カテゴリー: Similarity of goods

Trademark Opposition or Invalidation, Which Is Useful in Japan?

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Opposition

A trademark opposition is a proceeding in which a third party can oppose a newly registered trademark under Article 43bis of the Japan Trademark Law. For example, once a trademark is newly registered by JPO, this fact is published in the Official Gazette of Trade Marks immediately after it is actually registered. This kicks off a two (2) month period known as the ‘opposition period’ during which other parties are then given an opportunity to ‘oppose’ the registration of the trademark.

Invalidation

Trademark invalidation is an inter-partes proceeding in which a party has a legal interest in the result that can null a trademark registration under Article 46 of the Japan Trademark Law. If the registration is less than five years old, the party challenging the trademark rights can rely on any ground that could have prevented registration initially.

Comparison

Conflict with earlier registration (similarity of mark and goods/service), a likelihood of confusion with famous mark, and descriptiveness are the most common grounds asserted both in opposition and invalidation action.

 Trademark OppositionTrademark Invalidation
Statute of limitations2 months from the publication date5 years from the registration date
Official feeJPY11,000 for 1 class
JPY19,000 for 2 classes		JPY55,000 for 1 class
JPY95,000 for 2 classes
StandingLegal interest is not requiredLegal interest is required
CounterargumentNo obligation to counterargue unless the JPO notifies a cancellation ground to a registrant.Mandatory for a registrant to counterargue, otherwise it may adversely affect.
Pendency period7.9 months11.5 months
Appeal to decisionOnly the registrant can file an appeal against an unfavorable decisionEither party can file an appeal against the JPO decision

Which action to take?

From a cost-saving point of view, opposition undoubtedly looks more attractive than invalidation, however, when you look at the success rate of opposition (see below table), it may change your mind. There has been a big gap in the success rate between opposition and invalidation for years.

YearThe success rate of the OppositionThe success rate of Invalidation
201513%32%
201616%42%
201711%33%
201811%34%
201911%56%
202011%35%

Therefore, in terms of probability theory, invalidation action is by far preferable to opposition for the purpose of removing trademark registration in Japan.

Lacoste Prevails in Trademark Parody Case

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On February 18, 2022, the Japan Patent Office (JPO) decided in favor of Lacoste and canceled Japanese TM Registration No. 6289888 for a flipped crocodile device mark in class 25 due to a likelihood of confusion with the famous crocodile logo of Lacoste.

[Opposition case no. 2020-900312, Decision date: February 18, 2022]

Opposed mark

The opposed mark, consisting of flipped crocodile device and term “OCOSITE” (see below), was filed by a Japanese individual for use on clothing, footwear, headgear, sports shoes, and sportswear in class 25 on March 17, 2020.

T-shirts printing the opposed mark are promoted for sale with a catchphrase of “funny parody T-shirt.” As the term, “OCOSITE” means ‘wake me up, get me up’ in Japanese, the opposed mark gives rise to the meaning of a crocodile struggling to get up.

The opposed mark was registered on September 9, 2020, and published for opposition on September 29, 2020.

Opposition by Lacoste

It was anything but funny to the luxury sportswear brand, Lacoste.

Lacoste filed an opposition on November 27, 2020, within a statutory period of two months counting from the publication date.

In the opposition, Lacoste claimed the opposed mark shall be canceled in contravention of Article 4(1)(vii), (xv), and (xix) of the Japan Trademark Law on the grounds that a flipped crocodile device of the opposed mark closely resembles the world-famous Lacoste crocodile logo from its appearance.

Besides, the term “OCOSITE” is depicted in a similar font to “LACOSTE” and five letters “COS” and “TE” among seven letters are identical. Given the close resemblance between crocodile devices and the meaning of “OCOSITE”, relevant consumers at the sight of clothing and sportswear bearing the opposed mark would immediately conceive of the Lacoste crocodile struggling to get up and thus likely to confuse its souse with Lacoste.

JPO decision

The Opposition Board of JPO admitted a substantial degree of reputation and popularity of the Lacoste crocodile logo in relation to clothing, footwear, and sportswear.

The Board found a high degree of similarity between the flipped crocodile of the opposed mark and the Lacoste crocodile. Noticeably, the Board held respective element, namely, the crocodile device and the term “OCOSITE” of the opposed mark shall not be inseparably combined as a whole regardless of close adjacency.

