Philippe Starck Lost Trademark Dispute over Starck

The Japan Patent Office (JPO) dismissed an opposition claimed by Philippe Starck, a French designer, against TM Reg no. 6487488 for the wordmark “Starck” due to the unlikelihood of confusion when used on management, leasing, rental, purchase, and sale of buildings, and real estate agency services in class 36.

[Opposition case no. 2022-900079, Decision date: December 5, 2022]

Opposed mark

Starck Co., Ltd., a Japanese company, sought trademark registration of the wordmark “starck” in standard character to be used on services related to real estate in class 36 on July 2, 2021.

Without raising any objections in the course of substantive examination, the JPO granted protection of the opposed mark on December 13, 3021, and subsequently published for post-grant opposition on January 13, 2022.


Opposition by Philippe Starck

Philip Starck, a French designer known for his wide range of designs, including everything from interior design to household objects and architecture, filed an opposition with the JPO on March 15, 2022, just before the lapse of a statutory period of two months counting from the publication date.

He argued the opposed mark shall be canceled in contravention of Article 4(1)(xv) and (xix) of the Japan Trademark Law in view of the high reputation of the term “Starch” as an indication of the opponent and close relatedness between the service in question and architectural design service.


JPO decision

The JPO Opposition Board did not admit the famousness of the mark “Starck” as a source indicator of the opponent’s design service from the produced evidence even though the Board found the mark has acquired a certain degree of recognition as a name of designer among relevant consumers.

Besides, the Board considered architectural design services shall be remotely associated with the management, leasing, rental, purchase, and sale of buildings, and real estate agency services in class 36.

If so, irrespective of the identical marks, the Board has no reason to believe relevant consumers would conceive of the opponent at a slight of the service in question using the opposed mark and confuse its source 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.

Failed Opposition by Monster Energy over PREDATOR mark

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

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.

Failed Opposition by Chanel over Monogram

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.

Unsuccessful opposition against LEGOHAIR

On August 3, 2022, the JPO Opposition Board dismissed a trademark opposition filed by toy giant, Lego Juris A/S against TM Reg no. 6445411 for the “Lego Hair” mark with a device in class 44 by finding dissimilarity to and the unlikelihood of confusion with “LEGO”.

[Opposition case no. 2021-900432]


Lego Hair

The opposed mark, consisting of the word “Lego Hair” and a device (see below), was filed by the hair salon provider Lego Hair Co., Ltd., for use in hair styling services, hair treatment salon services, hair coloring services, skin caring, body caring, manicuring, beauty salon services, barbershops, and other related services in class 44 with the JPO on October 26, 2020.

The JPO granted protection of the Logo Hair mark on September 13, 2021, and the mark was published for opposition on October 12, 2021.


Opposition by Lego

LEGO Juris A/S, the world’s largest Danish toy manufacturer, filed an opposition on the final day of a two-month duration for opposition, and argued the Lego Hair mark shall be canceled in contravention of Article 4(1)(viii), (xi), (xv) and (xix) of the Japan Trademark Law by citing earlier TM Reg no. 2621425 and IR 1006003 for the stylized LEGO mark (see below).

LEGO argued that given the word “Hair” is descriptive in relation to the services in question, the term “Lego” shall be a prominent portion of the opposed mark as a source indicator accordingly. In view of the high reputation and popularity of the stylized LEGO mark, relevant consumers are likely to associate the opposed mark with LEGO and confuse the source when used on hair salon services.


JPO decision

The Opposition Board admitted the stylized LEGO mark has acquired a remarkable degree of reputation and popularity as a source indicator of the opponent’s goods and business. In the meantime, the Board questioned whether the term “LEGO” perse has become famous among relevant consumers as well by taking into consideration the produced evidence.

The Board had a view that the literal portion “Lego Hair” of the opposed mark shall be considered in its entirety. Based on the finding, the Board held the opposed mark is dissimilar to the stylized LOGO mark from visual and phonetical points of view. In concept, the stylized LEGO mark gives rise to a meaning of “famous brick- toy brand by LEGO”, but the opposed mark has no specific meaning. If so, both marks are incomparable from the concept.

