カテゴリー: Bad faith

Failed Trademark Opposition over VW TYPE-2

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The Japan Patent Office (JPO) did not side with Volkswagen AG in an opposition against TM Reg no. 6365340 for device mark containing a depiction of a van-type red car by finding unlikelihood of confusion with Volkswagen Type-2.

[Opposition case no. 2021-900210, decided on September 14, 2023]

Opposed mark

Sur Andino SA, a Chilean wine grower and producer, filed a trademark application for device mark containing a depiction of a van-type red car (see below) to be used on wines in class 33 with the JPO on February 5, 2020.

The JPO granted protection of the opposed mark on March 9, 2021 and published is for a post-grant opposition on April 6, 2021.

Opposition by Volkswagen

On June 7, 2021, just before the lapse of a two-month statutory period counting from the publication date, Volkswagen AG filed an opposition and claimed the opposed mark shall be cancelled in contravention of Article 4(1)(vii), (xv) and (xix) of the Japan Trademark Law.

Volkswagen argued a van-type red car depicted in the opposed mark resembles the VW Type 2 vehicles, aka Transporter, Bulli, Kombi, VW Bus that have been distributed worldwide for past six decades and a unique shape of the vehicles has played a significant role in identifying the origin of car. Because of it, the applicant must have had a bad faith to free-ride or dilute fame and prestige of the VW Type 2. Relevant consumers are likely to confuse a source of wines bearing the opposed mark with VW.

JPO decision

The JPO Opposition Board questioned whether the shape of the VW Type 2 per se has played a role in indicating the source from the produced evidence.

Given there is insufficient evidence to connect a van-type red car in the opposed mark with the VW Type 2, the Board found no reason to believe the applicant had a bad faith to free-ride or dilute prestige of the VW Type 2 by using the opposed mark on wines. If so, it is unlikely that relevant consumers confuse a source of wines bearing the opposed mark with Volkswagen.

Based on the foregoing, the Board decided the opposed mark shall not be canceled based on Article 4(1)(vii), (xv) and (xix), and thus dismissed entire allegations by Volkswagen.

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.

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.

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.

BOND GIRL Score Win in Trademark Dispute

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The Japan Patent Office (JPO) declared invalidation of TM Reg no. 6267785 for “BOND GIRL” with a “BG” device mark in contravention of Article 4(1)(vii) of the Trademark Law.

[Invalidation case no. 2022-890013, decided on November 18, 2022]

Disputed mark

A disputed mark, consisting of the stylized word “BOND GIRL” and “BG” logo (see below), was filed with JPO for use on scissors, swords, hand tools, spoons, and forks in class 8 by a Japanese business entity on September 4, 2019, and registered on July 9, 2020.

Apparently, the applicant has used the disputed mark on multi-tools. Click here.

Invalidation petition by Danjaq, LLC

On March 1, 2022, Danjaq, LLC, the holding company responsible for the copyright and trademarks to the characters, elements, and other material related to James Bond on screen, filed a petition for invalidation and argued disputed mark shall be invalid in contravention of Article 4(1)(vii) of the Japan Trademark Law by citing world-famous cinematic heroine “BOND GIRL” in the James Bond film series “007”.

Article 4(1)(vii)

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

In the petition, Danjaq argued “BOND GIRL” has appeared as a love interest of James Bond in the movies for over 55 years since 1962. Due to frequent appearances in magazines, other public media, and various events pertinent to the Japes Bond movie, the name and sign of “BOND GIRL” has been well-known as a cinematic heroine in association with the film series “007”.

If so, it is presumed that the applicant intentionally applied the disputed mark with the aim to monopolize the term. Since the applicant does not have any legal interest with Danjaq, a legitimate owner of trademarks and copyrights pertaining to the 007 movies, it must impermissibly cause not only damage to public order but the disorder in domestic and foreign trade.

JPO decision

The Invalidation Board found, from the produced evidence, the cinematic heroine “Bond girl” has regularly attracted audiences through screens, magazines, and promotional events of the James Bond “007” movie. The sign “BONG GIRL” had further extensive marketing and licensing to companies in vastly different product categories, not only with products associated with motion pictures, e.g. nails, cosmetics, dolls, cards, calendars, and others. Relevant consumers at the sight of the disputed mark would conceive nothing but the cinematic heroine in the film. The Board, therefore, considered that “BOND GIRL” has become worldly famous as a cinematic heroine that appeared in the “007” film series.

The Board continued in analyzing efforts made by Danjaq to enhance the commercial value of “BOND GIRL” by means of trademark registrations in various jurisdictions and licensing to different product categories.

The Board paid attention that the applicant has referred to the James Bond films and the cinematic heroin “Bond girl” in advertisements to promote the BG multi-tools.

Based on the foregoing, the Board found it is impermissible for the applicant, unrelated to Danjaq, to monopolize the term on goods in question and decided to retroactively invalidate the disputed mark in contravention of Article 4(1)(vii) for the purpose of preventing damage to public order.

