カテゴリー: Famous mark

Unsuccessful trademark opposition over LXR Hotels & Resorts by Hilton

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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.

CHANEL defeated in Trademark Opposition against “COCOCHI”

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The Japan Patent Office (JPO) handed a loss to Chanel SARL in trademark opposition against TM Reg no. 6674710 for the “COCOCHI” mark by finding unlikelihood of confusion with “COCO”.

[Opposition case no. 2023-900100 decided on December 7, 2023]

COCOCHI

The opposed mark, consisting of a term “COCOCHI” and the COCO monogram (see below), was filed by COCOCHI COSME CN LIMITED, a UK company, with the JPO for use on cosmetics, perfumery, fragrances, incense, dentifrices, adhesives for affixing false eyelashes and other goods in Class 3 on June 16, 2022.

The JPO admitted registration of the opposed mark on February 24, 2023 and published it for a post-grant opposition on March 6, 2023.

Opposition by CHANEL

On May 8, 2023, CHANEL SARL filed an opposition and argued the opposed mark shall be canceled in contravention of Article 4(1)(xi), (xv), and (xix) of the Trademark Law on the grounds that:

  1. Since 1995, the opponent has owned senior trademark registration no. 2704127 for wordmark “COCO” over cosmetics, perfumery, and fragrances, which has unquestionably acquired a remarkable degree of reputation and popularity as a source indicator of the opponent’s cosmetics as well as a nickname or short name of French fashion designer “Gabrielle COCO CHANEL”, the founder of the Chanel brand.
  2. Due to a remarkable reputation of the mark “COCO”, relevant consumers are likely to associate the literal portion “COCO” and the monogram of the opposed mark with Chanel when used on goods in question.
  3. In view of the close resemblance between two marks and goods, presumably, the applicant must have applied the opposed mark for use on cosmetics with prior knowledge of the cited mark and fraudulent intention of free-riding on its reputation.

JPO decision

The JPO Opposition Board admitted a high degree of reputation and popularity of “COCO” as a source indicator of the opponent’s perfumery and fragrances among relevant consumers based on substantial use of the cited mark in Japan but questioned its famousness in relation to other cosmetics except for perfumery and fragrances.

The JPO denied the similarity between the opposed mark and “COCO”, stating that the opposed mark shall be taken as a whole in view of a tight combination of its literal element from appearance. If so, the opposed mark does not give rise to any specific meaning and the Board has no reasonable ground to believe that the opposed mark “COCOCHI” shall be similar to “COCO” from visual, phonetic, and conceptual points of view.

Given a low degree of similarity between the marks, the Board held the opposed mark is unlikely to cause confusion even when used on perfumery and fragrances.

Assuming that both marks are dissimilar, the Board was not convinced that the applicant aimed for free-riding on the goodwill of Chanel.

Based on the foregoing, the JPO dismissed the entire allegations of CHANEL SARL and allowed the opposed mark to remain valid as the status quo.

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

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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.

Pierre Herme Unsuccessful in Trademark Opposition against “House of Herme”

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The Japan Patent Office (JPO) dismissed trademark opposition filed by Group Pierre Herme against TM Reg no. 6677566 for mark “House of Herme” in classes 35 and 43 due to dissimilarity to and unlikelihood of confusion with “PIERRE HERME”.
[Opposition case no. 2023-900110, decided on November 24, 2023]

Opposed mark “House of Herme”

Opposed mark, consisting of the “HH” monogram, a word “House of Herme” and a western style architecture image (see below), was filed for use on retail or wholesale services in relation to clothing, footwear, bags, cosmetics, and others (unrelated to foods) in class 35 and restaurant services in class 43 with the JPO on April 27, 2022.

The JPO granted registration of the mark on March 6, 2023 and published it for post-grant opposition on March 14, 2023.

Opposition by Pierre Herme

Group Pierre Herme filed an opposition with the JPO on May 15, 2023 and argued the opposed mark shall be cancelled in contravention of Article 4(1)(vii), (xi), (xv) and (xix) of the Japan Trademark Law by citing earlier TM Reg nos. 4275242, 4494401, 4853590, and 5201068 for word mark “PIERRE HERME”. In the opposition, Group Pierre Herme claimed “HERME” has been also known as an abbreviation of “PIERRE HERME”. In view of a remarkable degree of popularity and reputation of “PIERRE HERME”, relevant consumers at sight of the word “House of Herme” of the opposed mark used on services in question would associate it with a world famous pâtissier.

