カテゴリー: Composite mark

Canada Goose Failed Trademark Opposition Over Roundel Logo

Posted on

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

Posted on

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.

COCOGOLF vs COCO

Posted on

On February 28, 2022, the Appeal Board of Japan Patent Office (JPO) reversed the examiner’s rejection and decided to register the applied mark “COCOGOLF” in classes 25 and 28 by finding dissimilarity to Chanel’s earlier registration for the mark “COCO.”

COCOGOLF

The applied mark consists of the word “COCOGOLF” (see below).

Applicant, E-COME GROUP Co., Ltd., filed it for use on various goods in classes 18, 25, and 28 on November 27, 2022. [TM Application no. 2020-146448]

Confronting office action from the JPO, the applicant divided the application and filed a new trademark application on goods of ‘sports shoes; sportswear’ in class 25 and ‘golf bags; golf equipment in class 28 on July 2, 2021. [TM Application no. 2021-82743]

The JPO examiner rejected the mark in contravention of Article 4(1)(xi) of the Japan Trademark Law on October 12, 2021.

The examiner cited earlier trademark registration nos. #6169514 (cl. 25, 35) and IR699469 (cl. 25) for the wordmark “COCO” owned by Chanel SARL, and found the applied mark “COCOGOLF” is confusingly similar to the cited mark “COCO” when used on the designated goods in class 25 and 28.

The applicant filed an appeal against the rejection on November 17, 2021, and argued for the dissimilarity in the marks.

JPO Decision

The Appeal Board found the applied mark shall be assessed in its entirety by stating:

  1. Visually, there is no reason to consider the term “COCO” as a prominent portion of the applied mark because of its configuration.
  2. The applied mark gives rise to the pronunciation of ‘coco-golf’. The whole sound can be pronounced easily in a breach.
  3. The Board has no reason to believe the term “GOLF” perse has been used to represent specific goods in relation to the goods in question.
  4. If so, relevant consumers at the sight of sports shoes, sportswear, golf bags, and golf equipment bearing the applied mark would see it as a whole, and are unlikely to consider the term “COCO” as a prominent source indicator of the applied mark.

Based on the foregoing, the Board found the examiner erred in finding “COCO” to be separable from “GOLF.” Consequently, the Board held the applied mark is dissimilar to the mark “COCO” and granted “COCOGOLF” registration.

[Appeal case no. 2021-15790]

Fighting Over ZOOM ROOMS

Posted on

In a recent decision, the Opposition Board of Japan Patent Office (JPO) sided with Zoom Video Communications Inc. and dismissed an opposition against their Japanese TM Reg no. 6377998 for the mark “zoom rooms” by finding dissimilarity to earlier trademark “ZOOM.”

[Opposition case no. 2021-900267]

ZOOM

Undoubtedly, with millions of people being forced to stay home to help stop the spread of COVID-19, Zoom, one of the dozens of video conferencing services launched in 2011, has risen to the top, thanks to intense separation measures and a profound resonance within this new social distancing culture.

When it comes to trademark, the mark “ZOOM” has been registered in Japan over goods of classes 9 and 15 by Zoom Co., Ltd., a Japanese business entity producing recording devices, multi-effects processors, effects pedals, digital mixers, and samplers since 1992.

ZOOM ROOMS

Zoom Video Communications Inc. filed a trademark application for the mark “zoom rooms” (see below) for use on various goods and services in classes 9, 38, and 42 on May 28, 2020.

The mark was granted registration on April 15, 2021, and published for opposition on May 11, 2021.

On July 9, 2021, before the lapse of a statutory period of two months counting from the publication date, Zoom Co., Ltd. filed an opposition. The opponent argued the opposed mark shall be canceled in contravention of Article 4(1)(xi) of the Japan Trademark Law by citing their owned senior registration for the mark “ZOOM” (see below).

JPO Decision

The Opposition Board found the opposed mark gives rise to a pronunciation of ‘zuːm-ruːm’, but no specific meaning. In the meantime, the opponent’s mark gives 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. From the appearance, it is unlikely that relevant consumers confuse both marks because of the severe difference in letters and configuration. Phonetically, the consumers with ordinary care can easily distinguish ‘zuːm-ruːm’ from ‘zuːm’. Conceptually, the Board has a reason to believe the opposed mark is dissimilar to the mark “ZOOM” since it does not give rise to any specific meaning at all.

Based on the foregoing, the Board found both marks are unlikely to cause confusion and are deemed dissimilar.

The Board did not agree to consider “zoom” as a prominent portion of the opposed mark by taking into account seven sounds in total and the same font, size, and intervals between respective letters of the opposed mark.

Consequently, the JPO dismissed the opposition entirely and decided the validity of the opposed mark as the status quo.