LE MANS, Unsuccessful Trademark Race spending more than 24 Hours

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On July 29, 2022, the Opposition Board of Japan Patent Office (JPO) dismissed a trademark opposition filed by AUTOMOBILE CLUB DE L’OUEST (A.C.O.), an owner of the mark “LE MANS”, against TM Reg no. 6374059 for wordmark “Le mans de elegance” on apparels in class 25.

[Opposition case no. 2021-900248]

Le mans de elegance

The opposed mark, consisting of the word “Le mans de elegance” in standard character, was applied for use on clothing, garters, sock suspenders, braces [suspenders] for clothing, waistbands, belts [clothing], footwear, masquerade costumes, sports shoes, clothes for sports in class 25 by a Japanese company named Analogue Co., Ltd. on October 15, 2020.

The JPO granted protection on March 12, 2021, and published for opposition on April 27, 2021.

Opposition by ACO

Opponent, AUTOMOBILE CLUB DE L’OUEST, alleged the opposed mark shall be canceled in contravention of Article 4(1)(xi), (xv), and (xix) of the Japan Trademark Law by citing earlier trademark registrations for the LE MANS mark in classes 25.

ACO argued that the mark “LE MANS” is famous to indicate the oldest sports car race “24 hours of Le Mans”. Due to the remarkable reputation of the mark “LE MANS” and the descriptive meaning of the term “de elegance” in relation to apparel, relevant consumers would see the literal element “Le mans” as a prominent portion of the opposed mark. If so, both marks shall be deemed similar from phonetical and conceptual points of view. Besides, there are precedent cases in which the JPO admitted close relatedness between automobile races and clothing. Taking into consideration the above facts, it is likely that relevant consumers would confuse the source of goods in question bearing the opposed mark with 24 hours of Le Mans and its organizer, or an entity systematically or economically connected with ACO.

JPO decision

The JPO found “The 24 hours of Le Mans” has been known for a major car race, however, questioned whether the term “LE MANS” has also become famous to indicate the race from the totality of the circumstances and the produced evidence by pointing out a fact that the term “LE MANS” has been frequently used with “24”. Consequently, the Board held the mark “LE MANS” has not acquired a certain degree of reputation and popularity as a source indicator of auto races among relevant consumers in Japan.

The Board assessed the similarity of mark in its entirety and found the opposed mark is dissimilar to the mark “LE MANS” from visual, phonetical, and conceptual points of view by stating that the cited mark gives rise to a meaning of a city in northwestern France.

In view of a low degree of similarity between the marks and recognition of the mark “LE MANS”, the Board has no reason to believe relevant consumers would confuse a source of goods in question bearing the opposed mark with the opponent.

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

GUCCI Unsuccessful in Trademark Opposition

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On July 12, 2022, the Japan Patent Office (JPO) dismissed an opposition claimed by Italian fashion house Gucci against Japan Trademark Registration no. 6384970 for the mark “CUGGL” with a hand-painted line in pink by finding less likelihood of confusion with famous fashion brand “GUCCI”.

[Opposition case no. 2021-900284]

CUGGL

Opposed mark, consisting of the term “CUGGL” with a hand-painted line in pink, was applied for use on clothing, footwear, headwear, and apparel in class 25 by an individual on October 6, 2020.

The JPO granted protection of the opposed mark and published it for opposition on May 25, 2021.

Opposition by GUCCI

Italian high-end luxury fashion house, GUCCI filed an opposition with the JPO on July 26, 2021, and argued the opposed mark shall be canceled in contravention of Article 4(1)(vii), (xv), and (xix) of the Trademark Law due to similarity and likelihood of confusion with famous fashion brand “GUCCI”.

GUCCI claimed the opposed mark was sought with malicious intention to free-ride goodwill and reputation in a manner of hiding the lower part of the term “CUGGL” by a pink painted line to the extent consumers could recognize it as if “GUCCI”. In fact, the registrant promotes T-shirts bearing the opposed mark with the most part of the term hidden.

JPO Decision

The JPO Opposition Board admitted a remarkable degree of popularity and reputation of the opponent’s “GUCCI” mark.

In the meantime, the Board did not find a resemblance between “GUCCI” and “CUGGL” from visual, phonetic, and conceptual points of view. Due to a low degree of similarity of the mark, the Board had no reason to believe that relevant consumers would misconceive a source of goods in question bearing the opposed mark from GUCCI or any entity systematically or economically connected to the opponent.

Assuming a low degree of similarity of the mark and less likelihood of confusion, the Board can’t find a reasonable ground to admit the applicant had a malicious intention to free-ride goodwill and reputation of GUCCI and do harm to the opponent.

Based on the foregoing, the JPO dismissed the entire allegations and decided the opposed mark was valid.

Adidas Unsuccessful in Opposition over BOOST mark

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On May 18, 2022, the Japan Patent Office (JPO) dismissed an opposition filed by Adidas AG against Trademark Reg no. 6383132 for the wordmark “G-BOOST” by finding dissimilarity and unlikelihood of confusion with Adidas “BOOST”.

