The Japan Patent Office (JPO) dismissed a trademark opposition filed by the U.S. tech giant, Apple Inc. against trademark registration no. 5939652 for the Apple design mark in class 44.[Opposition case no. 2017-900222, Gazette issued date: April 27, 2018]
Opposed mark, consisting of literal and figurative elements of Apple (see below), was filed by a Japanese medical corporation on March 17, 2016 by designating medical services in class 44.
As a result of substantive examination, the JPO admitted registration on April 14, 2017.
To oppose against registration, Apple Inc. filed an opposition on July 5, 2017.
In the opposition, Apple Inc. argued Opposed mark shall be cancelled in violation of Article 4(1)(xv) of the Japan Trademark Law due to a likelihood of confusion with Apple Inc’s trademark registrations for:
- the Apple word mark in class 9 (computers; electronic machines, apparatus and their parts) and class 42 (computer software design, computer programming, or maintenance of computer software).
- the Apple logo (see below) in classes 44 (medical services)
Article 4(1)(xv) provides that a mark shall not be registered where it is likely to cause confusion with other business entity’s well-known goods or services, to the benefit of brand owner and users’ benefits.
Theoretically, Article 4(1)(xv) is applicable to the case where a mark in question designates remotely associated or dissimilar goods or services with that of a well-known brand business.
The Opposition Board admitted a remarkable degree of reputation and popularity of opponent trademark “Apple” and the Apple logo in the field of computers, smart phones, and related goods/services.
In the meantime, the Board held a negative view whether such reputation prevails even among consumers or traders of goods/services other than computer-related goods/services.
Likelihood of confusion with the Apple word mark
The Board considered Opposed mark is deemed similar to the Apple word mark since both marks give rise to the same sound and meaning of apple (a round fruit with firm, white flesh and a green, red, or yellow skin), however, it is unlikely to cause confusion between Opposed mark and the Apple word mark due to tenuous connection between medical services and computer-related goods/services.
Likelihood of confusion with the Apple logo
The Board held that both marks are easily distinguishable in appearance. Also, negated similarity from phonetic and conceptual point of view because the Apple logo gives rise to a meaning of “bitten apple”. As long as it is questionable whether the Apple logo prevails among relevant consumers and traders of medical services, the Board found less likelihood of confusion between Opposed mark and the Apple logo.
Apple Inc. asserted close relatedness with medical services based on a fact that Apple provides computer application software for healthcare. The Board dismissed the assertion by stating that the application shall belong to electronic machines in class 9 since it is just intended to monitor health condition in daily life, not be equivalent to medical services in class 44.