タグ: similarity of mark

“OLYMPIAD vs OLYMBEER” trademark battle

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The Japan IP High Court reversed a decision of the JPO that canceled the OLYMBEER mark due to its similarity to “OLYMPIAD” in contravention of Article 4(1)(vi) of the Trademark Law.

[Court case no. Reiwa4(Gyo-ke)10067, Judgment date: December 26, 2022]

OLYMBEER

SJP & Co., a Japanese company, filed a trademark application for the wordmark “OLYMBEER” with its transliteration written in Japanese Katakana character (see below) for use on beers, refreshing beverages, fruit juices, vegetable juices, extracts of hops for making beer, whey beverage in class 32 with the JPO on October 28, 2019, ahead of the opening of the Tokyo 2020 Olympic games.

The JPO examiner did not raise any objection to the OLYMBEER mark and granted protection on November 16, 2020 (TM Reg no. 6323630). Subsequently, the mark was published for opposition on December 22, 2020.

Opposition by IOC

The International Olympic Committee (IOC) filed an opposition against the OLYMBEER mark on February 22, 2021, before the lapse of a two-month statutory period counting from the publication date and claimed the OLYMBEER mark shall be canceled in contravention of Article 4(1)(vii), (xi) and (xv) of the Japan Trademark Law by citing “OLYMPIC” and “OLYMPIAN” mark.

In the course of trial proceedings, the JPO notified at their discretion that the opposed mark shall be canceled in contravention of Article 4(1)(vi) due to a similarity to “OLYMPIAD” which has become famous to represent the modern Olympic Games.

Article 4(1)(vi)  

The article is a provision to prohibit registration of any mark that is identical with, or similar to, a famous mark indicating the State, a local government, an agency thereof, a　non-profit organization undertaking a business for the public interest, or a non-profit business for the public interest.

The Trademark Examination Guidelines (TEG) specify “IOC”, and “Olympic” shall be protectable under the article.

Consequently, the JPO decided to cancel the opposed mark based on Article 4(1)(vi) irrespective of no reference to the article by the IOC.

SJP & Co. brought the case to the IP High Court and argued that “OLYMPIAD” would not be such a famous mark as opposed to “Olympic” and the opposed mark is dissimilar to “OLYMPIAD” in its entirety from appearance, sound, and meaning.

IP High Court ruling

The IP High Court questioned if “OLYMPIAD” has become famous among relevant consumers and traders in relation to the goods in question from the produced evidence. If so, it is inadequate to assess the similarity of marks on the assumption that “OLYMPIAD” has acquired a substantial reputation.

The judge said in the decision a mere coincidence of “OLYM” is insufficient to find the similarity between “OLYMBEER” and “OLYMPIAD”. The judge stated that there is no reason to believe both marks are visually, phonetically, and conceptually similar when compared as a whole.

Based on the foregoing, the court found the JPO erred in applying Article 4(1)(vi) of the Trademark Law by wrongly finding the similarity of mark between “OLYMBEER” and “OLYMPIAD”, and thus the court ruled to reverse the JPO decision.

Failed trademark opposition by Volkswagen: POLO vs. QOLO

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On December 28, 2022, the JPO Opposition Board dismissed the opposition claimed by German car giant Volkswagen AG against TM Reg no. 6512258 for the wordmark “Qolo” by finding dissimilarity to, and the unlikelihood of confusion with VW’s famous car model name “Polo” even when used in relation to automobiles.

[Opposition Case no. 2022-900157]

Opposed mark

Qolo Inc., a Japanese start-up company, filed a trademark application for the wordmark “Qolo” for various goods and services in classes 9, 10, 12, 20, 37, 42, and 44 including automobiles and repair, maintenance, and rental of cars on September 7, 2021.

The JPO granted protection of the opposed mark on February 10, 2022, and published it for registration on February 21, 2022.

Opposition by VW

Volkswagen AG filed an opposition against the opposed mark on April 19, 2022, before the lapse of a two-month statutory period counting from the publication date and claimed the opposed mark shall be canceled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law by citing VW’s earlier TM Reg no. 600030-2 for wordmark “POLO” on automobiles in class 12.

