Menu

MARKS IP LAW FIRM

Japanese IP Attorney Firm specializing in Trademarks with a commitment to excellence

MARKS IP LAW FIRM
Facebook Email LinkedIn Instagram

Primary Menu

Skip to content
  • Home
  • About Us
    • Our Philosophy
    • Attorney
    • Achievements
    • Honors & Awards
  • Practice Areas
    • TRADEMARK
    • TRADE DRESS
    • INDUSTRIAL DESIGN
    • COPYRIGHT
  • Trademark Services
    • Search & Selection
    • Trademark Application
    • Office Action
    • Opposition / Invalidation
    • Renewals
    • Non-Use Cancellation
    • Contract & License
    • Watching & Surveillance
    • Portfolio Management
    • Trademark Litigation
    • Domain Dispute
    • Customs Enforcement
  • Trademark Updates
    • 2022
    • 2021
    • 2020
    • 2019
    • 2018
  • FAQs
  • Testimonials
  • Contact Us
    • Office Locations
Search

Adidas Fails in Trademark Battle over Adidas Trefoil Logo

Posted on2018年5月4日2022年1月3日AuthorMasaki MIKAMI

The Opposition Board of Japan Patent Office (JPO) held in an opposition filed by Adidas AG (Opponent) that trademark registration no. 5897540 for the XIAT device mark (Opposed mark) shall remain as valid as ever and entirely dismissed Adidas’ claims in the opposition based on Adidas Trefoil logo.
[Opposition case no. 2017-900038, Gazette issued on March 30, 2018]


Opposed mark

Opposed mark (see below) was applied for registration on June 10, 2016 by designating apparels and shoes of class 25 in the name of a Chinese business entity and published for registration on November 18, 2016 without confronting with office action from the JPO examiner.


Adidas Trefoil logo

Adidas AG, opponent, filed an opposition on February 9, 2017 and claimed that opposed mark shall be cancelled in violation of Article 4(1)(vii) and 4(1)(xv) of the Japan Trademark Law due to a conflict with Adidas Trefoil logo (see below).

Article 4(1)(vii)

Article 4(1)(vii) prohibits any mark likely to offend public order and morals from registering.

Trademark Examination Guidelines set forth examples to apply the article, e.g. trademarks generally considered contrary to the international faith, trademarks whose registration is utterly unacceptable for lack of social reasonableness in the background to the filing of an application for trademark registration.

Given a high degree of reputation and popularity of Adidas Trefoil logo, Adidas asserted, applicant must have been aware of the trefoil logo and filed opposed mark with a malicious intention to impermissibly cause the disorder in domestic and foreign trade

 

Article 4(1)(xv)

Article 4(1)(xv) prohibits to register a trademark which is likely to cause confusion with a business of other entity.

Adidas argued that the figurative element of opposed mark evidently gives rise to a same impression with the Trefoil logo in view of basic configurations consisting of two or three laurel leaves intersected by two or three stripes in parallel.

Besides, applicant has filed more than 253 trademark applications during the past 18 months. Some of them were refused by the JPO due to a conflict with famous mark.
Below mark is also subject to opposition contested by Adidas AG.

By taking into account famousness of the Trefoil logo, visual resemblance between the marks, and free-riding on opponent reputation and goodwill, relevant consumers are likely to cause confusion with Adidas at the sight of apparels or shoes using opposed mark.


Opposition Board decision

The Opposition Board admitted a high degree of reputation and popularity to the iconic Adidas Trefoil logo in relation to sport shoes, sportswear, sports gear at the time of initial filing and registration of opposed mark.

In the meantime, the Board negated similarity and likelihood of confusion between the marks, stating that opposed mark never gives rise to a meaning and pronunciation of trefoil. From visual point of view, it is sufficiently distinguishable from the Trefoil logo. Fact that opposed mark happens to closely resemble a portion of the Trefoil logo is of little significance since Adidas Trefoil logo has acquired remarkable reputation in its entirety. If so, the Board feels it is unlikely that relevant consumers can perceive opposed mark as a cutout from the Trefoil logo.

Besides, even if it becomes suspicious whether applicant has a bona fide intention to use opposed mark, it is not objectionable under Article 4(1)(xv) since the Board finds both marks are dissimilar to the extent that there exists less likelihood of confusion.

Due to less likelihood of confusion between the marks, the Board is unable to foresee a circumstance to offend public order and morals from registering opposed mark and give harmful effect to the international faith.

Based on the foregoing, the Board concluded opposed mark shall not subject to Article 4(1)(vii) as well as (xv) and granted registration a status quo.

Categories2018, Article 4(1)(vii), Article 4(1)(xv), Composite mark, Device mark, Famous mark, Likelihood of confusion, Trademark Opposition, Violation of public orderTagsAdidas, Article 4(1)(vii), Article 4(1)(xv), international faith, Likelihood of confusion, Trademark opposition, Trefoil logo

投稿ナビゲーション

← Previous Previous post: Trademark registration for Kikkoman’s Soy sauce 3D Bottle
Next → Next post: APPLE took a painful bite at Apple design mark on medical services

Recent Posts

  • VISA lost in a bid to oppose AIR VISA2023年4月2日
    The Japan Patent Office (JPO) dismissed an opposition claimed by Visa International Service Association (VISA) Read More ...
  • Hermes Wins Birkin & Kelly Bag’s 3D Trademark Infringement Lawsuit2023年3月25日
    On March 9, 2023, the Tokyo District Court awarded HERMES INTERNATIONAL JPY5,640,112 for infringement of its t Read More ...
  • Harvey Ball wins trademark opposition over the double-eyed smiley face2023年3月18日
    In a recent administrative decision, the Japan Patent Office (JPO) sided with Harvey Ball Smile Limited in opp Read More ...

Menu

Location / Contact information

MARKS IP LAW FIRM
OSAKA [Main Office]
2F iPLUS Edobori, 1-9-11 Edobori Nishi-ku, Osaka, 550-0002, Japan

TOKYO [Group Office]
9292 Bldg., 3-1-8 Kanda-Surugadai, Chiyoda-ku, Tokyo, 101-0062, Japan

T: +81 6 6467 8334
F: +81 6 6467 8335
E: info@marks-iplaw.jp

 

ATTORNEY’S LINKEDIN

Masaki Mikami
Copyright © 2023 MARKS IP LAW FIRM. All Rights Reserved.
Scroll Up
  • Home
  • About Us
    • Our Philosophy
    • Attorney
    • Achievements
    • Honors & Awards
  • Practice Areas
    • TRADEMARK
    • TRADE DRESS
    • INDUSTRIAL DESIGN
    • COPYRIGHT
  • Trademark Services
    • Search & Selection
    • Trademark Application
    • Office Action
    • Opposition / Invalidation
    • Renewals
    • Non-Use Cancellation
    • Contract & License
    • Watching & Surveillance
    • Portfolio Management
    • Trademark Litigation
    • Domain Dispute
    • Customs Enforcement
  • Trademark Updates
    • 2022
    • 2021
    • 2020
    • 2019
    • 2018
  • FAQs
  • Testimonials
  • Contact Us
    • Office Locations