Calvin Klein vs Cailin Kailun

The Japan Patent Office (JPO) dismissed an opposition against TM Reg no. 6686442 for wordmark “Cailin Kailun” in class 25 claimed by Calvin Klein Trademark Trust who argued a likelihood of confusion with “Calvin Klein”.
[Opposition case no. 2023-900108, Gazette issued date: January 26, 2024]


Cailin Kailun

A Chinese individual applied for registration of the wordmark “Cailin Kailun” in standard characters for use on coats, suits, trousers, T-shirts, dresses, socks, stockings, underwear and other clothing, and sports shoes in class 25 on September 1, 2022.

Apparently, men’s underwear bearing the mark is sold online.

The JPO examiner granted protection of the mark on January 30, 2023.


Opposition by Calvin Klein

On May 15, 2023 within two-month statutory deadline starting from the issued date of TM gazette on April 12, 2023, Calvin Klein Trademark Trust filed an opposition against the Cailin Kailun mark and claimed cancellation in contravention of Article 4(1)(vii) and (xv) of the Trademark Law.

Calvin Klein argued that the opposed mark “Cailin Kailun” is confusingly similar to a global fashion brand “Calvin Klein” in appearance and sound. In view of a high degree of distinctiveness and popularity of the “Calvin Klein” mark and close relatedness between the goods in question and the business lineup of Calvin Klein, relevant consumers with an ordinary care would confuse a source of the goods in question bearing the mark “Cailin Kailun” with Calvin Klein even if both marks are not similar in concept.


JPO decision

The JPO Opposition Board admitted the cited mark “Calvin Klein” has been well-known among consumers as a source indicator of the claimant’s business in relation to clothing.

In the meantime, the Board denied similarity of the marks by assessing clear distinctions in appearance, sound and meaning.

Comparing both marks, it is obvious that they start with the same spelling of ‘Ca’ at the first word, and ‘K’ at the second word, and end with ‘n’ at both words. However, because of clear distinction at the other letters, they are easily distinguishable in appearance.

Although both marks have the same sounds at the beginning, in the fourth and last, due to severe difference in other five sounds, they are audibly distinguishable.

There is no similarity in concept because the opposed mark has no meaning at all. Meanwhile, the cited mark gives rise to a meaning of “famous brand called Calvin Klein”.

Given a low degree of similarity between the marks, the Board did not find any reason to believe that relevant consumers would associate or connect the goods bearing the opposed mark with “Calvin Klein” even though the goods in question is highly related to the business lineup of Calvin Klein.

Based on the foregoing, the Board found the opposed mark shall not be cancelled in contravention of Article (1)(vii) and (xv), and decided to dismiss the opposition entirely.

New Balance Unsuccessful Opposition against “nyan balance” mark

On December 22, 2023, the Japan Patent Office (JPO) dismissed an opposition filed by New Balance Athletics, Inc. against TM Reg no. 6669617 for the “nyan balance” mark with a landing cat device due to dissimilarity to and unlikelihood of confusion with “NEW BALANCE”.
[Opposition case no. 2023-900073]


“nyan balance”

A Japanese individual applied a composite mark consisting of the word “nyan balance” and a landing cat device (see below) for use on apparel, headgear, footwear, sports shoes, and sportswear in class 25 with the JPO on May 26, 2022 (TM App no. 2022-65756).

“Nyan” is known as the sound cats make in Japan. Because of it, “nyan balance” reminds us of a combination of cat sounds and “balance”.

The JPO examiner allowed registration of the opposed mark on February 7, 2023 without raising any objection, and published it for post-grant opposition on February 15, 2023.


Opposition by NEW BALANCE

To oppose registration within a statutory period of two months counting from the publication date, New Balance Athletics, Inc. filed an opposition against the “nyan balance” mark on March 31, 2023.

NEW BALANCE argued the opposed mark shall be canceled in contravention of Article 4(1)(vii), (xi), (xv), and (xix) of the Japan Trademark Law because of the remarkable reputation and popularity of the NEW BALANCE brand in relation to apparels and shoes, and a close resemblance between the literal portion “nyan balance” of opposed mark and famous brand “NEW BALANCE” to the extent that relevant consumers are likely to confuse a source of the goods in question bearing the opposed mark with “New Balance”.

