タグ: Famous mark

Trademark dispute: iTunes vs HiTune

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On May 1, 2023, the Japan Patent Office (JPO) dismissed an opposition filed by Apple Inc. against TM Reg no. 6536066 for the wordmark “HiTune” by finding dissimilarity to and an unlikelihood of confusion with “iTunes”.

[Opposition case no. 2022-900242]

Opposed mark

UGREEN GROUP LIMITED, a Chinese company, filed the wordmark “HiTune” (see below) for use on computer peripheral devices, data processors, earphones, headphones, microphones, sound transmitting apparatus, and other goods in class 9 with the JPO on November 10, 2021.

The mark was registered on March 29, 2022, without receiving any refusal in the course of the substantive examination taken place by the JPO.

UGREEN has promoted wireless stereo earphones/earbuds bearing the mark.

Opposition by Apple Inc.

On June 6, 2022, Apple Inc. filed an opposition to “HiTune” and contended that the opposed mark shall be canceled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law by citing earlier trademark registration nos. 4570713 “iTUNE”, 4610312 “ITUNES”, 5155781 “iTunes”, IR943547 “ITUNES” in class 9.

Article 4(1)(xi) is a provision to prohibit the registration of 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.

Apple Inc. argued that the mark “iTunes” has been famous as a source indicator of the opponent in relation to application software and multi-content distribution service. In view of the remarkable similarity between “HiTune” and “iTunes” by representing the second letter “i” in lower case and the third letter “T” in upper case, relevant consumers would associate the opposed mark with the opponent when used on goods of class 9 in question.

JPO decision

To my surprise, the JPO Opposition Board admitted a certain level of recognition of the mark “iTunes” as a source indicator of Apple Inc. in connection with application software enabling to download music or movies and to manage the contents among consumers of music distribution service, however, denied a substantial level of reputation and popularity of the opponent mark due to a lack of objective evidence produced to the Board.

In assessing the similarity of marks, the Board stated:

Differences such as the presence or absence of “H” at the beginning of the word, the difference between upper- and lower-case letters, and the presence or absence of “s” at the end of the word have a significant impact on the overall visual impression of both marks, which consist of relatively short letters. Therefore, the marks are clearly distinguishable from appearance.

There are distinctions between the sound “ha” and “a” at the beginning of a word, and the presence or absence of the sound “z” at the end of a word. These differences have a material effect on overall sounds given the relatively short sound structure. Therefore, there is less risk of mishearing each other when pronounced.

Since both marks do not give rise to any specific meanings, there is no room to cause confusion in concept.

If so, the Board has a reason to believe both marks are distinctively dissimilar.

Bearing in mind the Board finds that the opponent mark “iTunes” has not become famous among relevant consumers in Japan and has a low degree of similarity to the opposed mark “HiTune”, it is unlikely that the consumers confuse or misunderstand a source of goods in question bearing the opposed mark with Apple Inc. from the totality of the circumstances.

Based on the foregoing, the JPO decided the opposed mark shall not be canceled and dismissed the opposition entirely.

FURLA vs FURNA

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Italian heritage label Furla lost a trademark opposition in Japan against TM Reg no. 6501195 for the wordmark “FURNA” in class 25 as a result of the JPO’s decision finding no likelihood of confusion with “FURLA”.

[Opposition case no. 2022-900128, decided on April 6, 2023]

FURNA

The opposed mark, consisting of the wordmark “FURNA” in standard character, was filed for use on clothing, dresses, footwear, garters, waistbands, belts [clothing] and other goods in class 25 with the JPO by URBAN TEX Co., Ltd., a Japanese company on November 1, 2021.

The company opens an online shop for wedding dresses under the trade name “FURNA” on Rakuten online shopping platform.

In accordance with a request for accelerated examination from the company based on the actual use of the mark on any one of the designated goods, the JPO carried out a substantive examination and granted protection on January 14, 2022. Subsequently, the mark was published for post-grant opposition on January 27, 2022.

Opposition by FURLA

Italian luxury retailer FURLA S.P.A. filed an opposition on May 28, 2022, and claimed the opposed mark shall be canceled in contravention of Article 4(1)(xi), (xv), and (xix) of the Japan Trademark Law.

