タグ: Likelihood of confusion

Unsuccessful opposition against LEGOHAIR

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On August 3, 2022, the JPO Opposition Board dismissed a trademark opposition filed by toy giant, Lego Juris A/S against TM Reg no. 6445411 for the “Lego Hair” mark with a device in class 44 by finding dissimilarity to and the unlikelihood of confusion with “LEGO”.

[Opposition case no. 2021-900432]

Lego Hair

The opposed mark, consisting of the word “Lego Hair” and a device (see below), was filed by the hair salon provider Lego Hair Co., Ltd., for use in hair styling services, hair treatment salon services, hair coloring services, skin caring, body caring, manicuring, beauty salon services, barbershops, and other related services in class 44 with the JPO on October 26, 2020.

The JPO granted protection of the Logo Hair mark on September 13, 2021, and the mark was published for opposition on October 12, 2021.

Opposition by Lego

LEGO Juris A/S, the world’s largest Danish toy manufacturer, filed an opposition on the final day of a two-month duration for opposition, and argued the Lego Hair mark shall be canceled in contravention of Article 4(1)(viii), (xi), (xv) and (xix) of the Japan Trademark Law by citing earlier TM Reg no. 2621425 and IR 1006003 for the stylized LEGO mark (see below).

LEGO argued that given the word “Hair” is descriptive in relation to the services in question, the term “Lego” shall be a prominent portion of the opposed mark as a source indicator accordingly. In view of the high reputation and popularity of the stylized LEGO mark, relevant consumers are likely to associate the opposed mark with LEGO and confuse the source when used on hair salon services.

JPO decision

The Opposition Board admitted the stylized LEGO mark has acquired a remarkable degree of reputation and popularity as a source indicator of the opponent’s goods and business. In the meantime, the Board questioned whether the term “LEGO” perse has become famous among relevant consumers as well by taking into consideration the produced evidence.

The Board had a view that the literal portion “Lego Hair” of the opposed mark shall be considered in its entirety. Based on the finding, the Board held the opposed mark is dissimilar to the stylized LOGO mark from visual and phonetical points of view. In concept, the stylized LEGO mark gives rise to a meaning of “famous brick- toy brand by LEGO”, but the opposed mark has no specific meaning. If so, both marks are incomparable from the concept.

Because of a low degree of similarity of the mark and less relatedness between toys and hair salon services, the Board has no reason to believe relevant consumers would confuse a source of the services in question bearing the opposed mark with the opponent or any entity systematically or economically connected with LEGO.

Based on the foregoing, the Opposition Board found the opposed mark shall not be canceled in contravention of Article 4(1)(viii), (xi), (xv), and (xix) and decided to remain valid.

NIVEA vs NYFEA

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On August 2, 2022, the JPO Opposition Board found “NYFEA” is dissimilar to “NIVEA” and unlikely to cause confusion with international skin care major Beiersdorf AG even when used on goods in class 3 including skin-care cream.

[Opposition case no. 2021-900350]

NYFEA

The opposed mark, consisting of a stylized word “NYFEA” (see below), was filed by a Chinese company, Shenzhen VKK Technology Co., Ltd for use on various goods in classes 3, 8, 9, 10, 11, 16, and 21 with the JPO on July 2, 2020.

The application designates cakes of toilet soap, cleansing milk for cosmetic purposes, detergents, beauty masks, nail varnish, dentifrices, perfume, and incense in class 3.

The JPO admitted registration of the NYFEA mark on June 15, 2021, and published for post-grant opposition on July 20, 2021.

Opposition by Beiersdorf AG

The German cosmetics giant, Beiersdorf AG filed an opposition against the NYFEA mark on September 21, 2021, and argued the opposed mark shall be canceled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law due to a conflict or likelihood of confusion with the world’s largest skincare brand “NIVEA”.

Beiersdorf alleged the NIVEA mark has been substantially used on skin-care creams in Japan since 1968. By virtue of effective advertising, sales promotion, and marketing for long years, NIVEA has acquired a remarkable degree of reputation and popularity among relevant consumers in Japan. As matter of fact, the mark “NIVEA” written in Japanese Katakana character is included in the famous trademark database managed by the JPO.