[Opposition case no. 2021-900273]

G-BOOST

UNI WORLD Co., Ltd. filed wordmark “G-BOOST” in standard character for use on ‘gloves for protection against accidents; clothing for protection against accidents; protective industrial shoes; dust masks’ in class 9 and ‘clothing; footwear; gloves; thermal gloves; sports shoes; sportswear; socks’ in class 25 on March 30, 2020.

The applicant promotes worker gloves bearing the mark “G-BOOST.”

The JPO granted protection of the mark on March 30, 2021, and published for opposition on May 25, 2021.

Opposition by Adidas

On July 14, 2021, Adidas AG filed an opposition and argued the opposed mark shall be canceled in contravention of Article 4(1)(vii), (x), (xi), and 4(1)(xv) of the Japan Trademark Law due to a conflict with earlier trademark registrations pertinent to Adidas BOOST shoes, namely, TM Reg nos. 5212257 “BOOST” and 5941352 “ULTRABOOST” on shoes and sports shoes in class 25.

Allegedly, Adidas introduced Boost in 2013 as its revolutionary cushioning system, which provided the highest energy return in any running sneaker. The technology was designed to provide runners with soft cushioning and long-lasting energy that more rigid sneakers couldn’t.

Adidas argued the opposed mark “G-BOOST” is confusingly similar to “BOOST” because the term “BOOST” shall be a prominent portion of the opposed mark given an alphabetical letter “G” perse lacks distinctiveness in relation to the goods in question. Besides, “BOOST” has become famous as a source indicator of Adidas in relation to running shoes. If so, relevant consumers are likely to confuse the source of goods bearing the opposed mark with Adidas.

JPO Decision

The JPO Opposition Board did not admit a certain degree of reputation and popularity of the BOOST mark as a source indicator of Adidas running shoes among relevant consumers in Japan by stating that the opponent failed to produce sufficient evidence to disclose sales figures, market share, and advertising expenditures, media space and time of the goods bearing the BOOST mark even though the opponent produced evidence to demonstrate marketing campaign for the BOOST shoes in Japan.

In addition, the Board compared “G-BOOST” with “BOOST” as a whole and negated the similarity of the marks because of a clear distinction in appearance and sound.

Given the low degree of similarity of the mark and unproved famousness of the opponent mark, the Board has no reason to believe relevant consumers would confuse a source of the goods bearing the opposed mark with Adidas.

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

Failed Opposition against “Zara Sube Mist” by ZARA

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On March 25, 2022, the Japan Patent Office (JPO) dismissed an opposition filed by Industria de Diseño Textil, SA (INDITEX), owner of the fashion brand “ZARA” against trademark registration no. 6357258 for word mark “Zara Sube Mist” in class 3 by finding dissimilarity to and less likelihood of confusion with “ZARA”.

[Opposition case no. 2021-900193]

Zara Sube Mist

The opposed mark, consisting of three words, “Zara”, “Sube”, and “Mist” in standard character, was applied for registration by IBI Inc. to be used on cosmetics in class 3 on January 30, 2020.

The JPO granted protection on February 16, 2021, and published for opposition on March 23, 2021.

The applicant is using the opposed mark on skin lotions. Click here.

It should be noted “zara zara” is a usual term to represent the condition of ‘rough skin’ in Japanese. Likewise, “sube sube” is often used to represent the condition of ‘smooth skin’. Because of it, we would conceive of skin conditions from the term “Zara Sube.”

Opposition by Inditex

Opponent, INDITEX, one of the world’s largest fashion retailers and owner of the fashion brand “ZARA”, claimed the opposed mark “Zara Sube Mist” shall be canceled in contravention of Article 4(1)(xi), (xv) and (xix) of the Japan Trademark Law by citing earlier IR no. 973064 for word mark “ZARA” in relation with cosmetics of class 3.

INDITEX argued, that given “ZARA” has acquired a remarkable reputation, relevant consumers of the goods in question are likely to see the literal element “Zara” as a prominent portion of the opposed mark and thus confuse or misconceive the opposed mark with “ZARA”.

JPO Decision

The JPO Opposition Board admitted that “ZARA” has become famous among relevant consumers and traders as a source indicator of the opponent in connection with clothing.

In the meantime, the Board questioned if the opponent mark “ZARA” has acquired a certain degree of reputation and popularity in relation to cosmetics from the produced evidence.

The Board found the consumers would see the opposed mark in its entirety due to a tight combination of three words and a non-redundant sound of ‘zara-sube-mist’. Being that “ZARA” failed to prove a certain degree of reputation and popularity as a source indicator of cosmetics, the Board has a reason to believe that relevant consumers would not consider the term “Zara” as a prominent portion of the opposed mark. If so, the opposed mark just gives rise to a pronunciation of ‘zara-sube-mist’ and no specific meaning.

Based on the above findings, the Board held “Zara Sube Mist” and “ZARA” are obviously dissimilar from visual, phonetic, and conceptual points of view.

If so, the opposed mark “Zara Sube Mist” is unlikely to cause confusion with “ZARA” by virtue of a low degree of similarity and remote association between apparel and cosmetics even though “ZARA” has been famous for apparel brand and coined word.

In a conclusion, the JPO dismissed the entire allegations of INDITEX and allowed “Zara Sube Mist” to survive.