consumers of non-alcoholic beverages are general consumers, that they are ultimately sold in the same vending machines and sales corners, and that they are consumed for similar purposes, the Board has a reason to believe these goods have different suppliers, gradients, and distribution channels more often than not. If so, both goods shall not be considered similar at all events.

Based on the above findings, the Board decided the opposed mark shall not be canceled and dismissed the oppositions by Monster Energy entirely.

Warner Defeated in Trademark Opposition over TWEETY

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The Japan Patent Office (JPO) dismissed an opposition filed by Warner Bros against Japanese trademark registration no. 6452448 for the TWETYBIRD mark with a device by finding dissimilarity to and less likelihood of confusion with “Tweety”, a yellow canary bird, featured in the Warner Bros Looney Tunes animated cartoons.

[Opposition case no. 2021-900459, Decision date: October 26, 2022]

Japan TM Reg no. 6452448

The opposed mark, consisting of the word “TWETYBIRD” and an encircled “B” device (see below), was filed by a Chinese company for use on various goods in classes 3,9,14,18,25, and advertising and other services in class 35 on December 16, 2020.

The JPO granted protection on August 25, 2021, and the mark was published for opposition on October 26, 2021.

Opposition by Warner Bros

On December 27, 2021, before the lapse of a two-month opposition period, Warner Brothers Entertainment Incorporated filed an opposition with the JPO, and argued the opposed mark shall be canceled in contravention of Article 4(1)(vii), (xi), (xv) and (xix) of the Japan Trademark Law by citing earlier trademark registrations for the mark “Tweety”, a yellow canary bird (see below) featured in the Looney Tunes animated cartoons.

Warner Bros alleged that the cited marks have been remarkably famous for the title of the animated cartoons or the name of the cartoon character produced by Warner Bros. In view of the close resemblance between the famous mark “Tweety” and a literal element “Twety” of the opposed mark, it shall be considered the opposed mark is similar to and likely to cause confusion with the opposed mark when used on the goods and service in question.

JPO decision

The JPO Opposition Board admitted a certain degree of reputation and popularity of the cited marks to indicate a cartoon character. However, the Board questioned such popularity as a source indicator of Warner Bros from the totality of the circumstances and the produced evidence.

Besides, the Board found the literal element “TWETYBIRD” of the opposed mark shall be assessed in its entirety from the visual configuration. If so, the opposed mark would not give rise to a similar sound and meaning to “Tweety”. Therefore, the Board has a reason to believe that relevant consumers are unlikely to confuse a source of the goods and services in question bearing the opposed mark with Warner Bros due to a low degree of similarity between marks and reputation of the cited marks as a source indicator of Warner Bros.

In the decision, the Board mentioned it is doubtful if relevant consumers acquaint themselves with “Tweety Bird” as the full name of “Tweety”. If so, there is no reasonable ground to find the opposed mark violates morality or public order.

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

Olympic Lose Trademark Race with Olimple

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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.

GUCCI Unsuccessful in Trademark Opposition

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On July 12, 2022, the Japan Patent Office (JPO) dismissed an opposition claimed by Italian fashion house Gucci against Japan Trademark Registration no. 6384970 for the mark “CUGGL” with a hand-painted line in pink by finding less likelihood of confusion with famous fashion brand “GUCCI”.

[Opposition case no. 2021-900284]

CUGGL

Opposed mark, consisting of the term “CUGGL” with a hand-painted line in pink, was applied for use on clothing, footwear, headwear, and apparel in class 25 by an individual on October 6, 2020.

The JPO granted protection of the opposed mark and published it for opposition on May 25, 2021.

Opposition by GUCCI

Italian high-end luxury fashion house, GUCCI filed an opposition with the JPO on July 26, 2021, and argued the opposed mark shall be canceled in contravention of Article 4(1)(vii), (xv), and (xix) of the Trademark Law due to similarity and likelihood of confusion with famous fashion brand “GUCCI”.

GUCCI claimed the opposed mark was sought with malicious intention to free-ride goodwill and reputation in a manner of hiding the lower part of the term “CUGGL” by a pink painted line to the extent consumers could recognize it as if “GUCCI”. In fact, the registrant promotes T-shirts bearing the opposed mark with the most part of the term hidden.

JPO Decision

The JPO Opposition Board admitted a remarkable degree of popularity and reputation of the opponent’s “GUCCI” mark.

In the meantime, the Board did not find a resemblance between “GUCCI” and “CUGGL” from visual, phonetic, and conceptual points of view. Due to a low degree of similarity of the mark, the Board had no reason to believe that relevant consumers would misconceive a source of goods in question bearing the opposed mark from GUCCI or any entity systematically or economically connected to the opponent.

