タグ: Likelihood of confusion

Warner Defeated in Trademark Opposition over TWEETY

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The Japan Patent Office (JPO) dismissed an opposition filed by Warner Bros against Japanese trademark registration no. 6452448 for the TWETYBIRD mark with a device by finding dissimilarity to and less likelihood of confusion with “Tweety”, a yellow canary bird, featured in the Warner Bros Looney Tunes animated cartoons.

[Opposition case no. 2021-900459, Decision date: October 26, 2022]

Japan TM Reg no. 6452448

The opposed mark, consisting of the word “TWETYBIRD” and an encircled “B” device (see below), was filed by a Chinese company for use on various goods in classes 3,9,14,18,25, and advertising and other services in class 35 on December 16, 2020.

The JPO granted protection on August 25, 2021, and the mark was published for opposition on October 26, 2021.

Opposition by Warner Bros

On December 27, 2021, before the lapse of a two-month opposition period, Warner Brothers Entertainment Incorporated filed an opposition with the JPO, and argued the opposed mark shall be canceled in contravention of Article 4(1)(vii), (xi), (xv) and (xix) of the Japan Trademark Law by citing earlier trademark registrations for the mark “Tweety”, a yellow canary bird (see below) featured in the Looney Tunes animated cartoons.

Warner Bros alleged that the cited marks have been remarkably famous for the title of the animated cartoons or the name of the cartoon character produced by Warner Bros. In view of the close resemblance between the famous mark “Tweety” and a literal element “Twety” of the opposed mark, it shall be considered the opposed mark is similar to and likely to cause confusion with the opposed mark when used on the goods and service in question.

JPO decision

The JPO Opposition Board admitted a certain degree of reputation and popularity of the cited marks to indicate a cartoon character. However, the Board questioned such popularity as a source indicator of Warner Bros from the totality of the circumstances and the produced evidence.

Besides, the Board found the literal element “TWETYBIRD” of the opposed mark shall be assessed in its entirety from the visual configuration. If so, the opposed mark would not give rise to a similar sound and meaning to “Tweety”. Therefore, the Board has a reason to believe that relevant consumers are unlikely to confuse a source of the goods and services in question bearing the opposed mark with Warner Bros due to a low degree of similarity between marks and reputation of the cited marks as a source indicator of Warner Bros.

In the decision, the Board mentioned it is doubtful if relevant consumers acquaint themselves with “Tweety Bird” as the full name of “Tweety”. If so, there is no reasonable ground to find the opposed mark violates morality or public order.

Based on the foregoing, the Board found the opposed mark shall not be canceled in contravention of Article 4(1)(vii), (xi), (xv), and (xix) and dismissed the opposition entirely.

ELLE vs Ellenail

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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. 6452048 for stylized wordmark “Ellenail” by finding dissimilarity to and less likelihood of confusion with French fashion magazine “ELLE”.

[Opposition case no. 2021-900440, Decision date: October 7, 2022]

Ellenail

The opposed mark, consisting of the term “Ellenail” with stylization (see below), was applied for registration on August 14, 2020, for goods and services relating to nail care and polish in classes 3, 18, 21, and 44 by es social management, Inc., a Japanese company.

The company opens “Ellenail” nail salons in Tokyo.

The JPO granted protection on October 6, 2021, and was published for opposition on October 26, 2021.

Opposition by ELLE

On December 17, 2021, 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, filed an opposition with the JPO.

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 earlier 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 consists of two words, “Elle” and “nail”. It is obvious that the term “nail” lacks distinctiveness in connection with nail-related goods and services. Besides, in view of the fact that the term “nail” is an English word familiar among general consumers in Japan, the term “Elle” shall be considered a prominent portion of the opposed mark. Therefore, the opposed mark as a whole is similar to HFP’s earlier registrations for the mark “ELLE” which has acquired a substantial degree of reputation and popularity. Because of it, relevant consumers are likely to confuse or misconceive the opposed mark with HFP or any business entity systematically or economically connected with the opponent at the sight of the goods and services in question bearing the opposed mark.

JPO 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 fashion magazines.

In the meantime, the Board found the opposed mark shall be assessed in its entirety from visual and conceptual points of view. Facts that the word “nail” is descriptive in relation to the goods and services in question and the term “Ellenail” is a combination of two different languages, namely “Elle” in French and “nail” in English, shall not be a good reason to consider the word “Elle” a prominent portion of the opposed mark because of a tight combination of two words. By finding this, the Board concluded the opposed mark is dissimilar to the “ELLE” mark.

Taking into consideration a quite low degree of similarity between the marks, and a remote association between nail-related goods and services and the opponent business, the Board had no reason to believe that relevant consumers would mistakenly assume the opposed goods or services originate from the same source as or are associated with, the opponent.

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

General Motors defeated in trademark opposition over HUMMER

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The Japan Patent Office (JPO) dismissed a trademark opposition claimed by General Motors LLC against TM Reg no. 6387036 for “HEAVYDUTY HUMMER” with “HH” device by finding dissimilarity to and the unlikelihood of confusion with the automotive brand “HUMMER.

