投稿者: Masaki MIKAMI

Patagonia Inc Failed in Registering “PATAGONIA”

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On December 15, 2021, the Japan Patent Office (JPO) affirmed the examiner’s rejection to protect a wordmark “PATAGONIA” for seafood in class 29 and dismissed an appeal filed by Patagonia Inc. due to a lack of distinctiveness.

[Appeal case no. 2020-16786]

“PATAGONIA”

An American clothing company that markets and sells outdoor clothing, Patagonia Incorporated, filed a divided-trademark application for wordmark “PATAGONIA” in standard character on goods of ‘fresh, chilled or frozen edible aquatic animals (not live); blue mussels, not live; oysters, not live; processed seafood products; soups’ in class 29 on August 19, 2019 (TM Application no. 2019-110730).

The JPO examiner rejected the mark in contravention of Articles 3(1)(iii) and 4(1)(xvi) of the Japan Trademark Law on August 24, 2020.

The examiner asserted “PATAGONIA” refers to a geographical region that encompasses the southern end of South America and is a popular tourist destination for nature-lovers and adventure-seekers. Since Patagonia travel guides often have contents of Patagonia’s seafood, it is likely that relevant consumers and traders at the sight of seafood bearing the wordmark “PATAGONIA” with ordinary care would conceive the goods from the Patagonia region and see it as an indication of the origin of seafood.

If so, whenever the mark is used on seafood, not from the Patagonia region, it inevitably misleads the quality of goods.

Appeal by Patagonia Inc.

On December 7, 2020, Patagonia Inc. filed an appeal against the rejection and argued the term “Patagonia” is frequently accompanied by “region” or “sea” when used to indicate the origin of seafood because Patagonia is neither a nation nor a specific province but is a region comprising of all southerly Chile and Argentina. Being that the applied mark “PATAGONIA” has acquired a substantial degree of reputation and popularity in connection with apparel as a source indicator of Patagonia Inc., relevant consumers would rather conceive of a famous apparel brand at the sight of seafood bearing the mark “PATAGONIA.”

Besides, it is questionable if relevant consumers are familiar with the Patagonian Sea as an origin of seafood available in Japan.

JPO decision

The JPO Appeal Board found the mark “PATAGONIA” lacks distinctiveness in connection with the goods in question by stating that fish and seafood from the Patagonian Sea have been imported to Japan over the past three decades. The term “Patagonia” perse or its transliteration written in Japanese Katakana character has been used to indicate the origin of the goods. Under the circumstances, it is unquestionable that relevant consumers at the sight of seafood bearing the mark “PATAGONIA” would see it as an indication of the origin of the goods.

The Board did not question the famousness of the “PATAGONIA” mark in connection with outdoor-related goods. However, the Board denied the distinctiveness of the mark in relation to seafood even though Patagonia Inc. has promoted seafood for sale in Japan since 2016 because the mark in question is not used, but “PATAGONIA PROVISIONS”.

Based on the foregoing, the Board dismissed the entire allegations and decided to reject the mark in contravention of Article 3(1)(iii).

GAP Unsuccessful in Trademark Opposition against “Gapace”

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The Japan Patent Office (JPO) dismissed an opposition filed by the US apparel company, Gap (ITM) Incorporated, against TM Reg no. 6304400 for wordmark “Gapace” to be used on apparel in class 25 by finding dissimilarity to and the unlikelihood of confusion with “GAP.”

[Opposition case no. 2020-900346, Gazette issued date: December 24, 2021]

Opposed mark

The wordmark “Gapace” was filed by a Chinese individual for use on various goods and apparel belonging to class 25 with the JPO on October 15, 2019 (TM App no. 2019-132880).

The JPO admitted registration on October 15, 2020, and published for opposition on November 4, 2020.

Opposition by GAP

To oppose against registration within a statutory period of two months counting from the publication date, Gap (ITM) Inc. filed an opposition against the opposed mark on December 24, 2020.

GAP argued the opposed mark shall be canceled in contravention of Article 4(1)(xi), (xv), and (xix) of the Trademark Law because of the remarkable reputation and popularity of the GAP mark as a source indicator of US apparel giant and a high degree of similarity between the opposed mark “Gapace” and the opponent’s famous earlier registered mark “GAP.”

Article 4(1)(xi) is a provision to refrain from registering a junior mark that is deemed identical with, or similar to, an 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.

