カテゴリー: Composite mark

Trademark case: Wilson vs Werwilson

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The Japan Patent Office (JPO) dismissed an opposition filed by Wilson Sporting Goods Company against TM Reg no. 6520718 for the mark “Werwilson” with a device in class 25 by finding less likelihood of confusion with “Wilson”, the iconic American sporting goods brand when used on goods in class 25.

[Opposition case no. 2022-900124, decided on March 29, 2023]

Opposed mark

The opposed mark, consisting of two literal elements “Wer”, “wilson” and encircled “w” device placed in between them (see below), was sought registration by a Chinese company for use on apparel, footwear, and sports shoes in class 25 with the JPO on July 9, 2021.

The JPO granted protection of the opposed mark and registered on March 1, 2022, and published it for a post-grant opposition on March 9, 2022.

Opposition by Wilson

On March 28, 2022, Wilson Sporting Goods Company, originally known as the Ashland Manufacturing Company, created in 1913 in Chicago (US), a subsidiary of Amer Sports Corporation, opposed registration and claimed the opposed mark is confusingly similar to earlier registrations for their iconic mark “Wilson” (see below) and thus shall be canceled in contravention of Article 4(1)(xi), (xv) and (xix) of the Japan Trademark Law.

Wilson argued that visually the opposed mark can be conceived of as “We’re Wilson”. By virtue of a high level of brand recognition of “Wilson”, the opposed mark would give rise to a pronunciation and meaning of “Wilson” from its prominent portion. Given a close association of goods and consumers between the opposed mark and Wilson, relevant consumers are likely to confuse a source of the goods in question bearing the opposed mark with Wilson or another entity economically or systematically connected with the opponent.

JPO decision

The JPO Opposition Board admitted the famousness of the “Wilson” mark as a source indicator of the opponent in connection with tennis and sporting goods among relevant consumers in Japan.

However, the Board found that the opposed mark would not be conceived of as “We’re Wilson” from its configuration. Besides, the opposed mark does not give rise to the pronunciation and meaning of “Wilson” as a whole or in part.

If so, both marks are dissimilar from visual, phonetical, and conceptual points of view.

In view of the low degree of similarity of the marks, the Board has a reason to believe that relevant consumers with ordinary care are unlikely to confuse the source of goods in question using the opposed mark with Wilson.

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

Johnson’s baby vs. JOHANSON bebis

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The Japan Patent Office (JPO) did not side with Johnson & Johnson in trademark opposition who sought cancellation of TM Reg no. 6559102 for the “JOHANSON bebis” mark due to similarity to or likelihood of confusion with “Johnson’s baby”.

[Opposition case no. 2022-900314, decided on February 22, 2023]

JOHANSON bebis

JOHANSON LIFE Co., Ltd., a Korean company, filed the “JOHANSON bebis” mark (see below) for use on babies’ bottles and nasal aspirators in class 10 with the JPO on June 28, 2021.

Apparently, the company promotes babies’ bottles bearing the applied mark.

The mark was registered by the JPO on May 20, 2022, and published for opposition on May 30, 2022.

Johnson’s baby

Johnson & Johnson, one of the oldest pharmaceutical companies in the US, has owned TM Reg no. 4032368 for the stylized word mark “Johnson’s baby” (see below) on baby bottles, nursing bottles, teats, feeding cups, and cotton swabs in class 10 since 1997.

Johnson & Johnson filed an opposition against the “JOHANSON bebis” mark on August 1, 2022, and argued the opposed mark shall be canceled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law due to visual and phonetical similarity and the likelihood of confusion between “JOHANSON bebis” and “Johnson’s baby” that has been famous for skin care products for baby when used on designated goods in class 10.

JPO Decision

The Opposition Board pointed out the produced evidence shows substantial use of the “Johnson’s” mark, however, none of them demonstrate actual use of the cited mark. If so, the Board has no reason to believe the cited mark has been well-recognized among relevant consumers in Japan.

As for the similarity of the mark, the Board found there is no risk of confusion between the opposed mark and the cited mark in appearance by means of the presence or absence of the device, and difference in the arrangement, composition, and number of alphabets.

Comparing the sound of “Johanson bebis” with “Johnson’s baby”, they are clearly distinguishable due to their different sound structures, and there is no risk of confusion in sound.  Besides, while the opposed mark does not have any specific concept, the cited mark gives rise to the meaning of “Johnson’s baby,” so there is no likelihood of confusion between the marks in the concept. If so, the opposed mark shall be dissimilar to the cited mark from visual, phonetical, and conceptual points of view.

Assuming that the cited mark has not been widely recognized as a source indicator of Johnson & Johnson and has a low degree of similarity to the opposed mark, it is unlikely that relevant consumers would confuse a source of goods in question bearing the opposed mark with Johnson & Johnson.

Based on the foregoing, the Board decided to dismiss the entire allegations and found the opposed mark shall not be canceled in contravention of Article 4(1)(xi) and (xv) in relation to the cited mark.

TM Race: Which is Registrable, “Virtual Marathon” or “Virtual Tokyo Marathon”?

