Trademark battle: FORTNITE vs FORTNIGHT

In an invalidation trial against TM Reg no. 6389929 for word mark “FORTNIGHT” in classes 9, 16, 28, 35, 41 and 43, the Japan Patent Office (JPO) did not rule in favor of Epic Games, Inc. due to an unlikelihood of confusion with “FORTNITE”.
[Invalidation case no. 2023-890068, decided on May 9, 2024]


FORTNIGHT

A Japanese company sought registration of word mark “FORTNIGHT” in standard character for use on various goods and services in classes 9, 16, 28, 35, 41 and 43 (including games) with the JPO on June 4, 2018 (TM App no. 2028-79647).

The JPO examiner rejected the mark due to a likelihood of confusion with famous game software and distribution platform “FORTNITE” managed by Epic Games, Inc.

However, the JPO Appeal Board disaffirmed the rejection by stating that there is no reason to find “FORTNITE” has been widely recognized among relevant consumers to indicate Epic business and the applicant deleted games from designation. If so, it is unlikely that relevant consumers would not confuse the source of goods and service bearing “FORTNIGHT” with Epic’s “FORTNITE”.

The mark “FORTNIGHT” was registered on June 8, 2021.


Invalidation action by Epic Games, Inc.

Epic Games, Inc. is an American video game development and distribution company, widely known for the success of “Fortnite”, a free multiplayer online video game first released in 2017, and its game marketplace. On August 10, 2021, Epic filed a post-grant opposition against TM Reg no. 6389929 “FORTNIGHT” on August 10, 2021, but the opposition was unsuccessful (Opposition case no. 2021-900304).

On August 22, 2023, Epic filed an invalidation action and claimed that the mark “FORTNIGHT” should be invalidated in contravention of Article 4(1)(xv) and (xix) of the Japan Trademark Law.

Epic repeatedly argued “FORTNIGHT” has a high degree of similarity to “FORTNITE” from visual, phonetical and conceptual points of view. Taking account of famous online game “FORTNITE” among game users and close relation between online games and the goods and services in question, relevant consumers are likely to confuse “FORTNIGHT” with “FORTNITE”.

Given that the initial filing designated the game in question, it is presumed that the company had knowledge of the well-known online game software “FORTNITE” and aimed to benefit from its reputation.


JPO decision

The JPO Invalidation Board found that “FORTNITE” has been widely recognized to indicate video games of Epic among consumers and traders in video game industry. However, given that the launch of the video games in Japan precedes the application date of the mark “FORTNIGHT” by three months, such recognition would be limited to the industry.

With regard to the similarity of the marks, the Board stated, “Although “FORTNIGHT” and “FORTNITE” share the same sound, they are distinguishable in appearance, and the concepts are not comparable. In assessing the overall impression, the Board has a reason to find a low degree of similarity between the marks.”

In light of the aforementioned findings, the Board determined that relevant consumers are unlikely to confuse the source of the goods and services in question bearing the mark “FORTNIGHT” with “FORTNITE.”

Furthermore, there is no evidence to suggest that the applicant had any malicious intention of free-riding on or damaging Epic’s online video games “FORTNITE.”

Consequently, the Board dismissed the invalidation action and declared the validity of TM Reg. No. 6389929.

Tennis King Roger Federer Defeated out of the Court

The Japan Patent Office (JPO) dismissed an opposition filed by Tenro AG, a Swiss company established by Tennis King Roger Federer, against Japanese TM Reg no. 6691122 for mark “Roger King” in class 28 by finding dissimilarity to IR nos. 1529136 “THE ROGER” & 1529148 “ROGER” and unlikelihood of confusion.
[Opposition case no. 2023-900151, decided on April 23, 2024]


Roger King

Hirota Gold Inc. applied trademark application for stylized word mark “Roger King” (see below) in relation to golf clubs, golf club head covers, golf bags, golf gloves, golf equipment, and sports equipment of class 28 with the JPO on February 1, 2022 (TM App no. 2022-11297).

The applicant is engaged in the business of promoting golf clubs bearing the applied mark.

