カテゴリー: Similarity of mark

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.

HUGO BOSS Unsuccessful in Blocking “BOSS”

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German luxury fashion house Hugo Boss failed in their attempt to block Japanese TM Reg no. 6218609 for word mark “BOSS” on SaaS and order processing services.

[Opposition case no. 2020-900096, Gazette issued date: August 27, 2021]

Opposed mark

Opposed mark, filed on January 22, 2019, by Rakuten, Japanese electronic commerce and online retailing company, consists of the word “BOSS” in standard character (see below).

The services sought for registration are order processing services in class 35 and providing computer programs on e-commerce, software as a service (SaaS), and other related services in class 42. Rakuten is using the opposed mark “BOSS” as an abbreviation of ‘Back Office Support System’ to indicate their service for sales order management and automated shipping system.

The JPO admitted registration on June 22, 2020, and published for post-grant opposition on February 12, 2020.

Opposition by Hugo Boss

HUGO BOSS Trademark Management GmbH & Co KG filed an opposition against the opposed mark on April 3, 2020, and claimed the opposed mark “BOSS” shall be canceled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law.

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

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

HUGO BOSS argued that not only tradename “HOGO BOSS but also their mark “BOSS” has been well known for a luxury fashion brand and source indicators of the opponent by producing Deloitte’s annual list of the world’s largest luxury companies on which HUGO BOSS was ranked No.19(2015), No.21(2016), No.23(2017).

In view of a high degree of similarity between the opposed mark and the opponent’s mark “BOSS” (see below), relevant consumers are likely to confuse the source of services bearing the opposed mark with HUGO BOSS.

Board Decision

The JPO Opposition Board admitted a certain degree of the reputation of the “HUGO BOSS” mark as a source indicator of the opponent in connection with fashion items, e.g., clothing, watches, sunglasses, fragrances.

In the meantime, the Board questioned if the word “BOSS” has also acquired such popularity, stating that produced materials are insufficient to find the word perse plays the source indicator since the cited mark contains a famous mark “HUGO BOSS” adjacent to it.

Even if there is a high degree of similarity between the marks, the Board has a reasonable ground to believe the services in question, namely, order processing services (cl.35) and SaaS (cl.42) are less associated with fashion items, e.g., clothing, watches, sunglasses, fragrances.

If so, it is unlikely that relevant consumers at the sight of the opposed mark would conceive or associate it with HUGO BOSS or any entity who is systematically or economically connected with the opponent when used on the services in question.

Based on the foregoing, the JPO dismiss the entire allegations of HUGO BOSS and allowed the opposed mark “BOSS” to survive.

BEYOND MEAT defeats “Beyond Meat Burger”

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The Japan Patent Office (JPO) sided with Beyond Meat Inc. and canceled TM Reg no. 6197193 for wordmark “Beyond Meat Burger” by free-riding on the business reputation of “BEYOND MEAT”.

[Opposition case no. 2020-900023, Gazette issued date: July 30, 2021]

Beyond Meat Burger

Opposed mark, consisting of a wordmark “Beyond Meat Burger” written in a Japanese katakana character (see below), was filed by a Japanese individual on July 23, 2018, for use on ‘meat products’ in class 29 and ‘clothing’ in class 25.

Subsequently, the applicant deleted the designated goods in class 29.

The mark was registered on November 15, 2019, and published for opposition on December 10, 2019.

BEYOND MEAT

Beyond Meat Inc., a US food processing company that specializes in providing plant-based meat, filed an opposition against the “Beyond Meat Burger” mark with the JPO on January 24, 2020, before the lapse of a two-month statutory period for the opposition.

In the opposition brief, Beyond Meat argued the opposed mark shall be canceled in contravention of Article 4(1)(xix) of the Japan Trademark Law.

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.

It is interpreted that the “famous mark” under the article does not require a high reputation among Japanese consumers. If domestic consumers recognize such a reputation in foreign countries, it will suffice.

Beyond Meat alleged that the “BEYOND MEAT” mark has been well known for plant-based meat substitutes by the opponent to meat distributors as well as US consumers (It should be noted that Beyond Meat has yet to launch the business in Japan as of now). It is obvious that the opposed mark is confusingly similar to “BEYOND MEAT”. Presumably, the opposed party must have filed the opposed mark with a fraudulent intention to prevent registration of the “BEYOND MEAT” mark in Japan and gain unjust enrichment by doing so.