Article 4(1)(xix) prohibits registering a trademark that is identical with, or similar to, another entity’s famous mark, if such trademark is aimed for unfair purposes, e.g. gaining unfair profits, or causing damage to the entity.

JPO Decision

To my surprise, the JPO Opposition Board denied a substantial degree of reputation and popularity of the opponent trademark “GAP” in connection with apparel by stating that the produced evidence failed to demonstrate sales amount and its market share in Japan. A mere reference to the fact that the opponent has launched an apparel business in Japan since 1994 and promoted apparel bearing the GAP mark for sale at their 150 stores nationwide is insufficient. Likewise, a fact that GAP was ranked 4th in the Top 10 clothing retailers in the world in 2021 is not persuasive to find a high degree of popularity among relevant consumers in foreign countries at the time of both filling the opposed mark and registration.

In assessing the similarity of the mark, the Board held “GAP” and “Gapace” are totally dissimilar from visual and phonetical points of view. Conceptually, both marks are not similar because the opposed mark does not give rise to any specific meaning. In the meantime, the opponent mark “GAP” has a meaning of ‘separation in space.’

Given the opponent mark “GAP” was not proven to have become famous in relation to the goods in question, the Board found it is unlikely that relevant consumers would conceive the literal element of “Gap” as a prominent portion of the opposed mark when used on apparels.

Based on the foregoing, the Board had no reasonable ground to believe the opposed mark shall be canceled in contravention of Article 4(1)(xi), (xv), and (xix), and decided to dismiss the entire opposition accordingly.

Letter of Consent in Japanese Trademark Practice

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When trademark applicants receive a refusal of their trademark applications due to a conflict with a prior similar registered mark cited by the JPO examiner, how can the applicants overcome the refusal?

In some jurisdictions, it has become a routine to submit a letter of consent (LOC) issued in the name of the owner of the cited mark agreeing on the use and registration of the applied mark for the purpose of overcoming the refusal, apart from arguing against the similarities between the respective marks.

However, the Japan Patent Office (JPO) is negative to withdraw refusals arising from a conflict with a senior registered mark under Article 4(1)(xi) of the Trademark Law simply by means of LOC.

Trademark Examination Guideline (TEG) 42.111.03 in relation to Article 4(1)(xi) provides special conditions where the JPO accepts LOC and withdraws refusals as follows.

Where an applicant claims that he/she is in any of the relationships (1) and (2) with the owner of a cited trademark right and submits evidence (3), the case shall be handled as if Article 4(1)(xi) does not apply.

(1) The owner of a cited trademark right is under the control of the applicant.

(2) The applicant is under the control of the owner of a cited trademark right.

(3) Evidence to the effect that the owner of a cited trademark right agrees that the trademark as applied is to be registered.

Condition (1) and (2) – “Under the control” relation between cited owner and applicant will be satisfied if:

(a) Business of the owner of a cited trademark right of which the majority of voting rights of all shareholders are owned by the applicant;

(b) Business of the owner of a cited trademark right which has a capital alliance with the applicant and whose corporate activities are substantially under the control of the applicant, although the requirement specified in (a) above is not satisfied.

Therefore, LOC is useful only where either party has a controlling interest in the other entity, the so-called parent-child relationship between companies.

Due to the restriction, LOC would not be available in most cases to overcome the refusal based on Article 4(1)(xi).

Under the circumstance, practically, we are able to select three options.

  1. Arguing dissimilarity of mark or goods/ services　
  2. Filing a non-use cancellation against the cited mark　
  3. Transferring an applied mark to an owner of the cited mark and assigning it back after registration, vice versa.

DIOR Failed to Cancel Trademark “DIORLV”

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The Japan Patent Office (JPO) did not side with Christian Dior Couture in a trademark opposition against TM Reg no. 6305075 for word mark “DIORLV” in class 25 by finding dissimilarity and unlikelihood of confusion with a world-renowned fashion brand “Dior”.

[Opposition case no. 2020-900352, Gazette issued date: November 26, 2021]

“DIORLV”

The opposed mark, “DIORLV” in standard character, was sought for registration by a Chinese individual to be used on underwear, coats, pajamas, swimsuits, raincoats, footwear, caps and hats, gloves, trousers, skirts, yoga shirts, yoga pants in class 25 on December 25, 2019.