VW argued the opposed mark “Qolo” is deemed similar to “POLO” from visual and phonetical points of view. The opposed mark designates “electric vehicles; automobiles” in class 12, “repair and maintenance of automobiles; vehicle battery charging” in class 37, and “rental of automobiles, vehicles” in class 39 that are deemed identical or similar to automobiles.

In view of the remarkable reputation of VW POLO cars and the close resemblance between “Qolo” and “POLO”, it is highly likely that relevant consumers confuse a source of goods and services of the opposed mark when used on automobiles and its related services.

JPO decision

The Board admitted the famousness of the “POLO” mark as a source indicator of VW cars based on the facts that the Volkswagen Polo has been continuously imported to Japan since 1996 and ranked in the top 7 of imported automobiles for the past two decades.

However, the Board found “POLO” and “Qolo” are dissimilar in appearance and sound.

The difference in the first letter consisting of four letters in total would be anything but visually negligible. Likewise, the different pronunciation in the 1st sound consisting of two sounds in total gives rise to a distinctive impression.

By taking into consideration a lower degree of similarity between the marks and lack of originality for the term “POLO”, which means a game played on horseback between two teams, each of four players, the Board negated a likelihood of confusion between “POLO” and “Qolo” even when the opposed mark is used on goods and services in question.

Based on the foregoing, the Board dismissed the opposition entirely and decided that the opposed mark “Qolo” shall remain valid as the status quo.

Philippe Starck Lost Trademark Dispute over Starck

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The Japan Patent Office (JPO) dismissed an opposition claimed by Philippe Starck, a French designer, against TM Reg no. 6487488 for the wordmark “Starck” due to the unlikelihood of confusion when used on management, leasing, rental, purchase, and sale of buildings, and real estate agency services in class 36.

[Opposition case no. 2022-900079, Decision date: December 5, 2022]

Opposed mark

Starck Co., Ltd., a Japanese company, sought trademark registration of the wordmark “starck” in standard character to be used on services related to real estate in class 36 on July 2, 2021.

Without raising any objections in the course of substantive examination, the JPO granted protection of the opposed mark on December 13, 3021, and subsequently published for post-grant opposition on January 13, 2022.

Opposition by Philippe Starck

Philip Starck, a French designer known for his wide range of designs, including everything from interior design to household objects and architecture, filed an opposition with the JPO on March 15, 2022, just before the lapse of a statutory period of two months counting from the publication date.

He argued the opposed mark shall be canceled in contravention of Article 4(1)(xv) and (xix) of the Japan Trademark Law in view of the high reputation of the term “Starch” as an indication of the opponent and close relatedness between the service in question and architectural design service.

JPO decision

The JPO Opposition Board did not admit the famousness of the mark “Starck” as a source indicator of the opponent’s design service from the produced evidence even though the Board found the mark has acquired a certain degree of recognition as a name of designer among relevant consumers.

Besides, the Board considered architectural design services shall be remotely associated with the management, leasing, rental, purchase, and sale of buildings, and real estate agency services in class 36.

If so, irrespective of the identical marks, the Board has no reason to believe relevant consumers would conceive of the opponent at a slight of the service in question using the opposed mark and confuse its source with the opponent.

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

HYATT lost a trademark dispute in Japan: GRAND CLUB vs GRAN CLUB

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The Japan Patent Office (JPO) did not side with HYATT and dismissed an invalidation petition against TM Reg no. 6186629 for the wordmark “GRAN CLUB” by finding dissimilarity to HYATT’s earlier mark “GRAND CLUB”.

[Invalidation case no. 2022-890018, Decision date: December 14, 2022]

GRAN CLUB

The disputed mark, consisting of the word mark “GRAN CLUB” in standard character was filed by Memolead Wellness Co., Ltd., a Japanese company for use in restaurants, hotels and temporary accommodations, retirement homes, beauty salons, and other services in class 43 and 44 on September 13, 2018, with the JPO. The JPO examiner granted protection on September 10, 2019.

