カテゴリー: Trademark Opposition

Trademark Opposition: FITBIT vs Fitbeing

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The Japan Patent Office (JPO) did not side with Google LLC in an opposition against TM Reg no. 6715471 for wordmark “Fitbeing” in class 14 by finding dissimilarity to and unlikelihood of confusion with “Fitbit” wearable devices.
[Opposition case no. 2023-900195, decided on June 28, 2024]

“Fitbeing”

Wordmark “Fiteing” was applied for registration in relation to “clocks and watches; watch bands and straps; stopwatches; watch cases [parts of watches]; clocks and watches, electric; chronometric instruments; presentation boxes for watches” in class 14 by a Chinese company with the JPO on January 4, 2023 (TM App no. 2023-172).

The JPO examiner did not issue an office action to the mark and granted protection on June 28, 2023. Subsequently, the mark was published for post-grant opposition on July 18, 2023.

Opposition by Google LLC

To oppose registration within a statutory period of two months counting from the publication date, Google LLC filed an opposition against the opposed mark on August 31, 2023.

Google argued the opposed mark shall be canceled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law by citing earlier trademark registrations for the wordmark “FITBIT” that has allegedly become famous as a source indication of Google’s wearable devices.

Google argued that due to the same spelling that starts with “FITB”, relevant consumers with an ordinary care would consider the opposed mark “Fitbeing” confusingly similar to the cited mark “FITBIT” from visual, aural and conceptual points of view.

By taking int consideration the high degree of reputation and popularity of the mark “FITBIT”, it is likely that the consumers would confuse a source of goods in question bearing the opposed mark with Google or their devices.

JPO decision

The JPO Opposition Board found that, considering the evidence submitted, the mark “FITBIT” has not been widely recognized among the consumers to indicate Google’s wearable devices even if some of them may have known.

Secondly, the Board assessed the similarity of marks and states:

  • Comparing the marks “Fitbeing” and “FITBIT” visually, although they have the same initial letter “Fitb (FITB)”, there is a clear difference in the endings “ing” and “IT” and the number of letters is different from 8 to 6. Therefore, the two marks are visually different.
  • As regards pronunciation, although both marks have the same initial sound ‘fitbi’, they differ in the ending ‘-ing’ and ‘it’ and the number of sounds is not as long (8 and 6 sounds). This difference would make a meaningful difference in the overall pronunciation.
  • The conceptual comparison is not possible because both marks have no meaning.
  • Accordingly, the Board has reason to believe that both marks are dissimilar and unlikely to cause confusion, taking into account the overall consideration as well as the impressions, memories, associations of the consumers.

In light of the foregoing, the Board dismissed the entire opposition and granted status quo protection to the mark “Fitbeing” in class 14.

Guerlain Unsuccessful Opposition to “MITSOUKO” mark

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The Japan Patent Office (JPO) dismissed an opposition filed by Guerlain, a legendary French perfume house, against TM Reg no. 6734165 for wordmark “mitsouko” in class 44 due to unlikelihood of confusion with perfume “MITSOUKO” by Guerlain.
[Opposition case no. 2023-90025, decided on June 27, 2024]

“mitsouko”

Yugen Kaisha AMERICA, a Japanese business entity, filed a trademark application for wordmark “mitsouko” in standard character for use on “beauty salon services, barbershops, massage, dietary and nutritional guidance, therapy services, rental of apparatus and instruments for use in beauty salons or barbers’ shops, providing medical information, manicuring, hair implantation” in class 44 with the JPO on March 22, 2023 (TM App no. 2023-30416).

The JPO examiner did not issue an office action to the mark and granted protection on September 5, 2023. Subsequently, the mark was published for post-grant opposition on September 15, 2023.

Opposition by Guerlain

To oppose registration within a statutory period of two months counting from the publication date, Guerlain, a legendary French perfume house, filed an opposition against the opposed mark on November 13, 2023.

Guerlain argued the opposed mark shall be canceled in contravention of Article 4(1)(xv) and (xix) of the Japan Trademark Law.

Article 4(1)(xv) prohibits the registration of trademarks that are likely to cause confusion with the business of other entities.