In view of the close resemblance between NIVEA and NYFEA, and the famousness of NIVEA, relevant consumers would confuse the source of the goods in class 3 bearing the opposed mark with the opponent.

JPO decision

To my surprise, the JPO negated the famousness of the NIVEA mark by stating “the opponent failed to produce sales amount, market share, and materials of promotional advertising in our jurisdiction at all. A mere allegation that the opponent promoted skin-care creams bearing the NIVEA mark for over five decades is insufficient to find a remarkable degree of the reputation of the opponent’s mark in Japan. Besides, the Board held a fact that the mark “NIVEA” written in Japanese Katakana character is included in famous trademark database would not affect the above finding. Being that the opponent did not prove a high degree of reputation and popularity of “NIVEA” at the time of filing and registration of the opposed mark with evidence, the Board had no reason to believe the opponent mark remains famous as a source indicator of skin-care goods by Beiersdorf AG.

In the assessment of similarity, the Board found both marks are distinguishable in appearance because of differences in the second and third letters, “YE” and “IV” among five letters in total. Likewise, the difference in the second sound would give rise to a distinctive impression in view of a few phonetic compositions of three sounds in total. Both marks are incomparable to the concept.

Based on the foregoing, the Opposition Board found no reasonable ground to cancel the opposed mark in contravention of Article 4(1)(xi) and (xv) and decided to dismiss the opposition entirely.

LE MANS, Unsuccessful Trademark Race spending more than 24 Hours

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On July 29, 2022, the Opposition Board of Japan Patent Office (JPO) dismissed a trademark opposition filed by AUTOMOBILE CLUB DE L’OUEST (A.C.O.), an owner of the mark “LE MANS”, against TM Reg no. 6374059 for wordmark “Le mans de elegance” on apparels in class 25.

[Opposition case no. 2021-900248]

Le mans de elegance

The opposed mark, consisting of the word “Le mans de elegance” in standard character, was applied for use on clothing, garters, sock suspenders, braces [suspenders] for clothing, waistbands, belts [clothing], footwear, masquerade costumes, sports shoes, clothes for sports in class 25 by a Japanese company named Analogue Co., Ltd. on October 15, 2020.

The JPO granted protection on March 12, 2021, and published for opposition on April 27, 2021.

Opposition by ACO

Opponent, AUTOMOBILE CLUB DE L’OUEST, alleged the opposed mark shall be canceled in contravention of Article 4(1)(xi), (xv), and (xix) of the Japan Trademark Law by citing earlier trademark registrations for the LE MANS mark in classes 25.

ACO argued that the mark “LE MANS” is famous to indicate the oldest sports car race “24 hours of Le Mans”. Due to the remarkable reputation of the mark “LE MANS” and the descriptive meaning of the term “de elegance” in relation to apparel, relevant consumers would see the literal element “Le mans” as a prominent portion of the opposed mark. If so, both marks shall be deemed similar from phonetical and conceptual points of view. Besides, there are precedent cases in which the JPO admitted close relatedness between automobile races and clothing. Taking into consideration the above facts, it is likely that relevant consumers would confuse the source of goods in question bearing the opposed mark with 24 hours of Le Mans and its organizer, or an entity systematically or economically connected with ACO.

JPO decision

The JPO found “The 24 hours of Le Mans” has been known for a major car race, however, questioned whether the term “LE MANS” has also become famous to indicate the race from the totality of the circumstances and the produced evidence by pointing out a fact that the term “LE MANS” has been frequently used with “24”. Consequently, the Board held the mark “LE MANS” has not acquired a certain degree of reputation and popularity as a source indicator of auto races among relevant consumers in Japan.

The Board assessed the similarity of mark in its entirety and found the opposed mark is dissimilar to the mark “LE MANS” from visual, phonetical, and conceptual points of view by stating that the cited mark gives rise to a meaning of a city in northwestern France.

In view of a low degree of similarity between the marks and recognition of the mark “LE MANS”, the Board has no reason to believe relevant consumers would confuse a source of goods in question bearing the opposed mark with the opponent.

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

No confusion between “InstaShop” and “Instagram”

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On July 27, 2022, the Appeal Board of Japan Patent Office (JPO) disaffirmed the examiner’s rejection and found TM Application no. 2019-152946 for “InstaShop” with device mark is dissimilar and thus unlikely to cause confusion with a famous mark “Insta” known as an abbreviation of “Instagram”.

