タグ: JAPAN PATENT OFFICE

Trademark Dispute: Chateau Mouton Rothschild vs MOUTON

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The Japan Patent Office (JPO) declared invalidation of TM Reg no. 6090508 for wordmark “MOUTON” in classes 35 and 43 due to a likelihood of confusion with famous mark “Mouton” as a source indicator of Chateau Mouton Rothschild, one of the most famous wine estates in the world.
[Invalidation case no. 2022-890079, decided on January 22, 2024]

TM Reg no. 6090508 “MOUTON”

WALTZ Co., Ltd. filed a trademark application for wordmark “MOUTON” in relation to retail or wholesale services of various foods and drinks (not including wine) of class 35 and restaurant services of class 43 with the JPO on November 17, 2017. The applicant operates a bar and restaurant named “MOUTON” in Shinjuku, Tokyo.

A screen capture from https://www.pub-mouton.com/

The mark was granted protection on September 5, 2018, published for a post-grant opposition on November 13, 2018.

Unsuccessful Opposition

Baron Philippe de Rothschild S.A. filed an opposition against TM Reg no. 6090508 “MOUTON” on January 15, 2019 and claimed cancellation of the mark in contravention of Article 4(1)(vii) and (xv) of the Trademark Law. However, the JPO Opposition Board decided to dismiss the opposition on September 6, 2019 (Opposition case no. 2019-900012).

Subsequently, to challenge the validity of the trademark registration for the MOUTON mark, Baron Philippe de Rothschild S.A. filed an invalidation with the JPO on October 7, 2022, a month before the five-year statute of limitations from the registration date was set to lapse. The claimant argued the disputed mark is identical with a well-known abbreviation of the world-famous wine “Chateau Mouton Rothschild”. Besides, in view of close association between wine and the services in question, relevant consumers and traders would confuse a source of the services bearing the mark “MOUTON” with the claimant. If so, the disputed mark shall be invalidated in contravention of Article 4(1)(xv) of the Trademark Law.

WALTZ did not respond to the arguments during the invalidation trial procedure.

JPO Invalidation decision

On January 22, 2024, the JPO Trial Board decided to annul TM Reg no. 6090508 “MOUTON” in relation to all of the retail or wholesale services designated in class 35 and restaurant services in class 43 by stating that:

From the facts revealed by the produced evidence, the Board has a reason to believe that the term “Mouton” has acquired a substantial degree of reputation and popularity among relevant consumers and traders to indicate the world-famous wine and its abbreviation.

Undoubtedly, the disputed mark “MOUTON” shall be similar to the mark “Chateau Mouton Rothschild” from phonetical and conceptual points of view even if there is a distinction in appearance between the marks.

There is a close association between wine and retail or wholesale services of various foods and drinks as well as restaurant services.

If so, relevant consumers are likely to confuse a source of the services bearing the disputed mark with the claimant or other business entity systematically or economically connected with them.

Based on the foregoing, the Trial Board found the disputed mark shall be invalidated in contravention of Article 4(1)(xv) of the Trademark Law.

Yves Saint Laurent Failed Opposition against USL monogram

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The Japan Patent Office (JPO) did not support Yves Saint Laurent in their trademark opposition against TM Reg no. 6666672 for the “USL” monogram in class 25. The JPO found no similarity or unlikelihood of confusion with the famous “YSL” monogram.
[Opposition case no. 2023-900076, decided on January 18, 2024]

Opposed mark

Marusho hotta Co., Ltd. filed a trademark application for mark consisting of the “USL” monogram and a circle device (see below) in relation to outer clothing of class 25 with the JPO on August 18, 2022.

The applicant uses the mark on knitted wear, pants and caps as a logo of “UN-USELESS” brand.

The JPO examiner, without raising any objections, granted protection of the mark on January 25, 2023. Subsequently, the mark was published for post-grant opposition on February 6, 2023.

Opposition by Yves Saint Laurent

The renowned French luxury fashion house Yves Saint Laurent has filed a trademark opposition with the JPO on April 6, 2023 and claimed cancellation of the opposed mark in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law by citing their earlier trademark registrations for the famous “YSL” monogram.

