カテゴリー: Article 4(1)(xix)

Shangri-La Unsuccessful in Trademark Opposition Over “Shangri-La Golf”

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The Japan Patent Office (JPO) dismissed an opposition claimed by Shangri-La Hotels against TM Reg no. 6610570 for the mark “Shangri-La-Golf” in class 35 due to dissimilarity between “Shangri-La” and “Shangri-La-Golf”.

[Opposition case no. 2022-900465, decided on July 26, 2023]

Opposed mark

A Japanese individual filed a stylized word mark “Shangri-La-Golf” (see below) for use on retail and wholesale services in relation to woven fabrics, beddings, clothing, footwear, and personal articles in class 35 with the JPO on June 22, 2020.

The JPO examiner rejected the mark in contravention of Article 4(1)(xi) of the Japan Trademark Law by citing earlier trademark registrations for wordmark “SHANGRI-LA”.

However, as a result of the JPO Appeal Board’s decision that found dissimilar to “SHANGRI-LA”, the mark could be registered on September 6, 2022.

Opposition by Shangri-La Hotels

Shangri-La International Hotel Management Ltd filed an opposition against the opposed mark on November 11, 2022 and argued the opposed mark shall be canceled in contravention of Article 4(1)(vii), (viii), (x), (xi), (xv), and (xix) of the Japan Trademark Law due to a remarkable degree of recognition of the cited mark “Shangri-La” and close resemblance between the opposed mark and “Shangri-La”.

JPO decision

The JPO Opposition Board questioned a remarkable degree of recognition of the cited mark among relevant public in Japan by stating that the produced evidence is insufficient to find such recognition objectively.

As for appearance, sound and meaning of the opposed mark, the Board found

“The opposed mark consists of “Shangri”, “La”, and “Golf” written in the same font and size, and tightly united by a hyphen (-). Visually, there is no reason to find respective element perse independently plays a role in source indicator of the opposed mark. Besides, the sound arising from the opposed mark as a whole can be pronounced easily.

Even if the term “Golf” has the meaning of a kind of ball game, it is reasonable to find that the term would not be recognized as directly indicating a descriptive meaning or specific quality of the services in question. Relevant consumers would see the opposed mark as a whole.

Therefore, the opposed mark shall be assessed in its entirety and give rise to a pronunciation of “Shangri-La-Golf” and no specific meaning.”

Based on the above finding, the Board decided the opposed mark “Shangri-La-Golf” is dissimilar to the cited mark “Shanri-La” because there is visual and phonetical distinction between the marks by virtue of the term “Golf” and the opposed mark does not give rise to a meaning related to ‘a remote usually idyllic hideaway’.

Accordingly, the Board found the opposition baseless and decided the opposed mark remains as the status quo.

HERMES Victory in trademark dispute against HAIRMES

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On July 26, 2023, the Japan Patent Office (JPO) sided with Hermes International in an invalidation trial against TM Reg no. 6275593 for the wordmark “HAIRMES” by finding the owner’s unjustified intention to free-ride and dilute the famous fashion brand “HERMES” and cause confusion.

[Invalidation case no. 2022-890082]

Disputed 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. Apparently, the company promotes parody dog toys & dog beds, and other pet supplies.

https://www.dogdiggindesigns.com/

Hermes International filed a post-grant opposition against the disputed mark with the JPO on October 15, 2020, and argued the disputed 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.

The JPO Opposition Board decided to dismiss the opposition by finding unlikelihood of confusion due to a low degree of similarity between the marks. Click here.

Invalidation action by Hermes

Hermes International filed an invalidation action with the JPO based on the same grounds on October 18, 2022, and repeatedly argued the owner must have had an intention to imitate and free-ride on reputation and goodwill of the famous fashion brand “HERMES” by making use of similar trade dress with Hermes packaging color and design in addition to similar HAIRMES mark.

JPO decision

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

In the assessment of similarity of mark, the Board found both marks are dissimilar in sound and concept. However, these marks give a similar visual impression by sharing the first letter “H” and the four letter “RMES” in the latter half of respective word, which catches the attention of consumers. If so, the Board has a reason to believe there is a certain degree of similarity between the marks.