Lacoste Prevails in Trademark Parody Case

Posted on

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).

DIOR Failed to Cancel Trademark “DIORLV”

Posted on

The Japan Patent Office (JPO) did not side with Christian Dior Couture in a trademark opposition against TM Reg no. 6305075 for word mark “DIORLV” in class 25 by finding dissimilarity and unlikelihood of confusion with a world-renowned fashion brand “Dior”.

[Opposition case no. 2020-900352, Gazette issued date: November 26, 2021]

“DIORLV”

The opposed mark, “DIORLV” in standard character, was sought for registration by a Chinese individual to be used on underwear, coats, pajamas, swimsuits, raincoats, footwear, caps and hats, gloves, trousers, skirts, yoga shirts, yoga pants in class 25 on December 25, 2019.

The JPO examiner granted protection of the opposed mark on October 13, 2020, and published for opposition on November 4, 2020.

Opposition by Christian Dior

To contend registration within a statutory period of two months counting from the publication date, Christian Dior Couture filed an opposition on December 25, 2020.

In the opposition, Christian Dior asserted the opposed mark shall be canceled in contravention of Article 4(1)(viii), (xi), (xv), (xix) of the Japan Trademark Law on the grounds that the opposed “DIORLV” mark contains the term “Dior”, an abbreviation of a world-renowned fashion brand “Christian Dior” and the opponent. Besides, the opposed mark will be perceived as a combination of abbreviation of two famous brands, “Christian Dior” and “Louis Vuitton.” If so, it is reasonable to consider the term “DIOR” as a prominent portion of the opposed mark that gives rise to the same sound and concept with the senior registered mark “Dior” owned by the opponent.

JPO decision

The Opposition Board of JPO admitted a substantial degree of reputation and popularity of “Dior” as an abbreviation of “Christian Dior” and the opponent in relation to fashion items, e.g., women’s dresses, bags, shoes, jewelry, glasses, watches, fountain pens, lighters.

In the meantime, the Board did not find the term “DIOR” as a prominent portion of the opposed mark. Based on the overall assessment of similarity, the Board held both marks dissimilarity by stating that:

  1. From appearance and pronunciation, “DIORLV” and “Dior” look sufficiently different with or without “LV” in the suffix position.
  2. Both marks are distinguishable in concept since “DIORLV” does not give rise to any specific meaning. “Dior” has a meaning of world-renowned fashion brand “Christian Dior.”

Given a low degree of similarity of the marks, it is unlikely that relevant consumers would recognize a source of goods in question bearing the opposed mark from Christian Dior Couture or any entity systematically or economically connected with the opponent.

Furthermore, the Board has no reason to believe the term “DIOR” of the opposed mark is separable from the term “LV” and independently plays a role in the source indicator. Accordingly, the opposed mark shall not be construed to contain a famous abbreviation of the opponent.

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

TM Opposition: Claude Monet vs Monet Design

Posted on

The Japan Patent Office (JPO) sided with ACADEMIE DES BEAUX-ARTS, an owner of Musée Marmottan Monet, and decided to cancel Japanese TM Registration no. 6245564 for a composite mark containing literal elements “Monet Design” in contravention of Article 4(1)(vii) of the Japan Trademark Law.

[Opposition case no. 2020-900171, Gazette issued date: October 29, 2021]

TM Reg no. 6245564

The opposed mark (see below) was sought for registration by a Japanese individual on various goods and services in class 16, 20, 25, 27, 35, 41, 42, and 45 on February 1, 2019.

The JPO granted protection on March 27, 2020, and published for opposition on May 12, 2020.

Opposition by ACADEMIE DES BEAUX ARTS

On July 10, 20210, before the lapse of a statutory period of two months counting from the publication date, ACADEMIE DES BEAUX-ARTS, an owner of Musée Marmottan Monet, filed an opposition. The opponent argued the opposed mark shall be canceled in contravention of Article 4(1)(vii) of the Japan Trademark Law by citing IR 958197 for the wordmark “CLAUDE MONET” (see below).

Article 4(1)(vii) of the Trademark Law prohibits any mark likely to cause damage to the social and public interest and disrupt the order of fair competition from registration. Trademark Examination Guidelines set forth any sign created after “the Name of a Historical Person or Name of a Well-Known or Famous Deceased Person” shall be objectionable under the article.

TEG provides six factors to apply the article.

  1. Popularity of the well-known or famous historical person;
  2. Acceptance of the name of the historical person among the nation or region;
  3. Availability of the name of the historical person;
  4. Relationship between the availability of the name of the historical person and the designated goods or services;
  5. Circumstance, purpose, or reason of the application; and
  6. Relationship between the historical person and the applicant.