FURLA argued a mere difference of “N” and “L” in the fourth letter of the respective word would be trivial and thus inadequate to find a low degree of similarity in appearance and sound. Given a close association between the goods in question and the opponent goods covered by earlier registrations for the FURLA marks that have acquired a high level of recognition among relevant consumers in Japan, the consumers are likely to confuse a source of the goods bearing the opposed mark with Furla or mistakenly consider it from an entity systematically or economically connected with FURLA S.P.A.

JPO decision

The JPO Opposition Board admitted a high level of recognition of the mark “FURLA” in connection with bags among relevant consumers as a source indicator of the opponent.

In the meantime, the Board questioned if both marks are deemed similar in visual, aural, and conceptual points of view by stating:

Comparing the opposed mark and the opponent mark, “FURNA” and “FURLA” differ in appearance in the fourth letter of “N” and “L” but the difference in these letters in the short five-character composition has a substantial effect on the overall composition, and they are sufficiently distinguishable in appearance.

Pronunciation arising from “FURNA” and “FURLA” are different even when they are called in succession, and there is no risk of mishearing each other.

The opposed mark is conceptually distinguishable because it does not give rise to any specific meaning, whereas the opponent mark has been known as “Furla’s brand”.

Even if the “FURLA” mark is widely recognized among Japanese consumers as an indication of the opponent’s business, given the low degree of similarity between “FURNA” and “FURLA”, the Board has no reason to believe that the consumers having a glimpse of the opposed mark used on the goods in question would associate or recall the opponent mark.

Based on the foregoing, the JPO dismissed the opposition entirely and decided that the opposed mark “FURNA” shall remain valid as the status quo.

L’Oréal loses trademark fight against “NOREAL”

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The Japan Patent Office (JPO) dismissed an opposition filed by L’Oréal against TM Reg no. 6520304 for the wordmark “NOREAL” in class 3 due to dissimilarity to the L’OREAL mark and unlikelihood of causing confusion with L’Oréal.

[Opposition case no. 2022-900195, decided on April 5, 2023]

NOREAL

The opposed mark, consisting of the wordmark “NOREAL” in standard character, for use on cosmetics, soaps, shampoos, perfumes, fragrances, and other goods in class 3 was filed by a Japanese individual with the JPO on May 20, 2021.

The JPO examiner, without raising any objection, granted protection of the opposed mark on January 7, 2022. Subsequently, the mark was published for post-grant opposition on March 9, 2022.

Opposition by L’Oréal

Global cosmetic giant L’Oréal filed an opposition on May 10, 2022, and claimed the opposed mark shall be canceled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law.

In the opposition brief, L’Oréal argued, given a close resemblance in appearance and sound between the world-famous mark “L’OREAL” and the opposed mark “NOREAL”, there is a high degree of similarity between the marks and thus relevant consumers of goods in question are likely to confuse a source of cosmetics bearing the opposed mark with L’Oréal or any entity economically or systematically connected with the opponent.

JPO decision

Astonishingly, the JPO Opposition Board found it unobvious from the produced evidence that the L’OREAL mark has been highly recognized as a source indicator of the opponent among a wide range of consumers.

On the assessment of the similarity of marks, the Opposition Board considered a difference between “N” and “L'” at the beginning of respective marks would play a significant role in distinguishing the appearance and sound of wordmark and have a substantial influence on the visual and aural impression of two marks, which consist of relatively few letters, as a whole. Therefore, the Board has a reason to believe that both marks are sufficiently distinguishable in appearance and sound. Since both marks do not give rise to any specific meaning, it is unable to assess the conceptual similarity of the two marks. Based on the above findings, the Board found both marks are dissimilar from visual, aural, and conceptual points of view.

Due to insufficient brand recognition of the L’OREAL mark and the low degree of similarity between the two marks, “NOREAL” and “L’OREAL”, the Board has a reason to believe relevant consumers are unlikely to confuse a source of cosmetics bearing the NOREAL mark with L’Oréal regardless of overlapping goods and consumers.

Based on the foregoing, the JPO did not side with L’Oréal and decided the validity of the opposed mark as the status quo.

Trademark case: Wilson vs Werwilson

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The Japan Patent Office (JPO) dismissed an opposition filed by Wilson Sporting Goods Company against TM Reg no. 6520718 for the mark “Werwilson” with a device in class 25 by finding less likelihood of confusion with “Wilson”, the iconic American sporting goods brand when used on goods in class 25.

[Opposition case no. 2022-900124, decided on March 29, 2023]

Opposed mark

The opposed mark, consisting of two literal elements “Wer”, “wilson” and encircled “w” device placed in between them (see below), was sought registration by a Chinese company for use on apparel, footwear, and sports shoes in class 25 with the JPO on July 9, 2021.

