In a trademark dispute along the side of shoes between Vans Incorporated and Revenge X Storm Limited, the Japan Patent Office (JPO) did not side with Vans Incorporated.[Invalidation case no. 2021-890049, Decision date: September 29, 2022]
Revenge X Stream Limited filed a device mark representing a shoe for the right leg with a thunder-shaped line along the side of the shoe for use on ‘sports shoes’ in class 25 with the JPO on June 5, 2018.
The mark was successfully registered on October 2, 2020 (TM Reg no. 6299288).
Invalidation action by VANS
VANS INC. filed an invalidation action on September 16, 2021, and argued the mark shall be invalidated in contravention of Article 4(1)(x), (xi), and (xv) of the Japan Trademark Law by citing earlier trademark registrations for the iconic Vans Side stripe used on OLD SKOOL (see below) since 1977.
VANS alleged the appearance of Vans OLD SKOOL perse has become famous to indicate VANS’ shoes among relevant consumers of sports shoes in Japan.
To my surprise, the JPO Invalidation Board denied a certain degree of reputation and popularity of the Vans Side stripe as a source indicator of VANS’ shoes from the totality of the produced evidence.
Besides, the Board negated the similarity of both marks by stating:
“The mark in question represents a thunder-shaped sideline along the side of sports shoes. On the other hand, the Vans Side stripe consists of a gently wavy curved sideline along the side of the shoes.
Therefore, the appearance of the two marks clearly differs in the shape of the sideline on the side of the shoe and is clearly distinguishable.
In this way, even if both marks cannot be compared in terms of concept, they are dissimilar and unlikely to be confused in terms of appearance and pronunciation, and therefore, the degree of similarity shall be quite low.”
Given a low degree of similarity between the two marks, the Board has a reason to believe that relevant consumers are unlikely to confuse a source of sports shoes bearing the mark in question with VANS.
Based on the foregoing, the Board found the entire allegations of VANS groundless and decided to dismiss invalidation action accordingly.