JPO decision

The JPO Opposition Board found “PIERRE HERME” has become famous as a source indicator of the opponent in relation to confectionary. In the meantime, the Board questioned if its abbreviation “HERME” per se has acquired a high degree of recognition among relevant consumers.

The Board held the word “Herme” of the opposed mark would not play a role in indicating a source per se given the word is tightly combined with “House of” to be conceived as a term in its entirety. If so, it is inappropriate to compare a literal element “Herme” of the opposed mark with the cited marks in assessing similarity of mark.

There is clear distinction between the opposed mark and the cited marks “PIERRE HERME” from visual, aural and conceptual points of view.

By taking into consideration a low degree of similarity of mark and association between confectionary and retail or wholesales services and restaurant services, the Board has no reason to believe relevant consumers are likely to confuse a source of the services in questions bearing the opposed mark with “PIERRE HERME”.

Based on the foregoing, the JPO found the opposition groundless and decided validity of the opposed mark.

Trademark dispute: HITACHI vs hitasi

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On October 16, 2023, the Japan Patent Office (JPO)dismissed an opposition claimed by Hitachi, Ltd. against TM Reg no. 6621366 for wordmark “hitasi” by finding dissimilarity to and unlikelihood of confusion with “Hitachi”.

[Opposition case no. 2022-900496]

Opposed mark

A Chinese individual filed a wordmark “hitasi” for use on glass, unworked or semi-worked, except building glass; mangers for animals; drinking troughs; toothbrushes, electric; nail brushes; comb cases; make-up brushes; gardening gloves; glass vials; decanters; vacuum bottles [insulated flasks]; oven mitts; place mats, not of paper or textile; drinking straws; bird baths; tanks [indoor aquaria]; utensils for household purposes in class 21 with the JPO on April 5, 2023.

The JPO granted protection of the opposed mark on September 29, 2022 and published it for a post-grant opposition on October 7, 2022.

Opposition by HITACHI

Hitachi, Ltd., founded in 1910, highly diversified Japanese manufacturing corporation that comprises more than 1,000 subsidiaries, including 335 overseas corporations filed an opposition on November 29, 2022 with the JPO and claimed the opposed mark shall be cancelled in contravention of Article 4(1)(xi) and (xv) of the Trademark Law due to similarity to and likelihood of confusion with its famous house mark “Hitachi”.

To bolster their arguments, Hitachi cited the IP High Court ruling dated Jan 27, 2022 that admitted a likelihood of confusion between “HITACHI” and “hihachi” when used on air conditioners for industrial purposes; non-electric cooking heaters for household purposes; non-electric stoves for household purposes in class 11.

JPO decision

The JPO Opposition Board found a high degree of reputation and popularity of the cited mark “HITACHI” as a source indicator of the Hitachi Group and their business.

However, the JPO pointed out a low degree of similarity between the marks by stating that:

  1. From appearance, there is a difference in the letter “s” and “CH”. It would cause non-negligible effect on the overall visual impression of the marks which consist of relatively few letters (sir or seven characters). In this respect, two marks are unlikely to cause confusion visually.
  2. Aurally, there is a difference in the last sound of “si” and “chi”. It would cause non-negligible effect on the overall sound of the marks which consist of three syllables. The Board has a reason to believe that two marks are unlikely to cause confusion phonetically.
  3. From concept, both marks are unable to compare since the opposed mark does not have any specific meaning, whereas the cited mark gives rise to a meaning of “HITACHI” as a source indicator of the claimant.

Given a low degree of similarity of the marks, the Board said, it is unlikely that relevant consumers confuse the source of the goods in question bearing the opposed mark with Hitachi, Ltd. or other entity systematically or economically connected with the claimant even if the cited mark “HITACHI” has been famous trademark

Based on the foregoing, the Board dismissed the entire allegations by Hitachi and decided validity of the opposed mark as the status quo.

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

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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.

