Trademark dispute over Elk design

In an advisory opinion on trademark dispute over elk design, the Japan Patent Office (JPO) did not side with MOZ Sweden AB.
[Case no. 2023-600017, decide on December 15, 2023]


TM Reg no. 6582775

MOZ Sweden AB, an owner of Japanese trademark registration no. 6582775 for the MOZ mark with its iconic elk design (see below) in relation to electric blankets and other goods of class 11, attempted to stop distribution of wearable electric blankets (“disputed goods”) depicting 20 or 28 elk-motif silhouettes (“disputed design”) on the entire surface by NAKAMURA Co., Ltd.

Allegedly, MOZ sent a C&D letter to NAKAMURA on November 29, 2022 and demanded immediate cease and disposal of the wearable blankets based by claiming trademark infringement. NAKAMURA, for the purpose of settling the dispute, asked the JPO for an advisory opinion on April 14, 2023.

A screen capture from amazon.co.jp

Advisory Opinion Procedure

The Japan Trademark Law has provision for the Japan Patent Office to give advisory opinions about the scope of trademark right upon request under Article 28.

Proceedings of the advisory opinion system are almost the same as invalidation trials. Upon request from either party, the JPO appoints three examiners and orders the opposite party to answer the request in writing. Board seldom holds an oral hearing to investigate the case. In general, all proceedings are based on written statements and documentary evidence.

The advisory opinion by JPO does not have a binding effect, unlike the judicial decision. Accordingly, less than 10 trademark cases have been lodged with the JPO to seek the advisory opinion annually.


JPO Advisory Opinion

The JPO provided its advisory opinion to the case and decided the disputed goods would not be within the scope of right for TM Reg no. 6582775 by stating that:

  1. Unquestionably, the literal portion “MOZ” is dissimilar to the disputed design from visual, aural and conceptual points of view.
  2. Comparing the MOZ elk design with that of the disputed design, even though they share the same “elk” motif, there is a clear difference in the shape of the antlers, the outline of the face, the presence or absence of ears, eyes, and mouth. These differences give rise to a distinctive impression in the mind of viewers. Because of it, two designs are sufficiently distinguishable from appearance.
  3. Being that both “MOZ” and the elk design are respectively dissimilar to the disputed design, there is no reason to believe that the disputed goods shall be within the scope of trademark right and subject to enforcement even if both goods are identical.

Unsuccessful trademark opposition over LXR Hotels & Resorts by Hilton

In a bid to oppose TM Reg nos. 6668894 “LX RESORT” and 6668893 “LX HOTEL”, the Japan Patent Office (JPO) dismissed the oppositions filed by Hilton Worldwide Manage Limited due to dissimilarity to and unlikelihood of confusion with Hilton’s earlier trademark registration for “LXR HOTELS & RESORTS”.

[Opposition case nos. 2023-900082 and 2023-900083, decided on December 1, 2023]

Opposed mark

Hack Japan Holdings Co., Ltd. filed trademark applications for wordmark “LX HOTEL” and “LX RESORT” in standard character over services in classes 35 and 43 including hotel services with the JPO on August 29, 2022.

The JPO granted protection of the opposed marks on February 3, 2023, and published it for post-grant opposition on February 13, 2023.


Opposition by Hilton

Hilton Worldwide Manage Limited filed an opposition on April 12, 2023 just before the lapse of two-month opposition period.

Hilton claimed the opposed marks shall be cancelled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law by citing earlier TM Reg no. 6117133 for wordmark “LXR HOTELS & RESORTS”. Given both “LX” and “LXR” imply a meaning of “luxury”, there is a high degree of similarity in meaning.

By taking into consideration the cited mark “LXR HOTELS & RESORTS” has been recognized among consumers of the Hilton hotels, relevant consumers are likely to confuse a source of hotel in the name of “LX HOTEL” and “LX RESPRT” with Hilton’s luxury hotels when used on the services in question.


JPO decision

The JPO Opposition Board did not admit a high degree of recognition of the Hilton “LXR HOTELS & RESORTS” among relevant consumers in Japan because of insufficient evidence to find such recognition objectively.

