カテゴリー: compound mark

Unsuccessful opposition against LEGOHAIR

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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.

No confusion between “InstaShop” and “Instagram”

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On July 27, 2022, the Appeal Board of Japan Patent Office (JPO) disaffirmed the examiner’s rejection and found TM Application no. 2019-152946 for “InstaShop” with device mark is dissimilar and thus unlikely to cause confusion with a famous mark “Insta” known as an abbreviation of “Instagram”.

[Appeal case no. 2021-12444]

InstaShop

The applied mark consists of a red rectangle with rounded corners, a motif depicting a white shopping basket, the term “InstaShop” in white with large font, and “Convenience delivered” in black with a smaller font (see below).

The mark was filed in the name of InstaShop DMCC, a UAE corporation, for use on ‘online ordering services; price comparison services; import-export agency services; compilation of information into computer databases; providing commercial information and advice for consumers in the choice of products and services; retail services and wholesale services for foods and beverages, clothing, footwear, bags, cosmetics, and others in class 35 and ‘car transport; truck transport; packaging of goods; freight brokerage; delivery of goods; warehousing; rental of warehouse space and others’ in class 39 on December 5, 2019.

The JPO examiner rejected the mark due to a likelihood of confusion with the famous mark “Insta”, known as an abbreviation of “Instagram” in connection with application software for posting and sharing images and videos, online social networking services, advertising, and publicity services based on Article 4(1)(xv) of the Japan Trademark Law.

Article 4(1)(xv) is a provision to refrain from registering a junior mark that is likely to cause confusion with other business entities’ well-known goods or services.

The applicant filed an appeal on September 16, 2021, and argued the unlikelihood of confusion with Instagram.

JPO decision

The JPO assessed the term “InstaShop” can be a prominent portion of the applied mark and play a role in source indicator per se, but it shall be dissimilar to the “Insta” mark from visual, phonetical points of view. Even if the concepts are not comparable, by taking into global consideration the impression, memory, and association that respective mark gives to consumers and traders, the Board has a reason to believe that both marks are distinctively dissimilar.

Being that the applied mark contains figurative elements and other words “Convenience delivered”. Due to the difference, the applied mark as a whole has a low degree of similarity to the “Insta” mark.

Besides, the Board does not find the services in question have a close association with goods and services of Instagram in view of purpose, business field.

Even if the “Insta” mark has acquired a certain degree of reputation and popularity mainly among young consumers in their teens and twenties, the Board has no reason to believe relevant consumers are likely to associate and confuse a source of the services in question bearing the applied mark with Instagram because of a low degree of similarity of marks and relatedness with respective goods and services.

Based on the foregoing, the Board decided to disaffirm the examiner’s rejection and grant registration of the applied mark.

Trademark dispute: RIVER vs river

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In a recent decision, the JPO Appeal Board found TM Application no. 2021-5278 for the stylized “river” mark is dissimilar to earlier TM Reg no. 5704488 for the mark “RIVER” with design irrespective of designating the same consulting service in class 35.
[Appeal case no. 2021-17274, decision date: June 22, 2022]

TM Application 2021-5278

The dispute mark consists of the stylized word “river” depicted with the figurative element (see below right). The mark was filed in the name of Cultive, Inc for use in advertising and publicity services, business management analysis, or business consultancy service in class 35 on January 19, 2021.

The JPO examiner rejected the mark due to a conflict with earlier TM Reg no. 5704488 for the mark “RIVER” with a design (see above left) based on Article 4(1)(x) of the Japan Trademark Law.

Article 4(1)(xi) is a provision to refrain from registering a junior mark that is deemed identical with, or similar to, an earlier registered mark.

The applicant filed an appeal on December 15, 2021, and argued dissimilarity of the mark.