The JPO granted protection of the applied mark on April 14, 2023, and then published it for post-grant opposition on April 27, 2023.


Opposition by Tenro AG

Tenro AG, a Swiss company established by Tennis King Roger Federer, filed an opposition against the applied mark “Roger King” and claimed the mark shall be canceled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law by citing their owned earlier trademark registration nos. IR 1529136 for wordmark “THE ROGER” and IR 1529148 for wordmark “ROGER” in class 25.

Tenro AG argued that when “Roger King” is used in connection with the designated goods in question (athletic equipment), relevant consumers will associate the famous Roger Federer. Since Mr. Federer is called “King Roger”, they will undoubtedly consider the opposed mark as the name of Mr. Federer. Consequently, the opposed mark and the cited marks are deemed similar because they share the same sound and appearance, and both give rise to the same meaning as the famous Roger Federer.


JPO decision

Initially, the JPO Opposition Board found that although Roger Federer is widely recognized as a prominent tennis player, he is not typically abbreviated as “Roger.” Furthermore, there is no concrete evidence indicating the scope and method of advertising and market share in Japan for goods using the cited marks. Therefore, the Board has no reason to believe that the cited marks are widely recognized as a source indicator of the claimant’s business among Japanese consumers.

Secondly, in evaluating the similarity of the marks, the Board held that, from appearance and sound, both marks are clearly distinguishable as a whole due to the presence and absence of “THE” and/or “KING”. Besides, the opposed mark does not have a specific concept. Meanwhile, the cited marks give rise to a meaning of a man’s name. If so, there is no similarity and confusion in concept.

In the absence of a convincing demonstration of the fame of the cited mark and a low degree of similarity between the opposed mark and the cited marks, it is unlikely that relevant consumers will confuse a source of goods in question bearing the opposed mark with Mr. Roger Federer or the claimant’s business.

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

ZARA Unsuccessful Opposition against TM “LAZARA”

On April 22, 2024, the Japan Patent Office (JPO) dismissed an opposition filed by Industria de Diseño Textil, SA (INDITEX), owner of the fashion brand “ZARA”, against TM Reg no. 6699667 for word mark “LAZARA” in classes 25 due to dissimilar marks and unlikelihood of confusion with “ZARA”.
[Opposition case no. 2023-900175]


Opposed mark

Opposed mark, consisting of a wordmark “LAZARA” in standard character, was applied for registration by Japanese individual to be used on clothing in class 25 on November 20, 2022, and published for post-grant opposition on May 29, 2023.


Opposition by Inditex

Opponent, INDITEX, one of the world’s largest fashion retailers and owner of the fashion brand “ZARA”, filed an opposition on July 27, 2023 before the lapse of a two-month statutory period and claimed opposed mark “LAZARA” shall be cancelled in contravention of Article 4(1)(xi), (xv) and (xix) of the Japan Trademark Law by citing earlier trademark registrations (TM Reg no. 4108998 and IR no. 752502 in class25) for word mark “ZARA”.

Article 4(1)(xi) is a provision that prohibits the registration of a junior mark that is deemed identical with, or similar to, any earlier registered mark.

INDITEX contended that the opposed mark “LAZARA” is similar to its own trademark “ZARA,” a globally renowned fast-fashion brand given the suffix “LA” is a descriptive word that merely indicates the definite article in Spanish. Besides, the goods in question are identical.

Article 4(1)(xv) prohibits the registration of trademarks that are likely to cause confusion with the business of other entities.

INDITEX contended that the mark “ZARA” has become renowned among relevant consumers in connection with apparel. Given the high degree of resemblance between “LAZARA” and “ZARA” as well as the goods, it is likely that consumers will confuse or misconceive the goods bearing the opposed mark “LAZARA” with “ZARA.”

Article 4(1)(xix) proscribes the registration of a trademark that is identical with or similar to another entity’s famous mark if the trademark is intended for the purpose of gaining unfair profits or causing damage to the entity.

INDITEX contended that the applicant had filed the opposed mark with the intention of obtaining unfair profits through free-riding on the well-known trademark “ZARA”.