In view of a high degree of reputation and originality of the opponent mark, and close association between the opponent business and the goods in question, the Board has reason to believe relevant consumers with an ordinary care would be likely to confuse the source of goods bearing the opposed mark with Lacoste or any business entity systematically or economically connected with the opponent.

Based on the foregoing, the JPO sided with Lacoste and decided to cancel the opposed mark in contravention of Article 4(1)(xv).

GAP Unsuccessful in Trademark Opposition against “Gapace”

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The Japan Patent Office (JPO) dismissed an opposition filed by the US apparel company, Gap (ITM) Incorporated, against TM Reg no. 6304400 for wordmark “Gapace” to be used on apparel in class 25 by finding dissimilarity to and the unlikelihood of confusion with “GAP.”

[Opposition case no. 2020-900346, Gazette issued date: December 24, 2021]

Opposed mark

The wordmark “Gapace” was filed by a Chinese individual for use on various goods and apparel belonging to class 25 with the JPO on October 15, 2019 (TM App no. 2019-132880).

The JPO admitted registration on October 15, 2020, and published for opposition on November 4, 2020.

Opposition by GAP

To oppose against registration within a statutory period of two months counting from the publication date, Gap (ITM) Inc. filed an opposition against the opposed mark on December 24, 2020.

GAP argued the opposed mark shall be canceled in contravention of Article 4(1)(xi), (xv), and (xix) of the Trademark Law because of the remarkable reputation and popularity of the GAP mark as a source indicator of US apparel giant and a high degree of similarity between the opposed mark “Gapace” and the opponent’s famous earlier registered mark “GAP.”

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.

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

JPO Decision

To my surprise, the JPO Opposition Board denied a substantial degree of reputation and popularity of the opponent trademark “GAP” in connection with apparel by stating that the produced evidence failed to demonstrate sales amount and its market share in Japan. A mere reference to the fact that the opponent has launched an apparel business in Japan since 1994 and promoted apparel bearing the GAP mark for sale at their 150 stores nationwide is insufficient. Likewise, a fact that GAP was ranked 4th in the Top 10 clothing retailers in the world in 2021 is not persuasive to find a high degree of popularity among relevant consumers in foreign countries at the time of both filling the opposed mark and registration.

In assessing the similarity of the mark, the Board held “GAP” and “Gapace” are totally dissimilar from visual and phonetical points of view. Conceptually, both marks are not similar because the opposed mark does not give rise to any specific meaning. In the meantime, the opponent mark “GAP” has a meaning of ‘separation in space.’

Given the opponent mark “GAP” was not proven to have become famous in relation to the goods in question, the Board found it is unlikely that relevant consumers would conceive the literal element of “Gap” as a prominent portion of the opposed mark when used on apparels.

Based on the foregoing, the Board had no reasonable ground to believe the opposed mark shall be canceled in contravention of Article 4(1)(xi), (xv), and (xix), and decided to dismiss the entire opposition accordingly.

Letter of Consent in Japanese Trademark Practice

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When trademark applicants receive a refusal of their trademark applications due to a conflict with a prior similar registered mark cited by the JPO examiner, how can the applicants overcome the refusal?

In some jurisdictions, it has become a routine to submit a letter of consent (LOC) issued in the name of the owner of the cited mark agreeing on the use and registration of the applied mark for the purpose of overcoming the refusal, apart from arguing against the similarities between the respective marks.

However, the Japan Patent Office (JPO) is negative to withdraw refusals arising from a conflict with a senior registered mark under Article 4(1)(xi) of the Trademark Law simply by means of LOC.

Trademark Examination Guideline (TEG) 42.111.03 in relation to Article 4(1)(xi) provides special conditions where the JPO accepts LOC and withdraws refusals as follows.

Where an applicant claims that he/she is in any of the relationships (1) and (2) with the owner of a cited trademark right and submits evidence (3), the case shall be handled as if Article 4(1)(xi) does not apply.

(1) The owner of a cited trademark right is under the control of the applicant.

(2) The applicant is under the control of the owner of a cited trademark right.

(3) Evidence to the effect that the owner of a cited trademark right agrees that the trademark as applied is to be registered.