Assuming a low degree of similarity of the mark and less likelihood of confusion, the Board can’t find a reasonable ground to admit the applicant had a malicious intention to free-ride goodwill and reputation of GUCCI and do harm to the opponent.

Based on the foregoing, the JPO dismissed the entire allegations and decided the opposed mark was valid.

Adidas Unsuccessful in Opposition over BOOST mark

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On May 18, 2022, the Japan Patent Office (JPO) dismissed an opposition filed by Adidas AG against Trademark Reg no. 6383132 for the wordmark “G-BOOST” by finding dissimilarity and unlikelihood of confusion with Adidas “BOOST”.

[Opposition case no. 2021-900273]

G-BOOST

UNI WORLD Co., Ltd. filed wordmark “G-BOOST” in standard character for use on ‘gloves for protection against accidents; clothing for protection against accidents; protective industrial shoes; dust masks’ in class 9 and ‘clothing; footwear; gloves; thermal gloves; sports shoes; sportswear; socks’ in class 25 on March 30, 2020.

The applicant promotes worker gloves bearing the mark “G-BOOST.”

The JPO granted protection of the mark on March 30, 2021, and published for opposition on May 25, 2021.

Opposition by Adidas

On July 14, 2021, Adidas AG filed an opposition and argued the opposed mark shall be canceled in contravention of Article 4(1)(vii), (x), (xi), and 4(1)(xv) of the Japan Trademark Law due to a conflict with earlier trademark registrations pertinent to Adidas BOOST shoes, namely, TM Reg nos. 5212257 “BOOST” and 5941352 “ULTRABOOST” on shoes and sports shoes in class 25.

Allegedly, Adidas introduced Boost in 2013 as its revolutionary cushioning system, which provided the highest energy return in any running sneaker. The technology was designed to provide runners with soft cushioning and long-lasting energy that more rigid sneakers couldn’t.

Adidas argued the opposed mark “G-BOOST” is confusingly similar to “BOOST” because the term “BOOST” shall be a prominent portion of the opposed mark given an alphabetical letter “G” perse lacks distinctiveness in relation to the goods in question. Besides, “BOOST” has become famous as a source indicator of Adidas in relation to running shoes. If so, relevant consumers are likely to confuse the source of goods bearing the opposed mark with Adidas.

JPO Decision

The JPO Opposition Board did not admit a certain degree of reputation and popularity of the BOOST mark as a source indicator of Adidas running shoes among relevant consumers in Japan by stating that the opponent failed to produce sufficient evidence to disclose sales figures, market share, and advertising expenditures, media space and time of the goods bearing the BOOST mark even though the opponent produced evidence to demonstrate marketing campaign for the BOOST shoes in Japan.

In addition, the Board compared “G-BOOST” with “BOOST” as a whole and negated the similarity of the marks because of a clear distinction in appearance and sound.

Given the low degree of similarity of the mark and unproved famousness of the opponent mark, the Board has no reason to believe relevant consumers would confuse a source of the goods bearing the opposed mark with Adidas.

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

Canada Goose Failed Trademark Opposition Over Roundel Logo

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On May 11, 2022, the Japan Patent Office (JPO) dismissed an opposition filed by Canada Goose International AG against TM Reg no. 6367416 for a composite mark consisting of red, white, and blue roundel logo and literal elements by finding dissimilarity to and the unlikelihood of confusion with Canada Goose roundel logo.

[Opposition case no. 2021-900228]

Opposed mark

The opposed mark consists of a silhouette of an island or region in white placed right at the center of the emblem, a navy field with twelve red lines radiating from the center, and a wide rounded white frame with the text “KITAKYU GOODS” (top) and “NORTH NINE PROGRAM” (bottom) and five five-pointed-start-like devices (on each side of the frame) in red (see below left).

A Japanese business entity applied for use on seals and stickers [stationery] in class 16 and ornamental adhesive patches for jackets and brassards in class 26 with the JPO on June 29, 2020.

The JPO examiner granted protection of the opposed mark on March 3, 2021, and published for opposition on April 13, 2021.

Opposition by Canada Goose

To oppose registration within a statutory period of two months counting from the publication date, Canada Goose International AG filed an opposition against the opposed mark on June 14, 2021.

Canada Goose argued the opposed mark shall be canceled in contravention of Article 4(1)(vii), (xi), (xv), and (xix) of the Japan Trademark Law because of the remarkable reputation and popularity of earlier trademark registrations for the Canada Goose Roundel Logo (see above right) in relation to apparels and a close resemblance between the opposed mark and the opponent mark by using “confusingly similar” red, white, and blue logo patch.

