カテゴリー: Composite mark

JPO rejected “BAMBI MAMA&BABY” due to a conflict with “BAMBI”

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In a trademark appeal disputing the similarity between “BABMI MAMA&BABY” and “BAMBI”, the Japan Patent Office (JPO) affirmed the examiner’s refusal and decided to reject a junior mark “BAMBI MAMA&BABY” due to a conflict with earlier trademark registrations for word mark “BAMBI” owned by Disney Enterprises Inc.

[Appeal case: 2022-786, Decision date: September 7, 2022]

BAMBI

Bambi, a familiar name for a baby deer, has long been famous for a 1942 American animated film produced by Walt Disney.

Disney Enterprises Inc. has owned trademark registration for the wordmark “BAMBI” in various classes (including class 3) since 2008 in Japan (TM Reg no. 5127816). Bambi character design with “BAMBI” written in Japanese (see below) has been registered for five decades.

BAMBI MAMA&BABY

Langley Inc., a Japanese company, filed a trademark application for the wordmark “BAMBI MAMA&BABY” in standard character to be used on cosmetics; soaps and detergents; dentifrices; perfumes and flavor materials; false nails; false eyelashes in class 3 with the JPO on March 2, 2021.

In fact, Langley promotes skin care creams, skin milk, and supplements bearing the BAMBI MAMA&BABY mark. Click here.

Screen capture from https://bambiwater.jp/gold/mamababy/

The JPO examiner rejected the mark based on Article 4(1)(xi) of the Japan Trademark Law by citing TM Reg no. 5127816 “BAMBI” on October 14, 2021.

Langley filed an appeal against the refusal on January 19, 2022, and argued the dissimilarity of mark between “BAMBI” and “BAMBI MAMA&BABY”.

JPO Decision

The JPO Appeal Board found the literal elements of “MAMA&BABY” lacks distinctiveness in relation to the applied goods of class 3 because there are plenty of care products for babies and mothers by competitors on which the term “MAMA&BABY” has been used as a descriptive indication. In the meantime, the term “BAMBI”, famous for the Disney film, shall evidently give an impression of source indicator in the mind of relevant consumers.

If so, it is permissible to find the term “BAMBI” as a prominent portion of the applied mark, and thus compare the portion with the earlier mark in assessing the similarity of the mark.

Undoubtedly, the prominent portion of the applied mark is identical to the cited mark “BAMBI” from visual, phonetical, and conceptual points of view.

Being that TM Reg no. 5127816 designates the goods identical to the applied mark, there is no room to argue the dissimilarity of goods.

Based on the foregoing, the Board decided to dismiss the appeal and rejected “BAMBI MAMA&BABY” due to a conflict with the earlier registered mark “BABMI” based on Article 4(1)(xi).

Unsuccessful opposition against LEGOHAIR

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On August 3, 2022, the JPO Opposition Board dismissed a trademark opposition filed by toy giant, Lego Juris A/S against TM Reg no. 6445411 for the “Lego Hair” mark with a device in class 44 by finding dissimilarity to and the unlikelihood of confusion with “LEGO”.

[Opposition case no. 2021-900432]

Lego Hair

The opposed mark, consisting of the word “Lego Hair” and a device (see below), was filed by the hair salon provider Lego Hair Co., Ltd., for use in hair styling services, hair treatment salon services, hair coloring services, skin caring, body caring, manicuring, beauty salon services, barbershops, and other related services in class 44 with the JPO on October 26, 2020.

The JPO granted protection of the Logo Hair mark on September 13, 2021, and the mark was published for opposition on October 12, 2021.

Opposition by Lego

LEGO Juris A/S, the world’s largest Danish toy manufacturer, filed an opposition on the final day of a two-month duration for opposition, and argued the Lego Hair mark shall be canceled in contravention of Article 4(1)(viii), (xi), (xv) and (xix) of the Japan Trademark Law by citing earlier TM Reg no. 2621425 and IR 1006003 for the stylized LEGO mark (see below).

LEGO argued that given the word “Hair” is descriptive in relation to the services in question, the term “Lego” shall be a prominent portion of the opposed mark as a source indicator accordingly. In view of the high reputation and popularity of the stylized LEGO mark, relevant consumers are likely to associate the opposed mark with LEGO and confuse the source when used on hair salon services.

