タグ: iPhone

Failed Opposition by Apple against trademark registration “EYE PHONE”

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The Japan Patent Office (JPO) dismissed a trademark opposition claimed by the U.S. tech giant, Apple Inc. against trademark registration no. 6099794 for word mark “EYE PHONE” in class 9 by finding less likelihood of confusion with Apple “iPhone”.
[Opposition case no. 2019-900030, Gazette issue date: September 27, 2019]

“EYE PHONE”

Opposed mark, a word mark “EYE PHONE” in standard character, was filed by a Japanese business entity, NOVELTY EYE-WEAR Inc., on February 26, 2018 by designating ‘spectacles [eyeglasses and goggles]’ in class 9.

The JPO admitted registration on November 22, 2018 and published for registration on December 18, 2018.

APPLE’s Opposition

To oppose against registration within a statutory period of two months counting from the publication date, Apple Inc. filed an opposition on January 28, 2019.

In the opposition brief, Apple Inc. asserted the opposed mark shall be cancelled in violation of Article 4(1)(vii), (xv) and (xix) of the Japan Trademark Law given a remarkable reputation of opponent mark “iPhone” to indicate opponent’s smart phones currently holding a 44.1% market share in Japan and close resemblance between “iPhone” and “EYE PHONE”.

Apple Inc. argued opposed mark “EYE PHONE” has the same pronunciation with “iPhone” and gives a similar impression in appearance. If so, both marks shall be confusingly similar. Besides, the goods in question are closely related to smart phones since smartphone users get to wear specific glasses for smartphone to block blue light. Recently, smart glasses, wearable device that brings with suitable technology a computer screen/display in front of a person’s eye, have become a hot topic.

Article 4(1)(xv) provides that a mark shall not be registered where it is likely to cause confusion with other business entity’s well-known goods or services, to the benefit of brand owner and consumers.

Board Decision

The Opposition Board admitted a remarkable degree of reputation and popularity of opponent trademark “iPhone” in connection with smart phones based on the produced evidences boasting the top market share consecutively for the past seven years in Japan.

Meanwhile, the Board found a low degree of originality of “iPhone” given a combination of alphabetical letter “i” and descriptive term “Phone” in relation to smartphones.

In the assessment of mark, the Board held “EYE PHONE” and “iPhone” are dissimilar even if both marks have the same pronunciation since they are sufficiently distinguishable from visual and conceptual point of view. Also, the Board negated close relation between glasses and smartphones in view of its nature, purpose, usage, distribution channel and consumers.

If so, it is unlikely that the consumers confuse or misconceive a source of opposed mark with Apple Inc. or any entity systematically or economically connected with opponent.

Based on the foregoing, the Board decided opposed mark shall not be cancelled on the grounds of Article 4(1)(vii), (xv) and (xix).

Trademark Opposition: “iPhone” versus “SAIPHONE”

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The Japan Patent Office (JPO) dismissed a trademark opposition claimed by the U.S. tech giant, Apple Inc. against trademark registration no. 6060316 for word mark “SAIPHONE” in class 9 and 18 by finding less likelihood of confusion with Apple “iPhone”.
[Opposition case no. 2018-900255]

“SAIPHONE”

Opposed mark, a word mark “SAIPHONE” in standard character, was filed by a Japanese business entity, STYLE Corporation, on September 28, 2017 by designating ‘mobile phones, smart phones, and its accessories, namely cases, covers and hands-free holders’ in class 9, and ‘purses and wallets, commutation-ticket holders, business card cases, bags and pouches, umbrellas, industrial packaging containers of leather’ in class 25.

STYLE Corporation promotes the “SAIPHONE” leather cases for iPhone (see below).

The JPO admitted registration on June 22, 2018 and published for registration on July 6, 2018.

APPLE’s Opposition

To oppose against registration within a statutory period of two months counting from the publication date, Apple Inc. with AIPHONE Co., Ltd., as a joint claimant, filed an opposition on September 7, 2018.