Apparently, the applicant uses the mark on their facility to provide a sports club, fitness gym, spa, beauty salon, sauna, café, and social club in Takasaki City, Gunma Prefecture (Japan).

GRAND CLUB

Hyatt International Corporation has effectively owned earlier TM Reg no. 4604602 for the wordmark “GRAND CLUB” in standard character on hotels, restaurants, beauty salons, and other services in Japan.

Hyatt filed an invalidation petition against “GRAN CLUB” with the JPO on March 18, 2022, and argued the disputed mark shall be invalidated in contravention of Article 4(1)(xi) of the Trademark Law due to a close resemblance between “GRAND CLUB” and “GRAND CLUB” to be used on identical or similar services.

JPO Decision

The JPO Invalidation Board found the disputed mark “GRAN CLUB” does not give rise to any specific meaning as well as the cited mark “GRAND CLUB”.

From the appearance, the Board found both marks are distinguishable by virtue of the presence or absence of the letter “D” in the middle of the marks.

Besides, the Board had a view that it is unlikely relevant consumers audibly confuse “ɡræn-klʌb” with “ɡrænd-klʌb” in view of short phonetic compositions of six or seven sounds.

Hyatt argued “GRAND CLUB” can be called “ɡræn-klʌb” among Japanese consumers based on a lot of hotels and facilities with a mark containing the term “GRAN” that is ordinary called “ɡræn”. However, the Board held the examples are neither direct nor relevant to find “GRAND CLUB” is pronounced as  “ɡræn-klʌb” by relevant consumers.

Given both marks are incomparable to the concept, the Board has a reason to believe both marks give rise to a different impression in the mind of consumers from visual, phonetical, and conceptual points of view.

Based on the foregoing, the Board concluded “GRAN CLUB” and “GRAND CLUB” are dissimilar and declared the validity of the disputed mark.

Trademark dispute: “Swan Angel” vs “ANGEL SWAN”

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In a recent decision, the Japan Patent Office (JPO) declared invalidation of TM Reg no. 5947687 for the word mark “Swan Angel” in class 41 due to a similarity to “ANGEL SWAN”.

[Invalidation case no. 2022-890031, Decision date: December 1, 2022]

Swan Angel

Disputed mark, consisting of the wordmark “Swan Angel” in standard character, was filed for use on various services including ballet school in class 41 with the JPO by a Japanese individual on October 5, 2016, and registered on May 19, 2017 (TM Reg no. 5947687).

Invalidation petition

On May 10, 2022, just before the lapse of a five-year statute of limitations, an owner of earlier TM Reg no. 5509646 for wordmark “ANGEL SWAN” in standard character filed a petition for invalidation against the disputed mark.

The owner argued disputed mark shall be invalidated in contravention of Article 4(1)(xi) of the Japan Trademark Law by stating “Swan Angel” is confusingly similar to “ANGEL SWAN” and ballet school and other services pertinent to ballet is deemed similar to the service in class 41 designated under the earlier mark since it also relates to ballet.

JPO decision

In an assessment of the similarity of marks, the JPO Invalidation Board stated:

Both the disputed mark and the cited mark consist of the two English words, “Swan” and “Angel”, commonly known among general consumers in Japan and it is reasonable to assume that relevant traders and consumers at the sight of both marks will see the words being placed in reverse order.

Even if there is a difference in the order of two words between the marks, the Board has no reason to believe the difference gives rise to any distinct meaning as a whole.

If so, relevant traders and consumers are likely to recognize the respective marks as a combination of “swan” and “angel” in sound and concept irrespective of the reversed order.

In this respect, both marks look similar in appearance because of the same words, font, and alphabet.

Based on the foregoing, the Board found the disputed mark “Swan Angel” is confusingly similar to the cited mark “ANGEL SWAN” from visual, phonetical, and conceptual points of view.

Taking account of another factor that respective services pertinent to ballet are deemed identical or similar as well, the Board concluded the disputed mark shall be retroactively invalidated in contravention of Article 4(1)(xi).