JPO decision

The JPO Opposition Board admitted that the “BEYOND MEAT” mark has acquired a remarkable degree of reputation among US consumers as a source indicator of plant-based meat substitutes by Beyond Meat Inc. even before the application date of the opposed mark

The Board assessed the opposed mark is confusingly similar to “BEYOND MEAT”. Relevant consumers with an ordinary care would see the term “Beyond Meat” as a prominent portion of the opposed mark because the consumers get familiar with the English word “Burger.”

A fact that the opposed party initially designated ‘meat products’ implies the applicant’s intention to use the opposed mark on the goods that are closely associated with meat substitutes. If so, the Board had a reasonable ground to believe the opposed mark was filed with an intention to take advantage of goodwill and business reputation associated with Beyond Meat’s tradename and trademark.

Based on the foregoing, the JPO decided to retroactively cancel the opposed mark “Beyond Meat Burger” in contravention of Article 4(1)(xix).

No confusion between WeWork and iWork

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The Japan Patent Office (JPO) dismissed a trademark opposition claimed by WeWork Companies Inc. against Japanese trademark registration no. 6271212 for wordmark “iWork” by finding less likelihood of confusion with “WeWork”.

[Opposition case no. 2020-900249, Gazette issued date: July 30, 2021]

iWork

Desigmassion Company Ltd. applied the wordmark “iWork” in standard character for registration on ‘rental of offices for coworking’ in class 36 and ‘rental of temporary accommodation; providing foods and beverages; rental of meeting rooms; rental of facilities for exhibitions’ in class 43 wit the JPO on February 1, 2021 (TM App no. 2020-011256).

The mark did not face any refusal during the substantive examination and was published for opposition on August 4, 2020.

The company offers all-inclusive coworking space and private office “iWork” in Downtown Tokyo.

WeWork

WeWork Companies Inc., one of the leading global flexible space providers, filed an opposition against the iWork mark on October 1, 2020, before the lapse of a two-month statutory period for the opposition, in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law.

Article 4(1)(xv) prohibits registering a trademark that is likely to cause confusion with a business of another entity.

The likelihood of confusion is a key criterion when assessing the similarity of trademarks. To establish whether there is the likelihood of confusion, the visual, phonetic, and conceptual similarity will be assessed as well as the goods and/or services involved. This assessment is based on the overall impression given by those marks, account being taken, in particular, of their distinctive and dominant components. A low degree of similarity between the goods or services may be offset by a high degree of similarity between the marks, and vice versa.

WeWork argued that “iWork” shall be deemed similar to the opponent’s senior registered mark “WeWork” (IR no. 1453286) because a mere difference of the prefix “we” and “i” would be insufficient for relevant consumers to distinguish two marks from phonetical and visual points of view.

Besides, in view of a remarkable degree of reputation and popularity of the opponent mark as a source indicator of coworking space among relevant consumers, a close association between their services, and resemblance in appearance and sound between the marks, it is unquestionable that relevant consumers are likely to conceive “WeWork” at the sight of the opposed mark “iWork” when used on the services in question.

JPO decision

To my surprise, the JPO Opposition Board did not admit the famousness of the “WeWork” mark by stating that the opponent just had 27 locations in six cities and 22,000 users in Japan at the time of filing the opposed mark, and the produced evidence was insufficient to find a high degree of recognition among domestic consumers.

In the assessment of similarity between the marks, the Board found that relevant consumers were apt to pay higher attention to the prefix of a mark. Given the short sound consisting of four syllables, a different letter and pronunciation in the prefix position shall give rise to a distinctive impression in the minds of the consumer. Both marks are undisputedly dissimilar in concept.

By taking into consideration a low degree of similarity between “iWork” and “WeWork”, and insufficient evidence to assume the famousness of “WeWork”, even if the services in dispute are closely associated with WeWork’s business, the Board had no reason to believe the opposed mark would cause confusion with WeWork when used on the disputed services in class 36 and 43.