JPO Decision

The JPO Opposition Board did not find a high degree of reputation and popularity of the Canada Goose Roundel Logo as a source indicator of the opponent among relevant consumers in Japan by stating that the opponent failed to produce evidence pertinent to the sales and advertisement of goods bearing the opponent logo in Japan even though the Canada Goose ranked fourth for a must-buy down jacket in 2021.

From the totality of the evidence, the Board had no choice but to question if the opponent mark has become famous among relevant consumers in Japan as well as Canada, and other countries.

Besides, the Board negated similarity between the marks by virtue of visual distinctions caused by (i) a land-like device depicted at the center and (ii) text and devices placed in the rounded frame. Due to the distinction, both marks give rise to a dissimilar sound. Conceptually, both marks are incomparable since either mark does not have any specific meaning.

Given the low degree of similarity of the mark and unproved famousness of the opponent mark, the Board has no reason to believe relevant consumers would confuse a source of the goods bearing the opposed mark with Canada Goose.

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

Trademark Parody case: Champion Defeated by Nyanpion

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On March 16, 2022, the Japan Patent Office (JPO) dismissed an opposition filed by HBI Branded Apparel Enterprises, LLC against TM Reg no. 6368388 for the mark “Nyanpion” with a device due to dissimilarity to and the unlikelihood of confusion with the famous apparel brand “Champion.”

[Opposition case no. 2021-900230]

Opposed mark

A Japanese individual applied a composite mark consisting of a stylized word “Nyanpion” and a cat device (see below) for use on apparel, headgear, footwear, sports shoes, and sportswear in class 25 with the JPO on August 25, 2020.

The JPO examiner granted protection of the opposed mark on January 29, 2021, and published for opposition on April 13, 2021.

T-shirts, sweats, hoodies, and tote bags bearing the Nyanpion mark have been promoted for sale with a catchword of “Champion” parody.

I should note that “Nyan” is the sound cats make in Japan. Because of it, “Nyanpion” easily reminds us of a combination of cat sounds and “Champion”.

Opposition by Champion

To oppose registration within a statutory period of two months counting from the publication date, HBI Branded Apparel Enterprises, LLC filed an opposition against the opposed mark on June 14, 2021.

HBI argued the opposed mark shall be canceled in contravention of Article 4(1)(vii), (x), (xi), (xv), and (xix) of the Japan Trademark Law because of the remarkable reputation and popularity of the Champion brand in relation to apparels and a high degree of similarity between the opposed mark and its owned trademark registrations (see below) to the extent that relevant consumers are likely to confuse a source of the goods in question bearing the opposed mark with “Champion”.

JPO Decision

The JPO Opposition Board admitted that the “Champion” mark has acquired a high degree of reputation as a result of substantial use in Japan for more than four decades and become famous as a source indicator of the opponent.

In the meantime, the Board negated the similarity between the marks by stating that:

From the appearance, the difference in the prefix of literal elements, “Nyanpion” and “Champion” would suffice for relevant consumers to distinguish them. The figurative element of the opposed mark represents a cat’s face. The opponent device mark gives rise to an impression of a letter “C”. If so, both marks are sufficiently distinguishable in appearance.

Phonetically, “Nyanpion” is easily distinguishable from “Champion” because of the difference in the first sound given both marks just consist of five sounds respectively.

Conceptually, the opposed mark does not give rise to any specific meaning. Meanwhile, the opponent mark has a meaning of someone or something, especially a person or animal, that has beaten all other competitors in competition and ‘famous apparel brand.’ If so, both marks are dissimilar in concept.

By virtue of a low degree of similarity, the Board found relevant consumers are unlikely to confuse or associate the source of the goods bearing the “Nyanpion” mark with “Champion” and any entity systematically or economically connected with the opponent.

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

Lacoste Prevails in Trademark Parody Case

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On February 18, 2022, the Japan Patent Office (JPO) decided in favor of Lacoste and canceled Japanese TM Registration No. 6289888 for a flipped crocodile device mark in class 25 due to a likelihood of confusion with the famous crocodile logo of Lacoste.

[Opposition case no. 2020-900312, Decision date: February 18, 2022]

Opposed mark

The opposed mark, consisting of flipped crocodile device and term “OCOSITE” (see below), was filed by a Japanese individual for use on clothing, footwear, headgear, sports shoes, and sportswear in class 25 on March 17, 2020.

T-shirts printing the opposed mark are promoted for sale with a catchphrase of “funny parody T-shirt.” As the term, “OCOSITE” means ‘wake me up, get me up’ in Japanese, the opposed mark gives rise to the meaning of a crocodile struggling to get up.