[Opposition case no. 2021-900295, Gazette issued date: September 30, 2022]

HEAVY DUTY HUMMER

The opposed mark, consisting of a word “HEAVYDUTY HUMMER” and “HH” device (see below), was filed with the JPO on February 18, 2021, for use on bicycles in class 12 and tent in class 22.

By virtue of the accelerated examination procedure, the mark was granted protection in two months (April 21, 2021) and published for opposition on June 1, 2021.

Opposition by General Motors

On August 2, 2021, before the lapse of a two-month opposition period, General Motors LLC filed an opposition by citing earlier TM Reg no. 2682898 for the wordmark “HUMMER” in classes 6,9,12,13,22.

In the opposition, GM 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.

GM argued that the opposed mark is similar to earlier registration for the mark “HUMMER” and relevant consumers are likely to confuse or misconceive the opposed mark with GM or any business entity systematically or economically connected with the opponent due to the high popularity of the opponent’s automotive brand “HUMMER” and the close resemblance between the opposed mark and “HUMMER”.

JPO decision

The Board negated a certain degree of reputation and popularity of the HUMMER mark among relevant consumers and traders as a source indicator of GM by stating:

“From the produced evidence, the opponent allegedly has used the cited mark as a brand name for four-wheel drive vehicles since 1999 that have been imported and sold in Japan since at least 2002. However, GM terminated its production in May 2010. Besides, being that there is no clear evidence to demonstrate the timing, sales volume, sales amount, market share, scale of marketing, and advertising in relation to “automobiles” and “bicycles” in Japan, the Board has no reason to find the cited mark has been widely recognized by the relevant public as a source indicator of the opponent business.”

In assessing the similarity of mark, the Board found that the literal portion “HEAVYDUTY HUMMER”, represented in the same font and the same size, gives a coherent and unified impression from appearance. The sound is not particularly redundant and can be pronounced in a series without difficulty. The term “HEAVYDUTY” is anything but an English word that is commonly used in Japan. If so, it is not permissible to separate and extract the term “HUMMER” from the opposed mark and compare it with the cited mark.

Based on the above findings, the Board compared the opposed mark with the cited mark in its entirety.

“In the presence or absence of the HH device and the term HEAVYDUTY, both marks are clearly distinguishable and there is no risk of confusion in appearance and sound. Since both marks do not give rise to any specific meaning, both marks are not comparable in concept.”

Consequently, the Board concluded that relevant traders or consumers would not confuse or misconceive a source of the opposed mark with GM or any entity systematically or economically connected with the opponent when used on any goods in question and allowed the opposed mark to survive.

Trademark Dispute over Side Stripe on Footwear

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In a trademark dispute along the side of shoes between Vans Incorporated and Revenge X Storm Limited, the Japan Patent Office (JPO) did not side with Vans Incorporated.

[Invalidation case no. 2021-890049, Decision date: September 29, 2022]

REVENGE shoes

Revenge X Stream Limited filed a device mark representing a shoe for the right leg with a thunder-shaped line along the side of the shoe for use on ‘sports shoes’ in class 25 with the JPO on June 5, 2018.

The mark was successfully registered on October 2, 2020 (TM Reg no. 6299288).

Invalidation action by VANS

VANS INC. filed an invalidation action on September 16, 2021, and argued the mark shall be invalidated in contravention of Article 4(1)(x), (xi), and (xv) of the Japan Trademark Law by citing earlier trademark registrations for the iconic Vans Side stripe used on OLD SKOOL (see below) since 1977.

VANS alleged the appearance of Vans OLD SKOOL perse has become famous to indicate VANS’ shoes among relevant consumers of sports shoes in Japan.

JPO Decision

To my surprise, the JPO Invalidation Board denied a certain degree of reputation and popularity of the Vans Side stripe as a source indicator of VANS’ shoes from the totality of the produced evidence.

Besides, the Board negated the similarity of both marks by stating:

“The mark in question represents a thunder-shaped sideline along the side of sports shoes. On the other hand, the Vans Side stripe consists of a gently wavy curved sideline along the side of the shoes.

Therefore, the appearance of the two marks clearly differs in the shape of the sideline on the side of the shoe and is clearly distinguishable.

In this way, even if both marks cannot be compared in terms of concept, they are dissimilar and unlikely to be confused in terms of appearance and pronunciation, and therefore, the degree of similarity shall be quite low.”

Given a low degree of similarity between the two marks, the Board has a reason to believe that relevant consumers are unlikely to confuse a source of sports shoes bearing the mark in question with VANS.

Based on the foregoing, the Board found the entire allegations of VANS groundless and decided to dismiss invalidation action accordingly.

Failed Opposition by Chanel over Monogram

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The Japan Patent Office (JPO) dismissed a trademark opposition filed by Chanel against TM Reg no. 6351256 for a composite mark containing a device made of two inverted and interlocked “C” by finding dissimilarity to and the unlikelihood of confusion with Chanel’s monogram.

