The Japan Patent Office dismissed a trademark opposition claimed by an American manufacturer of two-wheeled personal transporters, Segway Inc. against trademark registration no. 5910587 for the Swagway mark in class 12 by finding less likelihood of confusion due to dissimilarity of mark. [Opposition case no. 2017-900114]
Opposed Swagway mark
Opposed mark “Swagway” in standard character was filed by a Chinese business entity on December 2, 2015 by designating the goods of “a two-wheeled, self-balancing personal transporter; automobiles; bicycles; airplanes; water vehicles; railway cars: accessories of aforementioned goods” in class 12.
Going thourgh a substantive examination, the JPO admitted registration on January 6, 2017 and published for opposition on February 7, 2017.
To oppose against registration of the Swagway mark, Segway Inc. filed an opposition on April 7, 2017.
In the opposition brief, Segway Inc. asserted the opposed mark shall be cancelled in violation of Article 4(1)(vii), (x), (xi), (xv) and (xix) of the Japan Trademark Law by citing the owned famous SEGWAY mark effectively registered over various types of vehicles in class 12 since 2002 (TM Reg. no. 4605474 etc.).
Article 4(1)(vii) prohibits any mark likely to offend public order and morals from registering.
Article 4(1)(x) prohibits to register a trademark which is identical with, or similar to, other entity’s well-known mark over goods or services closely related with the entity’s business.
Article 4(1)(xi) is a provision to refrain from registering a junior mark which is deemed identical with, or similar to, any senior registered mark.
Article 4(1)(xv) prohibits to register a trademark which is likely to cause confusion with a business of other entity.
Article 4(1)(xix) prohibits to register a trademark which is identical with, or similar to, other entity’s famous mark, if such trademark is aimed for unfair purposes, e.g. gaining unfair profits, or causing damage to the entity.
The Opposition Board admitted a certain degree of reputation and popularity of opponent SEGWAY mark in relation to a two-wheeled, self-balancing personal transporter, however, negated similarity of mark between SEGWAY and Swagway totally. The Board assessed, from appearance, difference at the 2nd and 3rd letters gives rise to a distinctive impression in the mind of relevant consumers provided that both marks merely consist of six or seven letters in its entirety. The difference also produces a distinctive impression in sound of the 1st syllable. Besides, both marks are evidently dissimilar in meaning given they are not dictionary words per se.
Based on it, the Board dismissed allegations of Article 4(1)(x) and (xi).
The Board questioned, as long as both marks are distinctively dissimilar, whether relevant consumers are likely to associate or confuse the source of opposed mark with Segway Inc. even if opposed mark is used on a two-wheeled, self-balancing personal transporter.
From the evidences produced by opponent, the Board was unable to find any fact to cause confusion with, or to presume malicious intention to do harm to opponent’ good will and business. If so, it is questionable whether relevant consumers or traders are likely to confuse or misconceive a source of the opposed mark with Segway Inc. or any entity systematically or economically connected with the opponent.
Based on the foregoing, the Board dismissed allegations of Article 4(1)(vii), (x) and (xix) as well.