Based on the foregoing, the Board decided the opposed mark would not be canceled in contravention of Article 4(1)(xi) and (x) of the Trademark Law and dismissed the opposition entirely.

Dot Makes Wordmark Dissimilar

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In a trademark dispute pertinent to the similarity between “.NEXT” and “NEXT”, the  Japan Patent Office (JPO) found both marks dissimilar and reversed examiner’s rejection.

[Appeal case no. 2020-650026, Gazette issued date: June 25, 2021]

“.NEXT”

Nutanix, Inc. applied for registration of a trademark “.NEXT” (see below) to be used on services in classes 35 and 41 (IR 1418062) with the JPO via the Madrid Protocol.

Class 35

Conducting trade shows and exhibitions in the fields of computers, computer software, cloud computing, hybrid cloud computing, virtualization, storage, computer resource management, and product demonstrations; none of the aforesaid services relating to navigation, aviation, land vehicles, marine vessels, or offshore platforms.

Class 41

Educational and entertainment services, namely, conducting conferences, presentations, seminars, lectures, and speeches, in the fields of computers, computer software, cloud computing, hybrid cloud computing, virtualization, storage, computer resource management; none of the aforesaid services relating to navigation, aviation, land vehicles, marine vessels, or offshore platforms.

JPO examiner’s rejection

The JPO examiner rejected the applied mark due to a conflict with senior TM registrations for wordmark “NEXT” covering similar services in classes 35 and 41.

The examiner considered that the word “NEXT” with a stylized “X” was visually separable from a dot “.” and thus a prominent portion of the applied mark as a source indicator. If so, both marks are deemed similar as a whole and thus, the applied mark shall not be registrable in contravention of Article 4(1)(xi) of the Japan Trademark Law.

To contest the rejection, Nutanix, Inc. filed an appeal to the JPO Appeal Board on June 19, 2020, and argued dissimilarity between “.NEXT” and “NEXT”.

JPO Appeal Board decision

The JPO Appeal Board found that relevant consumers are unlikely to see respective elements of the applied mark separable from visual aspect. If so, the mark shall be considered a coined word in its entirety and just gives rise to a sound of ‘dot next’ that would never be considered too long to be pronounced at a breath.

Based on the foregoing, the Board stated that the examiner erred in finding pronunciation and concept of the applied mark correctly. In assessing similarity of the marks, it is inadequate to compare the sound and meaning arising from the word “NEXT” of the applied mark with the citations.

Consequently, the Board reversed the examiner’s refusal and decided to register the applied mark by finding dissimilarity between “.NEXT” and “NEXT”.

JPO found likelihood of confusion between SONY and SONICODE

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The Japan Patent Office sided with Sony Corporation and declared invalidation of TM Registration no. 5764615 for wordmark “SONICODE” due to a likelihood of confusion with “SONY”.

[Invalidation case no. 2020-890039, Gazette issued date: July 30, 2021]

SONICODE

Field System Inc., a mobile application developer, applied wordmark “SONICODE” in standard character for registration on various goods including telecommunication apparatus, electronic machines, consumer video game programs, and its related services in class 9, 38, and 41 with the JPO on December 12, 2014 (TM App no. 2014-105218).

The mark did not face any refusal during the substantive examination and it was registered on date May 15, 2015.

Apparently, the mark has been used on mobile applications for smartphones.

SONY

SONY CORPORATION, a major Japanese manufacturer of consumer electronics products, filed an opposition against the SONICODE mark on August 5, 2015, before the lapse of a two-month statutory period for the opposition, in contravention of Article 4(1)(xi), (xv), and (xix) of the Japan Trademark Law. However, the JPO Opposition Board found both marks dissimilar and no likelihood of confusion between the marks SONY and SONICODE and dismissed SONY’s allegations entirely. [Opposition case no. 2015-900260]

On May 12, 2020, just three days before the lapse of the five-year statute of limitations, SONY CORPORATION files a petition for invalidation and alleged that the contested mark shall be invalidated based on Article 4(1)(x), (xi), (xv).

SONY argued that relevant consumers would conceive SONY at the sight of the contested mark SONICODE because of a high reputation of SONY and less distinctiveness of the term “CODE” in relation to the goods and services in question.