JPO decision

The JPO Opposition Board held that “ZARA” has acquired a certain degree of recognition among relevant consumers in Japan and foreign countries as a source indication of clothing, however, the Board denied a high degree of recognition of the mark among the consumers by taking into consideration the produced evidence. The Board criticized “INDITEX produced precedent administrative decisions as evidence that admitted famousness of the mark “ZARA” in Japan. But, famousness of trademark shall be assessed on a case-by-case basis based on relevant facts and evidence produced in each case. Therefore, the precedent decisions would not bind the ongoing case. INDITEX did not reveal sales figure and expenditure for advertisement in connection with apparel bearing the mark ZARA.

Furthermore, the Board found the consumers would perceive the opposed mark “LAZARA” as a whole, which would suggest an unfamiliar foreign word from a visual perspective. If so, “LAZARA” and “ZARA” are evidently dissimilar in appearance and pronunciation because of the distinction between the presence and absence of the letter “LA” in the suffix and the overall sound. As for the concept, it is not comparable since either mark does not give rise to any specific meaning. Consequently, both marks are unlikely to cause confusion due to their dissimilarity.

Additionally, the Board noted that INDITEX had not presented any evidence to substantiate their assertion that the applicant had filed the opposed mark for the purpose of gaining unfair profits or causing harm to INDITEX.

Based on the foregoing, the JPO dismissed the entire allegations of INDITEX and allowed “LAZARA” to survive.

COCO vs. KOKO

In a recent administrative decision, the Japan Patent Office (JPO) found that the trademarks “CoCo” and “koko” are dissimilar and unlikely to cause confusion.
[Opposition case no. 2023-900250, decided on March 25, 2024]


“koko”

A wordmark “koko” in standard character was applied for registration with the JPO by a Japanese individual in relation to services of class 35, 41 and 42 including educational and instruction services relating to arts, crafts, sports or general knowledge (cl. 41) on October 7, 2022 (TM App no. 2022-115511).

The JPO examiner issued an office action due to a conflict with TM Reg nos. 6327674 and 6327645 for the mark “KOKO HOTELS” and IR no. 950884-A for the mark “KOKO”.

The applicant was successful in a partial non-use cancellation action to IR no. 950884-A and argued in a response dissimilarity of the mark between “KOKO HOTELS” and “koko”.

Consequently, the examiner withdrew her rejection and granted protection of the mark “koko” on September 8, 2023. After registration (TM Reg no. 6737526), the mark was published for a post-grand opposition on September 28, 2023.


Trademark Opposition

The owner of earlier TM Reg no. 6167547 for wordmark “CoCo” filed a partial opposition on November 6, 2023, and claimed cancellation of the mark “koko” in relation to educational and instruction services relating to arts, crafts, sports or general knowledge of class 41 based on Article 4(1)(xi) of the Japan Trademark Law.

Article 4(1)(xi) is a provision to prohibit registration of a junior mark that is deemed identical with, or similar to, an earlier registered mark.

The claimant argued that the opposed mark “koko” shall be deemed similar to “CoCo” since both marks have the same sound. Besides, the service “educational and instruction services relating to arts, crafts, sports or general knowledge” is similar to ballet school services in class 41 designated by the cited mark. Therefore, the opposed mark is subject to cancellation in contravention of Article 4(1)(xi).


JPO decision

The JPO Opposition Board found the opposed mark “koko” is a coined word without any specific meaning. In the meantime, the cited mark “CoCo” has a meaning of the coconut palm as described in English dictionary.

The Board stated when comparing visual aspect of respective mark, overall impressions are different and unlikely to cause confusion because as they differ in the first and third letters “k” and “C” among four letters in total.

Although both marks share the same sound, the Board believes that they are sufficiently distinguishable in terms of concept and appearance regardless of similarity in respective service. Therefore, it is unlikely that relevant consumers will confuse the source of the service in question based on a global assessment of visual, phonetic, and conceptual factors.

Based on the foregoing, the JPO dismissed the entire opposition and decided the opposed mark shall not be subject to Article 4(1)(xi).