Because of a low degree of similarity of the mark and less relatedness between toys and hair salon services, the Board has no reason to believe relevant consumers would confuse a source of the services in question bearing the opposed mark with the opponent or any entity systematically or economically connected with LEGO.

Based on the foregoing, the Opposition Board found the opposed mark shall not be canceled in contravention of Article 4(1)(viii), (xi), (xv), and (xix) and decided to remain valid.

LE MANS, Unsuccessful Trademark Race spending more than 24 Hours

On July 29, 2022, the Opposition Board of Japan Patent Office (JPO) dismissed a trademark opposition filed by AUTOMOBILE CLUB DE L’OUEST (A.C.O.), an owner of the mark “LE MANS”, against TM Reg no. 6374059 for wordmark “Le mans de elegance” on apparels in class 25.

[Opposition case no. 2021-900248]


Le mans de elegance

The opposed mark, consisting of the word “Le mans de elegance” in standard character, was applied for use on clothing, garters, sock suspenders, braces [suspenders] for clothing, waistbands, belts [clothing], footwear, masquerade costumes, sports shoes, clothes for sports in class 25 by a Japanese company named Analogue Co., Ltd. on October 15, 2020.

The JPO granted protection on March 12, 2021, and published for opposition on April 27, 2021.


Opposition by ACO

Opponent, AUTOMOBILE CLUB DE L’OUEST, alleged 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 the LE MANS mark in classes 25.

ACO argued that the mark “LE MANS” is famous to indicate the oldest sports car race “24 hours of Le Mans”. Due to the remarkable reputation of the mark “LE MANS” and the descriptive meaning of the term “de elegance” in relation to apparel, relevant consumers would see the literal element “Le mans” as a prominent portion of the opposed mark. If so, both marks shall be deemed similar from phonetical and conceptual points of view. Besides, there are precedent cases in which the JPO admitted close relatedness between automobile races and clothing. Taking into consideration the above facts, it is likely that relevant consumers would confuse the source of goods in question bearing the opposed mark with 24 hours of Le Mans and its organizer, or an entity systematically or economically connected with ACO.


JPO decision

The JPO found “The 24 hours of Le Mans” has been known for a major car race, however, questioned whether the term “LE MANS” has also become famous to indicate the race from the totality of the circumstances and the produced evidence by pointing out a fact that the term “LE MANS” has been frequently used with “24”. Consequently, the Board held the mark “LE MANS” has not acquired a certain degree of reputation and popularity as a source indicator of auto races among relevant consumers in Japan.

The Board assessed the similarity of mark in its entirety and found the opposed mark is dissimilar to the mark “LE MANS” from visual, phonetical, and conceptual points of view by stating that the cited mark gives rise to a meaning of a city in northwestern France.

In view of a low degree of similarity between the marks and recognition of the mark “LE MANS”, the Board has no reason to believe relevant consumers would confuse a source of goods in question bearing the opposed mark with the opponent.

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

GUCCI Unsuccessful in Trademark Opposition

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.

Canada Goose Failed Trademark Opposition Over Roundel Logo

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.

Dropbox Unsuccessful in Trademark Opposition over Open Box Logo

On April 7, 2022, the Opposition Board of the Japan Patent Office (JPO) dismissed a trademark opposition filed by Dropbox, Incorporated against TM Reg no. 6385226 for an open box device mark due to dissimilar to the Dropbox logo.

[Opposition case no. 2021-900281]

TM Reg no. 6385226

The opposed mark, consisting of an open box device mark depicted in a white circle and green outline (see below), was applied with the JPO on April 8, 2020, for use on computer application software; downloadable computer programs; downloadable image files via internet in class 9 and computer software design; computer programming; providing computer programs on data networks; rental of SNS server memory space in class 42 by Jiraffe Inc.

The JPO granted protection on April 6, 2021, and published for opposition on May 25, 2021.


Opposition by Dropbox

Opponent, Dropbox, Incorporated alleged the opposed mark shall be canceled in contravention of Article 4(1)(x), (xi), and (xix) of the Japan Trademark Law by citing earlier trademark registrations for the Dropbox “open box” device in classes 9, 38, and 42.