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In a recent administrative decision, the Japan Patent Office (JPO) found the word mark “Virtual Marathon” lacks distinctiveness in relation to marathon races of class 41 although the JPO admitted registration of the word mark “Virtual Tokyo Marathon” in the same class.

[Appeal case no. 2022-001910, Decision date: December 12, 2022]

Virtual Marathon

During the COVID-19 pandemic when large gathering in person is not possible, many major running decided to go virtual around the globe.

On March 30, 2020, R-bies Co., Ltd., a Japanese company managing sports events and sports media, filed a word mark “Virtual Marathon” written in Japanese Katakana characters (see below) for use on various goods and services including marathon races in classes 9, 41, and 42.

Virtual Tokyo Marathon

Three months later, Tokyo Marathon Foundation filed a trademark application for the word mark “Virtual Tokyo Marathon” in standard character on various goods and services in classes 9, 35, 36, 38, 41, 42, and 45.

The JPO did not raise any objection to the Virtual Tokyo Marathon mark and granted protection on June 21, 2021.

Examiner’s Refusal

In the meantime, on April 7, 2021, the JPO examiner raised her objection to the Virtual Marathon mark due to a lack of inherent distinctiveness in relation to sports events and marathon races of class 41 by stating that the term “virtual marathon” is commonly used to indicate an organized event where participants run a full marathon in an individual place of their choice during a specific date range tracked on an app on their smartphones. If so, the mark “Virtual Marathon” shall not meet the requirements of Article 3(1)(iii) of the Japan Trademark Law. The applicant filed a written response and argued the distinctiveness of the mark, however, the examiner did not withdraw her objection and decided to reject the entire application on November 8, 2021.

R-bies Co., Ltd. filed an appeal to the refusal on February 8, 2022, and argued the inherent distinctiveness of the Virtual Marathon mark by citing a junior trademark application for the “Virtual Tokyo Marathon” mark that was considered distinctive in relation to the same goods and services (TM Reg no. 6420795).

JPO decision

The JPO Appeal Board affirmed the examiner’s findings by citing a lot of web articles pertinent to virtual marathon races organized in Japan.

Under the circumstance, the Board has a reason to believe that relevant consumers at the sight of the Virtual Marathon mark are likely to conceive of online footrace in which each participant goes out and runs the full marathon in their own time, not as a source indicator of sports event managed by R-bies Co., Ltd. or other specific entity.

Based on the foregoing, the Appeal Board upheld the examiner’s refusal and decided to reject the word mark “Virtual Marathon” in contravention of Article 3(1)(iii).

As a matter of interpretation of the Trademark Law, provided that “Virtual Marathon” is to be rejected under Article 3(1)(iii), “Virtual Tokyo Marathon” shall be rejected on the same ground as well unless Tokyo Marathon Foundation demonstrates acquired distinctiveness of the mark as a result of substantial use. I believe it is impossible because the Tokyo Marathon was never virtually started before registration.

Trademark dispute: “Swan Angel” vs “ANGEL SWAN”

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In a recent decision, the Japan Patent Office (JPO) declared invalidation of TM Reg no. 5947687 for the word mark “Swan Angel” in class 41 due to a similarity to “ANGEL SWAN”.

[Invalidation case no. 2022-890031, Decision date: December 1, 2022]

Swan Angel

Disputed mark, consisting of the wordmark “Swan Angel” in standard character, was filed for use on various services including ballet school in class 41 with the JPO by a Japanese individual on October 5, 2016, and registered on May 19, 2017 (TM Reg no. 5947687).

Invalidation petition

On May 10, 2022, just before the lapse of a five-year statute of limitations, an owner of earlier TM Reg no. 5509646 for wordmark “ANGEL SWAN” in standard character filed a petition for invalidation against the disputed mark.

The owner argued disputed mark shall be invalidated in contravention of Article 4(1)(xi) of the Japan Trademark Law by stating “Swan Angel” is confusingly similar to “ANGEL SWAN” and ballet school and other services pertinent to ballet is deemed similar to the service in class 41 designated under the earlier mark since it also relates to ballet.

JPO decision

In an assessment of the similarity of marks, the JPO Invalidation Board stated:

Both the disputed mark and the cited mark consist of the two English words, “Swan” and “Angel”, commonly known among general consumers in Japan and it is reasonable to assume that relevant traders and consumers at the sight of both marks will see the words being placed in reverse order.

Even if there is a difference in the order of two words between the marks, the Board has no reason to believe the difference gives rise to any distinct meaning as a whole.

If so, relevant traders and consumers are likely to recognize the respective marks as a combination of “swan” and “angel” in sound and concept irrespective of the reversed order.

In this respect, both marks look similar in appearance because of the same words, font, and alphabet.

Based on the foregoing, the Board found the disputed mark “Swan Angel” is confusingly similar to the cited mark “ANGEL SWAN” from visual, phonetical, and conceptual points of view.

Taking account of another factor that respective services pertinent to ballet are deemed identical or similar as well, the Board concluded the disputed mark shall be retroactively invalidated in contravention of Article 4(1)(xi).