Failed Opposition by Monster Energy over PREDATOR mark

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In a trademark opposition claimed by Monster Energy Company against TM Reg no. 6471165 for the stylized PREDATOR mark in class 30, the Japan Patent Office (JPO) dismissed the opposition by finding dissimilarity of goods between ‘coffee, tea, cocoa’ and ‘carbonated beverages, energy drink’ in class 32.

[Opposition case no. 2022-900010, decided on November 7, 2022]

Opposed mark

Acer Incorporated, a Taiwanese multinational hardware, and electronics corporation filed a stylized mark “PREDATOR” (see below) for use on various foods including ‘instant coffee, coffee beverages, coffee, tea, cocoa’ in class 30 with the JPO on January 6, 2021.

The JPO examiner granted protection on November 11, 2021 (TM Reg no. 5461165), and the opposed mark was published for opposition on December 7, 2021.

Opposition by Monster Energy

Monster Energy Company filed an opposition on January 13, 2022, and claimed the opposed mark shall be canceled in contravention of Article 4(1)(vii), (xi), and (xix) of the Japan Trademark Law by citing TM Reg no. 6408734 for word mark “PREDATOR” in standard character over ‘carbonated beverages; energy drink’ in class 32.

The opponent argued that ‘instant coffee, coffee beverages, coffee, tea, cocoa’ designated in class 30 shall be deemed similar to ‘carbonated beverages; energy drink’ in class 32 because:
(1) five major Japanese beverage suppliers manufacture and distribute not only the goods in question, but also other beverages identical or similar to the cited drinks e.g., soft drinks, fruit drinks, beverage vegetable juices, and whey drinks.
(2) Both goods are generally sold at convenience stores, supermarkets, department stores, drugstores, and other food outlets, vending machines, and train station kiosks, so they share the same sales locations.
(3) Both ingredients overlap and their uses as non-alcoholic beverages are common. Namely, there are purchased and consumed at teatime, for relaxation during breaks, for hydration, and as drinks during and after meals.
(4) Both goods are consumed by general consumers.

It is indisputable that both marks are similar in sound and meaning. Being that both marks and goods are deemed similar, the opposed mark shall not be registrable under Article 4(1)(vi) of the Japan Trademark Law.

JPO decision

The JPO Opposition Board found similarities in both marks.

However, the Board did not uphold the argument pertinent to the similarity of goods by stating that:

Although it is true the main consumers of non-alcoholic beverages are general consumers, that they are ultimately sold in the same vending machines and sales corners, and that they are consumed for similar purposes, the Board has a reason to believe these goods have different suppliers, gradients, and distribution channels more often than not. If so, both goods shall not be considered similar at all events.

Based on the above findings, the Board decided the opposed mark shall not be canceled and dismissed the oppositions by Monster Energy entirely.

A trademark dispute over ZOO

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In a recent administrative decision, the Japan Patent Office (JPO) found TM Reg no. 6246792 shall not be invalidated in contravention of Article 4(1)(xi) of the Japan Trademark Law because of dissimilarity to earlier TM Reg no. 6139339 for mark “ZOO”.

[Invalidation case no. 2021-890029, decision date: November 1, 2022]

TM Reg no. 6246792

The disputed mark consists of literal elements, “SERIES” and “70th Anniversary Premium Brand”, and figurative element that looks like “ZOO” or “700” (see below).

The mark was filed for use on flour and other foods in class 30 in the name of ODAZO SEIFUN Co., Ltd. on March 15, 2019.

According to the applicant’s website, the company uses the mark on a series of high-quality wheat flour and clearly calls it “ZOO”.

The JPO granted registration of the mark on April 20, 2020.

TM Reg no. 6139339

The opponent has owned earlier TM Reg no. 6139339 for the mark “ZOO” in three colors (see below) in classes 29, 30, and 41 since April 19, 2019.

On June 28, 2021, the opponent filed an invalidation action and argued that the disputed mark shall be invalidation due to its close resemblance to the earlier trademark “ZOO” in contravention of Article 4(1)(xi) of the Japan Trademark Law.

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.

The opponent alleged that the disputed mark obviously gives rise to the same pronunciation and sound as the earlier mark from its configuration. If so, both marks shall be considered confusingly similar when used on goods in class 30.