The Board paid attention to a fact that the owner promotes pet beds and pet toys bearing similar color and decoration to the iconic Hermes packaging. Based on the circumstances, the Board had a view that presumably the owner, knowing that the HERMES mark has been widely recognized among consumers in Japan, must have had an intention to free-ride or dilute reputation on HERMES.

Based on the foregoing, the Board found relevant consumers are likely to confuse the source of pet beds and toys bearing the disputed mark with Hermes International in view of close association with fashion items as well, and decided to invalidate the disputed mark entirely.

Champion loses trademark opposition over “C” logo

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The Japan Patent Office (JPO) dismissed an opposition filed by HBI Branded Apparel Enterprises, LLC against TM Reg no. 6560200 for the C device mark due to dissimilarity to and the unlikelihood of confusion with the iconic “C” emblem of Champion.

[Opposition case no. 2022-900315, decided on May 22, 2023]

Opposed mark

DAIEI TRADING CO., LTD. a Japanese company, applied a device mark consisting of the “C” curved line and a heart & circle placed vertically inside of the line (see below) for use on apparel, footwear, sports shoes, and sportswear in class 25 with the JPO on December 8, 2021.

The JPO examiner did not raise any objection to the mark at all in the course of the substantive examination.

Accordingly, the mark was registered on May 23, 2022, and published for post-grant opposition on May 31, 2022.

Opposition by Champion

HBI Branded Apparel Enterprises, LLC filed an opposition against the opposed mark on August 2, 2022.

HBI argued the opposed mark shall be canceled in contravention of Article 4(1)(vii), (x), (xi), (xv), and (xix) of the Japan Trademark Law on the grounds that a high degree of similarity between the opposed mark and the iconic “C” emblem (see below) becoming famous as a source indicator of the Champion brand in connection with casual wear, sportswear, and other related goods would inevitably cause confusion among relevant consumers when the opposed mark is used on goods in question.

JPO decision

The JPO Opposition Board admitted that the “C” emblem has acquired a high degree of reputation as a result of substantial use in Japan for more than four decades and become famous as a source indicator of the opponent.

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

From the appearance, both marks contain a curved line that looks like a “C” letter; however, the respective line looks totally different by means of a wide difference in line thickness. Besides, there is a clear difference between figurative elements depicted inside of the line (a heart & circle device placed vertically in the opposed mark, a thick vertical line in the cited mark). Therefore, the two marks are visually distinguishable.

Conceptually, the opposed mark does not give rise to any specific meaning. Meanwhile, the cited mark has the meaning of ‘famous brand of the opponent.’ If so, both marks are dissimilar in concept.

Based on the foregoing, the Board has a reason to believe that the opposed mark is dissimilar to the cited mark, even if they cannot be compared in terms of pronunciation.

In a global assessment of the likelihood of confusion, the Board found:

Even if the cited mark is widely recognized among consumers in Japan as a source indicator of the Champion’s business, given the low degree of similarity to the opposed mark, it would be unlikely that relevant traders and consumers at the sight of the opposed mark used on goods in question immediately associate or recall the cited mark or the opponent business.

If so, it is reasonable to consider that relevant consumers are unlikely to confuse the source of the goods bearing the opposed mark with Champion or another entity systematically or economically connected with the opponent.

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

Trademark dispute: iTunes vs HiTune

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On May 1, 2023, the Japan Patent Office (JPO) dismissed an opposition filed by Apple Inc. against TM Reg no. 6536066 for the wordmark “HiTune” by finding dissimilarity to and an unlikelihood of confusion with “iTunes”.

[Opposition case no. 2022-900242]

Opposed mark

UGREEN GROUP LIMITED, a Chinese company, filed the wordmark “HiTune” (see below) for use on computer peripheral devices, data processors, earphones, headphones, microphones, sound transmitting apparatus, and other goods in class 9 with the JPO on November 10, 2021.

The mark was registered on March 29, 2022, without receiving any refusal in the course of the substantive examination taken place by the JPO.

UGREEN has promoted wireless stereo earphones/earbuds bearing the mark.

Opposition by Apple Inc.

On June 6, 2022, Apple Inc. filed an opposition to “HiTune” and contended that the opposed mark shall be canceled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law by citing earlier trademark registration nos. 4570713 “iTUNE”, 4610312 “ITUNES”, 5155781 “iTunes”, IR943547 “ITUNES” in class 9.