The JPO examiner granted protection of the opposed mark on October 13, 2020, and published for opposition on November 4, 2020.

Opposition by Christian Dior

To contend registration within a statutory period of two months counting from the publication date, Christian Dior Couture filed an opposition on December 25, 2020.

In the opposition, Christian Dior asserted the opposed mark shall be canceled in contravention of Article 4(1)(viii), (xi), (xv), (xix) of the Japan Trademark Law on the grounds that the opposed “DIORLV” mark contains the term “Dior”, an abbreviation of a world-renowned fashion brand “Christian Dior” and the opponent. Besides, the opposed mark will be perceived as a combination of abbreviation of two famous brands, “Christian Dior” and “Louis Vuitton.” If so, it is reasonable to consider the term “DIOR” as a prominent portion of the opposed mark that gives rise to the same sound and concept with the senior registered mark “Dior” owned by the opponent.

JPO decision

The Opposition Board of JPO admitted a substantial degree of reputation and popularity of “Dior” as an abbreviation of “Christian Dior” and the opponent in relation to fashion items, e.g., women’s dresses, bags, shoes, jewelry, glasses, watches, fountain pens, lighters.

In the meantime, the Board did not find the term “DIOR” as a prominent portion of the opposed mark. Based on the overall assessment of similarity, the Board held both marks dissimilarity by stating that:

  1. From appearance and pronunciation, “DIORLV” and “Dior” look sufficiently different with or without “LV” in the suffix position.
  2. Both marks are distinguishable in concept since “DIORLV” does not give rise to any specific meaning. “Dior” has a meaning of world-renowned fashion brand “Christian Dior.”

Given a low degree of similarity of the marks, it is unlikely that relevant consumers would recognize a source of goods in question bearing the opposed mark from Christian Dior Couture or any entity systematically or economically connected with the opponent.

Furthermore, the Board has no reason to believe the term “DIOR” of the opposed mark is separable from the term “LV” and independently plays a role in the source indicator. Accordingly, the opposed mark shall not be construed to contain a famous abbreviation of the opponent.

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

Samsung Failed in TM Opposition against “Funky Galaxy”

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The Japan Patent Office (JPO) dismissed an opposition filed by Samsung, the world’s largest smartphone maker, against TM Reg no. 6263685 for wordmark “Funky Galaxy” by stating the opposed mark would not cause confusion with Samsung “Galaxy” even when used on smartphones.

[Opposition case no. 2020-900229, Gazette issued date: November 11, 2021]

Opposed mark

On April 12, 2019, KING Entertainment Co., Ltd. applied for registration of wordmark “Funky Galaxy” in standard character for use on goods and services in classes 9, 16, 35, and 41. The goods in class 9 covers ‘telecommunication machines and apparatus; personal digital assistants; smartphones; electronic machines, and apparatus and their parts.’

JPO granted protection of the “Funky Galaxy” mark and published for opposition on July 14, 2020.

Opposition by Samsung

On September 11, 2020, Samsung, the world’s largest smartphone maker famous for Galaxy series mobiles, filed an opposition and claimed the Opposed mark shall be canceled in relation to goods and services in class 9, 35, and 41 in contravention of Article 4(1)(vii), (x), (xi), (xv) and (xix) of the Trademark Law by citing its own senior TM Reg nos. 4498554 “Galaxy”, IR1335923 “GALAXY STUDIO”, and 6309820 “Galaxy Harajuku”.

Article 4(1)(xv) is a provision to prohibit any mark from registering if it is likely to cause confusion with other business entities’ well-known goods or services.

Samsung argued the Opposed mark shall cause confusion with Samsung “Galaxy” especially when used on smartphones and related goods and services, given a remarkable reputation of “Galaxy” holding 3rd market share (7.4% in 2018, 8.0% in 2019, 9,0% in 2020) in Japan and the close resemblance between “Galaxy” and “Funky Galaxy”.

JPO Decision

The Opposition Board did not question a remarkable degree of reputation and popularity of trademark “Galaxy” as a source indicator of the opponent smartphones.

In the meantime, the Board did not consider the term “Galaxy” as a prominent portion of the opposed mark from visual and conceptual points of view. If so, the opposed mark shall be assessed in its entirety.