[Opposition case no. 2021-900169, Decision date: September 30, 2022]

Opposed mark

The opposed mark consists of the words “MUSIC BAR” and “CHAYA”, and a device made of two inverted and interlocked “C” (see below).

HIC Co., Ltd. filed the opposed mark for use on restaurant service in class 43 on August 27, 2020, with the JPO. The examiner granted protection on January 19, 2022, and published for opposition on February 10, 2021.

Opposition by Chanel

Chanel filed an opposition on April 30 and argued 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 Chanel’s monogram on the ground that:

  1. The figurative element of the opposed mark is similar to the prestigious Chanel’s monogram made of two inverted “c” displayed as an ellipse in its central point (see below).
  2. Given the remarkable degree of popularity and reputation of Chanel’s monogram, relevant consumers with ordinary care are likely to confuse a source of the service in question bearing the opposed mark with CHANEL.
  3. Applicant must have applied the opposed mark, confusingly similar to Chanel’s monogram with an unfair intention to take advantage of the reputation and goodwill associated with Chanel’s famous trademark.

JPO Decision

The JPO Opposition Board admitted that Chanel’s monogram has acquired a high degree of reputation among relevant consumers of the service in question. Allegedly, CHANEL spent more than 5 billion JP-Yen on advertising in Japan each year since 2014. Annual sales revenue exceeds 50 billion JP-Yen. Jewelry accounts for 3 billion JP-Yen of the revenue.

In the meantime, the JPO denied visual similarity between the figurative element of the opposed mark and the monogram by stating:

“They share a similarity in that they are both figures with two “C”-shaped curves placed back-to-back on the left and right sides so that parts of the curves overlap. However, in addition to differences in the way the “C”-shaped curves are represented (whether the thickness varies or is uniform and whether the opening is wide or narrow), there are also differences in the way the entire composition is represented, such as asymmetrical and symmetrical figures, vertical figures with two deeply overlapping curves and horizontal figures with two shallowly overlapping curves. Furthermore, the overall impression of the composition is clearly different in terms of asymmetrical and symmetrical figures, vertical figures with two curves deeply superimposed and horizontal figures with two curves shallowly superimposed. Therefore, there is no likelihood of confusion in terms of appearance.”

Obviously, there is no likelihood of confusion in terms of appearance and conception. Therefore, taking account of the impression, memory, and association given to traders and consumers by means of the appearance, concept, and pronunciation of two marks as a whole, the Board has a reason to believe that two marks are dissimilar and there is no likelihood of confusion.

Based on the foregoing, the Board dismissed the entire allegations of Chanel and allowed the opposed mark to register as the status quo.

ZARA Unsuccessful in Trademark Opposition against ZARAHA

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The Japan Patent Office (JPO) dismissed a trademark opposition claimed by INDITEX, S.A. against TM Reg no. 6423743 for the wordmark “ZARAHA” by finding dissimilarity of the mark and unlikelihood of confusion with a famous fashion brand “ZARA”.

[Opposition case: 2021-900373, Decision date: September 8, 2022]

ZARAHA

ZARAHA BEAUTY CO., LTD., a Japanese company, filed a word mark “ZARAHA” in standard character for use on beauty care cosmetics and preparations (cl. 3); retail services for beauty care cosmetics (cl. 35); beauty arts instruction (cl. 41); aesthetician services, beauty salon services (cl. 44) with the JPO on October 15, 2020 (TM App no. 2020-127458).

The applicant opens the ZARAHA BEAUTY shop in Tokyo to provide beauty salon services. Click here.

The JPO granted protection of the applied mark on July 6, 2021, and published for opposition on August 24, 2021

Opposition by INDITEX

Inditex, S.A., an international fashion manufacturer, and distribution group filed an opposition against the wordmark “ZARAHA” by citing its flagship brand “ZARA” on October 21, 2021.

Inditex argued the opposed mark shall be canceled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law by taking into consideration the remarkable reputation of “ZARA” as a famous fashion brand, resemblance of both marks, and close association between apparels and cosmetics, beauty care-related services.

JPO Decision

The JPO Opposition Board admitted a certain degree of the reputation of the mark ZARA as a source indicator of the opponent’s apparel. However, the Board questioned if “ZARA” has acquired a substantial degree of popularity among relevant consumers of the goods and services in question from the totality of the produced evidence.

Besides, the Board found that “ZARAHA” and “ZARA” shall be easily distinguishable in appearance and pronunciation. Conceptually, both marks are not similar because they do not give rise to any specific meaning. Therefore, the Board has a reason to believe both marks are dissimilar.

Given that “ZARA” has not become famous among relevant consumers of the goods and services in question, and a low degree of similarity between the marks, it is unlikely that the consumers confuse a source of cosmetics and beauty care-related services bearing the opposed mark “ZARAHA” with Inditex.

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

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.