Guerlain contended that given the remarkable reputation and popularity of the perfume “MITSOUKO” by Guerlain and close association between perfume and the services in question, relevant consumers are likely to confuse a source of services bearing the opposed mark with Guerlain.

JPO decision

The JPO Opposition Board found that, considering the evidence submitted, the mark “MITSOUKO” may be recognized by persons having a deep knowledge of perfume, but there is a reasonable doubt whether the mark is widely known among relevant consumers to indicate the source of Guerlain perfume.

In addition, in view of the low degree of relatedness between beauty salon services, barbershops, massage, etc. and “perfume”, even if both marks are almost identical, it is unlikely that traders and consumers at the sight of the opposed mark used in relation to the service in question will associate or recall the cited mark, and consider a source of the services from an entity economically or systematically connected with Guerlain.

Therefore, the Board has no reason to believe the opposed mark shall be subject to Article 4(1)(xv) of the Trademark Law.

Even if the applicant has applied for the opposed mark with knowledge of Guerlain’s perfume “MITSOUKO”, the fact is insufficient to infer that the company has the purpose of making unfair profits or the purpose of causing harm to others. The submitted evidence does not reveal any fact to demonstrate a malicious intention by the applicant. If so, the opposed mark shall not be cancelled under Article 4(1)(xix).

Based on the above findings, the Board conclude that the opposition was without merit and thus granted protection to the opposed mark as the status quo.

Trademark Opposition: HUGO vs. Hugoo

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In a recent administrative decision, the Japan Patent Office (JPO) dismissed an opposition filed by German luxury fashion house Hugo Boss against Japanese TM Reg no. 6706891 for stylized word mark “Hugoo” in class 18.
[Opposition case no. 2023-900185, decided on June 11, 2024]

Opposed mark

Opposed mark, filed on May 31, 2022, by GRIT Incorporated, consists of the stylized word “Hugoo” (see below). The goods sought for registration are bags, baby carriers, sling bags for carrying babies and infants in class 18. GRIT sells sling bags for carrying babies and infants via their website.

The JPO granted protection to the mark on May 12, 2023, and published it for post-grant opposition on June 21, 2023.

Opposition by Hugo Boss

HUGO BOSS Trademark Management GmbH & Co KG filed an opposition against the opposed mark on August 21, 2023, and claimed the opposed mark “Hugoo” shall be canceled in contravention of Article 4(1)(xi) of the Japan Trademark Law by citing its owned earlier trademark registration nos. 2301695, 3265268, IR776148, IR1657111, IR1676995 for the mark “HUGO”.

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

HUGO BOSS argued that a mere difference on the 2nd letter “O” in the last is trivial from visual and phonetical points of view. Accordingly, the opposed mark “Hugoo” shall be considered similar to the cited mark “HUGO”. Besides, the goods in question are all similar to designated goods under the cited marks.

JPO Decision

The JPO Opposition Board denied similarity between “HUGO” and “Hugoo” by stating that:

There is a difference in the ending ‘oo’ or ‘O’. The difference has no small effect on the visual impression of the appearance of both marks, which are composed of five and four relatively short characters. Therefore, it is reasonable to assume that both marks are clearly distinguishable in appearance.

From pronunciation, it is reasonable to conclude that both sounds are clearly audible and distinguishable since respective sound of both are clearly different.

Furthermore, both marks do not give rise to a specific meaning. Therefore, it is not possible to compare the conception of them.

Accordingly, both marks are distinguishable in appearance and sound, and incomparable in concept.

By making global assessment of the impression, memory and association of respective mark given to traders and consumers as a whole, the Board has reason to believe that both marks should be considered dissimilar without any possibility of confusion.

In the event that both marks are dissimilar, the opposed mark shall not be cancelled in contravention of Article 4(1)(xi), even though the goods in question are similar to those of the cited marks.

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

Chrysler Lost Trademark Opposition against “GEEP”

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The Japan Patent Office (JPO) dismissed an opposition filed by Fiat Chrysler Automobiles (FCA US) LLC against TM Reg no. 6689119 for the mark “GEEP” with device (cl. 18, 25) due to dissimilarity to and unlikelihood of confusion with the mark “JEEP”.
[Opposition case no. 2023-900142, decided on May 31, 2024]

“GEEP”

A Japanese individual filed a trademark application for the mark “GEEP” with device (see below) for use on goods “bags and pouches; umbrellas; canes; clothing for pets” and others in class 18, and “clothing; belts; footwear; masquerade costumes; sports shoes; sportswear” and others in class 25 with the JPO on October 14, 2022 (TM App no. 2022-118091).