Yves Saint Laurent argued the monogram of opposed mark can be recognized a combination of three letters, “Y”, “S” and “L”. If so, the opposed mark has the same sound and spelling with the famous “YSL” monogram. Because of their close resemblance, consumers are likely to confuse a source of the goods bearing the opposed mark with Yves Saint Laurent.

JPO decision

The JPO Opposition Board had a view that relevant consumers with ordinary care would not conceive a combination of three letters, “Y”, “S” and “L” at the sight of the monogram of the opposed mark, but “U”, “S” and “L”.

Based on the finding, the Board held both marks are visually dissimilar by means of clear difference in the initial letter, font design and overall configuration. Aurally, there is a distinction between the ‘u’ and ‘y’ sounds at the beginning, and this contrast significantly affects the overall impression by taking account of a relatively short six-syllable structure. As both marks are meaningless, the concepts are incomparable.

If so, the Board has no reason to believe the opposed mark is similar to the YLS monogram and thus likely to cause confusion with Yves Saint Laurent even when used on the goods in question.

In conclusion, the Opposition Board determined that the opposed mark is not subject to Article 4(1)(xi) and (xv) and has therefore decided to dismiss the opposition entirely.

Lous Vuitton lost in a trademark battle over LV monogram

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The Japan Patent Office (JPO) dismissed a trademark opposition against TM Reg no. 6685241 in class 18 and 25 filed by LOUIS VUITTON MALLETIER due to dissimilarity to and unlikelihood of confusion with the famous “LV” monogram.
[Opposition case no. 2023-900138, decided on January 12,2024]

Opposed mark

A Japanese individual filed a mark consisting of “MARU des VINTAGES”, “KYOJI MARUYAMA”, and a monogram-like device (see below) for use on bags, leather products, clothing, footwear and other in class 18 and 25 on July 22, 2022 with the JPO.

Seemingly, the device looks like a motif made by overlapping “V” and other characters, “LI”, “LA” or “M”.

In the course of substantive examination, the JPO examiner raised his objection just to confirm if the applicant has a consent from the person named “KYOJI MARUYAMA”.

Upon confirmation, the examiner granted protection of the mark on March 10, 2023 and the JPO published it for a post-grant opposition on April 7, 2023.

Opposition by Lous Vuitton

On June 7, 2023, just before the lapse of two-month opposition period counting from the publication date, LOUIS VUITTON MALLETIER filed an opposition with the JPO and claimed that the opposed mark shall be cancelled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law by citing IR no. 1127687 for the famous “LV” monogram in classes 18, 25 and others effectively registered in Japan since April 2014.

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.

Louis Vuitton argued the monogram-like device of opposed mark is confusingly similar to the world-famous “LV” monogram from a visual point of view. If so, relevant consumers are likely to confuse a source of the goods in class 18 and 25 bearing the opposed mark with Louis Vuitton even if the opposed mark contains distinctive literal elements, “MARU des VINTAGES”.

JPO decision

The JPO admitted a high degree of reputation and popularity of the LV monogram among relevant consumers as a source indicator of Louis Vuitton. The Opposition Board considered it unreasonable to assess similarity of mark simply by comparing respective mark in its entirety. The Board found the monogram-like device shall be a prominent portion of the opposed mark from visual impression.

However, the Board negated similarity between the device and the LV monogram by stating that:

Even if the device undoubtedly contains the letter “V” in its composition, it is impossible to specify what represents as a whole. Due to the reason, there is clear distinction in configuration, overall impression between two devices. If so, the Board has a reason to believe there is no likelihood of confusion in appearance.

The LV monogram gives rise to a sound of ‘elˈviː’ and a meaning of “Louis Vuitton”. In the meantime, the opposed device would not have any specific sound and meaning. Therefore, it is obvious that two devices are dissimilar from aural and conceptual points of view.

In view of a low degree of similarity between the monogram-like device and the “LV” monogram, difference caused by distinctive literal elements “MARU des VINTAGES”, “KYOJI MARUYAMA” of the opposed mark, the Board found relevant consumers are unlikely to confuse or associate the goods in question bearing the opposed mark with Lous Vuitton.

Based on the foregoing, the Opposition Board concluded the opposition’s arguments groundless and decided to dismiss the entire opposition.