The JPO granted protection of the opposed mark and registered on March 1, 2022, and published it for a post-grant opposition on March 9, 2022.

Opposition by Wilson

On March 28, 2022, Wilson Sporting Goods Company, originally known as the Ashland Manufacturing Company, created in 1913 in Chicago (US), a subsidiary of Amer Sports Corporation, opposed registration and claimed the opposed mark is confusingly similar to earlier registrations for their iconic mark “Wilson” (see below) and thus shall be canceled in contravention of Article 4(1)(xi), (xv) and (xix) of the Japan Trademark Law.

Wilson argued that visually the opposed mark can be conceived of as “We’re Wilson”. By virtue of a high level of brand recognition of “Wilson”, the opposed mark would give rise to a pronunciation and meaning of “Wilson” from its prominent portion. Given a close association of goods and consumers between the opposed mark and Wilson, relevant consumers are likely to confuse a source of the goods in question bearing the opposed mark with Wilson or another entity economically or systematically connected with the opponent.

JPO decision

The JPO Opposition Board admitted the famousness of the “Wilson” mark as a source indicator of the opponent in connection with tennis and sporting goods among relevant consumers in Japan.

However, the Board found that the opposed mark would not be conceived of as “We’re Wilson” from its configuration. Besides, the opposed mark does not give rise to the pronunciation and meaning of “Wilson” as a whole or in part.

If so, both marks are dissimilar from visual, phonetical, and conceptual points of view.

In view of the low degree of similarity of the marks, the Board has a reason to believe that relevant consumers with ordinary care are unlikely to confuse the source of goods in question using the opposed mark with Wilson.

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

Dolce & Gabbana Unsuccessful in Blocking Trademark “Ms. dolce”

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The Japan Patent Office dismissed a trademark opposition claimed by the Italian luxury firm, Dolce & Gabbana against trademark registration no. 6506687 for the word mark “Ms. dolce” in class 25 by finding a less likelihood of confusion with “Dolce & Gabbana.”

[Opposition case no. 2022-900141, decided on March 23, 2023]

“Ms. dolce”

The opposed mark, consisting of the word “Ms. dolce”, was filed by a Japanese company, BEANS Co., Ltd. for use on footwear in class 25 with the JPO on May 31, 2021 (TM Application no. 2021-066636).

The company promotes women’s pumps bearing the mark “Ms. Dolce” via the Internet.

A capture from Rakuten “AmiAmi” online shop

The JPO admitted registration on January 31, 2022, and published it for post-grant opposition on February 8, 2022.

Opposition by Dolce & Gabbana

Dolce & Gabbana filed an opposition on April 6, 2022, and argued the opposed mark “Ms. dolce” shall be canceled in contravention of Article 4(1)(viii) and (xv) of the Japan Trademark Law since relevant consumes are likely to confuse the source of footwear bearing the opposed mark with Dolce & Gabbana because of a close resemblance between “Ms. dolce” and the mark “Dolce” that has become famous per se as a source indicator of the opponent and been known for the abbreviation of Domenico Dolce, as an Italian fashion designer and a co-founder of Dolce & Gabbana.

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.

Article 4(1)(viii) prohibits registration of trademarks that contain the representation or name of any person, famous pseudonym, professional name, or pen name of another person, or famous abbreviation thereof.

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 finding that given the famous brand “Dolce & Gabbana” has been represented adjacent to the term “Dolce” on their goods, the Board has a reasonable doubt if 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.

The Board assessed both marks have a low degree of similarity from visual, phonetical, and conceptual points of view by stating:

  1. Relevant consumers are unlikely to confuse the marks in appearance because of the distinction of the letters and configuration that constitute respective marks.
  2. The consumers are clearly able to distinguish two sounds with or without “Ms.”
  3. The opposed mark gives rise to a meaning of a woman named “dolce”. Meanwhile, the cited mark has a meaning of ‘sweet; dessert’ in the Italian language.

If so, even though footwear is closely associated with the opponent business, the Board has no reason to believe that relevant consumers would confuse a source of footwear bearing the opposed mark with Dolce & Gabbana by taking into consideration a low degree of similarity of the marks and insufficient evidence to bolster famousness of the cited mark “Dolce”.