In the assessment of similarity of the mark, the Board found “Funky Galaxy” is visually and phonetically distinguishable from “Galaxy” due to the presence of “Funky.” From concept, both marks are less similar because the opposed mark does not give rise to a specific meaning and the opponent mark “Galaxy” means an extremely large group of stars and planets. Both marks have a low degree of similarity accordingly.

Even though “Galaxy” has been well-known as a source indicator of Samsung smartphones, and the goods and services in question are closely associated with smartphones, given a low degree of similarity between “Funky Galaxy” and “Galaxy”, the Board has a reasonable ground to believe that relevant consumers would not confuse a source of goods and services bearing the opposed mark “Funky Galaxy” with Samsung and any business entity economically or systematically connected with the opponent.

Based on the foregoing, the Board decided the allegations are groundless and the Opposed mark shall remain valid as the status quo.

TM Opposition: Claude Monet vs Monet Design

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The Japan Patent Office (JPO) sided with ACADEMIE DES BEAUX-ARTS, an owner of Musée Marmottan Monet, and decided to cancel Japanese TM Registration no. 6245564 for a composite mark containing literal elements “Monet Design” in contravention of Article 4(1)(vii) of the Japan Trademark Law.

[Opposition case no. 2020-900171, Gazette issued date: October 29, 2021]

TM Reg no. 6245564

The opposed mark (see below) was sought for registration by a Japanese individual on various goods and services in class 16, 20, 25, 27, 35, 41, 42, and 45 on February 1, 2019.

The JPO granted protection on March 27, 2020, and published for opposition on May 12, 2020.

Opposition by ACADEMIE DES BEAUX ARTS

On July 10, 20210, before the lapse of a statutory period of two months counting from the publication date, ACADEMIE DES BEAUX-ARTS, an owner of Musée Marmottan Monet, filed an opposition. The opponent argued the opposed mark shall be canceled in contravention of Article 4(1)(vii) of the Japan Trademark Law by citing IR 958197 for the wordmark “CLAUDE MONET” (see below).

Article 4(1)(vii) of the Trademark Law prohibits any mark likely to cause damage to the social and public interest and disrupt the order of fair competition from registration. Trademark Examination Guidelines set forth any sign created after “the Name of a Historical Person or Name of a Well-Known or Famous Deceased Person” shall be objectionable under the article.

TEG provides six factors to apply the article.

  1. Popularity of the well-known or famous historical person;
  2. Acceptance of the name of the historical person among the nation or region;
  3. Availability of the name of the historical person;
  4. Relationship between the availability of the name of the historical person and the designated goods or services;
  5. Circumstance, purpose, or reason of the application; and
  6. Relationship between the historical person and the applicant.

JPO Decision

The JPO Opposition Board found the late Claude Monet has been a world-famous French painter known even among the general public in Japan. There is no doubt that the public at the sight of the word “Monet” would conceive the painter. Because of it, “Monet” has been highly recognized as an abbreviation of the late Claude Monet.

Besides, it is certain that the opponent inherits the property and paintings of Claudia Monet. In view of activities of the opponent as a public organization to exhibit, manage, and promote the paintings in France as well as other countries, the word “Monet” has not only played a significant role in the business field of sightseeing and art but also acquired substantial value as public property of France.

As for the opposed mark, the Board does not find a reason to believe that the word “Monet” inseparably combines with other elements. If so, relevant consumers are likely to consider the word “Monet” as a prominent portion of the opposed mark.

Based on the foregoing, the Board decided to cancel the opposed mark in contravention of Article 4(1)(vii).

Hermes Challenge to Register Packaging Colors

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HERMES INTERNATIONAL, a French luxury fashion house, is in a legal battle to register its iconic packaging colors, orange and brown, as a color mark in Japan.

Color mark of Hermes box

On October 25, 2018, HERMES INTERNATIONAL filed a trademark application for its iconic packaging colors, orange and brown (see below), as a color mark to be used on various goods in class 3, 14, 16, 18, and retail services in class 35 with the Japan Patent Office (JPO) [TM application no. 2018-133223].

Article 3(1)(iii) and 3(1)(vi)

The JPO examiner rejected the color mark under Article 3(1)(iii) and 3(1)(vi) of the Japan Trademark Law by stating that colors per se are unlikely to play a role in source indicator because they are frequently aimed to attract consumers in association with function or quality of goods and services. Because of it, relevant consumers at the sight of goods or services bearing the applied color would not see the combination of colors, orange and brown, as a source indicator.