JPO Decision

The JPO Opposition Board found the late Claude Monet has been a world-famous French painter known even among the general public in Japan. There is no doubt that the public at the sight of the word “Monet” would conceive the painter. Because of it, “Monet” has been highly recognized as an abbreviation of the late Claude Monet.

Besides, it is certain that the opponent inherits the property and paintings of Claudia Monet. In view of activities of the opponent as a public organization to exhibit, manage, and promote the paintings in France as well as other countries, the word “Monet” has not only played a significant role in the business field of sightseeing and art but also acquired substantial value as public property of France.

As for the opposed mark, the Board does not find a reason to believe that the word “Monet” inseparably combines with other elements. If so, relevant consumers are likely to consider the word “Monet” as a prominent portion of the opposed mark.

Based on the foregoing, the Board decided to cancel the opposed mark in contravention of Article 4(1)(vii).

Failed trademark opposition by Disney over a 3-circle silhouette

Posted on

In a recent decision, the Japan Patent Office (JPO) dismissed an opposition filed by Disney Enterprises, Inc. against TM Reg no. 6303837 for a composite mark containing a three-round device due to a low degree of similarity to famous Mickey’s 3-circle silhouette.

[Opposition case no. 2021-900006, Gazette issued date: September 24, 2021]

Opposed mark

Aoki shofuan Co., Ltd., a Japanese confectionery maker, applied a composite mark consisting of words “TSUKIGESHO”, “FACTORY”, its Japanese language and a three-round device (see below) for use on retail or wholesales service in relation to confectionery, processed foods and beverage (tea, coffee, cocoa) in class 35 with the JPO on October 21, 2019.

The JPO examiner granted protection of the opposed mark on September 23, 2020, and published for opposition on November 4, 2020.

Opposition by Disney

To oppose against registration within a statutory period of two months counting from the publication date, Disney Enterprises, Inc. filed an opposition against the opposed mark on January 4, 2021.

Disney argued the opposed mark shall be canceled in contravention of Article 4(1)(x), (xi), (xv), and (xix) of the Trademark Law because of the remarkable reputation and popularity of Mickey’s 3-circle silhouette (see below) as a source indicator of Disney and a high degree of similarity between the opposed mark and the opponent’s famous mark.

JPO decision

The JPO Opposition Board did not question the famousness of Mickey’s 30-circle silhouette as a source indicator of Disney and their business since most consumers would conceive a world-famous iconic character “Mickey Mouse” at the sight of the silhouette.

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

  1. From appearance, both marks are easily distinguishable because the opposed mark contains distinctive literal elements “TSUKIGESHO” and its Japanese language written in a conspicuous manner, and the figurative element (three round silhouette) is depicted upside down.
  2. Phonetically, both marks are quite dissimilar because the opponent mark does not give rise to a pronunciation contrary to the opposed mark.
  3. Conceptually, although the opposed mark does not give rise to any specific meaning, both marks are dissimilar given the opponent mark is well-known for an indication of Mickey Mouse.
  4. In view of different configuration of the figurative element by depicting three circles upside down, relevant consumers are unlikely to associate the three-round device of the opposed mark with Mickey Mouse. If so, the figurative element would not be considered as a prominent portion to play a source indicator of the opposed mark.

Based on the foregoing, the JPO found both marks are too dissimilar to cause a likelihood of confusion. If so, the Board can’t find reasonable grounds to believe the opposed mark shall be canceled under Article 4(1)(x), (xi), (xv), and (xix) and decided to dismiss the opposition.

Isn’t it MIRACLE?

Posted on

In recent administrative decision, the Japan Patent Office (JPO) decided TM Reg no. 6253344 for wordmark “Miracle Volume” is dissimilar to senior registered mark “MIRACLESUIT” and “MIRACLEBODY” and dismissed an opposition claimed by A&H Sportswear Co., Inc., the owner of senior marks.

[Opposition case no. 2020-900196, Gazette issued date: August 27, 2021]

Miracle Volume

Opposed mark, consisting of the word “Miracle Volume” in standard character, was filed by a Chinese company for use on clothing, footwear, headgear as well as swimsuits in class 25 with the JPO on June 4, 2019 (TM Application no. 2019-77831).

The JPO admitted registration on May 12, 2020 and published for opposition on July 9, 2020.

Opposition by A&H Sportswear

A&H Sportswear Co., Ltd. filed an opposition on August 11, 2020, and argued the opposed mark “Miracle Volume” shall be cancelled in contravention of Article 4(1)(xi) of the Japan Trademark Law since the opposed mark is similar to its owned senior marks, “MIRACLESUIT” and “MIRACLEBODY”.

Allegedly, the word “Volume” has a low degree of distinctiveness since it just implies the goods in question voluminous. If so, a prominent portion of the opposed mark shall be undoubtedly “Miracle”.