JPO decision

Astonishingly, the JPO Appeal Board found “By virtue of figurative elements, the disputed mark as a whole gives rise to an impression of distinctive and unified design that evokes the image of flowing water and green leaves. Furthermore, the color composition also gives the impression that the mark is designed to evoke the image of flowing water and green leaves. If so, even though the mark may give rise to a sound and meaning of “river”, it is reasonable to believe that the source of the services is identified based on the impression created by the distinctive appearance of the mark rather than its sound and concept in the course of transactions.”

Likewise, the Board found “being that the literal portion “RIVER” would not be deemed a prominent portion of the cited mark, even if the cited mark can give rise to a sound and meaning of “RIVER”, it is reasonable to consider that relevant consumers distinguish the source of the services bearing the cited mark by means of overall impression, rather than it’s sound and concept.”

Based on the above findings, the Board concluded “it is obvious that there is a remarkable difference in the appearance of both marks. Even if the disputed mark and the cited mark are both pronounced “RIVER” and mean “river”, the similarity in sound and concept shall not outweigh the distinctiveness caused by a remarkable difference in appearance. Therefore, the disputed mark is unlikely to cause confusion and dissimilar to the cited mark.”

Consequently, the Board decided to disaffirm the examiner’s rejection and grant protection of the disputed mark.

Failed Opposition against “Zara Sube Mist” by ZARA

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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.

Failed trademark opposition by Disney over a 3-circle silhouette

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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.

JPO found Italian word “Panetteria” distinctive in relation to restaurant service

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In a recent administrative decision, the Appeal Board of the Japan Patent Office (JPO) disaffirmed the examiner’s refusal and found “Panetteria ARIETTA” and “ARIETTA” are dissimilar by virtue of distinctiveness of the term “Panetteria.”

[Appeal case no. 2020-9688, Gazette issued date: May 28, 2021]

Panetteria ARIETTA

FOOD ENGINEERING DESIGN INC., a Japanese commercial bakery and restaurant, filed a trademark registration for word mark consisting of the term “Panetteria ARIETTA” in a gothic type and its transliteration written in a Japanese katakana character (see below) for use on confectionery and bread in class 30 and restaurant service in class 43 on January 15, 2019 [TM App no. 2019-8176].

The applicant has used the applied mark as a shop name on bakeries located in Tokyo.

ARIETTA

The JPO examiner raised her objection on the ground that the applied mark is deemed similar to senior trademark registration no. 5106118 for word mark consisting of the term “ARIETTA” and its transliteration written in a Japanese katakana character (see below) on restaurants and other services in class 43.

In the refusal decision dated May 7, 2020, the examiner asserted the term “Panetteria” is an Italian word meaning ‘bakery’ and thus lacks distinctiveness in relation to bread and restaurant service. If so, other term “ARIETTA” of the applied mark would play a dominant role of its source indicator. Accordingly, the examiner rejected the applied mark in contravention of Article 4(1)(xi) of the Japan Trademark Law.

The applicant filed an appeal against the refusal on July 10, 2020.

JPO Appeal Board decision

The Appeal Board questioned whether an Italian word “Panetteria” is commonly used as a descriptive indication in relation to restaurant service in Japan. The Board found the term as well as its meaning is not familiar among the general public. Under the circumstance, the examiner errored in assessing distinctiveness of the word. A mere fact that the term “Panetteria” appears in an Italian language dictionary is insufficient to conclude a portion of the term “ARIETTA” per se plays a role of source indicator of the applied mark.

Provided that relevant consumers would not conceive any specific meaning from the term “Panetteria”, the Board held the applied mark “Panetteria ARIETTA” and cited mark “ARIETTA” are obviously dissimilar as a whole from visual, phonetic, and conceptual points of view.

Based on the foregoing, the JPO Appeal Board disaffirmed the examiner’s rejection and decided to register the applied mark accordingly.