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

VISA lost in a bid to oppose AIR VISA

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The Japan Patent Office (JPO) dismissed an opposition claimed by Visa International Service Association (VISA) against TM Reg no. 6512071 for the wordmark “AIRVISA” due to an unlikelihood of confusion with “VISA” in connection with goods and services of classes 9, 35, 39, and 42.

[Opposition case no. 2022-900159, decided on March 9, 2023]

AIR VISA

SmartHR, Inc. filed the wordmark “AIRVISA” in standard character for use on various goods and services in classes 9, 35, 39, and 42, inter alia, computer application software, personal management, application service of working visa and residence status, and SaaS with the JPO on July 29, 2021.

AIRVISA Inc., a subsidiary of SmartHR, provides services for Japanese companies to support online working visa applications and residence status management for their foreign workers.

The JPO granted protection of the AIR VISA mark on February 1, 2022, and subsequently, the mark was published for opposition on February 21, 2022.

Opposition by VISA

Visa International Service Association (VISA) filed an opposition on April 21, 2022, before the lapse of a two-month opposition period, and contended that the opposed mark shall be canceled in contravention of Article 4(1)(xv) of the Japan Trademark Law.

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.

VISA argued relevant consumers would conceive of VISA’s famous service mark “VISA” at the sight of the opposed mark, consisting of “AIR” and “VISA” when used on its designated goods and services because of a remarkable degree of the reputation of the “VISA” mark and business circumstances that credit card companies provide application program for online payment service at present

JPO decision

The JPO Opposition Board admitted the famousness of the “VISA” mark in relation to the service of credit card services and electronic credit card transaction processing as a source indicator of the opponent based on substantial use since 1958 and a top market share of over 50% in Japan.

In the meantime, the Board questioned whether the “VISA” mark has become famous as a source indicator in connection with computer programs for online payment services from the produced evidence.

The Board considered the opposed mark “AIR VISA” shall be assessed in its entirety because of a tight combination of two words that is familiar to relevant consumers in Japan respectively. If so, both marks are dissimilar in the presence and absence of the term “AIR” from visual, phonetical, and conceptual points of view.

Bearing in mind that the term “VISA” is not a coined word, having its original meaning as an official mark, usually made in a passport, that allows one to enter or leave a particular country, the Board has a reason to believe that relevant consumers are unlikely to associate the goods and services in question bearing the opposed mark with VISA.

Based on the foregoing, the Board decided the opposed mark shall not be canceled in contravention of Article 4(1)(xv) of the Trademark Law and dismissed the entire allegations by VISA.

Hermes Wins Birkin & Kelly Bag’s 3D Trademark Infringement Lawsuit

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On March 9, 2023, the Tokyo District Court awarded HERMES INTERNATIONAL JPY5,640,112 for infringement of its trademark right pertinent to the 3D shape of the Birkin bag and Kelly bag.

[Judicial case no. Tokyo District Court – Reiwa3(wa)22287]

3D mark of Hermès Birkin and Kelly Bag

HERMES INTERNATIONAL, a French luxury fashion house, has owned Japanese trademark registration no. 5438059 for the 3D shape of the “Birkin” bag and no. 5438058 for the “Kelly” bag in connection with handbags (class 25) since 2011 by successfully demonstrating acquired secondary meaning as a specific source indicator of Hermès’ luxury bags.

Birkin and Kelly Bag Imitations

Hermes sued NAO INTERNATIONAL Co., Ltd. at the Tokyo District Court for violating its trademark right and the unfair competition prevention law by allegedly selling 214 Birkin look-alike bags and 184 Kelly look-alike bags in Japan with a price tag of JPY2,270 (approx. USD20) at their brick-and-mortal shops and online shop from December 20, 2019, to February 13, 2021.

Court decision

The Tokyo District Court found that the defendant’s bags respectively resemble 3D marks representing Hermès Birkin and Kelly Bag in an appearance on the ground that the defendant’s bags contain a basic and unique configuration enabling to distinguish Hermès Birkin and Kelly Bag from others. A difference in details is trivial and would not give rise to a distinctive impression in the mind of consumers.

Taking into consideration the fact that both bags are promoted for sale at the department store, the court has a reason to believe relevant consumers are likely to confuse the source of the defendant’s bags with Hermes.

Even though there is a severe price gap between the Hermes bag and the defendant bag, bearing in mind that authentic second-hand Hermès handbags are sold relatively at low prices, such a price gap would be anything but sufficient to negate the likelihood of confusion.