The JPO examiner did not issue an office action to the mark and granted protection on April 4, 2023. Subsequently, the mark was published for post-grant opposition on April 20, 2023.

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 June 19, 2023.

FCA argued the opposed mark shall be canceled in contravention of Article 4(1)(vii), (xi), (xv) 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 “GEEP” and the opponent’s famous earlier registered mark “JEEP.”

Article 4(1)(xi) is a provision that prohibits the registration of a junior mark that is deemed identical with, or similar to, any earlier registered mark.

FCA contended that the opposed mark “GEEP” is similar to its own trademark “JEEP,” a globally famous automobile brand given a mere difference in the first letter “G” and “J”. Besides, the goods in question are identical or similar.

Article 4(1)(xv) prohibits the registration of trademarks that are likely to cause confusion with the business of other entities.

FCA contended that given the high degree of resemblance between the opposed mark and “JEEP”, relevant consumers of the goods in question are likely to confuse a source of goods bearing the opposed mark with the opposing party.

JPO decision

The JPO Opposition Board admitted that the mark “JEEP” has been widely recognized among general consumers to indicate the source of FCA’s goods and business.

However, the Board found both marks dissimilar on the grounds that:

  1. There are visual distinctions in the presence and absence of the blue device and between the first letter “G” and “J”. Thees differences are significant and clearly distinguishable in appearance. Consequently, both marks are anything but confusingly similar in appearance.
  2. The opposed mark does not give rise to a specific concept, whereas the cited mark has a meaning of “FCA’s automobile brand.” Accordingly, there is no risk of confusion in concept.
  3. Relevant consumers would consider respective mark different even if both marks have the same sound, because of clear distinction in appearance and concept as well as the overall impression of both marks.

By taking account of a low degree of similarity between the opposed mark and “JEEP”, and remote association between the goods in question and automobiles, the Board has no reason to believe that relevant consumers are unlikely to confuse the source of goods bearing the opposed mark with “JEEP”.

Based on the above findings, the Board conclude that the opposition was without merit and thus granted protection to the opposed mark as the status quo.

Trademark battle: FORTNITE vs FORTNIGHT

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In an invalidation trial against TM Reg no. 6389929 for word mark “FORTNIGHT” in classes 9, 16, 28, 35, 41 and 43, the Japan Patent Office (JPO) did not rule in favor of Epic Games, Inc. due to an unlikelihood of confusion with “FORTNITE”.
[Invalidation case no. 2023-890068, decided on May 9, 2024]

FORTNIGHT

A Japanese company sought registration of word mark “FORTNIGHT” in standard character for use on various goods and services in classes 9, 16, 28, 35, 41 and 43 (including games) with the JPO on June 4, 2018 (TM App no. 2028-79647).

The JPO examiner rejected the mark due to a likelihood of confusion with famous game software and distribution platform “FORTNITE” managed by Epic Games, Inc.

However, the JPO Appeal Board disaffirmed the rejection by stating that there is no reason to find “FORTNITE” has been widely recognized among relevant consumers to indicate Epic business and the applicant deleted games from designation. If so, it is unlikely that relevant consumers would not confuse the source of goods and service bearing “FORTNIGHT” with Epic’s “FORTNITE”.

The mark “FORTNIGHT” was registered on June 8, 2021.

Invalidation action by Epic Games, Inc.

Epic Games, Inc. is an American video game development and distribution company, widely known for the success of “Fortnite”, a free multiplayer online video game first released in 2017, and its game marketplace. On August 10, 2021, Epic filed a post-grant opposition against TM Reg no. 6389929 “FORTNIGHT” on August 10, 2021, but the opposition was unsuccessful (Opposition case no. 2021-900304).

On August 22, 2023, Epic filed an invalidation action and claimed that the mark “FORTNIGHT” should be invalidated in contravention of Article 4(1)(xv) and (xix) of the Japan Trademark Law.

