ZARA Unsuccessful Opposition against TM “LAZARA”

On April 22, 2024, the Japan Patent Office (JPO) dismissed an opposition filed by Industria de Diseño Textil, SA (INDITEX), owner of the fashion brand “ZARA”, against TM Reg no. 6699667 for word mark “LAZARA” in classes 25 due to dissimilar marks and unlikelihood of confusion with “ZARA”.
[Opposition case no. 2023-900175]


Opposed mark

Opposed mark, consisting of a wordmark “LAZARA” in standard character, was applied for registration by Japanese individual to be used on clothing in class 25 on November 20, 2022, and published for post-grant opposition on May 29, 2023.


Opposition by Inditex

Opponent, INDITEX, one of the world’s largest fashion retailers and owner of the fashion brand “ZARA”, filed an opposition on July 27, 2023 before the lapse of a two-month statutory period and claimed opposed mark “LAZARA” shall be cancelled in contravention of Article 4(1)(xi), (xv) and (xix) of the Japan Trademark Law by citing earlier trademark registrations (TM Reg no. 4108998 and IR no. 752502 in class25) for word mark “ZARA”.

Article 4(1)(xi) is a provision that prohibits the registration of a junior mark that is deemed identical with, or similar to, any earlier registered mark.

INDITEX contended that the opposed mark “LAZARA” is similar to its own trademark “ZARA,” a globally renowned fast-fashion brand given the suffix “LA” is a descriptive word that merely indicates the definite article in Spanish. Besides, the goods in question are identical.

Article 4(1)(xv) prohibits the registration of trademarks that are likely to cause confusion with the business of other entities.

INDITEX contended that the mark “ZARA” has become renowned among relevant consumers in connection with apparel. Given the high degree of resemblance between “LAZARA” and “ZARA” as well as the goods, it is likely that consumers will confuse or misconceive the goods bearing the opposed mark “LAZARA” with “ZARA.”

Article 4(1)(xix) proscribes the registration of a trademark that is identical with or similar to another entity’s famous mark if the trademark is intended for the purpose of gaining unfair profits or causing damage to the entity.

INDITEX contended that the applicant had filed the opposed mark with the intention of obtaining unfair profits through free-riding on the well-known trademark “ZARA”.


JPO decision

The JPO Opposition Board held that “ZARA” has acquired a certain degree of recognition among relevant consumers in Japan and foreign countries as a source indication of clothing, however, the Board denied a high degree of recognition of the mark among the consumers by taking into consideration the produced evidence. The Board criticized “INDITEX produced precedent administrative decisions as evidence that admitted famousness of the mark “ZARA” in Japan. But, famousness of trademark shall be assessed on a case-by-case basis based on relevant facts and evidence produced in each case. Therefore, the precedent decisions would not bind the ongoing case. INDITEX did not reveal sales figure and expenditure for advertisement in connection with apparel bearing the mark ZARA.

Furthermore, the Board found the consumers would perceive the opposed mark “LAZARA” as a whole, which would suggest an unfamiliar foreign word from a visual perspective. If so, “LAZARA” and “ZARA” are evidently dissimilar in appearance and pronunciation because of the distinction between the presence and absence of the letter “LA” in the suffix and the overall sound. As for the concept, it is not comparable since either mark does not give rise to any specific meaning. Consequently, both marks are unlikely to cause confusion due to their dissimilarity.

Additionally, the Board noted that INDITEX had not presented any evidence to substantiate their assertion that the applicant had filed the opposed mark for the purpose of gaining unfair profits or causing harm to INDITEX.

Based on the foregoing, the JPO dismissed the entire allegations of INDITEX and allowed “LAZARA” to survive.

New Balance Unsuccessful Opposition against “nyan balance” mark

On December 22, 2023, the Japan Patent Office (JPO) dismissed an opposition filed by New Balance Athletics, Inc. against TM Reg no. 6669617 for the “nyan balance” mark with a landing cat device due to dissimilarity to and unlikelihood of confusion with “NEW BALANCE”.
[Opposition case no. 2023-900073]


“nyan balance”

A Japanese individual applied a composite mark consisting of the word “nyan balance” and a landing cat device (see below) for use on apparel, headgear, footwear, sports shoes, and sportswear in class 25 with the JPO on May 26, 2022 (TM App no. 2022-65756).

“Nyan” is known as the sound cats make in Japan. Because of it, “nyan balance” reminds us of a combination of cat sounds and “balance”.

The JPO examiner allowed registration of the opposed mark on February 7, 2023 without raising any objection, and published it for post-grant opposition on February 15, 2023.


Opposition by NEW BALANCE

To oppose registration within a statutory period of two months counting from the publication date, New Balance Athletics, Inc. filed an opposition against the “nyan balance” mark on March 31, 2023.

NEW BALANCE argued the opposed mark shall be canceled in contravention of Article 4(1)(vii), (xi), (xv), and (xix) of the Japan Trademark Law because of the remarkable reputation and popularity of the NEW BALANCE brand in relation to apparels and shoes, and a close resemblance between the literal portion “nyan balance” of opposed mark and famous brand “NEW BALANCE” to the extent that relevant consumers are likely to confuse a source of the goods in question bearing the opposed mark with “New Balance”.

In the opposition, NEW BALANCE pointed out a fact that the applicant once sought registration of a mark containing famous “NB” logo (see below. TM App 2022-65755) with the JPO. Since he did not make a response to the examiner’s rejection that asserted a likelihood of confusion with NEW BALANCE and a malicious intent to obtain unjustifiable benefits by using the similar mark to famous “NB” logo, the opponent alleged the applicant must have had a bad faith in filing the opposed mark.


JPO decision

Astonishingly, the JPO Opposition Board did not admit a high degree of popularity and reputation of “NEW BALANCE” brand as a source indicator of the opponent by finding that the opponent did not submit detail and sufficient evidence, such as sales record, advertisement and sales promotion, to demonstrate famousness of the cited mark objectively.

Besides, the Board negated the similarity between the marks by stating that:

From the appearance, the difference in the prefix of literal elements, “nyan” and “NEW” would suffice for relevant consumers to distinguish them. Therefore, even though the term “nyan balance” is considered as a prominent portion of the opposed mark, both marks are sufficiently distinguishable in appearance.

Phonetically, “nyan balance” is easily distinguishable from “NEW BALANCE” because of the difference in the first sound given both marks just consist of six sounds respectively.

Conceptually, since both marks do not give rise to any specific meaning, it is not possible or adequate to find similarity in concept.

By virtue of a low degree of similarity, the Board found relevant consumers are unlikely to confuse or associate the source of the goods bearing the opposed mark with “NEW BALANCE” and any entity systematically or economically connected with the opponent.

Provided that the opponent failed to demonstrate famousness of “NEW BALANCE” brand, the Board has no reason to believe the applicant filed the opposed mark with a malicious intent to free-ride on the opponent’s reputation and goodwill.

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 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).