The court measured damages to recover (i) the defendant’s actual profits of infringing bags (JPY5,150,140) by reducing 20% (not attributable to goodwill on Hermès bags) for JPY4,120,112, (ii) “mental suffering” caused by an infringement for JPY1,000,000, and (iii) reasonable attorney fee for JPY520,000.

To read a full text of the Tokyo District Court decision (Japanese only), click here.

Johnson’s baby vs. JOHANSON bebis

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The Japan Patent Office (JPO) did not side with Johnson & Johnson in trademark opposition who sought cancellation of TM Reg no. 6559102 for the “JOHANSON bebis” mark due to similarity to or likelihood of confusion with “Johnson’s baby”.

[Opposition case no. 2022-900314, decided on February 22, 2023]

JOHANSON bebis

JOHANSON LIFE Co., Ltd., a Korean company, filed the “JOHANSON bebis” mark (see below) for use on babies’ bottles and nasal aspirators in class 10 with the JPO on June 28, 2021.

Apparently, the company promotes babies’ bottles bearing the applied mark.

The mark was registered by the JPO on May 20, 2022, and published for opposition on May 30, 2022.

Johnson’s baby

Johnson & Johnson, one of the oldest pharmaceutical companies in the US, has owned TM Reg no. 4032368 for the stylized word mark “Johnson’s baby” (see below) on baby bottles, nursing bottles, teats, feeding cups, and cotton swabs in class 10 since 1997.

Johnson & Johnson filed an opposition against the “JOHANSON bebis” mark on August 1, 2022, and argued the opposed mark shall be canceled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law due to visual and phonetical similarity and the likelihood of confusion between “JOHANSON bebis” and “Johnson’s baby” that has been famous for skin care products for baby when used on designated goods in class 10.

JPO Decision

The Opposition Board pointed out the produced evidence shows substantial use of the “Johnson’s” mark, however, none of them demonstrate actual use of the cited mark. If so, the Board has no reason to believe the cited mark has been well-recognized among relevant consumers in Japan.

As for the similarity of the mark, the Board found there is no risk of confusion between the opposed mark and the cited mark in appearance by means of the presence or absence of the device, and difference in the arrangement, composition, and number of alphabets.

Comparing the sound of “Johanson bebis” with “Johnson’s baby”, they are clearly distinguishable due to their different sound structures, and there is no risk of confusion in sound.  Besides, while the opposed mark does not have any specific concept, the cited mark gives rise to the meaning of “Johnson’s baby,” so there is no likelihood of confusion between the marks in the concept. If so, the opposed mark shall be dissimilar to the cited mark from visual, phonetical, and conceptual points of view.

Assuming that the cited mark has not been widely recognized as a source indicator of Johnson & Johnson and has a low degree of similarity to the opposed mark, it is unlikely that relevant consumers would confuse a source of goods in question bearing the opposed mark with Johnson & Johnson.

Based on the foregoing, the Board decided to dismiss the entire allegations and found the opposed mark shall not be canceled in contravention of Article 4(1)(xi) and (xv) in relation to the cited mark.

Slim Chickens Fails to Secure Trademark in Japan

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The JPO dismissed an opposition claimed by Slim Chickens Holdings LLC, a US fast-casual restaurant chain that specializes in chicken tenders and wings, against TM Reg no. 6524092 for the wordmark “Slim Chickens” on restaurant services in class 43.

[Opposition case no. 2022-900179, decided on February 16, 2023]

SLIM CHICKENS

Slim Chickens opened in 2003 in Fayetteville, Arkansas, US, with a focus on fresh, delicious food with a southern flair in a fast-casual setting. With more than 190 locations opened and a fanatical following in 30 U.S. states, as well as international locations in the United Kingdom, the eternally cool brand is an emerging national and international franchise leading the “better chicken” segment of fast-casual restaurants with a goal to grow over 600 restaurants over the next decade.

Opposition against TM Reg no. 6524092

Food Revamp Co., Ltd, a Japanese company, filed a trademark application for the word mark “Slim Chickens” in standard character for use on restaurant services in class 43 with the JPO on May 6, 2021.

The JPO admitted registration of the mark (TM Reg no. 6524092) on March 8, 2022, and published for opposition on March 16, 2022.

Slim Chickens Holdings LLC (SCH) filed an opposition with the JPO on May 2, 2022, and argued the mark shall be canceled in contravention of Article 4(1)(xv) and (xix) of the Japan Trademark Law.