Trademark Opposition: JEEP vs JEIP321

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The Japan Patent Office (JPO) dismissed an opposition filed by Fiat Chrysler Automobiles (FCA US) LLC against TM Reg no. 6586965 for the wordmark “JEIP321” to be used on covers and accessories for cars in class 12 by finding dissimilarity to and unlikelihood of confusion with the “JEEP” mark.

[Opposition case no. 2022-900391, decided on September 28, 2023]

Opposed mark

The wordmark “JEIP321” was filed by a Chinese individual for use on steering wheels covers for automobiles, vehicle covers [shaped], upholstery foe vehicles, two-wheeled trolleys, windscreen wipers, anti-dazzle devices for vehicles, ashtrays for automobiles, rearview mirrors, mudguards, cigar lighters for automobiles in class 12 with the JPO on January 25, 2022 (TM App no. 2022-7763).

The JPO admitted registration on July 13, 2022, and published for opposition on July 22, 2022.

Opposition by FCA US LLC

To oppose registration within a statutory period of two months counting from the publication date, FCA US LLC filed an opposition against the opposed mark on September 14, 2022.

FCA argued the opposed mark shall be canceled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law because of the remarkable reputation and popularity of the JEEP mark as a source indicator of Chrysler vehicles and a high degree of similarity between the opposed mark “JEIP321” and the opponent’s famous earlier registered mark “JEEP.”

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.

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.

Inter alia, FCA pointed out that the literal element “JEIP” shall be considered as a prominent portion of the opposed mark since numerals lack distinctiveness per se. If so, the opposed mark is confusingly similar to the “JEEP” mark from visual and phonetical points of view.

JPO Decision

The JPO Opposition Board admitted a high degree of reputation and popularity of the “JEEP” mark in connection with four-wheeled automobiles.

In assessing the similarity of the mark, the Board found that a prominent portion of the opposed mark “JEIP” and the “JEEP” mark are less likely to cause confusion from visual, phonetical and conceptual points of view by stating that:

“From appearance, there is a difference in the third letter, “I” and “E” between “JEIP” and “JEEP”. The effect would be anything but negligible on the overall visual impression of both marks, since they are composed of only four characters.

Comparing the sound of “JEIP” with “JEEP”, there is a clear difference at the beginning, “dʒeɪ” and “dʒiː” It shall cause a significant distinction on the overall tone and impression in a short three-sound structure to the extent that relevant consumers would not mishear them when pronounced in unison.

Conceptually, both marks are dissimilar because the opposed mark does not give rise to any specific meaning. In the meantime, the opponent mark “JEEP” has a meaning of ‘Jeep brand 4WD vehicles.’”

Even though “JEEP” has become famous in relation to 4WD vehicles, the Board has no reason to believe that relevant consumers would associate the goods in question bearing the opposed mark “JEIP321” with the opponent or any business entity systematically or economically connected with FCA because of a low degree of similarity between the marks.

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

JPO Declared Cancellation of Trademark “BORDEAUX WAVE” on Cosmetics

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The Japan Patent Office (JPO) decided to cancel TM Reg no. 6576001 for word mark “BORDEAUX WAVE” in relation to cosmetics due to contrary to public policy and accepted principles of morality.

[Opposition case no. 2022-900374, decided on September 1, 2023]

Opposed mark “BORDEAUX WAVE”

KAO Corporation, a major Japanese company providing a broad range of household products such as cosmetics and detergents, filed a trademark application for the wordmark “BORDEAUX WAVE” with its transliteration written in Japanese Katakana character (see below) for use on soaps and detergents, cosmetics, perfume and flavor materials, incense in class 3 with the JPO on December 22, 2021.

Apparently, the mark is used as a name for one of the RMK lipstick colors distributed by KAO’s subsidiary company.

The JPO examiner did not raise any objection to the “BORDEAUX WAVE” mark and granted protection on June 2, 2022.

Trademark Opposition

On August 31, 2022, before the lapse of a two-month statutory period counting from the publication date, INSTITUT NATIONAL DE L’ORIGINE ET DE LAQUALITE and CONSEIL INTERPROFESSIONNEL DUVIN DE BORDEAUX as joint opponents filed an opposition against the BORDEAUX WAVE mark and claimed the opposed mark shall be canceled in contravention of Article 4(1)(vii) of the Japan Trademark Law.