Trademark dispute: “CLUB MOET” vs “Moët & Chandon”

The Japan Patent Office (JPO) cancelled trademark registration no 6687666 due to a likelihood of confusion with ‘Moët’, which is known as an abbreviation for the world-famous ‘Moët & Chandon’ champagne.
[Opposition case no. 2023-900130, decided on February 29, 2024]


CLUB MOET

Opposed mark, consisting of words “CLUB” and “MOET” combined with a rose design (see below), was filed on June 27, 2021 for use on restaurant services in class 43 by a Japanese individual.

The JPO examiner rejected the mark due to a likelihood of confusion with famous mark “Moët” in connection with alcoholic beverages based on Article 4(1)(xv) of the Trademark Law on January 14, 2022. To contest the decision, the applicant filed an appeal with the JPO and claimed to cancel the examiner’s rejection.

On March 16, 2023, the JPO Appeal Board disaffirmed the examiner’s rejection and found that the mark would not contain the term “MOET” visually because of a rose design in between “M” and “ET”. If so, relevant consumers are unlikely to associate the mark with “Moët & Chandon” even if the term “MOET” has acquired a certain degree of recognition as an abbreviation of world-famous “Moët & Chandon” champaign. [Appeal case no. 2022-5881]

Accordingly, the Board granted protection of the mark and published for a post-grant opposition on April 17, 2023.


MHCS – OPPOSITION

On May 31, 2023, MHCS, the producer of the famous Moët & Chandon champagne, sought cancellation of the opposed mark in contravention of the same article, and claimed the opposed mark is likely to cause confusion with “Moët & Chandon” when used on restaurant service in class 43.

MHCS argued that the combination of literal elements and the rose design can be considered to represent the term ‘MOET’, as the rose design resembles a stylised letter ‘O’. As ‘CLUB’ lacks distinctive character in relation to restaurant service, the term ‘MOET’ should be considered a significant portion as a source indicator.

If so, relevant consumers are likely to associate or misconnect the restaurant using the opposed mark with “Moët & Chandon” due to the high degree of reputation and popularity of the mark “MOET” as an abbreviation of the world-famous champaign, as well as the close resemblance between the opposed mark and “MOET”.


JPO decision

The JPO Opposition Board ruled in favor of MHCS, stating that both ‘Moët & Chandon’ and its abbreviation ‘Moët’ have gained significant recognition as a leading champagne brand distributed by MHCS.

The Board determined that the rose design’s outline is almost circular and can be substituted with the letter ‘O’. Therefore, the combination of the literal elements and the rose design will be identified as the term ‘MOET’ in its entirety.

The difference between ‘MOET’ and ‘Moët’ is insignificant. The term ‘CLUB’ lacks distinctiveness in relation to the service in question. Therefore, the Board has reason to find a high degree of similarity between the opposed mark and ‘Moët’.

Besides, there is a certain degree of association between champagne and restaurant services.

Based on the foregoing, the Opposition Board decided that found relevant consumers are likely to confuse a source of restaurant using the opposed mark with MHCS or any business entity that is economically or systematically connected with the opponent. As a result, the opposed mark was cancelled in contravention of Article 4(1)(xv).

RIMOWA Unsuccessful in Trademark Opposition

On February 26, 2024, the Japan Patent Office (JPO) dismissed an opposition filed by Rimowa GmbH against TM Reg no. 6701836 for wordmark “RIMOWA” written in Japanese character in class 38 and 42 by finding dissimilarity to earlier IR no. 1303010 “Rimowa Electronic Tag”.
[Opposition case no. 2023-900179]


Opposed mark

Opposed mark, consisting of three Japanese hiragana character “りもわ” that corresponds to the Japanese transliteration of “RIMOWA”, was flied with the JPO by Computer Engineering & Consulting Ltd. (CEC) a Japanese company, for use on ‘Telecommunication; Providing online forums; Communications by mobile phones; Streaming of data; Electronic bulletin board services [telecommunications services]; Video-on-demand transmission; Videoconferencing services’ in class 38 and ‘Providing computer programs on data networks; Software as a service [SaaS]; Platform as a service [PaaS]; Providing virtual computer systems through cloud computing; Providing computer software for virtual reality’ in class 42 on Nov 21, 2022 (TM App no. 2022-133281).