[Appeal case no. 2021-12444]

InstaShop

The applied mark consists of a red rectangle with rounded corners, a motif depicting a white shopping basket, the term “InstaShop” in white with large font, and “Convenience delivered” in black with a smaller font (see below).

The mark was filed in the name of InstaShop DMCC, a UAE corporation, for use on ‘online ordering services; price comparison services; import-export agency services; compilation of information into computer databases; providing commercial information and advice for consumers in the choice of products and services; retail services and wholesale services for foods and beverages, clothing, footwear, bags, cosmetics, and others in class 35 and ‘car transport; truck transport; packaging of goods; freight brokerage; delivery of goods; warehousing; rental of warehouse space and others’ in class 39 on December 5, 2019.

The JPO examiner rejected the mark due to a likelihood of confusion with the famous mark “Insta”, known as an abbreviation of “Instagram” in connection with application software for posting and sharing images and videos, online social networking services, advertising, and publicity services based on Article 4(1)(xv) of the Japan Trademark Law.

Article 4(1)(xv) is a provision to refrain from registering a junior mark that is likely to cause confusion with other business entities’ well-known goods or services.

The applicant filed an appeal on September 16, 2021, and argued the unlikelihood of confusion with Instagram.

JPO decision

The JPO assessed the term “InstaShop” can be a prominent portion of the applied mark and play a role in source indicator per se, but it shall be dissimilar to the “Insta” mark from visual, phonetical points of view. Even if the concepts are not comparable, by taking into global consideration the impression, memory, and association that respective mark gives to consumers and traders, the Board has a reason to believe that both marks are distinctively dissimilar.

Being that the applied mark contains figurative elements and other words “Convenience delivered”. Due to the difference, the applied mark as a whole has a low degree of similarity to the “Insta” mark.

Besides, the Board does not find the services in question have a close association with goods and services of Instagram in view of purpose, business field.

Even if the “Insta” mark has acquired a certain degree of reputation and popularity mainly among young consumers in their teens and twenties, the Board has no reason to believe relevant consumers are likely to associate and confuse a source of the services in question bearing the applied mark with Instagram because of a low degree of similarity of marks and relatedness with respective goods and services.

Based on the foregoing, the Board decided to disaffirm the examiner’s rejection and grant registration of the applied mark.

Olympic Lose Trademark Race with Olimple

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In a trademark opposition disputing the similarity and the likelihood of confusion between “Olympic” and “Olimple”, the JPO did not side with the IOC (International Olympic Committee).

[Opposition case no. 2021-900173]

Olimple

The opposed mark, consisting of the term “Olimple” written in the alphabet and the Japanese katakana character (see below), was applied with the Japan Patent Office (JPO) on January 28, 2020, for use on facial skin care gel, cosmetics, soaps, and other goods in class 3 by Olimple Co., Ltd.

The JPO granted protection on February 2, 2021, and published for opposition on March 9, 2021.

The applicant promotes medicated skin care gel for men bearing the Olimple mark.

Image credit: olimple.jp

Opposition by IOC

Opponent, IOC claimed the opposed mark shall be canceled in contravention of Article 4(1)(vi), (vii), (xi) and (xv) of the Japan Trademark Law by citing earlier International Registration no. 1128501 for wordmark “OLYMPIC” covering various goods and services in class 3 and other classes.

IOC argued a close resemblance between “OLYMPIC” and “Olimple” by stating:

  1. Both marks share four of the seven letters. Besides, the two letters at the end of the word, “le” and “IC” looks similar.
  2. The third letters “I” and “Y” of both marks are pronounced as “li” accompanied by the second letter “L”.
  3. Being that consumers are accustomed to several terms with a prefix of “OLYMP”, e.g., “OLYMPISM”, “OLYMPIAN” in connection with “OLYMPIC”, they will see the literal element “Olimp” as a dominant portion of the opposed mark.
  4. If so, relevant consumers are likely to confuse the opposed mark with “OLYMPIC” when used on goods in question.

JPO decision

The JPO did not question the famousness of the OLYMPIC mark as a source indicator of the IOC. However, the Opposition Board negated the similarity between “Olimple” and “OLYMPIC” on the following grounds.