Condition (1) and (2) – “Under the control” relation between cited owner and applicant will be satisfied if:

(a) Business of the owner of a cited trademark right of which the majority of voting rights of all shareholders are owned by the applicant;

(b) Business of the owner of a cited trademark right which has a capital alliance with the applicant and whose corporate activities are substantially under the control of the applicant, although the requirement specified in (a) above is not satisfied.

Therefore, LOC is useful only where either party has a controlling interest in the other entity, the so-called parent-child relationship between companies.

Due to the restriction, LOC would not be available in most cases to overcome the refusal based on Article 4(1)(xi).

Under the circumstance, practically, we are able to select three options.

  1. Arguing dissimilarity of mark or goods/ services　
  2. Filing a non-use cancellation against the cited mark　
  3. Transferring an applied mark to an owner of the cited mark and assigning it back after registration, vice versa.

DIOR Failed to Cancel Trademark “DIORLV”

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

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

“DIORLV”

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

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

Opposition by Christian Dior

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

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

JPO decision

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

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

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

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

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

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

Samsung Failed in TM Opposition against “Funky Galaxy”

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The Japan Patent Office (JPO) dismissed an opposition filed by Samsung, the world’s largest smartphone maker, against TM Reg no. 6263685 for wordmark “Funky Galaxy” by stating the opposed mark would not cause confusion with Samsung “Galaxy” even when used on smartphones.

[Opposition case no. 2020-900229, Gazette issued date: November 11, 2021]

Opposed mark

On April 12, 2019, KING Entertainment Co., Ltd. applied for registration of wordmark “Funky Galaxy” in standard character for use on goods and services in classes 9, 16, 35, and 41. The goods in class 9 covers ‘telecommunication machines and apparatus; personal digital assistants; smartphones; electronic machines, and apparatus and their parts.’

JPO granted protection of the “Funky Galaxy” mark and published for opposition on July 14, 2020.

Opposition by Samsung

On September 11, 2020, Samsung, the world’s largest smartphone maker famous for Galaxy series mobiles, filed an opposition and claimed the Opposed mark shall be canceled in relation to goods and services in class 9, 35, and 41 in contravention of Article 4(1)(vii), (x), (xi), (xv) and (xix) of the Trademark Law by citing its own senior TM Reg nos. 4498554 “Galaxy”, IR1335923 “GALAXY STUDIO”, and 6309820 “Galaxy Harajuku”.

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

Samsung argued the Opposed mark shall cause confusion with Samsung “Galaxy” especially when used on smartphones and related goods and services, given a remarkable reputation of “Galaxy” holding 3rd market share (7.4% in 2018, 8.0% in 2019, 9,0% in 2020) in Japan and the close resemblance between “Galaxy” and “Funky Galaxy”.

JPO Decision

The Opposition Board did not question a remarkable degree of reputation and popularity of trademark “Galaxy” as a source indicator of the opponent smartphones.

In the meantime, the Board did not consider the term “Galaxy” as a prominent portion of the opposed mark from visual and conceptual points of view. If so, the opposed mark shall be assessed in its entirety.

In the assessment of similarity of the mark, the Board found “Funky Galaxy” is visually and phonetically distinguishable from “Galaxy” due to the presence of “Funky.” From concept, both marks are less similar because the opposed mark does not give rise to a specific meaning and the opponent mark “Galaxy” means an extremely large group of stars and planets. Both marks have a low degree of similarity accordingly.

Even though “Galaxy” has been well-known as a source indicator of Samsung smartphones, and the goods and services in question are closely associated with smartphones, given a low degree of similarity between “Funky Galaxy” and “Galaxy”, the Board has a reasonable ground to believe that relevant consumers would not confuse a source of goods and services bearing the opposed mark “Funky Galaxy” with Samsung and any business entity economically or systematically connected with the opponent.

Based on the foregoing, the Board decided the allegations are groundless and the Opposed mark shall remain valid as the status quo.

Huda Kattan failed to take back trademark HUDABEAUTY

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In a trademark opposition against TM Reg no. 6204338 for the stylized “HUDABEAUTY” mark in class 3, the Japan Patent Office (JPO) dismissed the opposition claimed by Huda Kattan due to insufficient famousness of trademark “HUDA BEAUTY” as a source indicator of a beauty mogul “Huda Kattan”.