The Board found the opposed marks shall be assessed in its entirety and would not give rise to any specific meaning at all. Obviously, there is no similarity in appearance and sound between two marks. The Board has no reason to believe relevant consumers would consider the term “LX” of the opposed marks as an abbreviation of “luxury”. If so, the opposed marks shall be dissimilar to the cited mark “LXR HOTELS & RESORTS”.

In view of a low degree of similarity, it is unlikely that relevant consumers confuse a source of hotel in the name of “LX HOTEL” and “LX RESORT” with the opponent or any business entity systematically or economically connected with Hilton.

Based on the foregoing, the Board found the oppositions groundless and upheld validity of the opposed marks.

French fashion magazine “ELLE” Lost in trademark opposition against “elLle HOTEL”

The Japan Patent Office (JPO) dismissed an opposition filed by HACHETTE FILIPACCHI PRESSE, Société Anonyme (FR) against Japanese TM Reg no. 6681746 for the “elLle HOTEL” mark in class 43 by finding dissimilarity to and less likelihood of confusion with French fashion magazine “ELLE”.
[Opposition case no. 2023-900123, decided on November 29, 2023]


elLle HOTEL

Opposed mark, consisting of a stylized term “elLle” placed above strikethrough word “HOTEL” (see below), was filed on November 25, 2022, for use on hotel and restaurant services in class 43 by Yugen Kaisha Yamaguchi Jitsugo, a Japanese company.

The JPO granted registration of the mark on March 16, 2023, and published it for post-grant opposition on March 27, 2023.

According to the allegations, the applicant newly opened a fashion hotel named “HOTEL elLle” in 2022.

captured from https://www.hotel-ellle.com/

Opposition by ELLE

On May 26, 2023, before the lapse of a two-month opposition period, 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, with culturally specific editions published on six continents in the early 21st century, filed an opposition to the “elLle HOTEL” mark.

In the opposition, HFP contended that the opposed mark shall be canceled in contravention of Article 4(1)(vii), (xi), (xv) and (xix) 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.

HFP argued that the opposed mark is similar to HFP’s earlier registrations for the mark “ELLE” and relevant consumers are likely to confuse or misconceive the opposed mark with HFP or any business entity systematically or economically connected with the opponent due to a remarkable reputation of opponent’s fashion brand “ELLE” and the close resemblance between the opposed mark and “ELLE”.


JPO decision

The Board admitted the “ELLE” mark has become famous among relevant consumers and traders as a source indicator of the opponent in connection with magazines, online magazines as well as fashion and daily items.

In the meantime, the Board questioned whether the mark “ELLE” has acquired a certain recognition in relation to the service in question.

Besides, the Board found the literal portion “elLle” would play a significant role in indicating a source of the opposed mark when used in the services of class 43. However, the Board held the term “elLle” shall be assessed in its entirety, and there is no reason to find relevant consumers consider it as “elle”. If so, the opposed mark is dissimilar to the “ELLE” mark even though respective concept is not to be compared.

Taking into consideration a low degree of similarity between the marks, the Board had no reason to believe that relevant consumers would mistakenly assume the opposed goods originate from the same source as or are associated with, the opponent when used on services in question.

Based on the foregoing, the Board decided to dismiss the opposition entirely.

JPO decision to trademark dissimilarity, Unbelievable or Believable?

On November 9, 2023, the JPO Appeal Board reversed the examiner’s rejection to TM Application no. 2021-98849 for word mark “ADEAM/ICHI” by finding dissimilarity to earlier trademark registrations for word mark “ICHI”.
[Appeal case no. 2022-19409]


Earlier TM registrations “ICHI”

Following trademarks have been effectively registered since 2015 at the latest.

  • TM Reg no. 4736544 (soaps and detergent, incense, cosmetics in class 3)
  • TM Reg no. 5756228 (clothing, waistbands, belts [clothing] in class 25)
  • TM Reg no. 5991461 (bags and pouches, wallets, umbrella, walking sticks in class 18)

Junior mark “ADEAM/ICHI”

On August 6, 2021, FOXY Corporation filed a word mark consisting of “ADEAM” with larger roman-font and “ICHI” with smaller gothic-font in two lines (see below) for use on various goods and services in classes 3,14,16,18,24,25, and 35.