The opponents argued that the opposed mark misleads as to the origin of the goods in question on which it is used since the GI “Bordeaux” has been widely known for an origin of French Wine. Besides, the opposed mark severely harms to fame and aura of prestigious wine constituted under the strict control of domicile of origin.

Article 4(1)(vii)

Article 4(1)(vii) prohibits any mark likely to offend public order and morals from registering.

Trademark Examination Guidelines sets forth criteria for the article and samples.

  1. Trademarks that are “likely to cause damage to public order or morality” are, for example, the trademarks that fall under the cases prescribed in (1) to (5) below.

(1) Trademarks which are, in composition per se, characters or figures, signs, three-dimensional shapes or colors or any combination thereof, or sounds that are unethical, obscene, discriminative, outrageous, or unpleasant to people. It is judged whether characters, figures, signs, three-dimensional shapes or colors or any combination thereof, or sounds are unethical, discriminative or unpleasant to people, with consideration given to their historical backgrounds, social impacts, etc. from a comprehensive viewpoint.

(2) Trademarks which do not have the composition per se as prescribed in (1) above but are liable to conflict with the public interests of the society or contravene the generally-accepted sense of morality if used for the designated goods or designated services.

(3) Trademarks with their use prohibited by other laws.

(4) Trademarks liable to dishonor a specific country or its people or trademarks generally considered contrary to the international faith.

(5) Trademarks whose registration is contrary to the order predetermined under the Trademark Act and is utterly unacceptable for lack of social reasonableness in the background to the filing of an application for trademark registration.

  1. Examples that fall under this item

(i) Trademarks that contain characters such as “university” and are likely to be mistaken for the name of universities, etc. under the School Education Act.

(ii) Trademarks that contain characters such as “士（shi）” which are likely to mislead that they represent national qualifications.

(iii) Trademarks of the name of a well-known or famous historical personage which are determined to have the risk of taking a free ride on public measures related to that personage and damage the public interests by inhibiting the performance of such measures.

(iv) Trademarks with figures indicated in a manner that may impair the dignity and honor of national flags (including foreign national flags)

(v) A sound mark related to the services of “medical treatment” which causes people to recognize siren sounds generated by ambulances that are well known in Japan.

(vi) A sound mark which causes people to recognize national anthems of Japan and other countries.

JPO Decision

The JPO Opposition Board found in favor of opponents that “BORDEAUX” has acquired a high degree of popularity and reputation among Japanese consumers as a source indicator of wines originated from the Bordeaux district.

Since the opposed mark contains the term “BORDEAUX”, it is undeniable that consumers are likely to connect the opposed mark with BORDEAUX wine or its district even when used on cosmetics and other goods in question. If so, the Board has a reason to believe that the opposed mark free-rides or dilutes lure and image of BORDEAUX wine, and adversely affects domicile of origin strictly controlled by French government. Thus, inevitably the opposed mark may cause disorder to a world of global commerce in a manner inconsistent with international fidelity.

Based on the foregoing, the Board decided to cancel the BORDEAUX WAVE mark entirely based on Article 4(1)(vii).

ZARA vs AZRA

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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. 6638156 for word mark “AZRA” in classes 11, 20, 21, 24 and 27 by finding dissimilarity to and less likelihood of confusion with “ZARA”.

[Opposition case no. 2023-900013, decided on September 1, 2023]

Opposed mark

Opposed mark, consisting of a wordmark “AZRA” in standard character, was applied for registration in the name of STREAK Co., Ltd., a Japanese company offering bedding, pillows, pillow covers, cushions [furniture], mattresses, curtains and sleeping pads, on August 9, 2022, by designating various goods in classes 11, 20, 21, 24 and 27, and published for post-grant opposition on November 16, 2022, without confronting with office action from the JPO.

Screen capture from Rakuten

Opposition by Inditex

Opponent, INDITEX, one of the world’s largest fashion retailers and owner of the fashion brand “ZARA”, filed an opposition on January 14, 2023 before the lapse of a two-month statutory period and claimed opposed mark “AZRA” shall be cancelled in contravention of Article 4(1)(xi), (xv) and (xix) of the Japan Trademark Law by citing earlier trademark registrations for word mark “ZARA”.