Acquired Distinctiveness

Hermes argued acquired distinctiveness of the color combination as a result of substantial use on Hermes box for the past six decades from the 1960s onward.

A bottleneck is that the Hermes box contains its name “HERMES” and horse and carriage logo as a conspicuous source indicator. Hermes conducted market research to demonstrate the acquired distinctiveness of the packaging color per se. The research targeted high-income men and women in their 30s to 50s with incomes JPY10,000,000 and above. According to the research report, 36.9% of the interviewees answered Hermes when shown three boxes in different shapes with the color mark. 43.1% chose Hermes from ten options.

JPO Rejection

The JPO examiner did not find the research persuasive to support acquired distinctiveness among relevant consumers of the goods and services in question.

The examiner stated the relevant consumers shall not be limited to the high-income class. Besides, even among high-income consumers, more than half of them did not link the color to Hermes. From the research, it is doubtful if relevant consumers would conceive the color per se as a source indicator.

Based on the above findings, the examiner totally rejected the applied color mark under Article 3(1)(iii) and (vi) on July 9, 2021.

HERMES INTERNATIONAL filed an appeal against the rejection on October 8, 2021.

Formula One Successful in Registering “F1”

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In a recent decision, the Appeal Board of Japan Patent Office (JPO) overturned the examiner’s rejection and decided to register the wordmark “F1” in standard character by finding acquired distinctiveness as a source indicator in relation to automobile races in class 41.

[Appeal case no. 2021-1819, Decision date: November 5, 2021]

F1

Formula One Licensing BV, managing the trademarks for the FIA Formula One World Championship, applied wordmark “F1” in standard character for use on ‘organization, arranging and conducting of automobile races; providing information relating to automobile races’ in class 41 on May 7, 2018 (TM App no. 2018-58985).

Article 3(1)(v)

The JPO examiner rejected the mark “F1” because of lack of inherent distinctiveness based on Article 3(1)(v) of the Japan Trademark Law on the grounds that a sign consisting of a digit and an alphabet is commonly used in transactions to represent article number, model number or standards. If so, the applied mark shall not play a role in a specific source indicator.

Article 3(1)(v) prohibits any mark from registering if it solely consists of a very simple and common sign.

Trademark Examination Guidelines (TEG) sets forth that a mark consisting of one or two alphabetical letters followed by a numeral, e.g. “A2”, “AB2”, is unregistrable under the article.

Followings are also enumerated as unregistrable marks under the article.

Numerals

One or two alphabetical letters, e.g. “AA”

Two alphabetical letters combined with “-” or “&”, e.g. “A-B”, “C&D”

One or two alphabetical letters accompanied by “Co.”, e.g. “AB Co.”

A numeral followed by one or two alphabetical letters, e.g. “2A”

The applicant filed an appeal against the refusal and argued the distinctiveness of the “FS12” mark.

Formula One Licensing BV filed an appeal against the refusal and argued acquired distinctiveness of the “F1” mark on February 9, 2021.

JPO Appeal Board decision

The Appeal Board affirmed the examiner’s finding that the applied mark “F1” inherently lacks distinctiveness as a source indicator and shall not be registered under Article 3(1)(v).

In the meantime, the Board found the mark has acquired distinctiveness as a result of substantial use in relation to automobile races to indicate Formula One for more than seven decades. The Board could not find a single fact that the term “F1” has been used in relation to the services in question by any entity unrelated to the applicant. If so, the Board has a reasonable ground to believe that relevant consumers and traders would conceive the mark “F1” as a source indicator of Formula One and shall be exceptionally registered under Article 3(2).

Article 3(2)

Notwithstanding the preceding paragraph, a trademark that falls under any of items (iii) to (v) of the preceding paragraph may be registered if, as a result of the use of the trademark, consumers are able to recognize the goods or services as those pertaining to a business of a particular person.

Based on the above findings, the Board overturned the examiner’s rejection and granted protection of the wordmark “F1” in standard character for use on services relating to automobile races in class 41.

Is the Academy Award-winning film “La La Land” a famous trademark?

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In an appeal decision, the Japan Patent Office (JPO) overturned the examiner’s rejection and decided to register the trademark “LA LA LAND” in class 25 by finding no likelihood of confusion with the Academy Award-winning film “La La Land.”