  1. The term “Olimple” shall be deemed as a coined word because it is not a word that appeared in a language dictionary and does not give rise to any specific meaning in relation to the goods in question.
  2. There is a remarkable difference in the presence or absence of Japanese katakana characters. In addition to the difference between upper- and lower-case letters after the second letter, there are distinctions in the third letter “i” and “Y”, the sixth letter “l” and “I”, and the letters “e” and “C” at the end. In the configuration of the relatively short seven-letter alphabet, both marks are sufficiently distinguishable by appearance.
  3. Phonetically, both marks are unlikely to cause confusion as a whole because of a clear difference in the fourth and fifth sounds.
  4. It is obvious that both marks are dissimilar in concept.

The Board did not find a reason to believe relevant consumers would misconceive the source of the opposed mark merely because of close attention to the literal portion of “OLYMP” and “Olimp”, and its similarity.

Based on the foregoing, the JPO dismissed the entire allegations and decided on July 13, 2022, that the opposed mark shall remain valid as the status quo.

GUCCI Unsuccessful in Trademark Opposition

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On July 12, 2022, the Japan Patent Office (JPO) dismissed an opposition claimed by Italian fashion house Gucci against Japan Trademark Registration no. 6384970 for the mark “CUGGL” with a hand-painted line in pink by finding less likelihood of confusion with famous fashion brand “GUCCI”.

[Opposition case no. 2021-900284]

CUGGL

Opposed mark, consisting of the term “CUGGL” with a hand-painted line in pink, was applied for use on clothing, footwear, headwear, and apparel in class 25 by an individual on October 6, 2020.

The JPO granted protection of the opposed mark and published it for opposition on May 25, 2021.

Opposition by GUCCI

Italian high-end luxury fashion house, GUCCI filed an opposition with the JPO on July 26, 2021, and argued the opposed mark shall be canceled in contravention of Article 4(1)(vii), (xv), and (xix) of the Trademark Law due to similarity and likelihood of confusion with famous fashion brand “GUCCI”.

GUCCI claimed the opposed mark was sought with malicious intention to free-ride goodwill and reputation in a manner of hiding the lower part of the term “CUGGL” by a pink painted line to the extent consumers could recognize it as if “GUCCI”. In fact, the registrant promotes T-shirts bearing the opposed mark with the most part of the term hidden.

JPO Decision

The JPO Opposition Board admitted a remarkable degree of popularity and reputation of the opponent’s “GUCCI” mark.

In the meantime, the Board did not find a resemblance between “GUCCI” and “CUGGL” from visual, phonetic, and conceptual points of view. Due to a low degree of similarity of the mark, the Board had no reason to believe that relevant consumers would misconceive a source of goods in question bearing the opposed mark from GUCCI or any entity systematically or economically connected to the opponent.

Assuming a low degree of similarity of the mark and less likelihood of confusion, the Board can’t find a reasonable ground to admit the applicant had a malicious intention to free-ride goodwill and reputation of GUCCI and do harm to the opponent.

Based on the foregoing, the JPO dismissed the entire allegations and decided the opposed mark was valid.

PUMA wins opposition over Formstrip mark

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The Opposition Board of Japan Patent Office (JPO) sided with PUMA SE in trademark opposition against TM Reg no. 6269999 for the stripe device by finding a likelihood of confusion with PUMA’s iconic “Formstrip”.

[Opposition case no. 2020-900248, decision date: June 21, 2022]

Opposed mark

The opposed mark (see below right) was filed with the JPO in the name of Strato Trading Group Inc, a US company, for use on footwear, sports shoes, headwear, trousers, pants, bottoms, jackets, tops, and shirts in class 25 on July 29, 2019.

The JPO examiner did not issue any office action and granted protection of the opposed mark on June 16, 2020 (TM Reg no. 6269999). The opposed mark was published for opposition on August 4, 2020.

PUMA Formstrip

MARKS IP LAW FIRM, as a representative of PUMA SA, filed an opposition against the opposed mark on October 1, 2020, and argued the mark shall be canceled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law by citing earlier trademark registrations for famous Formstrip mark (see above left) in class 25.