The JPO examiner rejected the applied mark due to a conflict with the earlier TM registrations for the mark “ICHI” owned by other entity based on Article 4(1)(xi) of the Japan Trademark Law on September 6, 2022.

Subsequently, the applicant filed an appeal against the rejection on December 1, 2022 and disputed dissimilarity of mark.


JPO Appeal Board decision

To my surprise, the Appeal Board found the applied mark is dissimilar to the cited marks and decided to cancel the examiner’s rejection by stating that:

Since the term “ICHI” of the applied mark is placed just beneath the term “ADEAM” in the middle about a quarter of the font size, from appearance, the term “ADEAM” occupies a large portion of the applied mark in its entirety. Thus, relevant consumers would have an impression that the term “ADEAMN” is considered as a dominant portion to identify a source of goods and service.

Besides, the term “ADEAM” is apparently a coined word. The term “ICHI” also does not give rise to a clear meaning. Therefore, conceptually there is no particular difference in assessing distinctiveness of respective term.

The Board has no reason to believe that relevant consumers would focus only on the portion “ICHI” of the applied mark as a source indicator by separating the dominant element “ADEAM”.

If so, it shall not be permissible to compare the literal portion “ICHI” of the applied mark with the cited marks.

In this respect, the examiner made an error in applying Article 4(1)(xi).

Based on the foregoing, the Board granted registration of the applied mark

ANYTIME FITNESS Unsuccessful Opposition against “anytime 24” mark in relation to fitness service

On October 17, 2023, the Japan Patent Office (JPO) dismissed an opposition claimed by Anytime Fitness Franchisor LLC against TM Reg no. 6630608 for the mark “anytime 24” in class 41 due to dissimilarity and unlikelihood of confusion with “ANYTIME FITNESS”.

[Opposition case no. 2022-900541]

“anytime 24”

Opposed mark, consisting of “anytime”, “24” and a clock device (see below), was filed by ShinMaywa Industries, Ltd. for use on various services in classes 35, 37, 39 and 41, including sports instruction services; arranging, conducting and organization of seminars relating to sports; production of videotape file in the field of sports; providing electronic publications relating to sports on October 14, 2021.

The JPO granted protection of the “anytime 24” mark on October 19, 2022, and published it for a post-grant opposition on October 31, 2022.


Opposition by ANYTIME FITNESS

Anytime Fitness Franchisor LLC (AFF), an operator of the fastest-growing fitness club “ANYTIME FITNESS” franchise in the world, with more than 4 million members at more than 4,800 gyms on all seven continents, filed an opposition on December 29, 2022.

AFF argued the opposed mark shall be canceled in contravention of Article 4(1)(vii), (viii), (x), (xi), (xv) and (xix) of the Japan Trademark Law on the grounds that “ANYTIME FITNESS” has become famous among relevant consumers as a source indicator of the fitness gym opening 24 hours a day, 365 days a year, and the term “ANYTIME” is a dominant portion of cited mark (TM Reg nos. 5284268 and 5742766) in connection with fitness-related services in class 41. If so, the consumers are likely to confuse the source of the opposed mark with AFF when used on fitness-related services because of close resemblance between the opposed mark and “ANYTIME FITNESS”.


JPO decision

The JPO Opposition Board found the opposed mark, from its configuration, gives rise to a pronunciation and meaning of “anytime” because the digit “24” is inherently descriptive.

In the meantime, the Board held the cited mark has a pronunciation of “ANYTIMIE FITNESS” and does not give rise to any specific meaning as a whole. Even if the word “FITNESS” lacks distinctiveness in relation to fitness-related services, the Board has a reason to believe the cited mark shall be assessed in its entirety by virtue of a tight combination with other elements.

When it comes to compare a dominant portion “anytime” of the opposed mark with “ANYTIME FITNESS”, the consumers are unlikely to confuse the source of two marks from visual, phonetical and conceptual points of view, the Board said.

Based on the foregoing, the JPO concluded dissimilarity of mark and unlikelihood of confusion, and decided to dismiss the opposition entirely.

A trademark dispute over ZOO

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.

ELLE vs Ellenail

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.

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.