In the opposition, NEW BALANCE pointed out a fact that the applicant once sought registration of a mark containing famous “NB” logo (see below. TM App 2022-65755) with the JPO. Since he did not make a response to the examiner’s rejection that asserted a likelihood of confusion with NEW BALANCE and a malicious intent to obtain unjustifiable benefits by using the similar mark to famous “NB” logo, the opponent alleged the applicant must have had a bad faith in filing the opposed mark.


JPO decision

Astonishingly, the JPO Opposition Board did not admit a high degree of popularity and reputation of “NEW BALANCE” brand as a source indicator of the opponent by finding that the opponent did not submit detail and sufficient evidence, such as sales record, advertisement and sales promotion, to demonstrate famousness of the cited mark objectively.

Besides, the Board negated the similarity between the marks by stating that:

From the appearance, the difference in the prefix of literal elements, “nyan” and “NEW” would suffice for relevant consumers to distinguish them. Therefore, even though the term “nyan balance” is considered as a prominent portion of the opposed mark, both marks are sufficiently distinguishable in appearance.

Phonetically, “nyan balance” is easily distinguishable from “NEW BALANCE” because of the difference in the first sound given both marks just consist of six sounds respectively.

Conceptually, since both marks do not give rise to any specific meaning, it is not possible or adequate to find similarity in concept.

By virtue of a low degree of similarity, the Board found relevant consumers are unlikely to confuse or associate the source of the goods bearing the opposed mark with “NEW BALANCE” and any entity systematically or economically connected with the opponent.

Provided that the opponent failed to demonstrate famousness of “NEW BALANCE” brand, the Board has no reason to believe the applicant filed the opposed mark with a malicious intent to free-ride on the opponent’s reputation and goodwill.

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

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

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”

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.

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

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.

Failed Trademark Opposition over VW TYPE-2

The Japan Patent Office (JPO) did not side with Volkswagen AG in an opposition against TM Reg no. 6365340 for device mark containing a depiction of a van-type red car by finding unlikelihood of confusion with Volkswagen Type-2.

[Opposition case no. 2021-900210, decided on September 14, 2023]

Opposed mark

Sur Andino SA, a Chilean wine grower and producer, filed a trademark application for device mark containing a depiction of a van-type red car (see below) to be used on wines in class 33 with the JPO on February 5, 2020.

The JPO granted protection of the opposed mark on March 9, 2021 and published is for a post-grant opposition on April 6, 2021.


Opposition by Volkswagen

On June 7, 2021, just before the lapse of a two-month statutory period counting from the publication date, Volkswagen AG filed an opposition and claimed the opposed mark shall be cancelled in contravention of Article 4(1)(vii), (xv) and (xix) of the Japan Trademark Law.

Volkswagen argued a van-type red car depicted in the opposed mark resembles the VW Type 2 vehicles, aka Transporter, Bulli, Kombi, VW Bus that have been distributed worldwide for past six decades and a unique shape of the vehicles has played a significant role in identifying the origin of car. Because of it, the applicant must have had a bad faith to free-ride or dilute fame and prestige of the VW Type 2. Relevant consumers are likely to confuse a source of wines bearing the opposed mark with VW.


JPO decision

The JPO Opposition Board questioned whether the shape of the VW Type 2 per se has played a role in indicating the source from the produced evidence.

Given there is insufficient evidence to connect a van-type red car in the opposed mark with the VW Type 2, the Board found no reason to believe the applicant had a bad faith to free-ride or dilute prestige of the VW Type 2 by using the opposed mark on wines. If so, it is unlikely that relevant consumers confuse a source of wines bearing the opposed mark with Volkswagen.

Based on the foregoing, the Board decided the opposed mark shall not be canceled based on Article 4(1)(vii), (xv) and (xix), and thus dismissed entire allegations by Volkswagen.