In 1958 PUMA trademarked their “Formstrip” – an ever-expanding band of color that extended from the heel of the shoe, before diving into the soles along the sides. This particular shape was originally created to stabilize the foot inside the shoe, is now a typical PUMA trademark found on almost all PUMA shoes, and is used as a design element on our apparel products.

JPO Decision

By taking into consideration the produced evidence and substantial use of the cited mark on PUMA shoes that have annual sales exceeded JP15billion-yen and held a 4% market share in Japan for long years, the Opposition Board found “the Formstrip mark is highly distinctive and has acquired a remarkable degree of reputation and popularity as a source indicator of PUMA shoes among relevant consumers at the time of filing and registration of the opposed mark.

Besides, the Board found a high degree of similarity of marks by stating that both marks have the similar configuration of gradually becoming narrower and narrower with a gentle curve from a wide width. Although there are some differences in detail, such as the slight curvature at the narrow end, the opposed mark can be conceived of as a reversed version of the Formstrip.

In view of a close association between the goods in question and PUMA’s business, attention to be paid by relevant consumers, and the totality of circumstances and transactions in the relevant industry, the Board has a reasonable ground to believe that relevant consumers and traders are likely to confuse the source of the goods bearing the opposed mark from PUMA or an entity economically or systematically connected with PUMA.

Based on the foregoing, the Board decided to cancel the opposed mark entirely in contravention of Article 4(1)(xv) of the Japan Trademark Law.

APPLE Unsuccessful in Trademark Opposition to “MACLOGIC”

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The Japan Patent Office (JPO) dismissed an opposition filed by the U.S. tech giant, Apple Inc. against trademark registration no. 6370191 for a word mark “MACLOGIC” due to dissimilarity to and less popularity of the “Mac” mark among general consumers as a source indicator of Apple’s personal computers.

[Opposition case no. 2021-900239, Gazette issued date: June 24, 2022]

MACLOGIC

The opposed mark, consisting of the word “Maclogic” in standard character, was filed in the name of MACLOGIC Co., Ltd., a Japanese company providing EC consulting services and SNS marketing.

The mark was filed with the JPO on December 24, 2020, and admitted registration on March 9, 2021, over computer programs in class 9 and computer software design, computer programming, or maintenance of computer software, providing computer programs on data networks in class 42.

Opposition by Apple Inc.

On June 21, 2021, Apple Inc. filed an opposition to “Maclogic” and contended that the opposed mark shall be canceled in contravention of Article 4(1)(x) and (xv) 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 mark that has acquired a certain degree of recognition among relevant consumers.

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 brand owners and users.

Apple Inc. argued that the mark “Mac” has been famous as a source indicator of the opponent in relation to personal computers and their operating system. Being that relevant consumers consider the opposed mark as a composite mark composed of “Mac” and logic”, the term “Mac” per se shall be a prominent portion of the opposed mark.

If so, it is likely that relevant consumers confuse or misconceive the source of the opposed goods with Apple or any business entity systematically or economically connected with the opponent due to the high popularity of Apple’s “Mac” computers and the close resemblance between “Maclogic” and “Mac”.

Board decision

The Opposition Board found the “Mac” mark has acquired a certain degree of recognition among relevant consumers and trades in relation to personal computers and its operating system. However, to my surprise, the Board questioned if the mark has acquired a similar degree of popularity among general consumers.

Given the opponent mark has not been famous among general consumers, the Board found the opposed mark “Maclogic” in its entirety is dissimilar to the opponent mark “Mac” from visual, phonetical, and conceptual points of view.

Taking into consideration a low degree of similarity between the marks and popularity of Apple’s “Mac” mark, the Board had no reason to believe that consumers would mistakenly assume the opposed goods originate from the same source as or are associated with, the opponent when used on goods in question.

Based on the foregoing, the Board decided Apple’s opposition was groundless and dismissed the entire allegations.

Fashion magazine “ELLE” loses “RIELLE” trademark opposition in Japan

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The Japan Patent Office (JPO) dismissed an opposition filed by HACHETTE FILIPACCHI PRESSE, Société Anonyme (FR) against Japanese trademark registration no. 6378600 for wordmark “RIELLE riche” by finding dissimilarity to and less likelihood of confusion with French fashion magazine “ELLE”.

