カテゴリー: Article 4(1)(xi)

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.

ZOOM vs ZOOM PHONE

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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

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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

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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.

Trademark Dispute over Side Stripe on Footwear

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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 shoes

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.

JPO Decision

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.

Failed Opposition by Chanel over Monogram

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The Japan Patent Office (JPO) dismissed a trademark opposition filed by Chanel against TM Reg no. 6351256 for a composite mark containing a device made of two inverted and interlocked “C” by finding dissimilarity to and the unlikelihood of confusion with Chanel’s monogram.

[Opposition case no. 2021-900169, Decision date: September 30, 2022]

Opposed mark

The opposed mark consists of the words “MUSIC BAR” and “CHAYA”, and a device made of two inverted and interlocked “C” (see below).

HIC Co., Ltd. filed the opposed mark for use on restaurant service in class 43 on August 27, 2020, with the JPO. The examiner granted protection on January 19, 2022, and published for opposition on February 10, 2021.

Opposition by Chanel

Chanel filed an opposition on April 30 and argued the opposed mark shall be canceled in contravention of Article 4(1)(xi), (xv), and (xix) of the Japan Trademark Law by citing earlier trademark registrations for Chanel’s monogram on the ground that:

  1. The figurative element of the opposed mark is similar to the prestigious Chanel’s monogram made of two inverted “c” displayed as an ellipse in its central point (see below).
  2. Given the remarkable degree of popularity and reputation of Chanel’s monogram, relevant consumers with ordinary care are likely to confuse a source of the service in question bearing the opposed mark with CHANEL.
  3. Applicant must have applied the opposed mark, confusingly similar to Chanel’s monogram with an unfair intention to take advantage of the reputation and goodwill associated with Chanel’s famous trademark.

JPO Decision

The JPO Opposition Board admitted that Chanel’s monogram has acquired a high degree of reputation among relevant consumers of the service in question. Allegedly, CHANEL spent more than 5 billion JP-Yen on advertising in Japan each year since 2014. Annual sales revenue exceeds 50 billion JP-Yen. Jewelry accounts for 3 billion JP-Yen of the revenue.

In the meantime, the JPO denied visual similarity between the figurative element of the opposed mark and the monogram by stating:

“They share a similarity in that they are both figures with two “C”-shaped curves placed back-to-back on the left and right sides so that parts of the curves overlap. However, in addition to differences in the way the “C”-shaped curves are represented (whether the thickness varies or is uniform and whether the opening is wide or narrow), there are also differences in the way the entire composition is represented, such as asymmetrical and symmetrical figures, vertical figures with two deeply overlapping curves and horizontal figures with two shallowly overlapping curves. Furthermore, the overall impression of the composition is clearly different in terms of asymmetrical and symmetrical figures, vertical figures with two curves deeply superimposed and horizontal figures with two curves shallowly superimposed. Therefore, there is no likelihood of confusion in terms of appearance.”

Obviously, there is no likelihood of confusion in terms of appearance and conception. Therefore, taking account of the impression, memory, and association given to traders and consumers by means of the appearance, concept, and pronunciation of two marks as a whole, the Board has a reason to believe that two marks are dissimilar and there is no likelihood of confusion.

Based on the foregoing, the Board dismissed the entire allegations of Chanel and allowed the opposed mark to register as the status quo.

ZARA Unsuccessful in Trademark Opposition against ZARAHA

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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.

JPO rejected “BAMBI MAMA&BABY” due to a conflict with “BAMBI”

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In a trademark appeal disputing the similarity between “BABMI MAMA&BABY” and “BAMBI”, the Japan Patent Office (JPO) affirmed the examiner’s refusal and decided to reject a junior mark “BAMBI MAMA&BABY” due to a conflict with earlier trademark registrations for word mark “BAMBI” owned by Disney Enterprises Inc.

[Appeal case: 2022-786, Decision date: September 7, 2022]

BAMBI

Bambi, a familiar name for a baby deer, has long been famous for a 1942 American animated film produced by Walt Disney.

Disney Enterprises Inc. has owned trademark registration for the wordmark “BAMBI” in various classes (including class 3) since 2008 in Japan (TM Reg no. 5127816). Bambi character design with “BAMBI” written in Japanese (see below) has been registered for five decades.

BAMBI MAMA&BABY

Langley Inc., a Japanese company, filed a trademark application for the wordmark “BAMBI MAMA&BABY” in standard character to be used on cosmetics; soaps and detergents; dentifrices; perfumes and flavor materials; false nails; false eyelashes in class 3 with the JPO on March 2, 2021.

