カテゴリー: Device mark

Hermes Victory with Invalidating Birkin Lookalike Design

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The Japan IP High Court has ruled in favor of Hermes in a dispute over the validity of Design Reg no. 1606558 by finding a likelihood of confusion with Hermes.
[Court case no. Reiwa5(Gyo-ke)10113, decided on February 19,2024]

Design Registration no. 1606558

Plaintiff, Toms and Collective Co., Ltd applied a 3D shape of bag (see below) with the JPO on August 23, 2017 (Design App no. 2017-18064). The JPO, as a result of substantive examination, granted protection of the design on May 18, 2018.

Defendant, Hermes International filed an invalidation action with the JPO on January 13, 2023 and claimed the design registration shall be invalidated in contravention of Article 5(ii) of the Japan Design Law.

Article 5(ii) provides a design that has a risk of causing confusion with goods of another person’s business may not be registered.

Hermes referred to three trademark registrations that are relevant to the 3D shape of Birkin bags (TM Reg no. 5438059) and two “H” logos (TM Reg nos. 4672965 and 5864813) in class 18. They argued that the disputed design is likely to cause confusion with Hermes when used on bags due to the famousness of the registered marks and the resemblance between the disputed design and Hermes’ marks.

Invalidation decision by JPO

On September 4, 2023, the JPO Trial Board decided to invalidate the disputed mark by stating that:

  1. As there is a remarkable gap between the disputed design and 3D shape of Birkin bags, the Board has no reason to find a likelihood of confusion with TM Reg no. 5438059.
  2. The Board questions whether the “H” logo for TM Reg no. 4672965 (H1 mark) has become famous as a source indicator of Hermes. Therefore, the disputed design would not cause confusion with H1 mark.
  3. Meanwhile, Meanwhile, the plaintiff admits that the ‘H’ logo for TM Reg no. 5864813 (H2 mark) has become famous for identifying Hermes. The padlock in the disputed design bears a resemblance to the H2 mark that has been used on the buckles of Hermes bags. As a result, relevant consumers are likely to confuse the bags with Hermes upon seeing the disputed design, particularly the padlock.

IP High Court decision

On October 11, 2023, the Plaintiff filed an appeal with the IP High Court and requested the cancellation of the invalidation decision made by JPO.

In the lawsuit, Plaintiff argued that the padlock should not be considered a prominent element of the design, as it is merely an accessory to the disputed design that represents a shape of the bag as a whole.

Screenshot taken from https://annecoquine.com/

The judge stated that any partial shape of the entire design is subject to assessment in adapting Article 5(ii). It is unrelated to the “prominent element” used to assess design similarity under Article 3(1)(iii) of the Design Law.

The judge also addressed that it is irrelevant to consider whether Plaintiff promotes bags representing the disputed design but without the padlock.

Based on the foregoing, the court dismissed all allegations and invalidated the disputed design due to a likelihood of confusion with Hermes.

Yves Saint Laurent Failed Opposition against USL monogram

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The Japan Patent Office (JPO) did not support Yves Saint Laurent in their trademark opposition against TM Reg no. 6666672 for the “USL” monogram in class 25. The JPO found no similarity or unlikelihood of confusion with the famous “YSL” monogram.
[Opposition case no. 2023-900076, decided on January 18, 2024]

Opposed mark

Marusho hotta Co., Ltd. filed a trademark application for mark consisting of the “USL” monogram and a circle device (see below) in relation to outer clothing of class 25 with the JPO on August 18, 2022.

The applicant uses the mark on knitted wear, pants and caps as a logo of “UN-USELESS” brand.

The JPO examiner, without raising any objections, granted protection of the mark on January 25, 2023. Subsequently, the mark was published for post-grant opposition on February 6, 2023.

Opposition by Yves Saint Laurent

The renowned French luxury fashion house Yves Saint Laurent has filed a trademark opposition with the JPO on April 6, 2023 and claimed cancellation of the opposed mark in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law by citing their earlier trademark registrations for the famous “YSL” monogram.

Yves Saint Laurent argued the monogram of opposed mark can be recognized a combination of three letters, “Y”, “S” and “L”. If so, the opposed mark has the same sound and spelling with the famous “YSL” monogram. Because of their close resemblance, consumers are likely to confuse a source of the goods bearing the opposed mark with Yves Saint Laurent.