[Opposition case no. 2020-900049, Gazette issued date: September 24, 2021]

Opposed mark

A Chinese company filed the stylized “HUDABEAUTY” mark (see below) on cosmetics; lotions; facial creams; lips; hand-cleaners; eye-shadows; whitening creams and other goods in class 3 with the JPO on November 22, 2018.

The JPO granted protection of the opposed mark on November 26, 2019, and published for opposition on January 7, 2020. [TM Reg. 6204338]

Opposition by Huda Kattan

On January 10, 2020, three days after the publishment of the opposed mark, Huda Kattan applied the same mark for use on cosmetics, perfumes, and fragrances in class 3 with the JPO and filed an opposition against TM Reg no. 6204338 on February 21, 2020.

The opponent argued the opposed mark shall be canceled in contravention of Article 4(1)(vii), (x), (xv) and (xix) of the Trademark Law because the opposed mark is completely identical with the stylized “HUDABEAUTY” mark that has acquired a substantial reputation and popularity as a source indicator of cosmetics line launched by famous beauty blogger “Huda Kattan” among relevant consumers at the filing date of the opposed mark.

In bolstering the famousness of the opponent mark, the opponent alleged the founder, Kattan, achieved popularity on Instagram, attaining more than 47 million followers as of 2020. Huda is ranked #1 on the “2017 Influencer Instagram Rich List” and was declared one of the “ten most powerful influencers in the world of beauty” and “The Richest Self-Made Women and one of the Top Three Beauty Influencers ” by Forbes magazine. She was chosen as one of “The 25 Most Influential People on the Internet” by Time magazine in 2017.

Internet search does not reveal any goods of the opposed party. Meanwhile, the opponent’s “HUDABEAUTY” cosmetics are available at Amazon Japan and other online platforms for domestic consumers.

JPO decision

Astonishingly, the JPO Opposition Board did not admit the famousness of the “HUDABEAUTY” mark as a source indicator of Huda Kattan by stating that:

  1. It is unclear if the merchants promoting “HUDABEAUTY” cosmetics at Amazon Japan and other online platforms are licensed distributor.
  2. Produced invoices to demonstrate the actual sale of opponent’s goods to Japanese consumers are irrelevant because these are issued on a date after the registration of the opposed mark.
  3. Even though the opponent and Huda Kattan make good use of SNS and have a very high number of followers and been awarded as a beauty influencer, the Board can’t find reasonable grounds to believe from these facts the opponent mark has acquired a certain degree of reputation and popularity among relevant consumers in Japan.
  4. The opponent did not produce any evidence to demonstrate sales amount, publication, and advertisement in Japan.

Since it is one of the requisites in applying Article 4(1)(vii), (x), (xv), and (xix) to have a certain degree of reputation and popularity among relevant consumers before the filing date of the opposed mark, regardless of the close duplication, the Board decided to dismiss the opposition entirely and allowed registration of the opposed mark as it is.

This case teaches us how significant to be a “first-filer” in registering and protecting trademarks in Japan.

Famous mark Protection under Unfair Competition Prevention Law

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The Unfair Competition Prevention Law (UCPL) protects famous trademarks regardless of their registration status under Article 2(1)(i) & (ii).

Article 2(1)(i)

The act of using goods or other indications (hereinafter, “goods or other indications” means name connected with person’s business, tradename, trademark, mark, container, or package of goods, or any other indication used for goods or business) which is identical with, or similar to, another person’s goods or other indication as to be well-known among consumers，or the act of selling, distributing, displaying for the purpose of selling or distributing, exporting, importing or offering via telecommunication lines goods on which such goods or other indication is used, thereby causing confusion with another person’s goods or business.

Article 2(1)(ii)

The act of using goods or other indications as one’s own while it is identical with, or similar to, another person’s famous goods or other indication, or the act of selling, distributing, displaying for the purpose of selling or distributing, exporting, importing or offering via telecommunication lines.

The UCPL provides legal remedies for famous trademarks even though they have yet to be registered in Japan under the Trademark Law. The UCPL privileges owners of the famous trademarks to take legal action against unauthorized use of the mark on goods or services remotely associated with their business, however, it does not go beyond the “similar” marks theoretically.

Isn’t it MIRACLE?

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

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

Miracle Volume

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

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

Opposition by A&H Sportswear

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

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

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

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

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

JPO decision

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

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

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

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

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