JPO decision

The Opposition Board admitted the stylized LEGO mark has acquired a remarkable degree of reputation and popularity as a source indicator of the opponent’s goods and business. In the meantime, the Board questioned whether the term “LEGO” perse has become famous among relevant consumers as well by taking into consideration the produced evidence.

The Board had a view that the literal portion “Lego Hair” of the opposed mark shall be considered in its entirety. Based on the finding, the Board held the opposed mark is dissimilar to the stylized LOGO mark from visual and phonetical points of view. In concept, the stylized LEGO mark gives rise to a meaning of “famous brick- toy brand by LEGO”, but the opposed mark has no specific meaning. If so, both marks are incomparable from the concept.

Because of a low degree of similarity of the mark and less relatedness between toys and hair salon services, the Board has no reason to believe relevant consumers would confuse a source of the services in question bearing the opposed mark with the opponent or any entity systematically or economically connected with LEGO.

Based on the foregoing, the Opposition Board found the opposed mark shall not be canceled in contravention of Article 4(1)(viii), (xi), (xv), and (xix) and decided to remain valid.

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.

No confusion between “InstaShop” and “Instagram”

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On July 27, 2022, the Appeal Board of Japan Patent Office (JPO) disaffirmed the examiner’s rejection and found TM Application no. 2019-152946 for “InstaShop” with device mark is dissimilar and thus unlikely to cause confusion with a famous mark “Insta” known as an abbreviation of “Instagram”.

[Appeal case no. 2021-12444]

InstaShop

The applied mark consists of a red rectangle with rounded corners, a motif depicting a white shopping basket, the term “InstaShop” in white with large font, and “Convenience delivered” in black with a smaller font (see below).

The mark was filed in the name of InstaShop DMCC, a UAE corporation, for use on ‘online ordering services; price comparison services; import-export agency services; compilation of information into computer databases; providing commercial information and advice for consumers in the choice of products and services; retail services and wholesale services for foods and beverages, clothing, footwear, bags, cosmetics, and others in class 35 and ‘car transport; truck transport; packaging of goods; freight brokerage; delivery of goods; warehousing; rental of warehouse space and others’ in class 39 on December 5, 2019.

The JPO examiner rejected the mark due to a likelihood of confusion with the famous mark “Insta”, known as an abbreviation of “Instagram” in connection with application software for posting and sharing images and videos, online social networking services, advertising, and publicity services based on Article 4(1)(xv) of the Japan Trademark Law.

Article 4(1)(xv) is a provision to refrain from registering a junior mark that is likely to cause confusion with other business entities’ well-known goods or services.

The applicant filed an appeal on September 16, 2021, and argued the unlikelihood of confusion with Instagram.

JPO decision

The JPO assessed the term “InstaShop” can be a prominent portion of the applied mark and play a role in source indicator per se, but it shall be dissimilar to the “Insta” mark from visual, phonetical points of view. Even if the concepts are not comparable, by taking into global consideration the impression, memory, and association that respective mark gives to consumers and traders, the Board has a reason to believe that both marks are distinctively dissimilar.

Being that the applied mark contains figurative elements and other words “Convenience delivered”. Due to the difference, the applied mark as a whole has a low degree of similarity to the “Insta” mark.

Besides, the Board does not find the services in question have a close association with goods and services of Instagram in view of purpose, business field.

Even if the “Insta” mark has acquired a certain degree of reputation and popularity mainly among young consumers in their teens and twenties, the Board has no reason to believe relevant consumers are likely to associate and confuse a source of the services in question bearing the applied mark with Instagram because of a low degree of similarity of marks and relatedness with respective goods and services.

Based on the foregoing, the Board decided to disaffirm the examiner’s rejection and grant registration of the applied mark.

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.

Does “GRILL SWISS” mislead quality when used on non-Swiss confectionary?

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The Opposition Board of Japan Patent Office (JPO) decided Trademark Registration no. 6372876 for the “GRILL Swiss” mark would be unlikely to mislead consumers as to the quality of goods in class 30 even when used on non-Swiss confectionary.

[Opposition case no. 2021-900258, Gazette issue date: July 29, 2022]

Opposed mark

Opposed mark, outlined letters of “GRILL Swiss” on a red background, was applied for use on various goods and services in classes 29, 30, and 43 without any geographical restriction of the origin of respective goods and services on April 9, 2019, by Ginza Grill.