JPO decision

The JPO Opposition Board had a view that relevant consumers with ordinary care would not conceive a combination of three letters, “Y”, “S” and “L” at the sight of the monogram of the opposed mark, but “U”, “S” and “L”.

Based on the finding, the Board held both marks are visually dissimilar by means of clear difference in the initial letter, font design and overall configuration. Aurally, there is a distinction between the ‘u’ and ‘y’ sounds at the beginning, and this contrast significantly affects the overall impression by taking account of a relatively short six-syllable structure. As both marks are meaningless, the concepts are incomparable.

If so, the Board has no reason to believe the opposed mark is similar to the YLS monogram and thus likely to cause confusion with Yves Saint Laurent even when used on the goods in question.

In conclusion, the Opposition Board determined that the opposed mark is not subject to Article 4(1)(xi) and (xv) and has therefore decided to dismiss the opposition entirely.

Lous Vuitton lost in a trademark battle over LV monogram

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The Japan Patent Office (JPO) dismissed a trademark opposition against TM Reg no. 6685241 in class 18 and 25 filed by LOUIS VUITTON MALLETIER due to dissimilarity to and unlikelihood of confusion with the famous “LV” monogram.
[Opposition case no. 2023-900138, decided on January 12,2024]

Opposed mark

A Japanese individual filed a mark consisting of “MARU des VINTAGES”, “KYOJI MARUYAMA”, and a monogram-like device (see below) for use on bags, leather products, clothing, footwear and other in class 18 and 25 on July 22, 2022 with the JPO.

Seemingly, the device looks like a motif made by overlapping “V” and other characters, “LI”, “LA” or “M”.

In the course of substantive examination, the JPO examiner raised his objection just to confirm if the applicant has a consent from the person named “KYOJI MARUYAMA”.

Upon confirmation, the examiner granted protection of the mark on March 10, 2023 and the JPO published it for a post-grant opposition on April 7, 2023.

Opposition by Lous Vuitton

On June 7, 2023, just before the lapse of two-month opposition period counting from the publication date, LOUIS VUITTON MALLETIER filed an opposition with the JPO and claimed that the opposed mark shall be cancelled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law by citing IR no. 1127687 for the famous “LV” monogram in classes 18, 25 and others effectively registered in Japan since April 2014.

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.

Louis Vuitton argued the monogram-like device of opposed mark is confusingly similar to the world-famous “LV” monogram from a visual point of view. If so, relevant consumers are likely to confuse a source of the goods in class 18 and 25 bearing the opposed mark with Louis Vuitton even if the opposed mark contains distinctive literal elements, “MARU des VINTAGES”.

JPO decision

The JPO admitted a high degree of reputation and popularity of the LV monogram among relevant consumers as a source indicator of Louis Vuitton. The Opposition Board considered it unreasonable to assess similarity of mark simply by comparing respective mark in its entirety. The Board found the monogram-like device shall be a prominent portion of the opposed mark from visual impression.

However, the Board negated similarity between the device and the LV monogram by stating that:

Even if the device undoubtedly contains the letter “V” in its composition, it is impossible to specify what represents as a whole. Due to the reason, there is clear distinction in configuration, overall impression between two devices. If so, the Board has a reason to believe there is no likelihood of confusion in appearance.

The LV monogram gives rise to a sound of ‘elˈviː’ and a meaning of “Louis Vuitton”. In the meantime, the opposed device would not have any specific sound and meaning. Therefore, it is obvious that two devices are dissimilar from aural and conceptual points of view.

In view of a low degree of similarity between the monogram-like device and the “LV” monogram, difference caused by distinctive literal elements “MARU des VINTAGES”, “KYOJI MARUYAMA” of the opposed mark, the Board found relevant consumers are unlikely to confuse or associate the goods in question bearing the opposed mark with Lous Vuitton.

Based on the foregoing, the Opposition Board concluded the opposition’s arguments groundless and decided to dismiss the entire opposition.

Hummel Victory in Appeal to Overcome Rejection against Chevron Position Mark

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The Japan Patent Office (JPO) Appeal Board disaffirmed the examiner’s rejection and granted registration of TM App nos. 2018-133121 and 2018-133123 for a position mark consisting of chevron devices in relation to jackets and pants (trousers) of class 25 by finding inherent distinctiveness of the position marks.
[Appeal case nos. 2022-13211, 2022-13212 decided on December 20, 2023]

Hummel Chevron Position Mark

Hummel Holding AS filed two position marks with the JPO (TM App nos. 2018-133121, 2018-133123) on October 25, 2018. TM App no. 2018-133121 consists of 15 chevron devices positioned in series from shoulder to sleeve (see below left), and designates long-sleeved jackets in class 25. TM App no. 2018-133123 consists of 21 chevron devices positioned in series from waist to hem (see below right), and designates pants and trousers in class 25.