Hummel Victory in Appeal to Overcome Rejection against Chevron Position Mark

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The Japan Patent Office (JPO) Appeal Board disaffirmed the examiner’s rejection and granted registration of TM App nos. 2018-133121 and 2018-133123 for a position mark consisting of chevron devices in relation to jackets and pants (trousers) of class 25 by finding inherent distinctiveness of the position marks.
[Appeal case nos. 2022-13211, 2022-13212 decided on December 20, 2023]

Hummel Chevron Position Mark

Hummel Holding AS filed two position marks with the JPO (TM App nos. 2018-133121, 2018-133123) on October 25, 2018. TM App no. 2018-133121 consists of 15 chevron devices positioned in series from shoulder to sleeve (see below left), and designates long-sleeved jackets in class 25. TM App no. 2018-133123 consists of 21 chevron devices positioned in series from waist to hem (see below right), and designates pants and trousers in class 25.

JPO Examination

On May 25, 2022, the JPO examiner rejected both marks based on Article 3(1)(vi) of the Japan Trademark Law by stating that:

In fashion industry, there are plenty of jackets and pants with decorations aiming to enhance aesthetic effect of the goods and attract consumers.  Under the circumstances, relevant consumers at the sight of pants or jackets bearing the position mark would not see it as a source indicator, but as a pattern for decorative or functional indication.

Article 3(1)(vi) is a provision to comprehensively prohibit from registering any mark lacking inherent distinctiveness.

Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered, unless the trademark:

(vi)　is in addition to those listed in each of the preceding items, a trademark by which consumers are not able to recognize the goods or services as those pertaining to a business of a particular person.

Hummel Holding AS filed an appeal against the rejection on August 23, 2022 and argued inherent distinctiveness of the position marks.

JPO Appeal Board decision

The Appeal Board found that respective mark would be far from a common or descriptive device as a whole.

In relevant industries, competitors often provide jackets and pants bearing their brand on the same position with the Hummel Chevron mark. If so, consumers are also accustomed to distinguishing a source of the goods by means of devices depicted on the position.

Bearing in mind that the applicant has been extensively and continuously using the position marks on their jackets and pants, presumably the marks have become famous as a source indicator of the applicant among relevant consumers.

Besides, the Board could not find any evidence of a common use of the chevron device on the same position as a decorative or functional indication.

Based on the foregoing, the Board held that relevant consumers would recognize the position marks as a source indicator. If so, the examiner made an error in finding distinctiveness of respective mark. Therefore, the Board disaffirmed the examiner’s rejection and decided in favor of Hummel Holding AS consequently.

New Balance Unsuccessful Opposition against “nyan balance” mark

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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.

Trademark dispute over Elk design

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In an advisory opinion on trademark dispute over elk design, the Japan Patent Office (JPO) did not side with MOZ Sweden AB.
[Case no. 2023-600017, decide on December 15, 2023]

TM Reg no. 6582775

MOZ Sweden AB, an owner of Japanese trademark registration no. 6582775 for the MOZ mark with its iconic elk design (see below) in relation to electric blankets and other goods of class 11, attempted to stop distribution of wearable electric blankets (“disputed goods”) depicting 20 or 28 elk-motif silhouettes (“disputed design”) on the entire surface by NAKAMURA Co., Ltd.

Allegedly, MOZ sent a C&D letter to NAKAMURA on November 29, 2022 and demanded immediate cease and disposal of the wearable blankets based by claiming trademark infringement. NAKAMURA, for the purpose of settling the dispute, asked the JPO for an advisory opinion on April 14, 2023.

A screen capture from amazon.co.jp

Advisory Opinion Procedure

The Japan Trademark Law has provision for the Japan Patent Office to give advisory opinions about the scope of trademark right upon request under Article 28.

Proceedings of the advisory opinion system are almost the same as invalidation trials. Upon request from either party, the JPO appoints three examiners and orders the opposite party to answer the request in writing. Board seldom holds an oral hearing to investigate the case. In general, all proceedings are based on written statements and documentary evidence.

The advisory opinion by JPO does not have a binding effect, unlike the judicial decision. Accordingly, less than 10 trademark cases have been lodged with the JPO to seek the advisory opinion annually.