JPO Declared Cancellation of Trademark “BORDEAUX WAVE” on Cosmetics

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).

Shangri-La Unsuccessful in Trademark Opposition Over “Shangri-La Golf”

The Japan Patent Office (JPO) dismissed an opposition claimed by Shangri-La Hotels against TM Reg no. 6610570 for the mark “Shangri-La-Golf” in class 35 due to dissimilarity between “Shangri-La” and “Shangri-La-Golf”.

[Opposition case no. 2022-900465, decided on July 26, 2023]

Opposed mark

A Japanese individual filed a stylized word mark “Shangri-La-Golf” (see below) for use on retail and wholesale services in relation to woven fabrics, beddings, clothing, footwear, and personal articles in class 35 with the JPO on June 22, 2020.

The JPO examiner rejected the mark in contravention of Article 4(1)(xi) of the Japan Trademark Law by citing earlier trademark registrations for wordmark “SHANGRI-LA”.

However, as a result of the JPO Appeal Board’s decision that found dissimilar to “SHANGRI-LA”, the mark could be registered on September 6, 2022.


Opposition by Shangri-La Hotels

Shangri-La International Hotel Management Ltd filed an opposition against the opposed mark on November 11, 2022 and 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 due to a remarkable degree of recognition of the cited mark “Shangri-La” and close resemblance between the opposed mark and “Shangri-La”.


JPO decision

The JPO Opposition Board questioned a remarkable degree of recognition of the cited mark among relevant public in Japan by stating that the produced evidence is insufficient to find such recognition objectively.

As for appearance, sound and meaning of the opposed mark, the Board found

“The opposed mark consists of “Shangri”, “La”, and “Golf” written in the same font and size, and tightly united by a hyphen (-). Visually, there is no reason to find respective element perse independently plays a role in source indicator of the opposed mark. Besides, the sound arising from the opposed mark as a whole can be pronounced easily.

Even if the term “Golf” has the meaning of a kind of ball game, it is reasonable to find that the term would not be recognized as directly indicating a descriptive meaning or specific quality of the services in question. Relevant consumers would see the opposed mark as a whole.

Therefore, the opposed mark shall be assessed in its entirety and give rise to a pronunciation of “Shangri-La-Golf” and no specific meaning.”

Based on the above finding, the Board decided the opposed mark “Shangri-La-Golf” is dissimilar to the cited mark “Shanri-La” because there is visual and phonetical distinction between the marks by virtue of the term “Golf” and the opposed mark does not give rise to a meaning related to ‘a remote usually idyllic hideaway’.

Accordingly, the Board found the opposition baseless and decided the opposed mark remains as the status quo.

Japan: Trademark Law Revision Act promulgated on June 14, 2023

The Japan Trademark Law Revision Act of 2023 (Act No. 51) passed Congress on June 7 and was promulgated on June 14. Hot topics of the revision are:


1. An individual can register his/her name as a trademark to the extent that it has acquired a substantial degree of recognition among relevant consumers of the designated goods or services

Current law provides that the name of a person is unregistrable if there is another person of the same name unless obtaining his/her consent (Article 4(1)(viii)).

Current – Article 4(1)(viii)

Trademark shall not be registered if the mark contains the portrait of another person, or the name, famous pseudonym, professional name, or pen name of another person, or famous abbreviation thereof (except those the registration of which has been approved by the person concerned)

By virtue of the revision, in the event that the name of a person has been widely recognized as a source indicator of his/her business, the individual can register his/her name without the consent of another person of the same name.

Revision – Article 4(1)(viii)

Trademark shall not be registered if the mark contains the portrait of another person, or the full name of another person (limited to that has been widely recognized as a result of actual use on goods or services of the person’s business), the name, famous pseudonym, professional name or pen name of another person, or famous abbreviation thereof (except those the registration of which has been approved by the person concerned), or the name of another person that would not meet with requirements specified by government ordinance.

It should note above revision does not apply to the name of a company (legal entity). A company can’t register its name without the consent of another company of the same name if exists.