The opposed mark has been used on a Western food restaurant in Ginza, Tokyo since 1947.

The JPO granted protection of the mark and published for opposition on April 27, 2021.

Opposition by Choco Swiss

Choco Swiss filed an opposition against the “GRILL Swiss” mark in contravention of Article 4(1)(xvi) of the Trademark Law.

Article 4(1)(xvi) is a provision to prohibit the registration of a trademark that is likely to mislead as to the quality of the goods or services.

The Trademark Examination Guideline (TEG) provides an example that the “SWISSTEX” mark for use on watches shall be unregistrable based on the article. It should be noted that the mark can be registered in the event that the goods are amended to Swiss-made watches.

Opponents claimed the opposed mark “GRILL Swiss” caused a misunderstanding of the quality of following goods in class 30 when used on non-Swiss foods.

Aromatic preparations for food, not from essential oils; Tea; Coffee [roasted, powdered, granulated, or in drinks]; Prepared coffee and coffee-based beverages; Cocoa [roasted, powdered, granulated, or in drinks]; Prepared cocoa and cocoa-based beverages; Ice; Confectionery; Bread and buns; Sandwiches; Steamed buns stuffed with minced meat [Chuka-manjuh]; Hamburgers [sandwiches]; Pizzas; Hot dog sandwiches; Meat pies; Seasonings [other than spices]; Spices; Unroasted coffee beans; Cereal preparations; Chocolate spread; Chinese stuffed dumplings [Gyoza, cooked]; Chinese steamed dumplings [Shumai, cooked]; Sushi; Fried balls of batter mix with small pieces of octopus [Takoyaki]; Boxed lunches consisting of rice, with added meat, fish or vegetables; Ravioli; Cooked rice; Cooked curry rice; Cooked curry rice with fried pork, rice with hashed meat; omelet with a filling of ketchup‐seasoned fried rice; Instant confectionery mixes; Pasta sauce; Husked rice; Husked oats; Husked barley; Gluten for food; Flour.

Opponents argued the opposed mark uses the word “Swiss” in a prominent manner, which indicates Switzerland. Besides, the white-outlined letters on a red background give consumers an impression of Switzerland because of the same color as the Swiss flag. Therefore, if the opposed mark is used on non-Swiss foods including Swiss confectionary, a famous origin of chocolate, relevant consumers would inevitably misunderstand as if the goods bearing the opposed mark were originally manufactured and sold in Switzerland.

JPO Decision

The Opposition Board found both words “GRILL” and “Swiss” are less distinctive as a source indicator in relation to the goods in question equivalently. Being that the term “GRILL Swiss” would not give rise to any specific meaning, the Board held the literal element of the opposed mark is a coined word. If so, it is unlikely that relevant consumers consider the word “SwiSS” of the opposed mark as an indication to represent a specific quality of the goods including confectionery.

Based on the above findings, the Board decided the opposed mark contains a coined word within the red device and it would not represent the quality (place of production, place of sale, etc.) of the goods in question. If so, the opposed mark shall not be canceled in contravention of Article 4(1)(xvi) and remains valid as the status quo.

Trademark dispute: RIVER vs river

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In a recent decision, the JPO Appeal Board found TM Application no. 2021-5278 for the stylized “river” mark is dissimilar to earlier TM Reg no. 5704488 for the mark “RIVER” with design irrespective of designating the same consulting service in class 35.
[Appeal case no. 2021-17274, decision date: June 22, 2022]

TM Application 2021-5278

The dispute mark consists of the stylized word “river” depicted with the figurative element (see below right). The mark was filed in the name of Cultive, Inc for use in advertising and publicity services, business management analysis, or business consultancy service in class 35 on January 19, 2021.

The JPO examiner rejected the mark due to a conflict with earlier TM Reg no. 5704488 for the mark “RIVER” with a design (see above left) based on Article 4(1)(x) of the Japan Trademark Law.

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.

The applicant filed an appeal on December 15, 2021, and argued dissimilarity of the mark.

JPO decision

Astonishingly, the JPO Appeal Board found “By virtue of figurative elements, the disputed mark as a whole gives rise to an impression of distinctive and unified design that evokes the image of flowing water and green leaves. Furthermore, the color composition also gives the impression that the mark is designed to evoke the image of flowing water and green leaves. If so, even though the mark may give rise to a sound and meaning of “river”, it is reasonable to believe that the source of the services is identified based on the impression created by the distinctive appearance of the mark rather than its sound and concept in the course of transactions.”