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.

Apple Inc. argued that the mark “iTunes” has been famous as a source indicator of the opponent in relation to application software and multi-content distribution service. In view of the remarkable similarity between “HiTune” and “iTunes” by representing the second letter “i” in lower case and the third letter “T” in upper case, relevant consumers would associate the opposed mark with the opponent when used on goods of class 9 in question.

JPO decision

To my surprise, the JPO Opposition Board admitted a certain level of recognition of the mark “iTunes” as a source indicator of Apple Inc. in connection with application software enabling to download music or movies and to manage the contents among consumers of music distribution service, however, denied a substantial level of reputation and popularity of the opponent mark due to a lack of objective evidence produced to the Board.

In assessing the similarity of marks, the Board stated:

Differences such as the presence or absence of “H” at the beginning of the word, the difference between upper- and lower-case letters, and the presence or absence of “s” at the end of the word have a significant impact on the overall visual impression of both marks, which consist of relatively short letters. Therefore, the marks are clearly distinguishable from appearance.

There are distinctions between the sound “ha” and “a” at the beginning of a word, and the presence or absence of the sound “z” at the end of a word. These differences have a material effect on overall sounds given the relatively short sound structure. Therefore, there is less risk of mishearing each other when pronounced.

Since both marks do not give rise to any specific meanings, there is no room to cause confusion in concept.

If so, the Board has a reason to believe both marks are distinctively dissimilar.

Bearing in mind the Board finds that the opponent mark “iTunes” has not become famous among relevant consumers in Japan and has a low degree of similarity to the opposed mark “HiTune”, it is unlikely that the consumers confuse or misunderstand a source of goods in question bearing the opposed mark with Apple Inc. from the totality of the circumstances.

Based on the foregoing, the JPO decided the opposed mark shall not be canceled and dismissed the opposition entirely.

FURLA vs FURNA

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Italian heritage label Furla lost a trademark opposition in Japan against TM Reg no. 6501195 for the wordmark “FURNA” in class 25 as a result of the JPO’s decision finding no likelihood of confusion with “FURLA”.

[Opposition case no. 2022-900128, decided on April 6, 2023]

FURNA

The opposed mark, consisting of the wordmark “FURNA” in standard character, was filed for use on clothing, dresses, footwear, garters, waistbands, belts [clothing] and other goods in class 25 with the JPO by URBAN TEX Co., Ltd., a Japanese company on November 1, 2021.

The company opens an online shop for wedding dresses under the trade name “FURNA” on Rakuten online shopping platform.

In accordance with a request for accelerated examination from the company based on the actual use of the mark on any one of the designated goods, the JPO carried out a substantive examination and granted protection on January 14, 2022. Subsequently, the mark was published for post-grant opposition on January 27, 2022.

Opposition by FURLA

Italian luxury retailer FURLA S.P.A. filed an opposition on May 28, 2022, and claimed the opposed mark shall be canceled in contravention of Article 4(1)(xi), (xv), and (xix) of the Japan Trademark Law.

FURLA argued a mere difference of “N” and “L” in the fourth letter of the respective word would be trivial and thus inadequate to find a low degree of similarity in appearance and sound. Given a close association between the goods in question and the opponent goods covered by earlier registrations for the FURLA marks that have acquired a high level of recognition among relevant consumers in Japan, the consumers are likely to confuse a source of the goods bearing the opposed mark with Furla or mistakenly consider it from an entity systematically or economically connected with FURLA S.P.A.

JPO decision

The JPO Opposition Board admitted a high level of recognition of the mark “FURLA” in connection with bags among relevant consumers as a source indicator of the opponent.

In the meantime, the Board questioned if both marks are deemed similar in visual, aural, and conceptual points of view by stating:

Comparing the opposed mark and the opponent mark, “FURNA” and “FURLA” differ in appearance in the fourth letter of “N” and “L” but the difference in these letters in the short five-character composition has a substantial effect on the overall composition, and they are sufficiently distinguishable in appearance.

Pronunciation arising from “FURNA” and “FURLA” are different even when they are called in succession, and there is no risk of mishearing each other.

The opposed mark is conceptually distinguishable because it does not give rise to any specific meaning, whereas the opponent mark has been known as “Furla’s brand”.