In fact, Langley promotes skin care creams, skin milk, and supplements bearing the BAMBI MAMA&BABY mark. Click here.

Screen capture from https://bambiwater.jp/gold/mamababy/

The JPO examiner rejected the mark based on Article 4(1)(xi) of the Japan Trademark Law by citing TM Reg no. 5127816 “BAMBI” on October 14, 2021.

Langley filed an appeal against the refusal on January 19, 2022, and argued the dissimilarity of mark between “BAMBI” and “BAMBI MAMA&BABY”.

JPO Decision

The JPO Appeal Board found the literal elements of “MAMA&BABY” lacks distinctiveness in relation to the applied goods of class 3 because there are plenty of care products for babies and mothers by competitors on which the term “MAMA&BABY” has been used as a descriptive indication. In the meantime, the term “BAMBI”, famous for the Disney film, shall evidently give an impression of source indicator in the mind of relevant consumers.

If so, it is permissible to find the term “BAMBI” as a prominent portion of the applied mark, and thus compare the portion with the earlier mark in assessing the similarity of the mark.

Undoubtedly, the prominent portion of the applied mark is identical to the cited mark “BAMBI” from visual, phonetical, and conceptual points of view.

Being that TM Reg no. 5127816 designates the goods identical to the applied mark, there is no room to argue the dissimilarity of goods.

Based on the foregoing, the Board decided to dismiss the appeal and rejected “BAMBI MAMA&BABY” due to a conflict with the earlier registered mark “BABMI” based on Article 4(1)(xi).

MARC JACOBS Failed Trademark Opposition over J Marc

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The Japan Patent Office (JPO) dismissed trademark opposition filed by Marc Jacobs Trademarks, L.L.C. against TM Reg no. 6462764 for an oval device mark due to dissimilarity to earlier registration for the J Marc logo.

[Opposition case no. 2022-900007, decided on August 24, 2022]

Opposed mark

ORPHE Inc., a Japanese business entity, applied trademark registration for an oval device mark (see below) to be used on goods and services in classes 9, 25, and 42, including computer software, PDAs, and footwear with the JPO on July 14, 2021.

The JPO examiner did not raise any objection in the course of the substantive examination and granted protection on October 19, 2021.

The mark was registered on October 27 and published for opposition on November 16, 2021.

Opposition by Marc Jacobs

On January 12, 2022, Marc Jacobs Trademarks, L.L.C. filed an opposition and alleged the opposed mark shall be canceled in relation to the designated goods of classes 9 and 25 in contravention of Article 4(1)(xi) of the Japan Trademark Law by citing IR no. 1282779 for the J Marc logo (see below), effectively registered on classes 3, 9, 14, 18 and 25 in Japan since 2017.

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.

Marc Jacobs argued both marks share the overall appearance consisting of two letters, “J” and “J”, combined in a way that constitutes an oval. A mere difference of direction (vertical or horizontal) would be anything but significant in assessing the similarity of marks because consumers would not consider the horizontal direction of the J Marc logo as a material factor to indicate the source. By taking into account of close resemblance in appearance and the same sound of “JJ”, the opposed mark shall be deemed similar to the J Marc.

JPO decision

The JPO Appeal Board stated both marks are sufficiently distinguishable for three reasons.

  1. The opposed mark has an impression of a rounded oval because of smoothly curved portions and shorter straight portions. On the other hand, the cited mark gives rise to an impression of a thin oval because of steeply curved portions and longer straight portions.
  2. Encircled blank of the cited mark also looks narrow due to an equal width with the surrounding oval lines. In the meantime, encircled blank of the opposed mark looks wider by virtue of the narrower width of an oval line.
  3. The cutout portion of the opposed mark gives the impression that the entire oval line is cut diagonally. The cited mark would never give such an impression to relevant consumers.

Taking into consideration the above findings, the Board had a reason to believe that relevant consumers are unlikely to consider, contrary to the opponent’s allegations, that both marks consist of two letters “J” and “J”. A mere coincidence of oval configuration is insufficient to find both marks similar in view of the remarkable distinctions of respective marks mentioned above.

Based on the foregoing, the Board concluded the opposed mark shall not be deemed similar to the J Marc logo and decided to dismiss the opposition entirely.

Trademark dispute: LAPPI vs LAPPY

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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.