Epic repeatedly argued “FORTNIGHT” has a high degree of similarity to “FORTNITE” from visual, phonetical and conceptual points of view. Taking account of famous online game “FORTNITE” among game users and close relation between online games and the goods and services in question, relevant consumers are likely to confuse “FORTNIGHT” with “FORTNITE”.

Given that the initial filing designated the game in question, it is presumed that the company had knowledge of the well-known online game software “FORTNITE” and aimed to benefit from its reputation.

JPO decision

The JPO Invalidation Board found that “FORTNITE” has been widely recognized to indicate video games of Epic among consumers and traders in video game industry. However, given that the launch of the video games in Japan precedes the application date of the mark “FORTNIGHT” by three months, such recognition would be limited to the industry.

With regard to the similarity of the marks, the Board stated, “Although “FORTNIGHT” and “FORTNITE” share the same sound, they are distinguishable in appearance, and the concepts are not comparable. In assessing the overall impression, the Board has a reason to find a low degree of similarity between the marks.”

In light of the aforementioned findings, the Board determined that relevant consumers are unlikely to confuse the source of the goods and services in question bearing the mark “FORTNIGHT” with “FORTNITE.”

Furthermore, there is no evidence to suggest that the applicant had any malicious intention of free-riding on or damaging Epic’s online video games “FORTNITE.”

Consequently, the Board dismissed the invalidation action and declared the validity of TM Reg. No. 6389929.

Tennis King Roger Federer Defeated out of the Court

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The Japan Patent Office (JPO) dismissed an opposition filed by Tenro AG, a Swiss company established by Tennis King Roger Federer, against Japanese TM Reg no. 6691122 for mark “Roger King” in class 28 by finding dissimilarity to IR nos. 1529136 “THE ROGER” & 1529148 “ROGER” and unlikelihood of confusion.
[Opposition case no. 2023-900151, decided on April 23, 2024]

Roger King

Hirota Gold Inc. applied trademark application for stylized word mark “Roger King” (see below) in relation to golf clubs, golf club head covers, golf bags, golf gloves, golf equipment, and sports equipment of class 28 with the JPO on February 1, 2022 (TM App no. 2022-11297).

The applicant is engaged in the business of promoting golf clubs bearing the applied mark.

https://www.hirotagolf.jp/product-group/3

The JPO granted protection of the applied mark on April 14, 2023, and then published it for post-grant opposition on April 27, 2023.

Opposition by Tenro AG

Tenro AG, a Swiss company established by Tennis King Roger Federer, filed an opposition against the applied mark “Roger King” and claimed the mark shall be canceled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law by citing their owned earlier trademark registration nos. IR 1529136 for wordmark “THE ROGER” and IR 1529148 for wordmark “ROGER” in class 25.

Tenro AG argued that when “Roger King” is used in connection with the designated goods in question (athletic equipment), relevant consumers will associate the famous Roger Federer. Since Mr. Federer is called “King Roger”, they will undoubtedly consider the opposed mark as the name of Mr. Federer. Consequently, the opposed mark and the cited marks are deemed similar because they share the same sound and appearance, and both give rise to the same meaning as the famous Roger Federer.

JPO decision

Initially, the JPO Opposition Board found that although Roger Federer is widely recognized as a prominent tennis player, he is not typically abbreviated as “Roger.” Furthermore, there is no concrete evidence indicating the scope and method of advertising and market share in Japan for goods using the cited marks. Therefore, the Board has no reason to believe that the cited marks are widely recognized as a source indicator of the claimant’s business among Japanese consumers.

Secondly, in evaluating the similarity of the marks, the Board held that, from appearance and sound, both marks are clearly distinguishable as a whole due to the presence and absence of “THE” and/or “KING”. Besides, the opposed mark does not have a specific concept. Meanwhile, the cited marks give rise to a meaning of a man’s name. If so, there is no similarity and confusion in concept.

In the absence of a convincing demonstration of the fame of the cited mark and a low degree of similarity between the opposed mark and the cited marks, it is unlikely that relevant consumers will confuse a source of goods in question bearing the opposed mark with Mr. Roger Federer or the claimant’s business.

Based on the foregoing, the Board decided that the opposed mark shall not be canceled in contravention of Article 4(1)(xi) and (xv) and dismissed the opposition entirely.