Trademark Similarity: APLAY vs applay

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In a trademark dispute pertinent to the similarity between “APLAY” and “applay”, the Appeal Board of the Japan Patent Office found both marks dissimilar and reversed the examiner’s rejection.
[Appeal case no. 2020-6380, Gazette issued date: April 30, 2021]

APLAY

A senior mark, consisting of the word “APLAY” in standard character, was registered on April 28, 2017 (TM Reg no. 5943175) over computer programs; application software; game programs for home video game machines; electronic circuits, and CD-ROMS recorded with programs for hand-held games with liquid crystal displays; electronic publications; earphones; headphones in class 9, and software as a service [SaaS]; other related computer services in class 42 by Nain Inc.

Apparently, Nain has used “APLAY” on wireless earphones and connect app for android (see below).

applay

Applied junior mark, consisting of the word “applay”, was sought for registration on August 7, 2019, over toys in class 28 [TM application no. 2019-107218] by Ed. Inter Co., Ltd.

The applicant uses the mark on wooden toys for kids (see below).

The JPO examiner rejected “applay” because of similarity to “APLAY” based on Article 4(1)(xi) of the Trademark Law.

Article 4(1)(xi) is a provision to prohibit registering a junior mark that is identical with, or similar to, any senior registered mark.

There is the criterion that the examiner is checking when assessing the similarity between the marks:

  • visual similarity
  • aural similarity
  • conceptual similarity

and taking into account all these three aspects, the examiner would decide if a mark is similar (at least to some extent) to the earlier mark and if there is a likelihood of confusion for the consumers.

Applicant filed an appeal against the rejection on May 12, 2020, and argued dissimilarity of the marks.

Appeal Board decision

In the decision, the Appeal Board held that:

In appearance, there are differences in the third letter ‘p’, and lower case or upper-case letters. These would give rise to a distinctive impression visually in the mind of relevant consumers where the respective mark consists of five or six-letter words, anything but long.

Next, assessing the pronunciation between applied mark [ˈæpleɪ] and the cited mark [əˈpleɪ], the difference in the first sound would be anything but negligible in view of a few phonetic compositions of four sounds in total. Relevant consumers would be unlikely to confuse each sound when pronounced because of phonetical distinction in overall nuance and tone as a whole

Thirdly, the respective mark does not give rise to any specific meaning at all. If so, both marks are incomparable from the concept.

Based on the foregoing, the Board found no reasonable reason to affirm the JPO examiner’s rejection from visual, phonetic, and conceptual points of view as well as consumer perception and decided to reverse the examiner’s rejection.

“MACSELL” for use on PC value estimation service is unlikely to cause confusion with Apple “Mac”

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The Japan Patent Office (JPO) dismissed an opposition claimed by Apple Inc. against trademark registration no. 6223514 for word mark “MACSELL” on used mobile phone, Smartphone, PC and tablet computer value estimation service in class 36 by finding less likelihood of confusion with Apple “Mac” series.
 [Opposition case no. 2020-900114, Gazette issued date: Jan 29, 2021]

MACSELL

Opposed word mark “MACSELL” in standard character was filed on March 22, 2019, for the service of used mobile phone, Smartphone, PC and tablet computer value estimation, and others in class 36. Going through the substantive examination, the JPO admitted registration on February 6, 2020.

Apparently, the opposed mark is used as a tradename of used Mac and Surface recycle shop managed by the applicant.

Capture from “MACSELL” website
Capture from Google “Street View”

Apple’s Opposition

Apple Inc. argued the opposed mark “MACSELL” shall be canceled in violation of Article 4(1)(xv) of the Japan Trademark Law.

“Mac” has become famous as a source indicator of Apple’s PC by virtue of substantial use with various trademarks, e.g. “MacBook Air” and “MacBook Pro” on laptops, “iMac” and “iMac Pro” on desktops, “Mac Pro” and “Mac mini” on computer hardware.

The opposed mark, consisting of “MAC” and “SELL”, would easily give rise to a meaning of offering Apple’s PC for sale.

If so, relevant consumers at the sight of the opposed mark when used on the service in question are likely to associate and confuse the origin of the opposed mark with Apple Inc. or any entity related to the opponent.