[Opposition case no. 2021-900263, Gazette issued date: May 27, 2022]

RIELLE

Opposed mark, consisting of the term “RIELLE” and the other term “riche” depicted below in small font (see below), was applied for registration on April 9, 2020, for various goods belonging to classes nos. 9, 14, 18, and 25 by SOLO PRODUCTS Co., Ltd., a Japanese company.

The JPO granted protection on April 13, 2021, and published for opposition on May 11, 2021.

Opposition by ELLE

On July 8, 2021, 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 “RIELLE”.

In the opposition, HFP contended that the opposed mark shall be canceled in contravention of Article 4(1)(xi) and (xv) 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 the high popularity of opponent’s fashion brand “ELLE” and the close resemblance between the opposed mark and “ELLE”.

Board decision

The Board admitted the “ELLE” mark has acquired a high degree of reputation and popularity 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 found that a prominent portion of the opposed mark “RIELLE” is dissimilar to the “ELLE” mark from visual, phonetical, and conceptual points of view.

Taking into consideration a quite 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 goods in question. Besides, being in mind that the term “ELLE” is a French word meaning “she” in English, the opponent mark shall not be strong.

The Board considered it is unlikely that relevant consumers would conceive of the “ELLE” mark from the term “RIELLE” because of an indivisible combination between “RI” and “ELLE” in the configuration of the opposed mark.

Based on the foregoing, the Board concluded that relevant traders or consumers would not confuse or misconceive a source of the opposed mark with HFP or any entity systematically or economically connected with the opponent when used on any goods in classes 9, 14, 18, and 25 and dismissed the opposition entirely.

Adidas Unsuccessful in Opposition over BOOST mark

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On May 18, 2022, the Japan Patent Office (JPO) dismissed an opposition filed by Adidas AG against Trademark Reg no. 6383132 for the wordmark “G-BOOST” by finding dissimilarity and unlikelihood of confusion with Adidas “BOOST”.

[Opposition case no. 2021-900273]

G-BOOST

UNI WORLD Co., Ltd. filed wordmark “G-BOOST” in standard character for use on ‘gloves for protection against accidents; clothing for protection against accidents; protective industrial shoes; dust masks’ in class 9 and ‘clothing; footwear; gloves; thermal gloves; sports shoes; sportswear; socks’ in class 25 on March 30, 2020.

The applicant promotes worker gloves bearing the mark “G-BOOST.”

The JPO granted protection of the mark on March 30, 2021, and published for opposition on May 25, 2021.

Opposition by Adidas

On July 14, 2021, Adidas AG filed an opposition and argued the opposed mark shall be canceled in contravention of Article 4(1)(vii), (x), (xi), and 4(1)(xv) of the Japan Trademark Law due to a conflict with earlier trademark registrations pertinent to Adidas BOOST shoes, namely, TM Reg nos. 5212257 “BOOST” and 5941352 “ULTRABOOST” on shoes and sports shoes in class 25.

Allegedly, Adidas introduced Boost in 2013 as its revolutionary cushioning system, which provided the highest energy return in any running sneaker. The technology was designed to provide runners with soft cushioning and long-lasting energy that more rigid sneakers couldn’t.

Adidas argued the opposed mark “G-BOOST” is confusingly similar to “BOOST” because the term “BOOST” shall be a prominent portion of the opposed mark given an alphabetical letter “G” perse lacks distinctiveness in relation to the goods in question. Besides, “BOOST” has become famous as a source indicator of Adidas in relation to running shoes. If so, relevant consumers are likely to confuse the source of goods bearing the opposed mark with Adidas.

JPO Decision

The JPO Opposition Board did not admit a certain degree of reputation and popularity of the BOOST mark as a source indicator of Adidas running shoes among relevant consumers in Japan by stating that the opponent failed to produce sufficient evidence to disclose sales figures, market share, and advertising expenditures, media space and time of the goods bearing the BOOST mark even though the opponent produced evidence to demonstrate marketing campaign for the BOOST shoes in Japan.

In addition, the Board compared “G-BOOST” with “BOOST” as a whole and negated the similarity of the marks because of a clear distinction in appearance and sound.

Given the low degree of similarity of the mark and unproved famousness of the opponent mark, the Board has no reason to believe relevant consumers would confuse a source of the goods bearing the opposed mark with Adidas.

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