ZARA Unsuccessful Opposition against TM “LAZARA”

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On April 22, 2024, the Japan Patent Office (JPO) dismissed an opposition filed by Industria de Diseño Textil, SA (INDITEX), owner of the fashion brand “ZARA”, against TM Reg no. 6699667 for word mark “LAZARA” in classes 25 due to dissimilar marks and unlikelihood of confusion with “ZARA”.
[Opposition case no. 2023-900175]

Opposed mark

Opposed mark, consisting of a wordmark “LAZARA” in standard character, was applied for registration by Japanese individual to be used on clothing in class 25 on November 20, 2022, and published for post-grant opposition on May 29, 2023.

Opposition by Inditex

Opponent, INDITEX, one of the world’s largest fashion retailers and owner of the fashion brand “ZARA”, filed an opposition on July 27, 2023 before the lapse of a two-month statutory period and claimed opposed mark “LAZARA” shall be cancelled in contravention of Article 4(1)(xi), (xv) and (xix) of the Japan Trademark Law by citing earlier trademark registrations (TM Reg no. 4108998 and IR no. 752502 in class25) for word mark “ZARA”.

Article 4(1)(xi) is a provision that prohibits the registration of a junior mark that is deemed identical with, or similar to, any earlier registered mark.

INDITEX contended that the opposed mark “LAZARA” is similar to its own trademark “ZARA,” a globally renowned fast-fashion brand given the suffix “LA” is a descriptive word that merely indicates the definite article in Spanish. Besides, the goods in question are identical.

Article 4(1)(xv) prohibits the registration of trademarks that are likely to cause confusion with the business of other entities.

INDITEX contended that the mark “ZARA” has become renowned among relevant consumers in connection with apparel. Given the high degree of resemblance between “LAZARA” and “ZARA” as well as the goods, it is likely that consumers will confuse or misconceive the goods bearing the opposed mark “LAZARA” with “ZARA.”

Article 4(1)(xix) proscribes the registration of a trademark that is identical with or similar to another entity’s famous mark if the trademark is intended for the purpose of gaining unfair profits or causing damage to the entity.

INDITEX contended that the applicant had filed the opposed mark with the intention of obtaining unfair profits through free-riding on the well-known trademark “ZARA”.

JPO decision

The JPO Opposition Board held that “ZARA” has acquired a certain degree of recognition among relevant consumers in Japan and foreign countries as a source indication of clothing, however, the Board denied a high degree of recognition of the mark among the consumers by taking into consideration the produced evidence. The Board criticized “INDITEX produced precedent administrative decisions as evidence that admitted famousness of the mark “ZARA” in Japan. But, famousness of trademark shall be assessed on a case-by-case basis based on relevant facts and evidence produced in each case. Therefore, the precedent decisions would not bind the ongoing case. INDITEX did not reveal sales figure and expenditure for advertisement in connection with apparel bearing the mark ZARA.”

Furthermore, the Board found the consumers would perceive the opposed mark “LAZARA” as a whole, which would suggest an unfamiliar foreign word from a visual perspective. If so, “LAZARA” and “ZARA” are evidently dissimilar in appearance and pronunciation because of the distinction between the presence and absence of the letter “LA” in the suffix and the overall sound. As for the concept, it is not comparable since either mark does not give rise to any specific meaning. Consequently, both marks are unlikely to cause confusion due to their dissimilarity.

Additionally, the Board noted that INDITEX had not presented any evidence to substantiate their assertion that the applicant had filed the opposed mark for the purpose of gaining unfair profits or causing harm to INDITEX.

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

COCO vs. KOKO

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In a recent administrative decision, the Japan Patent Office (JPO) found that the trademarks “CoCo” and “koko” are dissimilar and unlikely to cause confusion.
[Opposition case no. 2023-900250, decided on March 25, 2024]

“koko”

A wordmark “koko” in standard character was applied for registration with the JPO by a Japanese individual in relation to services of class 35, 41 and 42 including educational and instruction services relating to arts, crafts, sports or general knowledge (cl. 41) on October 7, 2022 (TM App no. 2022-115511).

The JPO examiner issued an office action due to a conflict with TM Reg nos. 6327674 and 6327645 for the mark “KOKO HOTELS” and IR no. 950884-A for the mark “KOKO”.