JPO decision

The JPO Opposition Board admitted a remarkable degree of reputation and popularity of “Mac” as a source indicator of Apple Inc. and a close association between Apple’s goods and the service in question.

However, the Board found a low level of similarity between “MACSELL” and “Mac” by stating that the term “SELL” would severely cause a distinctive impression between both marks from visual, phonetical, and conceptual points of view, even if the marks share the word “MAC.”

Besides, taking into account a low level of originality of the opponent mark “Mac,” the Board questioned if relevant consumers and traders are likely to associate or connect the opposed mark with the opponent when used on the service in question.

Consequently, the Board held that relevant consumers would be unlikely to confuse the source of the opposed mark with Apple Inc. and any entity economically or systematically connected with the opponent.

Based on the foregoing, the Board decided to dismiss the opposition entirely and allowed registration of the opposed mark as status quo.

Ariana Grande Loses Trademark Opposition at Japan Patent Office

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The Japan Patent Office (JPO) dismissed an opposition filed by GrandAri Inc., the owner of a trademark “ARIANA GRANDE”, against TM Reg no. 6202585 for wordmark “Arianna” to be used on cosmetics by finding dissimilarity between “Arianna” and “ARIANA GRANDE.”
[Opposition case no. 2020-900051, Gazette issued date: January 29, 2021.]

Opposed mark

Arianna Co., Ltd. applied for a wordmark “Arianna” registration for use on cosmetics, soaps, and detergents of Class 3 and medical apparatus of Class 10 with the JPO on January 7, 2019 (TM Application no. 2019-000339).

The JPO admitted the registration of the opposed mark on November 29, 2019, and published for opposition on Christmas Eve of the year.

Opposition by GrandAri Inc.

On February 21, 2020, GrandAri Inc. filed an opposition before the JPO and claimed that the opposed mark shall be revocable in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law by citing International Registration no. 1260129 for wordmark “ARIANA GRANDE” and others over the goods of ‘Perfume; eau de parfum; fragranced body care preparations, namely, body lotions, body scrubs’ in Class 3.

Article 4(1)(xi) is a provision to prohibit registering a junior mark that is deemed identical with, or similar to, any senior registered mark.

GrandAri argued that relevant consumers would easily think of American pop superstar from the cited mark “ARIANA GRANDE”. Besides, because of her celebrity and popularity, she is affectionately called by her first name “ARIANA”. In view of the space between “ARIANA” and “GRANDE”, it is highly likely that the consumers would consider the term “ARIANA” as a dominant source indicator at the sight of the cited mark. It is no doubt that the opposed mark “Arianna” is confusingly similar to “ARIANA” since the mere difference of the letter ‘n’ is negligible in appearance and both terms give rise to the same pronunciation.

Article 4(1)(xv) provides that any mark shall not be registered where it is likely to cause confusion with other business entity’s well-known goods or services, to the benefit of brand owners and users’ benefits.

GrandAri argued the cited mark is used on fragrances developed by Ariana herself, which are also called “ARIANA” in the advertisement.

Given a close resemblance between the opposed mark and the “ARIANA” mark, and a certain degree of popularity of the fragrances, firstly sold in November 2015 in Japan, it is likely to cause confusion with the cited mark when the opposed mark is used on the goods in question.

JPO Decision

The JPO admitted a high level of reputation and popularity of American pop singer, “ARIANA GRANDE” in Japan. In the meantime, the JPO questioned, from the produced evidence, whether the term “ARIANA” per se plays a role of the source indicator of Ariana Grande fragrances since it is constantly adjacent to the cited mark “ARIANA GRANDE.”
Consequently, the JPO negated the famousness of the term “ARIANA” as a source indicator of the opponent’s goods.

As for the similarity of the marks, the JPO assessed that relevant consumers would see the cited mark “ARIANA GRANDE” in its entirety because she is known and called by her full name. If so, both marks are distinctively dissimilar since the opposed mark does neither give rise to a pronunciation of “ARIANA GRANDE” nor a concept of American pop superstar.