The JPO examiner issued an office action based on Article 4(1)(xi) of the Japan Trademark Law by citing IR no. 1452467 “RIMOWA” (cl. 9) owned by Rimowa GmbH.

As the applicant deleted the services in class 42 that conflict with the goods in class 9 designated under IR no. 1452467, the examiner granted protection of the mark on May 12, 2023.

The applicant uses the mark in relation to virtual office services. If this is the case, the mark indicates an abbreviation of ‘Remote working’.


Opposition by RIMOWA

Rimowa GmbH, the renowned German luxury luggage-maker, filed an opposition with the JPO on August 7, 2023 and claimed cancellation of the opposed mark in contravention of Article 4(1)(xi) by citing IR no. 1303010 for wordmark “Rimowa Electronic Tag” that covers services in class 38 and 42.

Rimowa argued that the term ‘Rimowa’ is well-known among relevant consumers as a high-end luggage brand and should play a significant role in identifying the source of services in classes 38 and 42. This is because the term ‘Electronic Tag’ is less distinctive in relation to these services. Therefore, the opposed mark may be confusingly similar to the cited mark from a visual point of view.


JPO decision

The JPO Opposition Board found the opposed mark is not an ordinary word in dictionaries and has a sound of “Rimowa” but does not give rise to any specific meaning.

Regarding the cited mark, the Board determined that it should be evaluated as a whole, rather than based on the individual words ‘Electronic Tag’. This approach considers the tight combination of all the letters in the cited mark.

If so, the Board stated that there is no reason to believe that the term ‘Rimowa’ is a significant part of the cited mark as a source indicator.

When comparing the opposed mark to the cited mark in terms of appearance, it is easy to distinguish between them due to the obvious differences in characters (hiragana and alphabets) and the number of letters. In terms of pronunciation, the term ‘Electronic Tag’ makes a clear difference in the overall sound of two marks. Therefore, it is easily distinguishable when pronounced, even though the initial sound is the same. Furthermore, in terms of concept, neither of the two marks produces a specific meaning, making them incomparable. Therefore, considering these findings and circumstances, there is no risk of confusion regarding the origin, even when they are used for the same or similar services.

Based on the above, the Board found that both marks were dissimilar and decided to dismiss all allegations.

CHANEL Lost in Trademark opposition against “COCOBABY”

The Japan Patent Office (JPO) did not side with CHANEL in an opposition against TM Reg no. 6650252 for wordmark “COCOBABY” in class 25 by finding dissimilarity of mark between “COCOBABY” and “COCO”.
[Opposition case no. 2023-900041, decided on February 9, 2024]


COCOBABY

On September 22, 2022, a Japanese individual applied to register the word mark ‘COCOBABY’ for use in relation to apparel and toddler clothes of class 25 and immediately after the filing, the applicant requested an accelerated examination based on the fact that he operates the online shop “COCOBABY”, which offers a wide range of clothes for toddlers and babies.

A screen capture from https://www.rakuten.co.jp/princessdream/

Accordingly, the JPO examiner granted protection on November 30, 2022 without raising her objection due to a conflict with Chanel’s COCO mark.


Opposition by CHANEL

On February 14, 2023, Chanel SARL filed an opposition against TM Reg no. 6650252 for the mark “COCOBABY”, and claimed cancellation of the mark in contravention of Article 4(1)(xi), (xv) and (xix) of the Japan Trademark Law by citing earlier trademark registrations for their historical mark “COCO”.

Chanel argued that the term “BABY” was descriptive in relation to the designated goods, namely children’s clothing in class 25. In addition, the mark “COCO” has become famous as an indication of origin for Chanel’s perfumes and cosmetics. In those circumstances, the relevant consumers would consider the term “COCO” to be a prominent part of the opposed mark and would be likely to confuse the source of the clothes bearing the opposed mark with Chanel and an entity economically or systematically liked to Chanel.