Even if the “FURLA” mark is widely recognized among Japanese consumers as an indication of the opponent’s business, given the low degree of similarity between “FURNA” and “FURLA”, the Board has no reason to believe that the consumers having a glimpse of the opposed mark used on the goods in question would associate or recall the opponent mark.

Based on the foregoing, the JPO dismissed the opposition entirely and decided that the opposed mark “FURNA” shall remain valid as the status quo.

Trademark case: Wilson vs Werwilson

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The Japan Patent Office (JPO) dismissed an opposition filed by Wilson Sporting Goods Company against TM Reg no. 6520718 for the mark “Werwilson” with a device in class 25 by finding less likelihood of confusion with “Wilson”, the iconic American sporting goods brand when used on goods in class 25.

[Opposition case no. 2022-900124, decided on March 29, 2023]

Opposed mark

The opposed mark, consisting of two literal elements “Wer”, “wilson” and encircled “w” device placed in between them (see below), was sought registration by a Chinese company for use on apparel, footwear, and sports shoes in class 25 with the JPO on July 9, 2021.

The JPO granted protection of the opposed mark and registered on March 1, 2022, and published it for a post-grant opposition on March 9, 2022.

Opposition by Wilson

On March 28, 2022, Wilson Sporting Goods Company, originally known as the Ashland Manufacturing Company, created in 1913 in Chicago (US), a subsidiary of Amer Sports Corporation, opposed registration and claimed the opposed mark is confusingly similar to earlier registrations for their iconic mark “Wilson” (see below) and thus shall be canceled in contravention of Article 4(1)(xi), (xv) and (xix) of the Japan Trademark Law.

Wilson argued that visually the opposed mark can be conceived of as “We’re Wilson”. By virtue of a high level of brand recognition of “Wilson”, the opposed mark would give rise to a pronunciation and meaning of “Wilson” from its prominent portion. Given a close association of goods and consumers between the opposed mark and Wilson, relevant consumers are likely to confuse a source of the goods in question bearing the opposed mark with Wilson or another entity economically or systematically connected with the opponent.

JPO decision

The JPO Opposition Board admitted the famousness of the “Wilson” mark as a source indicator of the opponent in connection with tennis and sporting goods among relevant consumers in Japan.

However, the Board found that the opposed mark would not be conceived of as “We’re Wilson” from its configuration. Besides, the opposed mark does not give rise to the pronunciation and meaning of “Wilson” as a whole or in part.

If so, both marks are dissimilar from visual, phonetical, and conceptual points of view.

In view of the low degree of similarity of the marks, the Board has a reason to believe that relevant consumers with ordinary care are unlikely to confuse the source of goods in question using the opposed mark with Wilson.

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

Slim Chickens Fails to Secure Trademark in Japan

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The JPO dismissed an opposition claimed by Slim Chickens Holdings LLC, a US fast-casual restaurant chain that specializes in chicken tenders and wings, against TM Reg no. 6524092 for the wordmark “Slim Chickens” on restaurant services in class 43.

[Opposition case no. 2022-900179, decided on February 16, 2023]

SLIM CHICKENS

Slim Chickens opened in 2003 in Fayetteville, Arkansas, US, with a focus on fresh, delicious food with a southern flair in a fast-casual setting. With more than 190 locations opened and a fanatical following in 30 U.S. states, as well as international locations in the United Kingdom, the eternally cool brand is an emerging national and international franchise leading the “better chicken” segment of fast-casual restaurants with a goal to grow over 600 restaurants over the next decade.

Opposition against TM Reg no. 6524092

Food Revamp Co., Ltd, a Japanese company, filed a trademark application for the word mark “Slim Chickens” in standard character for use on restaurant services in class 43 with the JPO on May 6, 2021.

The JPO admitted registration of the mark (TM Reg no. 6524092) on March 8, 2022, and published for opposition on March 16, 2022.

Slim Chickens Holdings LLC (SCH) filed an opposition with the JPO on May 2, 2022, and argued the mark shall be canceled in contravention of Article 4(1)(xv) and (xix) of the Japan Trademark Law.

