タグ: COCO

COCOGOLF vs COCO

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On February 28, 2022, the Appeal Board of Japan Patent Office (JPO) reversed the examiner’s rejection and decided to register the applied mark “COCOGOLF” in classes 25 and 28 by finding dissimilarity to Chanel’s earlier registration for the mark “COCO.”

COCOGOLF

The applied mark consists of the word “COCOGOLF” (see below).

Applicant, E-COME GROUP Co., Ltd., filed it for use on various goods in classes 18, 25, and 28 on November 27, 2022. [TM Application no. 2020-146448]

Confronting office action from the JPO, the applicant divided the application and filed a new trademark application on goods of ‘sports shoes; sportswear’ in class 25 and ‘golf bags; golf equipment in class 28 on July 2, 2021. [TM Application no. 2021-82743]

The JPO examiner rejected the mark in contravention of Article 4(1)(xi) of the Japan Trademark Law on October 12, 2021.

The examiner cited earlier trademark registration nos. #6169514 (cl. 25, 35) and IR699469 (cl. 25) for the wordmark “COCO” owned by Chanel SARL, and found the applied mark “COCOGOLF” is confusingly similar to the cited mark “COCO” when used on the designated goods in class 25 and 28.

The applicant filed an appeal against the rejection on November 17, 2021, and argued for the dissimilarity in the marks.

JPO Decision

The Appeal Board found the applied mark shall be assessed in its entirety by stating:

  1. Visually, there is no reason to consider the term “COCO” as a prominent portion of the applied mark because of its configuration.
  2. The applied mark gives rise to the pronunciation of ‘coco-golf’. The whole sound can be pronounced easily in a breach.
  3. The Board has no reason to believe the term “GOLF” perse has been used to represent specific goods in relation to the goods in question.
  4. If so, relevant consumers at the sight of sports shoes, sportswear, golf bags, and golf equipment bearing the applied mark would see it as a whole, and are unlikely to consider the term “COCO” as a prominent source indicator of the applied mark.

Based on the foregoing, the Board found the examiner erred in finding “COCO” to be separable from “GOLF.” Consequently, the Board held the applied mark is dissimilar to the mark “COCO” and granted “COCOGOLF” registration.

[Appeal case no. 2021-15790]

COCO vs COCOMIST – Decision of the Opposition Board of the Japan Patent Office

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Chanel handed a loss in its attempt to block Japanese trademark registration no. 6202587 for wordmark “COCOMIST” to be used on cosmetics, perfumery, fragrances, incense, and other goods in class 3.
[Opposition case no. 2020-900047, Gazette issued date: February 26, 2021.]

COCOMIST

The opposed mark consists of the word “COCOMIST” written in standard character (see below). Applicant, a Japanese company, 196+ Inc., filed it for use on ‘cosmetics, perfumery, fragrances, incense, toiletry preparations’ and other goods in Class 3 on January 7, 2019.

The mark was published for post-grant opposition on December 24, 2019, without confronting any office action from the JPO examiner.

It is apparent that the applicant actually uses the opposed mark on cleaning mist.

Opposition by CHANEL

On February 20, 2020, CHANEL SARL filed an Opposition and argued the opposed mark shall be canceled in contravention of Article 4(1)(xi), (xv), and (xix) of the Trademark Law on the grounds that:

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

JPO Decision

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

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

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

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

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