The applicant was successful in a partial non-use cancellation action to IR no. 950884-A and argued in a response dissimilarity of the mark between “KOKO HOTELS” and “koko”.

Consequently, the examiner withdrew her rejection and granted protection of the mark “koko” on September 8, 2023. After registration (TM Reg no. 6737526), the mark was published for a post-grand opposition on September 28, 2023.

Trademark Opposition

The owner of earlier TM Reg no. 6167547 for wordmark “CoCo” filed a partial opposition on November 6, 2023, and claimed cancellation of the mark “koko” in relation to educational and instruction services relating to arts, crafts, sports or general knowledge of class 41 based on Article 4(1)(xi) of the Japan Trademark Law.

Article 4(1)(xi) is a provision to prohibit registration of a junior mark that is deemed identical with, or similar to, an earlier registered mark.

The claimant argued that the opposed mark “koko” shall be deemed similar to “CoCo” since both marks have the same sound. Besides, the service “educational and instruction services relating to arts, crafts, sports or general knowledge” is similar to ballet school services in class 41 designated by the cited mark. Therefore, the opposed mark is subject to cancellation in contravention of Article 4(1)(xi).

JPO decision

The JPO Opposition Board found the opposed mark “koko” is a coined word without any specific meaning. In the meantime, the cited mark “CoCo” has a meaning of the coconut palm as described in English dictionary.

The Board stated when comparing visual aspect of respective mark, overall impressions are different and unlikely to cause confusion because as they differ in the first and third letters “k” and “C” among four letters in total.

Although both marks share the same sound, the Board believes that they are sufficiently distinguishable in terms of concept and appearance regardless of similarity in respective service. Therefore, it is unlikely that relevant consumers will confuse the source of the service in question based on a global assessment of visual, phonetic, and conceptual factors.

Based on the foregoing, the JPO dismissed the entire opposition and decided the opposed mark shall not be subject to Article 4(1)(xi).

Trademark dispute: “CLUB MOET” vs “Moët & Chandon”

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The Japan Patent Office (JPO) cancelled trademark registration no 6687666 due to a likelihood of confusion with ‘Moët’, which is known as an abbreviation for the world-famous ‘Moët & Chandon’ champagne.
[Opposition case no. 2023-900130, decided on February 29, 2024]

CLUB MOET

Opposed mark, consisting of words “CLUB” and “MOET” combined with a rose design (see below), was filed on June 27, 2021 for use on restaurant services in class 43 by a Japanese individual.

The JPO examiner rejected the mark due to a likelihood of confusion with famous mark “Moët” in connection with alcoholic beverages based on Article 4(1)(xv) of the Trademark Law on January 14, 2022. To contest the decision, the applicant filed an appeal with the JPO and claimed to cancel the examiner’s rejection.

On March 16, 2023, the JPO Appeal Board disaffirmed the examiner’s rejection and found that the mark would not contain the term “MOET” visually because of a rose design in between “M” and “ET”. If so, relevant consumers are unlikely to associate the mark with “Moët & Chandon” even if the term “MOET” has acquired a certain degree of recognition as an abbreviation of world-famous “Moët & Chandon” champaign. [Appeal case no. 2022-5881]

Accordingly, the Board granted protection of the mark and published for a post-grant opposition on April 17, 2023.

MHCS – OPPOSITION

On May 31, 2023, MHCS, the producer of the famous Moët & Chandon champagne, sought cancellation of the opposed mark in contravention of the same article, and claimed the opposed mark is likely to cause confusion with “Moët & Chandon” when used on restaurant service in class 43.

MHCS argued that the combination of literal elements and the rose design can be considered to represent the term ‘MOET’, as the rose design resembles a stylised letter ‘O’. As ‘CLUB’ lacks distinctive character in relation to restaurant service, the term ‘MOET’ should be considered a significant portion as a source indicator.

If so, relevant consumers are likely to associate or misconnect the restaurant using the opposed mark with “Moët & Chandon” due to the high degree of reputation and popularity of the mark “MOET” as an abbreviation of the world-famous champaign, as well as the close resemblance between the opposed mark and “MOET”.