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

The JPO Opposition Board did not find a high level of popularity of “Slim Chickens”, a US fast-casual restaurant chain, among relevant consumers in Japan as well as the US and other countries by stating:

It is admitted that SCH opened a restaurant in the U.S. in 2003, and the first Slim Chickens franchise in 2013. SCH restaurant chain was ranked third in the “Best Casual Restaurant” category in 2020. SCH has used the “Slim Chickens” mark on their business and restaurant chain that has been considerably introduced in US magazines and online news sites.

However, SCH did not produce sufficient evidence other than media coverage to suggest their business performance in US and UK.

Therefore, the Board has no reason to believe that the “Slim Chickens” mark has been widely recognized among consumers in the US and other countries as a source indicator of the SCH restaurant chain.

Even if SCH restaurant chain has achieved sales of USD120 million and about 135 stores in the US and 10 stores in the UK, taking account of the total sales (USD10.06 billion) and the number of stores in the US (9,630) of Dunkin’ Donuts, which is introduced on the same coverage with SCH, and 9 mega restaurant chains opens over 1,000 stores in Japan, it is doubtful if “Slim Chickens” has acquired a high level of recognition even among consumers in US and UK.

In Japan, although there are magazines and web pages introducing the “Slim Chickens” restaurant chain, the number of such magazines and web pages is merely 6 from July 2017 to April 2022, and above all, there is no fact that SCH has opened a restaurant in Japan. If so, there is no reason to consider the “Slim Chickens” mark is widely recognized among relevant consumers in Japan.

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

Letter of Protest protects PUMA from Free-rider

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The JPO examiner raised her objection on the ground that TM App no. 2022-76159 for the stylized mark “SHIBA” was confusingly similar to the world-famous mark “PUMA” and filed with a malicious intent to harm PUMA as well as public interest.

Opposition vs Letter of Protest

Whenever a brand owner discovers a trademark application by a third party that may cause confusion or detrimental effect on your business, the owner is eager to block its registration by any means.

Opposition is one of the actions universally taken in such cases, however, it should be noted the success rate of opposition has been remarkably low (11% on average in the past six years) in Japan. Besides, the Japan Trademark Law does provide only “post-grant opposition” and the JPO has full discretion in deciding whether to cancel the opposed mark. Assumably, these factors affect the rate getting lower.

In this respect, a “letter of protest” is probably a better option instead.

Any person can use the letter of protest to give the JPO evidence about the registrability of a trademark in a pending application. There is no public data to show how effective the letter works to block the protested trademark, however, in my experience, as a Japanese trademark practitioner for twenty years, more than half of the letters resulted in a rejection of the protested trademark.

Protest to “SHIBA” mark

MARKS IP LAW FIRM, acting on behalf of PUMA SE, sent a letter of protest against TM App no. 2022-76159 for the stylized mark “SHIBA” (see below) in class 25 on November 25, 2022.

In the letter, we argued the protested mark is likely to cause confusion with PUMA SE because of its resemblance to the world-famous sports brand “PUMA”.

On February 17, 2023, the JPO examiner issued an office action refusing registration of the SHIBA mark in contravention of Article 4(1)(vii), (xi), (xv), (xix) of the Japan Trademark Law by stating that:

The protested mark gives rise to a pronunciation of “Shiba” and the concept of “Shina Inu; a breed of small thick-coated agile dogs developed in Japan”.

Even though there is a difference in meaning and sound, by virtue of the remarkable degree of reputation and popularity of the PUMA mark and the impressive resemblance of both marks in appearance, the examiner has a reason to believe relevant consumers would confuse a source of the designated goods of class 25, namely clothing, belts, footwear, sportswear, sports shoes, and headgear, bearing the SHIBA mark with PUMA.

Besides, there is reasonable doubt that the applicant must have been aware of PUMA and applied for the protested mark with malicious intent to harm not only PUMA but also the public interest.

Unless the applicant is successful in persuading the examiner of the dissimilarity of the mark, the unlikelihood of confusion with PUMA, and the non-existence of malicious intent, it will be rejected as a matter of course.

It is my advice to take advantage of the letter of protest, rather than opposition if you want to protect your brand against free-rider in Japan.

Philippe Starck Lost Trademark Dispute over Starck

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The Japan Patent Office (JPO) dismissed an opposition claimed by Philippe Starck, a French designer, against TM Reg no. 6487488 for the wordmark “Starck” due to the unlikelihood of confusion when used on management, leasing, rental, purchase, and sale of buildings, and real estate agency services in class 36.