Likewise, the Board found “being that the literal portion “RIVER” would not be deemed a prominent portion of the cited mark, even if the cited mark can give rise to a sound and meaning of “RIVER”, it is reasonable to consider that relevant consumers distinguish the source of the services bearing the cited mark by means of overall impression, rather than it’s sound and concept.”

Based on the above findings, the Board concluded “it is obvious that there is a remarkable difference in the appearance of both marks. Even if the disputed mark and the cited mark are both pronounced “RIVER” and mean “river”, the similarity in sound and concept shall not outweigh the distinctiveness caused by a remarkable difference in appearance. Therefore, the disputed mark is unlikely to cause confusion and dissimilar to the cited mark.”

Consequently, the Board decided to disaffirm the examiner’s rejection and grant protection of the disputed mark.

APPLE Unsuccessful in Trademark Opposition to “MACLOGIC”

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The Japan Patent Office (JPO) dismissed an opposition filed by the U.S. tech giant, Apple Inc. against trademark registration no. 6370191 for a word mark “MACLOGIC” due to dissimilarity to and less popularity of the “Mac” mark among general consumers as a source indicator of Apple’s personal computers.

[Opposition case no. 2021-900239, Gazette issued date: June 24, 2022]

MACLOGIC

The opposed mark, consisting of the word “Maclogic” in standard character, was filed in the name of MACLOGIC Co., Ltd., a Japanese company providing EC consulting services and SNS marketing.

The mark was filed with the JPO on December 24, 2020, and admitted registration on March 9, 2021, over computer programs in class 9 and computer software design, computer programming, or maintenance of computer software, providing computer programs on data networks in class 42.

Opposition by Apple Inc.

On June 21, 2021, Apple Inc. filed an opposition to “Maclogic” and contended that the opposed mark shall be canceled in contravention of Article 4(1)(x) and (xv) of the Japan Trademark Law.

Article 4(1)(xi) is a provision to refrain from registering a junior mark that is identical with, or similar to, any senior mark that has acquired a certain degree of recognition among relevant consumers.

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, to the benefit of brand owners and users.

Apple Inc. argued that the mark “Mac” has been famous as a source indicator of the opponent in relation to personal computers and their operating system. Being that relevant consumers consider the opposed mark as a composite mark composed of “Mac” and logic”, the term “Mac” per se shall be a prominent portion of the opposed mark.

If so, it is likely that relevant consumers confuse or misconceive the source of the opposed goods with Apple or any business entity systematically or economically connected with the opponent due to the high popularity of Apple’s “Mac” computers and the close resemblance between “Maclogic” and “Mac”.

Board decision

The Opposition Board found the “Mac” mark has acquired a certain degree of recognition among relevant consumers and trades in relation to personal computers and its operating system. However, to my surprise, the Board questioned if the mark has acquired a similar degree of popularity among general consumers.

Given the opponent mark has not been famous among general consumers, the Board found the opposed mark “Maclogic” in its entirety is dissimilar to the opponent mark “Mac” from visual, phonetical, and conceptual points of view.

Taking into consideration a low degree of similarity between the marks and popularity of Apple’s “Mac” mark, the Board had no reason to believe that consumers would mistakenly assume the opposed goods originate from the same source as or are associated with, the opponent when used on goods in question.

Based on the foregoing, the Board decided Apple’s opposition was groundless and dismissed the entire allegations.

Fashion magazine “ELLE” loses “RIELLE” trademark opposition in Japan

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The Japan Patent Office (JPO) dismissed an opposition filed by HACHETTE FILIPACCHI PRESSE, Société Anonyme (FR) against Japanese trademark registration no. 6378600 for wordmark “RIELLE riche” by finding dissimilarity to and less likelihood of confusion with French fashion magazine “ELLE”.

[Opposition case no. 2021-900263, Gazette issued date: May 27, 2022]

RIELLE

Opposed mark, consisting of the term “RIELLE” and the other term “riche” depicted below in small font (see below), was applied for registration on April 9, 2020, for various goods belonging to classes nos. 9, 14, 18, and 25 by SOLO PRODUCTS Co., Ltd., a Japanese company.