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

INDITEX argued “AZRA” is similar to its own trademark “ZARA”, a worldwide famous fast-fashion brand, from visual, phonetic and conceptual points of view. Besides, the goods in question are identical.

Article 4(1)(xv) prohibits registering a trademark which is likely to cause confusion with the business of other entities.

INDITEX argued that “ZARA” has acquired a remarkable reputation among relevant consumers and the close resemblance between the marks and goods, and thus relevant consumers are likely to confuse or misconceive the goods bearing the opposed mark “AZRA” with “ZARA”.

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

INDITEX argued the applicant must have filed the opposed mark aiming to gain unfair profits by the free-riding opponent famous trademark “ZARA”.

JPO decision

To my surprise, the JPO Opposition Board had a view that “ZARA” has not acquired a high degree of reputation and popularity among general consumers even though widely recognized among fashion conscious consumers by taking into consideration the produced evidence. The Board pointed a high number of followers on Facebook (31millions), Instagram (57millions) by itself would be insufficient and irrelevant to demonstrate a high degree of recognition among general consumers of the goods in question.

Besides, the Board found “AZRA” and “ZARA” are obviously dissimilar in appearance and pronunciation by stating that difference on the first and second letter and sound would be sufficiently distinguishable given both marks visually consist of four alphabets and aurally just two or three sounds. As for the concept, it is incomparable since either mark does not give rise to any specific meaning. Therefore, both marks are unlikely to cause confusion due to dissimilarity between the marks.

Since no evidence was shown by Inditex to support that the applicant filed the opposed mark for unfair purposes or causing damage to the opponent.

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

McDonald Unsuccessful in Trademark Opposition against “mac”

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The Japan Patent Office (JPO) did not side with McDonald in opposition against Japanese TM Reg no. 6575774 for stylized wordmark “mac” in class 35 due to dissimilarity to “Mc” and unlikelihood of confusion with McDonald.

[Opposition case no. 2022-900294, decided on August 15, 2023]

Opposed mark “mac”

The opposed mark, consisting of a stylized word “mac” (see below), was filed by Daiya Group Inc. for use on retail services or wholesale services for various goods including, meat, milk, carbonated drinks [refreshing beverages] and non-alcoholic fruit juice beverages, tea, coffee and cocoa in class 35 with the JPO on October 27, 2021.

The applicant has used the opposed mark as a tradename of their drug store “mac”.

Screen capture from Google map

The JPO granted protection of the opposed mark on June 22, 2022 and published it for post-grant opposition on June 30, 2022.

Opposition by McDonald

McDonald International Property Company Limited filed an opposition against the opposed mark on July 20, 2022 with the JPO and claimed cancellation of the opposed mark in contravention of Article 4(1)(x), (xi) and (xv) of the Japan Trademark Law based on earlier trademark registrations and various marks used in relation to their business.

McDonald argued that the mark “Mc” has been remarkably famous as a source indicator of the opponent and it gives rise to a same sound with the opposed mark “mac”. If so, relevant consumers would confuse the source of retail services or wholesale services for meat, milk, carbonated drinks [refreshing beverages] and non-alcoholic fruit juice beverages, tea, coffee and cocoa bearing the opposed mark with McDonald due to close resemblance of the marks and relatedness to food business.

JPO decision

The Opposition Board pointed out McDonald has been regularly using the mark “Mc” in a tight combination with other word. Regardless of the fact that consumers are accustomed to call McDonald as “MAC”, there is no evidence to show the opponent has used “MAC” in connection with their business.

By taking account of insufficient evidence to demonstrate substantial recognition of the cited marks, the Board has no reason to admit famousness of the mark “Mc” as a source indicator of McDonald.

In assessing the similarity of mark, the Board found the cited marks are aurally dissimilar to the opposed mark since they are pronounced as “emˈsiː” or “mækˈkæfˈeɪ” in its entirety. Besides, there is no ground to find visual and conceptual similarity of respective mark. If so, the Board believes the opposed mark is clearly dissimilar to the cited marks.

To the extent that there is insufficient evidence to support how the term “MAC” has played a significant role in indicating the source of McDonald, the Board held it unlikely that relevant consumers confuse the opposed mark with McDonald when used on the services in question.

Based on the foregoing, the Board dismissed the opposition entirely and decided that the opposed mark “mac” shall remain valid as the status quo.