 2. A mark can be registered even if it is subject to Article 4(1)(xi) which prohibits registration of any mark identical or similar to earlier trademark registration, on the condition that the earlier trademark owner gives consent and there is no likelihood of confusion with the earlier mark as a matter of fact.

For long years, the JPO has not considered, in the course of trademark examination, consent from earlier trademark owners as a pass to open the gate for registration.

Due to a rigid examination practice, the applicant and earlier trademark owner, regardless of mutual agreement to give consent to trademark registration in Japan and other jurisdictions, were all the way obliged to temporally transfer their trademark right to either party and then take action to assign it back after the JPO granted registration of the applied mark.

By virtue of the revision, the applicant can overcome the refusal based on a conflict with earlier trademark registration in Japan by filing a letter of consent from the earlier trademark owner and the JPO examiner believes the co-existence of both marks would not cause confusion.

New – Article 4(4)

Trademark shall not be rejected under Article 4(1)(xi) provided that the applicant obtains consent from the owner of the cited mark under the article and it is unlikely to cause confusion with the cited owner and its exclusive or non-exclusive licensee when used on goods or services designated under the application.

It should note the JPO still has the discretion to reject or cancel trademark registration even after the filing of a letter of consent where they find a likelihood of confusion or actual confusion (Article 52-2).


When does the revised act come into force?

The revised act is set to become effective from April 1, 2024.

Champion loses trademark opposition over “C” logo

The Japan Patent Office (JPO) dismissed an opposition filed by HBI Branded Apparel Enterprises, LLC against TM Reg no. 6560200 for the C device mark due to dissimilarity to and the unlikelihood of confusion with the iconic “C” emblem of Champion.

[Opposition case no. 2022-900315, decided on May 22, 2023]

Opposed mark

DAIEI TRADING CO., LTD. a Japanese company, applied a device mark consisting of the “C” curved line and a heart & circle placed vertically inside of the line (see below) for use on apparel, footwear, sports shoes, and sportswear in class 25 with the JPO on December 8, 2021.

The JPO examiner did not raise any objection to the mark at all in the course of the substantive examination.

Accordingly, the mark was registered on May 23, 2022, and published for post-grant opposition on May 31, 2022.


Opposition by Champion

HBI Branded Apparel Enterprises, LLC filed an opposition against the opposed mark on August 2, 2022.

HBI argued the opposed mark shall be canceled in contravention of Article 4(1)(vii), (x), (xi), (xv), and (xix) of the Japan Trademark Law on the grounds that a high degree of similarity between the opposed mark and the iconic “C” emblem (see below) becoming famous as a source indicator of the Champion brand in connection with casual wear, sportswear, and other related goods would inevitably cause confusion among relevant consumers when the opposed mark is used on goods in question.


JPO decision

The JPO Opposition Board admitted that the “C” emblem has acquired a high degree of reputation as a result of substantial use in Japan for more than four decades and become famous as a source indicator of the opponent.

In the meantime, the Board negated the similarity between the marks by stating that:

From the appearance, both marks contain a curved line that looks like a “C” letter; however, the respective line looks totally different by means of a wide difference in line thickness. Besides, there is a clear difference between figurative elements depicted inside of the line (a heart & circle device placed vertically in the opposed mark, a thick vertical line in the cited mark). Therefore, the two marks are visually distinguishable.

Conceptually, the opposed mark does not give rise to any specific meaning. Meanwhile, the cited mark has the meaning of ‘famous brand of the opponent.’ If so, both marks are dissimilar in concept.

Based on the foregoing, the Board has a reason to believe that the opposed mark is dissimilar to the cited mark, even if they cannot be compared in terms of pronunciation.

In a global assessment of the likelihood of confusion, the Board found:

Even if the cited mark is widely recognized among consumers in Japan as a source indicator of the Champion’s business, given the low degree of similarity to the opposed mark, it would be unlikely that relevant traders and consumers at the sight of the opposed mark used on goods in question immediately associate or recall the cited mark or the opponent business.

If so, it is reasonable to consider that relevant consumers are unlikely to confuse the source of the goods bearing the opposed mark with Champion or another entity systematically or economically connected with the opponent.

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