The opposed mark was registered on September 9, 2020, and published for opposition on September 29, 2020.

Opposition by Lacoste

It was anything but funny to the luxury sportswear brand, Lacoste.

Lacoste filed an opposition on November 27, 2020, within a statutory period of two months counting from the publication date.

In the opposition, Lacoste claimed the opposed mark shall be canceled in contravention of Article 4(1)(vii), (xv), and (xix) of the Japan Trademark Law on the grounds that a flipped crocodile device of the opposed mark closely resembles the world-famous Lacoste crocodile logo from its appearance.

Besides, the term “OCOSITE” is depicted in a similar font to “LACOSTE” and five letters “COS” and “TE” among seven letters are identical. Given the close resemblance between crocodile devices and the meaning of “OCOSITE”, relevant consumers at the sight of clothing and sportswear bearing the opposed mark would immediately conceive of the Lacoste crocodile struggling to get up and thus likely to confuse its souse with Lacoste.

JPO decision

The Opposition Board of JPO admitted a substantial degree of reputation and popularity of the Lacoste crocodile logo in relation to clothing, footwear, and sportswear.

The Board found a high degree of similarity between the flipped crocodile of the opposed mark and the Lacoste crocodile. Noticeably, the Board held respective element, namely, the crocodile device and the term “OCOSITE” of the opposed mark shall not be inseparably combined as a whole regardless of close adjacency.

In view of a high degree of reputation and originality of the opponent mark, and close association between the opponent business and the goods in question, the Board has reason to believe relevant consumers with an ordinary care would be likely to confuse the source of goods bearing the opposed mark with Lacoste or any business entity systematically or economically connected with the opponent.

Based on the foregoing, the JPO sided with Lacoste and decided to cancel the opposed mark in contravention of Article 4(1)(xv).

Samsung Failed in TM Opposition against “Funky Galaxy”

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The Japan Patent Office (JPO) dismissed an opposition filed by Samsung, the world’s largest smartphone maker, against TM Reg no. 6263685 for wordmark “Funky Galaxy” by stating the opposed mark would not cause confusion with Samsung “Galaxy” even when used on smartphones.

[Opposition case no. 2020-900229, Gazette issued date: November 11, 2021]

Opposed mark

On April 12, 2019, KING Entertainment Co., Ltd. applied for registration of wordmark “Funky Galaxy” in standard character for use on goods and services in classes 9, 16, 35, and 41. The goods in class 9 covers ‘telecommunication machines and apparatus; personal digital assistants; smartphones; electronic machines, and apparatus and their parts.’

JPO granted protection of the “Funky Galaxy” mark and published for opposition on July 14, 2020.

Opposition by Samsung

On September 11, 2020, Samsung, the world’s largest smartphone maker famous for Galaxy series mobiles, filed an opposition and claimed the Opposed mark shall be canceled in relation to goods and services in class 9, 35, and 41 in contravention of Article 4(1)(vii), (x), (xi), (xv) and (xix) of the Trademark Law by citing its own senior TM Reg nos. 4498554 “Galaxy”, IR1335923 “GALAXY STUDIO”, and 6309820 “Galaxy Harajuku”.

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

Samsung argued the Opposed mark shall cause confusion with Samsung “Galaxy” especially when used on smartphones and related goods and services, given a remarkable reputation of “Galaxy” holding 3rd market share (7.4% in 2018, 8.0% in 2019, 9,0% in 2020) in Japan and the close resemblance between “Galaxy” and “Funky Galaxy”.

JPO Decision

The Opposition Board did not question a remarkable degree of reputation and popularity of trademark “Galaxy” as a source indicator of the opponent smartphones.

In the meantime, the Board did not consider the term “Galaxy” as a prominent portion of the opposed mark from visual and conceptual points of view. If so, the opposed mark shall be assessed in its entirety.

In the assessment of similarity of the mark, the Board found “Funky Galaxy” is visually and phonetically distinguishable from “Galaxy” due to the presence of “Funky.” From concept, both marks are less similar because the opposed mark does not give rise to a specific meaning and the opponent mark “Galaxy” means an extremely large group of stars and planets. Both marks have a low degree of similarity accordingly.

Even though “Galaxy” has been well-known as a source indicator of Samsung smartphones, and the goods and services in question are closely associated with smartphones, given a low degree of similarity between “Funky Galaxy” and “Galaxy”, the Board has a reasonable ground to believe that relevant consumers would not confuse a source of goods and services bearing the opposed mark “Funky Galaxy” with Samsung and any business entity economically or systematically connected with the opponent.

Based on the foregoing, the Board decided the allegations are groundless and the Opposed mark shall remain valid as the status quo.