[Appeal case no. 2020-17242, Gazette issued date: October 29, 2021]

LA LA LAND

A Los Angeles based private equity firm, Tsunami Capital Group, Inc., filed a trademark application for the word “LA LA LAND” in standard character on various goods in class 25 including clothing, footwear, headwear, and sportswear with the JPO on July 1, 2019 [TM App no. 2019-91271].

The JPO examiner rejected the mark in contravention of Article 4(1)(xv) of the Japan Trademark Law by stating that the word “La La Land” has been widely recognized as a title of the Academy Award-winning film among relevant consumers and traders. If so, the consumers at the sight of the applied mark used on the designated goods in class 12 are likely to conceive it from an entity economically or systematically connected with the filmmaker.

The applicant filed an appeal against the refusal on December 16, 2020.

JPO Appeal Board decision

The Appeal Board questioned the famousness of the word “La La Land” as a source indicator.

Even if an original movie musical “La La Land” won 6 Academy Awards at the 89th Academy Awards after earning a record-tying 14 nominations and “La La Land” DVD has been released for sale, the Board had an opinion that it is doubtful whether the word “La La Land” has been widely recognized as a source indicator of goods or services from the filmmaker in view of insufficient use of the cited mark on the goods or services unrelated to the film.

Given the word “La La Land” has meanings of a euphoric, dreamlike mental state detached from the harsher realities of life and a nickname for Los Angeles, California, the cited mark would be considered less original.

Based on the foregoing, the Board had a reasonable ground to believe that relevant consumers would not confuse the source of the goods in question with the filmmaker or an entity economically or systematically connected with them and concluded the refusal shall be disaffirmed since the examiner erroneously found famousness of the film “La La Land” as a source indicator.

Failed trademark opposition by Disney over a 3-circle silhouette

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In a recent decision, the Japan Patent Office (JPO) dismissed an opposition filed by Disney Enterprises, Inc. against TM Reg no. 6303837 for a composite mark containing a three-round device due to a low degree of similarity to famous Mickey’s 3-circle silhouette.

[Opposition case no. 2021-900006, Gazette issued date: September 24, 2021]

Opposed mark

Aoki shofuan Co., Ltd., a Japanese confectionery maker, applied a composite mark consisting of words “TSUKIGESHO”, “FACTORY”, its Japanese language and a three-round device (see below) for use on retail or wholesales service in relation to confectionery, processed foods and beverage (tea, coffee, cocoa) in class 35 with the JPO on October 21, 2019.

The JPO examiner granted protection of the opposed mark on September 23, 2020, and published for opposition on November 4, 2020.

Opposition by Disney

To oppose against registration within a statutory period of two months counting from the publication date, Disney Enterprises, Inc. filed an opposition against the opposed mark on January 4, 2021.

Disney argued the opposed mark shall be canceled in contravention of Article 4(1)(x), (xi), (xv), and (xix) of the Trademark Law because of the remarkable reputation and popularity of Mickey’s 3-circle silhouette (see below) as a source indicator of Disney and a high degree of similarity between the opposed mark and the opponent’s famous mark.

JPO decision

The JPO Opposition Board did not question the famousness of Mickey’s 30-circle silhouette as a source indicator of Disney and their business since most consumers would conceive a world-famous iconic character “Mickey Mouse” at the sight of the silhouette.

In the meantime, the Board negated similarity between the marks by stating that:

  1. From appearance, both marks are easily distinguishable because the opposed mark contains distinctive literal elements “TSUKIGESHO” and its Japanese language written in a conspicuous manner, and the figurative element (three round silhouette) is depicted upside down.
  2. Phonetically, both marks are quite dissimilar because the opponent mark does not give rise to a pronunciation contrary to the opposed mark.
  3. Conceptually, although the opposed mark does not give rise to any specific meaning, both marks are dissimilar given the opponent mark is well-known for an indication of Mickey Mouse.
  4. In view of different configuration of the figurative element by depicting three circles upside down, relevant consumers are unlikely to associate the three-round device of the opposed mark with Mickey Mouse. If so, the figurative element would not be considered as a prominent portion to play a source indicator of the opposed mark.

Based on the foregoing, the JPO found both marks are too dissimilar to cause a likelihood of confusion. If so, the Board can’t find reasonable grounds to believe the opposed mark shall be canceled under Article 4(1)(x), (xi), (xv), and (xix) and decided to dismiss the opposition.