JPO decision

Astonishingly, the JPO Invalidation Board found both marks are dissimilar from visual, phonetical, and conceptual points of view by stating;

In assessing the similarity between the disputed mark and the cited mark, both marks are clearly distinguishable from overall appearance, as there is a clear difference between the three tiers/one tier, literal elements and color, even if some components are colored in red.

In addition, the figurative element of the disputed mark is recognizable as a geometric figure. Meanwhile, the cited mark consists of the word “ZOO”. Therefore, the disputed mark does not give rise to a sound of “ZOO”, but “Series Seventies Anniversary Premium Brand,” “Series,” and “Seventies Anniversary Premium Brand”. It is obvious that both marks are unlikely to cause confusion in sound.

Assuming that the figurative elements of the disputed mark does not give rise to any specific meaning, there is no reason to find similarity in concept between the disputed mark and the cited mark in its entirety.

Therefore, the disputed mark is considered dissimilar to the cited mark in terms of the impressions, memories, associations that they give to traders and consumers through appearance, sound and concept.

Based on the foregoing, the Board held the disputed mark shall not be invalidated under Article 4(1)(xi) of the Japan Trademark Law even if the goods in question are identical or similar to the designated goods of the cited mark, and dismissed the entire allegations.

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.

ZOOM vs ZOOM PHONE

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In a trademark opposition disputing the similarity between “ZOOM” and “ZOOM PHONE” in relation to the SaaS service of class 42, the Japan Patent Office (JPO) found both marks dissimilar and sustained registration of TM Reg no. 6527182 “ZOOM PHONE” owned by Zoom Video Communications Inc.

[Opposition case no. 2022-900213, decided on October 26, 2022]

ZOOM PHONE

Zoom Phone is a cloud-based phone system, which allows you to place and receive calls via laptop or smartphone through the Zoom application.

Zoom Video Communications Inc. filed a trademark application for the wordmark “ZOOM PHONE” in standard character for use on web conferencing services; the transmission of instant messages; telepresence conferencing services; network conferencing services;　teleconferencing services;　videoconferencing services; audio teleconferencing; web messaging services in class 38, and software as a service [SaaS] in class 42 with the JPO on December 18, 2020.

The mark was registered on March 14, 2022, and published for opposition on March 23, 2022.

Opposition by Zoom

On May 23, 2022, before the lapse of a statutory period of two months counting from the publication date, Zoom Co., Ltd., an owner of the trademark “ZOOM” in Japan, filed an opposition and argued the opposed mark shall be partially canceled in contravention of Article 4(1)(xi) of the Japan Trademark Law by citing earlier registrations for word mark “ZOOM” in class 9.

The opponent argued that the opposed mark consists of two words, “ZOOM” and “PHONE”. The term “PHONE” lacks distinctiveness in relation to SaaS service since it makes use of telecommunication devices, inter alia smartphone. Therefore, the term “ZOOM” shall be a prominent portion as a source indicator of the opposed mark. If so, the opposed mark is deemed similar to the cited mark “ZOOM”.

JPO decision

The Opposition Board found the opposed mark shall be visually and phonetically considered in its entirety due to alphabets of the same font and size, and overall sound easily pronounced.

Even if the respective word has a specific meaning, relevant consumers would see the opposed mark as a coined word since the term “ZOOM PHONE” is not included in any dictionaries.

If so, the Board has a reason to believe the opposed mark shall be considered as a whole, and thus it is not allowed to compare the literal portion “ZOOM” of the opposed mark with the cited marks in assessing the similarity of the mark.

Based on the above findings, the Board assessed the similarity of both marks and held that:

The opposed mark gives rise to a pronunciation of ‘zuːm-foʊn’, but no specific meaning. In the meantime, the cited marks give rise to a pronunciation of ‘zuːm’ and the meaning of ‘the effect of a camera moving toward or away from a subject by using a zoom lens. Obviously, there is a clear distinction between the marks by virtue of the presence of the term “PHONE” from visual, phonetic, and conceptual points of view.

Consequently, the JPO decided the opposed mark “ZOOM PHONE” is dissimilar to the cited mark “ZOOM” 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.