JPO decision

The JPO Opposition Board ruled in favor of MHCS, stating that both ‘Moët & Chandon’ and its abbreviation ‘Moët’ have gained significant recognition as a leading champagne brand distributed by MHCS.

The Board determined that the rose design’s outline is almost circular and can be substituted with the letter ‘O’. Therefore, the combination of the literal elements and the rose design will be identified as the term ‘MOET’ in its entirety.

The difference between ‘MOET’ and ‘Moët’ is insignificant. The term ‘CLUB’ lacks distinctiveness in relation to the service in question. Therefore, the Board has reason to find a high degree of similarity between the opposed mark and ‘Moët’.

Besides, there is a certain degree of association between champagne and restaurant services.

Based on the foregoing, the Opposition Board decided that found relevant consumers are likely to confuse a source of restaurant using the opposed mark with MHCS or any business entity that is economically or systematically connected with the opponent. As a result, the opposed mark was cancelled in contravention of Article 4(1)(xv).

RIMOWA Unsuccessful in Trademark Opposition

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On February 26, 2024, the Japan Patent Office (JPO) dismissed an opposition filed by Rimowa GmbH against TM Reg no. 6701836 for wordmark “RIMOWA” written in Japanese character in class 38 and 42 by finding dissimilarity to earlier IR no. 1303010 “Rimowa Electronic Tag”.
[Opposition case no. 2023-900179]

Opposed mark

Opposed mark, consisting of three Japanese hiragana character “りもわ” that corresponds to the Japanese transliteration of “RIMOWA”, was flied with the JPO by Computer Engineering & Consulting Ltd. (CEC) a Japanese company, for use on ‘Telecommunication; Providing online forums; Communications by mobile phones; Streaming of data; Electronic bulletin board services [telecommunications services]; Video-on-demand transmission; Videoconferencing services’ in class 38 and ‘Providing computer programs on data networks; Software as a service [SaaS]; Platform as a service [PaaS]; Providing virtual computer systems through cloud computing; Providing computer software for virtual reality’ in class 42 on Nov 21, 2022 (TM App no. 2022-133281).

The JPO examiner issued an office action based on Article 4(1)(xi) of the Japan Trademark Law by citing IR no. 1452467 “RIMOWA” (cl. 9) owned by Rimowa GmbH.

As the applicant deleted the services in class 42 that conflict with the goods in class 9 designated under IR no. 1452467, the examiner granted protection of the mark on May 12, 2023.

The applicant uses the mark in relation to virtual office services. If this is the case, the mark indicates an abbreviation of ‘Remote working’.

Opposition by RIMOWA

Rimowa GmbH, the renowned German luxury luggage-maker, filed an opposition with the JPO on August 7, 2023 and claimed cancellation of the opposed mark in contravention of Article 4(1)(xi) by citing IR no. 1303010 for wordmark “Rimowa Electronic Tag” that covers services in class 38 and 42.

Rimowa argued that the term ‘Rimowa’ is well-known among relevant consumers as a high-end luggage brand and should play a significant role in identifying the source of services in classes 38 and 42. This is because the term ‘Electronic Tag’ is less distinctive in relation to these services. Therefore, the opposed mark may be confusingly similar to the cited mark from a visual point of view.

JPO decision

The JPO Opposition Board found the opposed mark is not an ordinary word in dictionaries and has a sound of “Rimowa” but does not give rise to any specific meaning.

Regarding the cited mark, the Board determined that it should be evaluated as a whole, rather than based on the individual words ‘Electronic Tag’. This approach considers the tight combination of all the letters in the cited mark.

If so, the Board stated that there is no reason to believe that the term ‘Rimowa’ is a significant part of the cited mark as a source indicator.

When comparing the opposed mark to the cited mark in terms of appearance, it is easy to distinguish between them due to the obvious differences in characters (hiragana and alphabets) and the number of letters. In terms of pronunciation, the term ‘Electronic Tag’ makes a clear difference in the overall sound of two marks. Therefore, it is easily distinguishable when pronounced, even though the initial sound is the same. Furthermore, in terms of concept, neither of the two marks produces a specific meaning, making them incomparable. Therefore, considering these findings and circumstances, there is no risk of confusion regarding the origin, even when they are used for the same or similar services.

Based on the above, the Board found that both marks were dissimilar and decided to dismiss all allegations.