The JPO dared to assess the similarity between the opposed mark “Arianna” and “ARIANA” and held that “Arianna” is not confusingly similar to “ARIANA” from a phonetical point of view. Due to a low level of similarity of the marks, the JPO does not have any reason to believe that the opposed mark would cause confusion with the cited mark “ARIANA GRANDE” as well as “ARIANA” when used on cosmetics, soaps, and detergents of Class 3.

Based on the foregoing, the JPO dismissed the entire allegations of GrandAri and allowed “Arianna” to survive.

“COSTA COFFEE” vs “Caffè la Costa”

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The Japan Patent Office (JPO) dismissed a trademark opposition claimed by Costa Limited, operating the UK’s largest and the World’s second-largest International chain of coffee shops “COSTA COFFEE”, against trademark registration no. 6230027 for the “Caffè la Costa” mark for use on coffee, coffee beans in class 30 and restaurant services in class 43 by finding both marks are dissimilar and less likely to cause confusion.
[Opposition case no. 2020-900137, Gazette issued date: December 25, 2020]

Opposed mark

The mark “Caffè la Costa” (see below) was filed by a Japanese individual on March 11, 2019, for use on tea; coffee; cocoa; coffee beans; confectionery, and bread in class 30 and restaurant service in class 43, and published for opposition on May 17, 2020, after registration on February 27, 2020.

Opposition by Costa Limited

On May 14, 2020, Costa Limited filed an opposition and alleged the opposed mark shall be revocable in contravention of Article 4(1)(xi) of the Japan Trademark Law due to close resemblance to senior trademark registration for a wordmark “COSTA” and the “COSTA COFFEE” logo (see below) in class 30 and 43.

Article 4(1)(xi) is a provision to prohibit registering a junior mark that is identical with, or similar to, any senior registered mark.

Costa Limited argued that relevant consumers are accustomed to discriminating coffee shops by means of a distinctive literal element contained in their name. As a universal habit of shortening the full name, “Starbucks Coffee” is referred to as “Starbucks.” Likewise, “Doutor Coffee” as “Doutor”, “Excelsior Caffè” as “Excelsior”, “Tully’s Coffee” as “Tully’s”. Because the term “Coffee” and “Caffè” lack distinctiveness as a source indicator in relation to coffee; coffee beans and restaurant services.

In this respect, the consumers would consider the term “Costa” to be a dominant portion of the opposed mark when used on the goods and services in question. Therefore, “Caffè la Costa” shall be deemed confusingly similar to a wordmark “COSTA” and the “COSTA COFFEE” logo mark owned by Costa Limited.

Board Decision

The Opposition Board found the opposed mark does not give rise to any particular meaning as a whole. The mere fact that the respective word of the opposed mark (“Caffè”, “la”, “Costa”), is in the Italian dictionary would not change the finding since relevant consumers are unfamiliar with these Italian words. If so, the consumers would perceive the opposed mark as a coined word in its entirety and pronounce the entire mark as it sounds. In this regard, the Board doubted whether the term “Costa” is considered the dominant portion of the opposed mark by stating the facts show no evidence.

Based on the findings, the Board assessed the similarity of both marks as follows.

It looks obvious that the opposed mark is distinguishable from the cited marks, “COSTA” and the “COSTA COFFEE” logo, in appearance and sound, on account of different term and position of “Caffè la” and “COFFEE” combined with “Costa” and other distinction of figurative elements.
Provided that “COSTA” is an Italian word unfamiliar to relevant consumers with ordinary care, the Board believes both marks are incomparable in concept.
Even if both marks are incomparable in concept, the low level of similarity in appearance and sound would suffice to conclude that the consumers are unlikely to associate, connect the opposed mark with “COSTA COFFEE” when used on the goods and services in question.

Accordingly, the Board decided the opposed mark wasn’t revocable in contravention of Article 4(1)(xi) of the Trademark Law.