Harvey Ball wins trademark opposition over the double-eyed smiley face

In a recent administrative decision, the Japan Patent Office (JPO) sided with Harvey Ball Smile Limited in opposition against TM Reg no. 6524017 due to a conflict with the Double-Eyed Smiley Face mark.

[Opposition case no. 2022-900202 decided on March 3, 2023]

Opposed mark

Capital Co., Ltd. filed a device mark (see below) for use on various goods including personal ornament, bags, pouches, and clothing in classes 14, 16, 18, and 25 with the JPO on September 30, 2021.

Apparently, the applicant promotes T-shirts, shoes, and bags bearing the opposed mark via the internet.

A screen capture of https://www.kapital-webshop.jp/category/MENSALL/EK1426.html

The JPO granted protection of the mark on March 7, 2022, and published it for opposition on March 15, 2022.

Opposition by Harvey Ball Smile Limited

Harvey Ball Limited filed an opposition against May 16, 2022, and claimed cancellation of the opposed mark in contravention of Article 4(1)(xi) of the Japan Trademark Law by citing earlier TM Reg nos. 6479744, 6504979, 6504980, 6504981, 6504982, and 6504983 for the Double-eyed Smiley Face mark (see below).

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

The applicant argued against the opposition and alleged relevant consumers can distinguish two marks because of distinctive visual impressions arising from a different shape of the mouth.

JPO decision

The JPO Opposition Board found the opposed mark is similar to the Double-eyed Smiley Face mark by stating that:

“Comparing the opposed mark and the citations, from appearance, both marks represent a face in yellow with two sets of eyes. Although there are differences in details (such as the size of the dots, the thickness of the arc lines, the degree of opening, and the presence or absence of single lines at both ends of the arc lines) and facial expressions, these differences have less impact on the overall impression. If so, both marks have similar visual impressions as a whole.

Besides, since respective mark does not give rise to any specific sound and meaning, they are not comparable from phonetical and conceptual points of view.

Therefore, the Board has a reason to believe that both marks are likely to cause confusion when used on the personal ornament, bags, and pouches, clothing in classes 14, 18, and 25 that are deemed similar to the goods designated under the citations.”

Based on the foregoing, the JPO decided to partially cancel the opposed mark in relation to personal ornament, bags, and pouches, clothing in classes 14, 18, and 25 in contravention of Article 4(1)(xi).