To bolster the arguments, SONY demonstrated how AI speakers, e.g., Amazon Alexa, Google Assist, Microsoft Cortana, Apple Siri, reacted to hear “SONICODE”. Allegedly, the AI speakers recognized it as ‘SONY code’ or ‘SONY cord’ and displayed information relating to SONY.

Field System Inc. did neither answer to the petition nor dispute at all during the invalidation procedure.

JPO decision

The JPO Invalidation Board did not question a remarkable degree of reputation, popularity, and originality of “SONY” as a source indicator of the opponent’s business and its products (telecommunication apparatus, electronic machines, consumer video game programs).

Besides, the Board found the prefix “SONI” of the contested mark gives rise to a similar appearance and pronunciation with “SONY”. Relevant consumers are likely to consider that the contested mark consists of “SONI” and “CODE”. If so, even if both marks are deemed dissimilar in their entirety, the Board has good reason to believe “SONICODE” has a certain degree of similarity to “SONY”.

In view of a close association between the goods and services in question and the opponent business, the Board concluded the contested mark shall be retroactively invalidated in contravention of Article 4(1)(xv). In the meantime, because of the dissimilarity of the marks, the Board dismissed allegations based on Article 4(1)(x) and (xi).

Dolce & Gabbana failed in a trademark opposition to block DolceSport

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The Japan Patent Office dismissed a trademark opposition claimed by the Italian luxury firm, Dolce & Gabbana against trademark registration no. 6259630 for word mark “DolceSport” in class 18, 20, 22, 25, and 28 by finding a less likelihood of confusion with “Dolce & Gabbana.”

[Opposition case no. 2020-900206, Gazette issued date: July 30, 2021]

“Dolce Sport”

Opposed mark, consisting of the word “Dolce Sport” in standard character, was filed by a Japanese company, SIS Co., Ltd. for use on various goods belonging to class 18,20, 22, 25 and 28 with the JPO on May 30, 2019 (TM Application no. 2019-83931).

The JPO admitted registration on June 15, 2020 and published for registration on July 7, 2020.

Opposition by Dolce & Gabbana

Dolce & Gabbana filed an opposition on August 19, 2020 and argued the opposed mark “Dolce Sport” shall be cancelled in contravention of Article 4(1)(xv) of the Japan Trademark Law since relevant consumes are likely to confuse the source of goods bearing the opposed mark with Dolce & Gabbana because of a close resemblance between “Dolce Sport” and a word “Dolce” that has become famous per se as a source indicator of the opponent.

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

To apply the article, it is requisite that the mark of other entities has acquired a certain degree of reputation and popularity among relevant consumers in Japan.

Opponent produced evidence to demonstrate the word “Dolce” per se has been used on their goods, e.g. perfume, cosmetics, and bags. See below.

JPO decision

The JPO Opposition Board did not admit the term “Dolce” per se has become famous as a source indicator of Dolce & Gabbana by stating that famous brand “Dolce & Gabbana” is obviously represented adjacent to the term “Dolce” on their goods. If so, the Board has good reason to believe that it would be unclear whether the term has acquired a certain degree of reputation as a source indicator of the opponent from the produced evidence. Besides, the Board questioned whether “Dolce” has been known as an abbreviation of “Dolce & Gabbana” due to the same reason.

Based on the foregoing, the Board decided that, even if the opposed mark “Dolce Sport” has a medium degree of similarity with the “Dolce” and the goods in question are somewhat associated with the opponent business, relevant consumers are unlikely to confuse or misconceive a source of the opposed mark with Dolce & Gabbana by taking account of less originality of the term “Dolce” having a meaning of ‘sweet; dessert’ in Italian language and lack of good-will protectable under Article 4(1)(xv) enough to indicate a source of “Dolce & Gabbana”.

Trademark Dispute over “RED HOT”

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The Japan Patent Office (JPO) dismissed trademark opposition against wordmark “REDHOT” written in Katakana character opposed by The French’s Food Company LLC who owns senior trademark “REDHOT” and “FRANK’S REDHOT” in class 30.