[Opposition case no. 2022-900079, Decision date: December 5, 2022]

Opposed mark

Starck Co., Ltd., a Japanese company, sought trademark registration of the wordmark “starck” in standard character to be used on services related to real estate in class 36 on July 2, 2021.

Without raising any objections in the course of substantive examination, the JPO granted protection of the opposed mark on December 13, 3021, and subsequently published for post-grant opposition on January 13, 2022.

Opposition by Philippe Starck

Philip Starck, a French designer known for his wide range of designs, including everything from interior design to household objects and architecture, filed an opposition with the JPO on March 15, 2022, just before the lapse of a statutory period of two months counting from the publication date.

He argued the opposed mark shall be canceled in contravention of Article 4(1)(xv) and (xix) of the Japan Trademark Law in view of the high reputation of the term “Starch” as an indication of the opponent and close relatedness between the service in question and architectural design service.

JPO decision

The JPO Opposition Board did not admit the famousness of the mark “Starck” as a source indicator of the opponent’s design service from the produced evidence even though the Board found the mark has acquired a certain degree of recognition as a name of designer among relevant consumers.

Besides, the Board considered architectural design services shall be remotely associated with the management, leasing, rental, purchase, and sale of buildings, and real estate agency services in class 36.

If so, irrespective of the identical marks, the Board has no reason to believe relevant consumers would conceive of the opponent at a slight of the service in question using the opposed mark and confuse its source with the opponent.

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

Failed Opposition by Monster Energy over PREDATOR mark

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In a trademark opposition claimed by Monster Energy Company against TM Reg no. 6471165 for the stylized PREDATOR mark in class 30, the Japan Patent Office (JPO) dismissed the opposition by finding dissimilarity of goods between ‘coffee, tea, cocoa’ and ‘carbonated beverages, energy drink’ in class 32.

[Opposition case no. 2022-900010, decided on November 7, 2022]

Opposed mark

Acer Incorporated, a Taiwanese multinational hardware, and electronics corporation filed a stylized mark “PREDATOR” (see below) for use on various foods including ‘instant coffee, coffee beverages, coffee, tea, cocoa’ in class 30 with the JPO on January 6, 2021.

The JPO examiner granted protection on November 11, 2021 (TM Reg no. 5461165), and the opposed mark was published for opposition on December 7, 2021.

Opposition by Monster Energy

Monster Energy Company filed an opposition on January 13, 2022, and claimed the opposed mark shall be canceled in contravention of Article 4(1)(vii), (xi), and (xix) of the Japan Trademark Law by citing TM Reg no. 6408734 for word mark “PREDATOR” in standard character over ‘carbonated beverages; energy drink’ in class 32.

The opponent argued that ‘instant coffee, coffee beverages, coffee, tea, cocoa’ designated in class 30 shall be deemed similar to ‘carbonated beverages; energy drink’ in class 32 because:
(1) five major Japanese beverage suppliers manufacture and distribute not only the goods in question, but also other beverages identical or similar to the cited drinks e.g., soft drinks, fruit drinks, beverage vegetable juices, and whey drinks.
(2) Both goods are generally sold at convenience stores, supermarkets, department stores, drugstores, and other food outlets, vending machines, and train station kiosks, so they share the same sales locations.
(3) Both ingredients overlap and their uses as non-alcoholic beverages are common. Namely, there are purchased and consumed at teatime, for relaxation during breaks, for hydration, and as drinks during and after meals.
(4) Both goods are consumed by general consumers.

It is indisputable that both marks are similar in sound and meaning. Being that both marks and goods are deemed similar, the opposed mark shall not be registrable under Article 4(1)(vi) of the Japan Trademark Law.

JPO decision

The JPO Opposition Board found similarities in both marks.

However, the Board did not uphold the argument pertinent to the similarity of goods by stating that:

Although it is true the main consumers of non-alcoholic beverages are general consumers, that they are ultimately sold in the same vending machines and sales corners, and that they are consumed for similar purposes, the Board has a reason to believe these goods have different suppliers, gradients, and distribution channels more often than not. If so, both goods shall not be considered similar at all events.

Based on the above findings, the Board decided the opposed mark shall not be canceled and dismissed the oppositions by Monster Energy entirely.