In the opposition brief, Apple Inc. asserted the opposed mark shall be cancelled in violation of Article 4(1)(xi) and (xv) of the Japan Trademark Law given a remarkable reputation of opponent mark “iPhone” in the business field of smart phones and similarity to a senior trademark registration no. 5147866 for the word mark “iPhone” in standard character over mobile phones in class 9 effective since 2008.

Interestingly, “iPhone” is indeed a registered trademark owned by AIPHONE Co., Ltd. in Japan. Apple Inc. is an exclusive licensee of the mark.

Apple Inc. argued opposed mark “SAIPHONE” gives rise to a confusingly similar pronunciation and appearance to “iPhone”, since opposed mark contains a famous mark “iPhone” entirely and a mere difference on prefix “SA” is insufficient for relevant consumers anything but to conceive “iPhone” from opposed mark.

Article 4(1)(xi) is a provision to refrain from registering a junior mark which is deemed 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 entity’s well-known goods or services, to the benefit of brand owner and consumers.

Board Decision

The Opposition Board admitted a remarkable degree of reputation and popularity of opponent trademark “Apple” in connection with smart phones based on the produced evidences showing a more than 40% share of the market in Japan.

In the meantime, the Board found “SAIPHONE” and “iPhone” are totally dissimilar since they are sufficiently distinguishable in visual, phonetic, and conceptual point of view.
A fact that opposed mark contains “iPhone” is not persuasive on the case since relevant consumers with an ordinary case would see opposed mark in its entirety.
If so, it is likely that the consumers confuse or misconceive a source of the opposed mark with Apple Inc. or any entity systematically or economically connected with the opponent.

Based on the foregoing, the Board decided the opposed mark shall not be cancelled on the grounds of Article 4(1)(xi) as well as (xv).

Apple successful in a trademark opposition to block “PriPhone”

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Apple Inc. achieved a victory over trademark battle involving famous “iPhone”.
In a recent trademark opposition, case no. 2017-900319, the Opposition Board of Japan Patent Office (JPO) decided in favor of Apple Inc. to cancel trademark registration no. 5967983 for word mark “PriPhone” due to a likelihood of confusion with Apple’s famous “iPhone”.

“PriPhone”

Opposed mark “PriPhone” was filed by a Japanese business entity on December 26, 2016 by designating the goods of “mobile phones; smart phones; downloadable image and music files; telecommunication machines and apparatus; electronics machines, apparatus and their parts” in class 9.
The JPO admitted registration on July 28, 2017 and published for registration on August 22, 2017.

Apple’s Opposition

To oppose the registration, Apple Inc. filed an opposition against “PriPhone” on October 20, 2017.

In the opposition brief, Apple Inc. asserted the opposed mark shall be cancelled in violation of Article 4(1)(xv) of the Japan Trademark Law given a remarkable reputation of opponent mark “iPhone” since nearly a quarter of Japanese have favorably used iPhone as a personal device to connect with internet.
Apple argued the opposed registrant knowingly included famous “iPhone” trademark on the ground that the company promotes protective cases, covers for iPhone.

Article 4(1)(xv) provides that a mark shall not be registered where it is likely to cause confusion with other business entity’s well-known goods or services, to the benefit of brand owner and consumers. Theoretically, Article 4(1)(xv) is applicable to the case where both marks are dissimilar, but likely to cause confusion among relevant consumers because of a related impression attributable to reputation of the well-known mark.

Board Decision

The Opposition Board admitted a remarkable degree of reputation and popularity of opponent trademark “iPhone” among general consumers which occupies the highest share (54.1% in 2012) of the smart phone market for past five years consecutively.

In the assessment of mark similarity, the Board found “PriPhone” would be perceived containing “iPhone” in the mark, provided that “iPhone”, as a coined word, is deemed a unique and famous trademark. Besides, in view of close connection between smart phones and the goods in question, similarity with respect to consumers, it is undeniable that relevant consumers with an ordinary care are likely to conceive “iPhone” from opposed mark when used on goods in question.

Based on the foregoing, the Board decided that relevant consumers are likely to confuse or misconceive a source of the opposed mark with Apple Inc. or any entity systematically or economically connected with the opponent.
If so, opposed mark shall be cancelled in violation Article 4(1)(xv) of the trademark law.