[Opposition case no. 2020-900289, Gazette issued date: June 25, 2021]

Opposed mark “REDHOT”

Opposed mark, consisting of the word “REDHOT” written in Japanese Katakana character (see below), was filed by Kentucky Fried Chicken Japan (KFC) for use on fried chicken, meat, processed meat products, and other goods in class 29 and hamburgers, hot dog sandwiches, bread rolls, and other goods except for seasonings and spices in class 30 with the JPO on November 6, 2018 (TM Application no. 2018-142676).

KFC Japan has begun selling the “Red Hot Chicken”, red and white pepper with a touch of habanero, giving it a crisp, spicy flavor and the taste of domestic chicken in limited quantities since 2004.

FRANK’S REDHOT

The French’s Food Company LLC, an owner of the #1 brand of hot sauce “Frank’s RedHot” in America, filed an opposition on November 2, 2020.

Opponent argued that the opposed mark shall be canceled in contravention of Article 4(1)(xi) and (xv) because of similarity to senior TM Reg nos. 4723565 and 5523112 for wordmark “REDHOT” on seasonings and spices in class 30 (Citation 1), and a likelihood of confusion with TM Reg no. 5523111 for wordmark “FRANK’S REDHOT” (Citation 2) which has become famous as a source indicator in connection with hot sauce as a result of substantial and continuous use since 1920.

JPO decision

The Opposition Board of JPO found that Article 4(1)(xi) shall not be applicable to the opposed mark.

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

Since the designated goods, seasonings and spices, of the opposed mark are deemed dissimilar to any other goods belonging to class 30. In so far as respective goods in question are dissimilar, the opposed mark shall not be subject to the article even though the mark is identical with Citation 1.

The Board questioned whether the mark “FRANK’S REDHOT” has acquired a certain degree of reputation and popularity among relevant consumers in Japan by taking account of the produced evidence. The mere fact that the opponent’s hot sauces get to be a popular choice at specific dining restaurants is insufficient to support the famousness of Citation 2 in Japan.

Besides, relevant consumers would be easily able to distinguish the opposed mark with “FRANK’S REDHOT” by means of the distinctive term “FRANK’S” of Citation 2.

Given the low degree of similarity and unproven famousness as a source indicator of the opponent, the Board concluded it is unlikely that relevant consumers would confuse the source of goods bearing the opposed mark with the opponent or Citation 2 from the totality of circumstances, and thus dismissed the opposition entirely.

Hummel scores win in a trademark dispute over Chevron

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Hummel gained a victory in a trademark opposition against Japanese TM registration no. 6190746 for sixfold chevron right device mark due to a conflict with Hummel Chevron.
[Opposition case no. 2020-90007, Gazette issued date: May 28, 2021]

TM Reg no. 6190746

Opposed mark, consisting of a sixfold Chevron right device, was filed by a Japanese company for use on apparel and shoes in class 25 on November 14, 2018.

The JPO examiner did not raise her objection to the opposed mark and granted protection on September 27, 2019.

Hummel Chevron

On January 14, 2020, Hummel Holding A/S, the leading sportswear company from Denmark, filed an opposition and argued the opposed mark shall be canceled in contravention of Article 8(1) of the Trademark Law because of similarity to senior trademarks that consist of multiple Chevron right, left or down devices (see below) in class 25 owned by Hummel.

Article 8(1) is a provision to prohibit registration of any junior mark that is identical with, or similar to earlier applied marks based on the “first-to-file” principle.

Apparently, Hummel has been eager to claim broader protection of the Hummel Chevron.

JPO decision

Among the citations, the JPO Opposition Board found the opposed mark is confusingly similar to the sixfold Chevron down mark from a visual point of view regardless of dissimilar in direction of Chevron based on the finding that both marks would not give rise to any specific meaning and different pronunciation. Besides, the goods in question are deemed identical or similar respectively.

Since the opponent mark was applied for one month before the opposed mark on October 17, 2018, Hummel is entitled to claim a prior application right under the article.

Based on the foregoing, the JPO side with Hummel and decided to cancel the opposed mark entirely in contravention of Article 8(1).

The Opposition Board did not mention whether the opposed mark is deemed similar to the Hummel Chevron other than the sixfold down.