Failed trademark opposition by HERMES against HAIRMES

On December 1, 2021, the Japan Patent Office (JPO) dismissed an opposition filed by Hermes International against TM Reg no. 6275593 for the wordmark “HAIRMES” due to dissimilarity to and the unlikelihood of confusion with the famous fashion brand “HERMES”.
[Opposition case no. 2020-900266]


Opposed mark

Dog Diggin Designs, LLC applied a wordmark “HAIRMES” in standard character for use on beds for household pets; pillows for pets; pet cushions in class 20, and toys for pets in class 28 with the JPO on October 16, 2019.

The JPO examiner granted protection of the opposed mark on July 28, 2020, and published for opposition on August 18, 2020.

Apparently, Dog Diggin Designs promotes parody dog toys & dog beds, and other pet supplies.

https://www.dogdiggindesigns.com/

Opposition by Hermes

To oppose against registration within a statutory period of two months counting from the publication date, Hermes International filed an opposition against the opposed mark on October 15, 2020.

Hermes 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 the HERMES brand in the fashion industry and a high degree of similarity between “HAIRMES” and “HERMES” likely to cause confusion among relevant consumers in Japan.


JPO decision


The JPO Opposition Board admitted “HERMES” has been widely recognized as a luxury fashion brand and source indicator of Hermes International.

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

From the appearance, the difference of “AI” and “E” in the middle of a respective word would suffice for relevant consumers to distinguish them.
Phonetically, “HERMES” is easily distinguishable from “HAIRMES” because of the difference in the first and second given both marks just consist of four sounds respectively.
Conceptually, the opposed mark does not give rise to any specific meaning. Meanwhile, “HERMES” has a meaning of a Greek god of commerce, eloquence, invention, travel, and theft who serves as herald and messenger of the other gods and ‘luxury fashion brand.’ If so, both marks give rise to a different impression in the mind of relevant consumers.

Based on a low degree of similarity between the marks, the Board denied a likelihood of confusion as well.

As to Hermes’ allegation that Dog Diggin Designs must have an unjustified intention to free-ride the reputation of HERMES by promoting pet supplies with a similar package design and color to Hermes, the Board found irrelevant to the case since the opposed mark does not contain such figurative element. Ironically, the opposed mark “HAIRMES” rather serves to prevent confusion even if used on similar package design and color, the Board held.

https://www.dogdiggindesigns.com/

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

Patagonia Inc Failed in Registering “PATAGONIA”

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”

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

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.