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.

Samsung Failed in TM Opposition against “Funky Galaxy”

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.

Failed Opposition by Longines over Winged Hourglass logo mark

The Japan Patent Office (JPO) dismissed a trademark opposition claimed by Swiss luxury watchmaker, Longines Watch Co., Francillon Ltd., against Japanese trademark registration no. 6165986 by finding dissimilarity to Longine winged hourglass logo.
[Opposition case no. 2019-900301, Gazette issued date: August 27, 2021]


Opposed mark

Opposed mark, consisting of a winged device (see below right), was filed by a Chinese undertaking on July 11, 2018, for use on jewelry, clocks, watches, chronometers, and other goods in class 14.

The JPO admitted registration of the opposed mark on July 26, 2019, and published for post-grant opposition on August 20, 2019.


Opposition by Longines

To oppose against registration within a statutory period of two months counting from the publication date, Compagnie des Montres Longines, Francillon S.A. filed an opposition on October 18, 2019.

In the opposition brief, Longines asserted the opposed mark shall be retroactively canceled in contravention of Article 4(1)(vii), (x), (xi), and (xix) of Japan Trademark Law due to a resemblance to Longine’s famed winged hourglass logo (see above left).

Article 4(1)(vii) prohibits any mark likely to cause damage to public order or morality from registration.

Article 4(1)(x) prohibits registering a trademark that is identical with, or similar to, other entity’s well-known mark over goods or services closely related to the entity’s business.

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

Article 4(1)(xix) prohibits registering a mark that is identical with, or similar to, another entity’s famous mark, with an aim to gain unfair profits, or cause damage to the entity, even if goods or services sought for registration are unrelated to the entity’s business.


JPO decision

The JPO Opposition Board did admit a certain degree of the reputation of wordmark “LONGINES” from the produced evidence. In the meantime, the Board questioned if the winged hourglass logo per se has acquired a similar degree of reputation as a source indicator of the opponent’s watches by stating that the logo has been always used in conjunction with or adjacent to the LONGINES mark.

Besides, the Board considered both marks dissimilar as a whole from visual, phonetic, and conceptual points of view. The cited mark consists of an hourglass and straight wings. The opposed mark consists of geometrical figures conceived as a human body and spread wing. Taking account of distinctions in appearance, the Board has reasonable ground to believe that relevant consumers would be unlikely to confuse a source of the opposed mark with Longines when used on the goods in question.

Due to a low degree of similarity and popularity, the Board did not find a reasonable doubt that the opposed mark was sought for registration with an aim to obtain unfair profits from Longines and disorder public interest and morality from the totality of the circumstances.

Based on the foregoing, the Board decided to dismiss the opposition entirely and found opposed mark shall not be canceled under Article 4(1)(vii), (x), (xi), and (xix).

BEYOND MEAT defeats “Beyond Meat Burger”

The Japan Patent Office (JPO) sided with Beyond Meat Inc. and canceled TM Reg no. 6197193 for wordmark “Beyond Meat Burger” by free-riding on the business reputation of “BEYOND MEAT”.

[Opposition case no. 2020-900023, Gazette issued date: July 30, 2021]

Beyond Meat Burger

Opposed mark, consisting of a wordmark “Beyond Meat Burger” written in a Japanese katakana character (see below), was filed by a Japanese individual on July 23, 2018, for use on ‘meat products’ in class 29 and ‘clothing’ in class 25.

Subsequently, the applicant deleted the designated goods in class 29.

The mark was registered on November 15, 2019, and published for opposition on December 10, 2019.


BEYOND MEAT

Beyond Meat Inc., a US food processing company that specializes in providing plant-based meat, filed an opposition against the “Beyond Meat Burger” mark with the JPO on January 24, 2020, before the lapse of a two-month statutory period for the opposition.

In the opposition brief, Beyond Meat argued the opposed mark shall be canceled in contravention of Article 4(1)(xix) of the Japan Trademark Law.

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.

It is interpreted that the “famous mark” under the article does not require a high reputation among Japanese consumers. If domestic consumers recognize such a reputation in foreign countries, it will suffice.

Beyond Meat alleged that the “BEYOND MEAT” mark has been well known for plant-based meat substitutes by the opponent to meat distributors as well as US consumers (It should be noted that Beyond Meat has yet to launch the business in Japan as of now). It is obvious that the opposed mark is confusingly similar to “BEYOND MEAT”. Presumably, the opposed party must have filed the opposed mark with a fraudulent intention to prevent registration of the “BEYOND MEAT” mark in Japan and gain unjust enrichment by doing so.


JPO decision

The JPO Opposition Board admitted that the “BEYOND MEAT” mark has acquired a remarkable degree of reputation among US consumers as a source indicator of plant-based meat substitutes by Beyond Meat Inc. even before the application date of the opposed mark

The Board assessed the opposed mark is confusingly similar to “BEYOND MEAT”. Relevant consumers with an ordinary care would see the term “Beyond Meat” as a prominent portion of the opposed mark because the consumers get familiar with the English word “Burger.”

A fact that the opposed party initially designated ‘meat products’ implies the applicant’s intention to use the opposed mark on the goods that are closely associated with meat substitutes. If so, the Board had a reasonable ground to believe the opposed mark was filed with an intention to take advantage of goodwill and business reputation associated with Beyond Meat’s tradename and trademark.

Based on the foregoing, the JPO decided to retroactively cancel the opposed mark “Beyond Meat Burger” in contravention of Article 4(1)(xix).