Dropbox argued, that the basic overall configuration of the open box looks almost identical to the opponent mark. Because of it, both marks give rise to the same sound and concept. Besides, the opponent mark has acquired a certain degree of popularity and reputation as a source indicator of Dropbox. If so, relevant consumers would confuse the source of goods and services bearing the opposed mark with Dropbox due to a high degree of similarity of the marks.


JPO decision

At the outset, the JPO Opposition Board did not admit a substantial degree of reputation and popularity of the opponent mark by stating that sufficient evidence was not produced by the opponent for the Board to convince such reputation.

The Board found both the opposed mark and opponent mark would not give rise to any specific sound and meaning from the overall configuration regardless of finding that the respective box device looks like an “open box”.

In assessing the similarity of the marks, the Board did not directly compare the resemblance between open boxes. Instead, by means of overall comparison, the Board considered both marks are visually distinguishable due to the difference in color and a white circle and green outline. Being that there is no clue to find similarities in sound and concept, the Board has no reason to believe both marks are likely to cause confusion from visual, phonetic, and conceptual points of view.

Based on the foregoing, the JPO found the entire allegations of Dropbox groundless and dismissed the opposition accordingly.

Failed Opposition against “Zara Sube Mist” by ZARA

On March 25, 2022, the Japan Patent Office (JPO) dismissed an opposition filed by Industria de Diseño Textil, SA (INDITEX), owner of the fashion brand “ZARA” against trademark registration no. 6357258 for word mark “Zara Sube Mist” in class 3 by finding dissimilarity to and less likelihood of confusion with “ZARA”.

[Opposition case no. 2021-900193]

Zara Sube Mist

The opposed mark, consisting of three words, “Zara”, “Sube”, and “Mist” in standard character, was applied for registration by IBI Inc. to be used on cosmetics in class 3 on January 30, 2020.

The JPO granted protection on February 16, 2021, and published for opposition on March 23, 2021.

The applicant is using the opposed mark on skin lotions. Click here.

It should be noted “zara zara” is a usual term to represent the condition of ‘rough skin’ in Japanese. Likewise, “sube sube” is often used to represent the condition of ‘smooth skin’. Because of it, we would conceive of skin conditions from the term “Zara Sube.”


Opposition by Inditex

Opponent, INDITEX, one of the world’s largest fashion retailers and owner of the fashion brand “ZARA”, claimed the opposed mark “Zara Sube Mist” shall be canceled in contravention of Article 4(1)(xi), (xv) and (xix) of the Japan Trademark Law by citing earlier IR no. 973064 for word mark “ZARA” in relation with cosmetics of class 3.

INDITEX argued, that given “ZARA” has acquired a remarkable reputation, relevant consumers of the goods in question are likely to see the literal element “Zara” as a prominent portion of the opposed mark and thus confuse or misconceive the opposed mark with “ZARA”.


JPO Decision

The JPO Opposition Board admitted that “ZARA” has become famous among relevant consumers and traders as a source indicator of the opponent in connection with clothing.

In the meantime, the Board questioned if the opponent mark “ZARA” has acquired a certain degree of reputation and popularity in relation to cosmetics from the produced evidence.

The Board found the consumers would see the opposed mark in its entirety due to a tight combination of three words and a non-redundant sound of ‘zara-sube-mist’. Being that “ZARA” failed to prove a certain degree of reputation and popularity as a source indicator of cosmetics, the Board has a reason to believe that relevant consumers would not consider the term “Zara” as a prominent portion of the opposed mark. If so, the opposed mark just gives rise to a pronunciation of ‘zara-sube-mist’ and no specific meaning.

Based on the above findings, the Board held “Zara Sube Mist” and “ZARA” are obviously dissimilar from visual, phonetic, and conceptual points of view.

If so, the opposed mark “Zara Sube Mist” is unlikely to cause confusion with “ZARA” by virtue of a low degree of similarity and remote association between apparel and cosmetics even though “ZARA” has been famous for apparel brand and coined word.

In a conclusion, the JPO dismissed the entire allegations of INDITEX and allowed “Zara Sube Mist” to survive.