JPO Advisory Opinion

The JPO provided its advisory opinion to the case and decided the disputed goods would not be within the scope of right for TM Reg no. 6582775 by stating that:

  1. Unquestionably, the literal portion “MOZ” is dissimilar to the disputed design from visual, aural and conceptual points of view.
  2. Comparing the MOZ elk design with that of the disputed design, even though they share the same “elk” motif, there is a clear difference in the shape of the antlers, the outline of the face, the presence or absence of ears, eyes, and mouth. These differences give rise to a distinctive impression in the mind of viewers. Because of it, two designs are sufficiently distinguishable from appearance.
  3. Being that both “MOZ” and the elk design are respectively dissimilar to the disputed design, there is no reason to believe that the disputed goods shall be within the scope of trademark right and subject to enforcement even if both goods are identical.

Unsuccessful trademark opposition over LXR Hotels & Resorts by Hilton

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In a bid to oppose TM Reg nos. 6668894 “LX RESORT” and 6668893 “LX HOTEL”, the Japan Patent Office (JPO) dismissed the oppositions filed by Hilton Worldwide Manage Limited due to dissimilarity to and unlikelihood of confusion with Hilton’s earlier trademark registration for “LXR HOTELS & RESORTS”.

[Opposition case nos. 2023-900082 and 2023-900083, decided on December 1, 2023]

Opposed mark

Hack Japan Holdings Co., Ltd. filed trademark applications for wordmark “LX HOTEL” and “LX RESORT” in standard character over services in classes 35 and 43 including hotel services with the JPO on August 29, 2022.

The JPO granted protection of the opposed marks on February 3, 2023, and published it for post-grant opposition on February 13, 2023.

Opposition by Hilton

Hilton Worldwide Manage Limited filed an opposition on April 12, 2023 just before the lapse of two-month opposition period.

Hilton claimed the opposed marks shall be cancelled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law by citing earlier TM Reg no. 6117133 for wordmark “LXR HOTELS & RESORTS”. Given both “LX” and “LXR” imply a meaning of “luxury”, there is a high degree of similarity in meaning.

By taking into consideration the cited mark “LXR HOTELS & RESORTS” has been recognized among consumers of the Hilton hotels, relevant consumers are likely to confuse a source of hotel in the name of “LX HOTEL” and “LX RESPRT” with Hilton’s luxury hotels when used on the services in question.

JPO decision

The JPO Opposition Board did not admit a high degree of recognition of the Hilton “LXR HOTELS & RESORTS” among relevant consumers in Japan because of insufficient evidence to find such recognition objectively.

The Board found the opposed marks shall be assessed in its entirety and would not give rise to any specific meaning at all. Obviously, there is no similarity in appearance and sound between two marks. The Board has no reason to believe relevant consumers would consider the term “LX” of the opposed marks as an abbreviation of “luxury”. If so, the opposed marks shall be dissimilar to the cited mark “LXR HOTELS & RESORTS”.

In view of a low degree of similarity, it is unlikely that relevant consumers confuse a source of hotel in the name of “LX HOTEL” and “LX RESORT” with the opponent or any business entity systematically or economically connected with Hilton.

Based on the foregoing, the Board found the oppositions groundless and upheld validity of the opposed marks.

CHANEL defeated in Trademark Opposition against “COCOCHI”

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The Japan Patent Office (JPO) handed a loss to Chanel SARL in trademark opposition against TM Reg no. 6674710 for the “COCOCHI” mark by finding unlikelihood of confusion with “COCO”.

[Opposition case no. 2023-900100 decided on December 7, 2023]

COCOCHI

The opposed mark, consisting of a term “COCOCHI” and the COCO monogram (see below), was filed by COCOCHI COSME CN LIMITED, a UK company, with the JPO for use on cosmetics, perfumery, fragrances, incense, dentifrices, adhesives for affixing false eyelashes and other goods in Class 3 on June 16, 2022.

The JPO admitted registration of the opposed mark on February 24, 2023 and published it for a post-grant opposition on March 6, 2023.

Opposition by CHANEL

On May 8, 2023, 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. Due to a remarkable reputation of the mark “COCO”, relevant consumers are likely to associate the literal portion “COCO” and the monogram of the opposed mark with Chanel 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 “COCOCHI” 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 remain valid as the status quo.

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

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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”

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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.