The JPO granted protection on April 13, 2021, and published for opposition on May 11, 2021.

Opposition by ELLE

On July 8, 2021, before the lapse of a two-month opposition period, HACHETTE FILIPACCHI PRESSE, Société Anonyme (hereinafter referred to as HFP), a French company responsible for the well-known women’s magazine ELLE, which had the largest readership of any fashion magazine in the world, with culturally specific editions published on six continents in the early 21st century, filed an opposition to “RIELLE”.

In the opposition, HFP contended that the opposed mark shall be canceled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law.

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)(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, to the benefit of the brand owner and users.

HFP argued that the opposed mark is similar to HFP’s earlier registrations for the mark “ELLE” and relevant consumers are likely to confuse or misconceive the opposed mark with HFP or any business entity systematically or economically connected with the opponent due to the high popularity of opponent’s fashion brand “ELLE” and the close resemblance between the opposed mark and “ELLE”.

Board decision

The Board admitted the “ELLE” mark has acquired a high degree of reputation and popularity among relevant consumers and traders as a source indicator of the opponent in connection with magazines, online magazines as well as fashion and daily items.

In the meantime, the Board found that a prominent portion of the opposed mark “RIELLE” is dissimilar to the “ELLE” mark from visual, phonetical, and conceptual points of view.

Taking into consideration a quite low degree of similarity between the marks, the Board had no reason to believe that relevant consumers would mistakenly assume the opposed goods originate from the same source as or are associated with, the opponent when used on goods in question. Besides, being in mind that the term “ELLE” is a French word meaning “she” in English, the opponent mark shall not be strong.

The Board considered it is unlikely that relevant consumers would conceive of the “ELLE” mark from the term “RIELLE” because of an indivisible combination between “RI” and “ELLE” in the configuration of the opposed mark.

Based on the foregoing, the Board concluded that relevant traders or consumers would not confuse or misconceive a source of the opposed mark with HFP or any entity systematically or economically connected with the opponent when used on any goods in classes 9, 14, 18, and 25 and dismissed the opposition entirely.

Canada Goose Failed Trademark Opposition Over Roundel Logo

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On May 11, 2022, the Japan Patent Office (JPO) dismissed an opposition filed by Canada Goose International AG against TM Reg no. 6367416 for a composite mark consisting of red, white, and blue roundel logo and literal elements by finding dissimilarity to and the unlikelihood of confusion with Canada Goose roundel logo.

[Opposition case no. 2021-900228]

Opposed mark

The opposed mark consists of a silhouette of an island or region in white placed right at the center of the emblem, a navy field with twelve red lines radiating from the center, and a wide rounded white frame with the text “KITAKYU GOODS” (top) and “NORTH NINE PROGRAM” (bottom) and five five-pointed-start-like devices (on each side of the frame) in red (see below left).

A Japanese business entity applied for use on seals and stickers [stationery] in class 16 and ornamental adhesive patches for jackets and brassards in class 26 with the JPO on June 29, 2020.

The JPO examiner granted protection of the opposed mark on March 3, 2021, and published for opposition on April 13, 2021.

Opposition by Canada Goose

To oppose registration within a statutory period of two months counting from the publication date, Canada Goose International AG filed an opposition against the opposed mark on June 14, 2021.

Canada Goose 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 earlier trademark registrations for the Canada Goose Roundel Logo (see above right) in relation to apparels and a close resemblance between the opposed mark and the opponent mark by using “confusingly similar” red, white, and blue logo patch.

JPO Decision

The JPO Opposition Board did not find a high degree of reputation and popularity of the Canada Goose Roundel Logo as a source indicator of the opponent among relevant consumers in Japan by stating that the opponent failed to produce evidence pertinent to the sales and advertisement of goods bearing the opponent logo in Japan even though the Canada Goose ranked fourth for a must-buy down jacket in 2021.

From the totality of the evidence, the Board had no choice but to question if the opponent mark has become famous among relevant consumers in Japan as well as Canada, and other countries.

Besides, the Board negated similarity between the marks by virtue of visual distinctions caused by (i) a land-like device depicted at the center and (ii) text and devices placed in the rounded frame. Due to the distinction, both marks give rise to a dissimilar sound. Conceptually, both marks are incomparable since either mark does not have any specific meaning.

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 Canada Goose.

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