JPO decision

The JPO Opposition Board accepted that the mark “COCO” has been well known for Chanel’s perfume. However, the Board questioned whether, on the basis of the evidence submitted, the mark has become also well known among consumers of other goods.

In addition, the Board found that the opposed mark had to be assessed as a whole, even in relation to children’s clothing, from a visual point of view. The mark “COCOBABY”, taken as a whole, does not have a specific meaning.

If so, the opposed mark is not conceptually comparable to the mark “COCO”, but is visually and aurally distinguishable from it.

In view of the low degree of similarity between the marks and the insufficient evidence of the reputation of the mark “COCO” among consumers of the goods in question, the Board has no reason to believe that the consumers are unlikely to confuse the source of the clothing and children’s clothing bearing the opposed mark with Chanel.

Based on the foregoing, the Board dismissed the opposition entirely and decided to maintain the opposed mark as the status quo.

Calvin Klein vs Cailin Kailun

The Japan Patent Office (JPO) dismissed an opposition against TM Reg no. 6686442 for wordmark “Cailin Kailun” in class 25 claimed by Calvin Klein Trademark Trust who argued a likelihood of confusion with “Calvin Klein”.
[Opposition case no. 2023-900108, Gazette issued date: January 26, 2024]


Cailin Kailun

A Chinese individual applied for registration of the wordmark “Cailin Kailun” in standard characters for use on coats, suits, trousers, T-shirts, dresses, socks, stockings, underwear and other clothing, and sports shoes in class 25 on September 1, 2022.

Apparently, men’s underwear bearing the mark is sold online.

The JPO examiner granted protection of the mark on January 30, 2023.


Opposition by Calvin Klein

On May 15, 2023 within two-month statutory deadline starting from the issued date of TM gazette on April 12, 2023, Calvin Klein Trademark Trust filed an opposition against the Cailin Kailun mark and claimed cancellation in contravention of Article 4(1)(vii) and (xv) of the Trademark Law.

Calvin Klein argued that the opposed mark “Cailin Kailun” is confusingly similar to a global fashion brand “Calvin Klein” in appearance and sound. In view of a high degree of distinctiveness and popularity of the “Calvin Klein” mark and close relatedness between the goods in question and the business lineup of Calvin Klein, relevant consumers with an ordinary care would confuse a source of the goods in question bearing the mark “Cailin Kailun” with Calvin Klein even if both marks are not similar in concept.


JPO decision

The JPO Opposition Board admitted the cited mark “Calvin Klein” has been well-known among consumers as a source indicator of the claimant’s business in relation to clothing.

In the meantime, the Board denied similarity of the marks by assessing clear distinctions in appearance, sound and meaning.

Comparing both marks, it is obvious that they start with the same spelling of ‘Ca’ at the first word, and ‘K’ at the second word, and end with ‘n’ at both words. However, because of clear distinction at the other letters, they are easily distinguishable in appearance.

Although both marks have the same sounds at the beginning, in the fourth and last, due to severe difference in other five sounds, they are audibly distinguishable.

There is no similarity in concept because the opposed mark has no meaning at all. Meanwhile, the cited mark gives rise to a meaning of “famous brand called Calvin Klein”.

Given a low degree of similarity between the marks, the Board did not find any reason to believe that relevant consumers would associate or connect the goods bearing the opposed mark with “Calvin Klein” even though the goods in question is highly related to the business lineup of Calvin Klein.

Based on the foregoing, the Board found the opposed mark shall not be cancelled in contravention of Article (1)(vii) and (xv), and decided to dismiss the opposition entirely.

Yves Saint Laurent Failed Opposition against USL monogram

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


Opposed mark

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

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

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


Opposition by Yves Saint Laurent

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

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


JPO decision

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

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

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

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

Lous Vuitton lost in a trademark battle over LV monogram

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


Opposed mark

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

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

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

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


Opposition by Lous Vuitton

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

Article 4(1)(xi) is a provision to prohibit the registration of a junior mark that is identical with, or similar to, any senior registered mark.

Article 4(1)(xv) provides that a mark shall not be registered where it is likely to cause confusion with other business entities’ well-known goods or services.

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


JPO decision

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

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

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

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

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

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