Article 4(1)(xv) provides that a mark shall not be registered where it is likely to cause confusion with other business entities’ well-known goods or services.

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

JPO Decision

The JPO Opposition Board did not find a high level of popularity of “Slim Chickens”, a US fast-casual restaurant chain, among relevant consumers in Japan as well as the US and other countries by stating:

It is admitted that SCH opened a restaurant in the U.S. in 2003, and the first Slim Chickens franchise in 2013. SCH restaurant chain was ranked third in the “Best Casual Restaurant” category in 2020. SCH has used the “Slim Chickens” mark on their business and restaurant chain that has been considerably introduced in US magazines and online news sites.

However, SCH did not produce sufficient evidence other than media coverage to suggest their business performance in US and UK.

Therefore, the Board has no reason to believe that the “Slim Chickens” mark has been widely recognized among consumers in the US and other countries as a source indicator of the SCH restaurant chain.

Even if SCH restaurant chain has achieved sales of USD120 million and about 135 stores in the US and 10 stores in the UK, taking account of the total sales (USD10.06 billion) and the number of stores in the US (9,630) of Dunkin’ Donuts, which is introduced on the same coverage with SCH, and 9 mega restaurant chains opens over 1,000 stores in Japan, it is doubtful if “Slim Chickens” has acquired a high level of recognition even among consumers in US and UK.

In Japan, although there are magazines and web pages introducing the “Slim Chickens” restaurant chain, the number of such magazines and web pages is merely 6 from July 2017 to April 2022, and above all, there is no fact that SCH has opened a restaurant in Japan. If so, there is no reason to consider the “Slim Chickens” mark is widely recognized among relevant consumers in Japan.

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

Letter of Protest protects PUMA from Free-rider

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The JPO examiner raised her objection on the ground that TM App no. 2022-76159 for the stylized mark “SHIBA” was confusingly similar to the world-famous mark “PUMA” and filed with a malicious intent to harm PUMA as well as public interest.

Opposition vs Letter of Protest

Whenever a brand owner discovers a trademark application by a third party that may cause confusion or detrimental effect on your business, the owner is eager to block its registration by any means.

Opposition is one of the actions universally taken in such cases, however, it should be noted the success rate of opposition has been remarkably low (11% on average in the past six years) in Japan. Besides, the Japan Trademark Law does provide only “post-grant opposition” and the JPO has full discretion in deciding whether to cancel the opposed mark. Assumably, these factors affect the rate getting lower.

In this respect, a “letter of protest” is probably a better option instead.

Any person can use the letter of protest to give the JPO evidence about the registrability of a trademark in a pending application. There is no public data to show how effective the letter works to block the protested trademark, however, in my experience, as a Japanese trademark practitioner for twenty years, more than half of the letters resulted in a rejection of the protested trademark.

Protest to “SHIBA” mark

MARKS IP LAW FIRM, acting on behalf of PUMA SE, sent a letter of protest against TM App no. 2022-76159 for the stylized mark “SHIBA” (see below) in class 25 on November 25, 2022.

In the letter, we argued the protested mark is likely to cause confusion with PUMA SE because of its resemblance to the world-famous sports brand “PUMA”.

On February 17, 2023, the JPO examiner issued an office action refusing registration of the SHIBA mark in contravention of Article 4(1)(vii), (xi), (xv), (xix) of the Japan Trademark Law by stating that:

The protested mark gives rise to a pronunciation of “Shiba” and the concept of “Shina Inu; a breed of small thick-coated agile dogs developed in Japan”.

Even though there is a difference in meaning and sound, by virtue of the remarkable degree of reputation and popularity of the PUMA mark and the impressive resemblance of both marks in appearance, the examiner has a reason to believe relevant consumers would confuse a source of the designated goods of class 25, namely clothing, belts, footwear, sportswear, sports shoes, and headgear, bearing the SHIBA mark with PUMA.

Besides, there is reasonable doubt that the applicant must have been aware of PUMA and applied for the protested mark with malicious intent to harm not only PUMA but also the public interest.

Unless the applicant is successful in persuading the examiner of the dissimilarity of the mark, the unlikelihood of confusion with PUMA, and the non-existence of malicious intent, it will be rejected as a matter of course.

It is my advice to take advantage of the letter of protest, rather than opposition if you want to protect your brand against free-rider in Japan.