A trademark dispute over ZOO

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In a recent administrative decision, the Japan Patent Office (JPO) found TM Reg no. 6246792 shall not be invalidated in contravention of Article 4(1)(xi) of the Japan Trademark Law because of dissimilarity to earlier TM Reg no. 6139339 for mark “ZOO”.

[Invalidation case no. 2021-890029, decision date: November 1, 2022]

TM Reg no. 6246792

The disputed mark consists of literal elements, “SERIES” and “70th Anniversary Premium Brand”, and figurative element that looks like “ZOO” or “700” (see below).

The mark was filed for use on flour and other foods in class 30 in the name of ODAZO SEIFUN Co., Ltd. on March 15, 2019.

According to the applicant’s website, the company uses the mark on a series of high-quality wheat flour and clearly calls it “ZOO”.

The JPO granted registration of the mark on April 20, 2020.

TM Reg no. 6139339

The opponent has owned earlier TM Reg no. 6139339 for the mark “ZOO” in three colors (see below) in classes 29, 30, and 41 since April 19, 2019.

On June 28, 2021, the opponent filed an invalidation action and argued that the disputed mark shall be invalidation due to its close resemblance to the earlier trademark “ZOO” in contravention of 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 opponent alleged that the disputed mark obviously gives rise to the same pronunciation and sound as the earlier mark from its configuration. If so, both marks shall be considered confusingly similar when used on goods in class 30.

JPO decision

Astonishingly, the JPO Invalidation Board found both marks are dissimilar from visual, phonetical, and conceptual points of view by stating;

In assessing the similarity between the disputed mark and the cited mark, both marks are clearly distinguishable from overall appearance, as there is a clear difference between the three tiers/one tier, literal elements and color, even if some components are colored in red.

In addition, the figurative element of the disputed mark is recognizable as a geometric figure. Meanwhile, the cited mark consists of the word “ZOO”. Therefore, the disputed mark does not give rise to a sound of “ZOO”, but “Series Seventies Anniversary Premium Brand,” “Series,” and “Seventies Anniversary Premium Brand”. It is obvious that both marks are unlikely to cause confusion in sound.

Assuming that the figurative elements of the disputed mark does not give rise to any specific meaning, there is no reason to find similarity in concept between the disputed mark and the cited mark in its entirety.

Therefore, the disputed mark is considered dissimilar to the cited mark in terms of the impressions, memories, associations that they give to traders and consumers through appearance, sound and concept.

Based on the foregoing, the Board held the disputed mark shall not be invalidated under Article 4(1)(xi) of the Japan Trademark Law even if the goods in question are identical or similar to the designated goods of the cited mark, and dismissed the entire allegations.

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.

How to prevent registration of your business name by others

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On September 29, 2022, the Japan Patent Office (JPO) dismissed an opposition filed by Karsten Manufacturing Corporation, a manufacturer of golf equipment known as “PING”, against TM Reg no. 6465154 for wordmark “PingCAP” in classes 9, 35 and 42.

[Opposition case no. 2022-900019]

PingCAP

The opposed mark, consisting of the wordmark “PingCAP” in standard character, was filed by Beijing PingCAP Xingchen Technology and Development Co., Ltd., for use on computer programs and computer-related goods and services in classes 9, 35, and 42 on December 7, 2020 (TM App no. 2020-150919).

The JPO examiner granted protection on October 25, 2021, and published for opposition on November 2, 2021.

Opposition by PING

Karsten Manufacturing Corporation, doing business as Ping, Inc., a manufacturer of golf equipment, better known as “PING” filed an opposition against “PingCAP” on January 21, 2022, and disputed, among other things, the opposed mark shall be canceled in contravention of Article 4(1)(viii) of the Japan Trademark Law.

Article 4(1)(viii) is a provision to prohibit the registration of trademarks that contain the representation or name of any person, famous pseudonym, professional name, or pen name of another person, or famous abbreviation thereof.

Karsten argued the term “PING” has been a famous abbreviation of Ping, Inc. (US subsidiary), or Ping Golf Japan Co., Ltd. (a Japanese subsidiary) in view of the substantial reputation of the golf brand “PING”.

The article does not require the famousness of the ‘name of any person where a trademark fully contains a business legal name. In other words, any mark containing a full name or business legal name shall be rejected under the article without the consent of the such person or business entity.

In the meantime, where the mark does not contain a full business name, but a part of the business legal name, the article is applicable only where the business entity can prove the famousness of the literal elements contained in the trademark filed by others.

JPO Decision

The JPO Opposition Board found that, from the totality of the produced evidence, it is unobvious that the cited mark “PING” has become famous as an abbreviation of Ping, Inc. or Ping Golf Japan Co., Ltd, and decided the opposed mark shall not be subject to Article 4(1)(viii).

As mentioned above, the Japan Trademark Law prohibits the registration of a trademark that contains a full business name without the consent of the business entity even though the name has not become famous.

Where a trademark just contains a portion of a business legal name, it is prohibited only where the portion has become famous to indicate the entity.