Senior TM Reg no. 4789644 for wordmark “MIRACLESUIT” in class 25, consists of two words, “MIRACLE” and “SUIT”. It is obvious that the word “SUIT” lacks distinctiveness in relation to the goods in questions since it means ‘a set of clothes or a piece of clothing to be worn in a particular situation or while doing a particular activity’. Consequently, a prominent portion of “MIRACLESUIT” shall be “MIRACLE”.

TM Reg no. 5121472 for wordmark “MIRACLEBODY” in class 25, also consists of two words, “MIRACLE” and “BODY”. The word “BODY” has a low degree of distinctiveness in relation to the goods in question since it suggests the goods bearing the mark for consumers to put on. If so, likewise, a prominent portion of “MIRACLEBODY” shall be “MIRACLE”.

In so far as relevant consumers conceive of the literal element of “MIRACLE” as a prominent portion on both marks, they shall be confusingly similar accordingly, A&H Sportswear alleged.

JPO decision

The Opposition Board did not find a reasonable ground to believe that the consumers consider the word “Miracle” as a prominent portion of the opposed mark from visual and phonetical points of view. Besides, the word “Volume” per se would not entirely be descriptive in relation to apparels. If so, the opposed mark shall be taken for a coined word in its entirety.

Similarly, from visual, phonetical and conceptual points of view, the cited marks, “MIRACLESUIT” and “MIRACLEBODY”, shall be taken for a coined word in its entirety.

In assessing similarity of mark, the Board opined that the opposed mark “Miracle Volume” and the cited marks are sufficiently distinguishable because of difference arising from the word “Volume”, “SUIT”, and “BODY”.

Even if the goods in question are deemed similar to that of the cited marks, severe distinction in appearance and sound would be unlikely to cause confusion among relevant consumers.

Based on the foregoing, the Board did not side with A&H Sportswear and dismissed the opposition totally.

BEYOND MEAT defeats “Beyond Meat Burger”

Posted on

The Japan Patent Office (JPO) sided with Beyond Meat Inc. and canceled TM Reg no. 6197193 for wordmark “Beyond Meat Burger” by free-riding on the business reputation of “BEYOND MEAT”.

[Opposition case no. 2020-900023, Gazette issued date: July 30, 2021]

Beyond Meat Burger

Opposed mark, consisting of a wordmark “Beyond Meat Burger” written in a Japanese katakana character (see below), was filed by a Japanese individual on July 23, 2018, for use on ‘meat products’ in class 29 and ‘clothing’ in class 25.

Subsequently, the applicant deleted the designated goods in class 29.

The mark was registered on November 15, 2019, and published for opposition on December 10, 2019.

BEYOND MEAT

Beyond Meat Inc., a US food processing company that specializes in providing plant-based meat, filed an opposition against the “Beyond Meat Burger” mark with the JPO on January 24, 2020, before the lapse of a two-month statutory period for the opposition.

In the opposition brief, Beyond Meat argued the opposed mark shall be canceled in contravention of Article 4(1)(xix) of the Japan Trademark Law.

Article 4(1)(xix) prohibits registering a trademark that is identical with, or similar to, another entity’s famous mark, if such trademark is aimed for unfair purposes, e.g. gaining unfair profits, or causing damage to the entity.

It is interpreted that the “famous mark” under the article does not require a high reputation among Japanese consumers. If domestic consumers recognize such a reputation in foreign countries, it will suffice.

Beyond Meat alleged that the “BEYOND MEAT” mark has been well known for plant-based meat substitutes by the opponent to meat distributors as well as US consumers (It should be noted that Beyond Meat has yet to launch the business in Japan as of now). It is obvious that the opposed mark is confusingly similar to “BEYOND MEAT”. Presumably, the opposed party must have filed the opposed mark with a fraudulent intention to prevent registration of the “BEYOND MEAT” mark in Japan and gain unjust enrichment by doing so.

JPO decision

The JPO Opposition Board admitted that the “BEYOND MEAT” mark has acquired a remarkable degree of reputation among US consumers as a source indicator of plant-based meat substitutes by Beyond Meat Inc. even before the application date of the opposed mark

The Board assessed the opposed mark is confusingly similar to “BEYOND MEAT”. Relevant consumers with an ordinary care would see the term “Beyond Meat” as a prominent portion of the opposed mark because the consumers get familiar with the English word “Burger.”

A fact that the opposed party initially designated ‘meat products’ implies the applicant’s intention to use the opposed mark on the goods that are closely associated with meat substitutes. If so, the Board had a reasonable ground to believe the opposed mark was filed with an intention to take advantage of goodwill and business reputation associated with Beyond Meat’s tradename and trademark.

Based on the foregoing, the JPO decided to retroactively cancel the opposed mark “Beyond Meat Burger” in contravention of Article 4(1)(xix).