JPO Examination

On May 25, 2022, the JPO examiner rejected both marks based on Article 3(1)(vi) of the Japan Trademark Law by stating that:

In fashion industry, there are plenty of jackets and pants with decorations aiming to enhance aesthetic effect of the goods and attract consumers.  Under the circumstances, relevant consumers at the sight of pants or jackets bearing the position mark would not see it as a source indicator, but as a pattern for decorative or functional indication.

Article 3(1)(vi) is a provision to comprehensively prohibit from registering any mark lacking inherent distinctiveness.

Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered, unless the trademark:

(vi)　is in addition to those listed in each of the preceding items, a trademark by which consumers are not able to recognize the goods or services as those pertaining to a business of a particular person.

Hummel Holding AS filed an appeal against the rejection on August 23, 2022 and argued inherent distinctiveness of the position marks.

JPO Appeal Board decision

The Appeal Board found that respective mark would be far from a common or descriptive device as a whole.

In relevant industries, competitors often provide jackets and pants bearing their brand on the same position with the Hummel Chevron mark. If so, consumers are also accustomed to distinguishing a source of the goods by means of devices depicted on the position.

Bearing in mind that the applicant has been extensively and continuously using the position marks on their jackets and pants, presumably the marks have become famous as a source indicator of the applicant among relevant consumers.

Besides, the Board could not find any evidence of a common use of the chevron device on the same position as a decorative or functional indication.

Based on the foregoing, the Board held that relevant consumers would recognize the position marks as a source indicator. If so, the examiner made an error in finding distinctiveness of respective mark. Therefore, the Board disaffirmed the examiner’s rejection and decided in favor of Hummel Holding AS consequently.

Trademark dispute over Elk design

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In an advisory opinion on trademark dispute over elk design, the Japan Patent Office (JPO) did not side with MOZ Sweden AB.
[Case no. 2023-600017, decide on December 15, 2023]

TM Reg no. 6582775

MOZ Sweden AB, an owner of Japanese trademark registration no. 6582775 for the MOZ mark with its iconic elk design (see below) in relation to electric blankets and other goods of class 11, attempted to stop distribution of wearable electric blankets (“disputed goods”) depicting 20 or 28 elk-motif silhouettes (“disputed design”) on the entire surface by NAKAMURA Co., Ltd.

Allegedly, MOZ sent a C&D letter to NAKAMURA on November 29, 2022 and demanded immediate cease and disposal of the wearable blankets based by claiming trademark infringement. NAKAMURA, for the purpose of settling the dispute, asked the JPO for an advisory opinion on April 14, 2023.

A screen capture from amazon.co.jp

Advisory Opinion Procedure

The Japan Trademark Law has provision for the Japan Patent Office to give advisory opinions about the scope of trademark right upon request under Article 28.

Proceedings of the advisory opinion system are almost the same as invalidation trials. Upon request from either party, the JPO appoints three examiners and orders the opposite party to answer the request in writing. Board seldom holds an oral hearing to investigate the case. In general, all proceedings are based on written statements and documentary evidence.

The advisory opinion by JPO does not have a binding effect, unlike the judicial decision. Accordingly, less than 10 trademark cases have been lodged with the JPO to seek the advisory opinion annually.

JPO Advisory Opinion

The JPO provided its advisory opinion to the case and decided the disputed goods would not be within the scope of right for TM Reg no. 6582775 by stating that:

  1. Unquestionably, the literal portion “MOZ” is dissimilar to the disputed design from visual, aural and conceptual points of view.
  2. Comparing the MOZ elk design with that of the disputed design, even though they share the same “elk” motif, there is a clear difference in the shape of the antlers, the outline of the face, the presence or absence of ears, eyes, and mouth. These differences give rise to a distinctive impression in the mind of viewers. Because of it, two designs are sufficiently distinguishable from appearance.
  3. Being that both “MOZ” and the elk design are respectively dissimilar to the disputed design, there is no reason to believe that the disputed goods shall be within the scope of trademark right and subject to enforcement even if both goods are identical.

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.

Audemars Piguet Unsuccessful Challenge of TM Registration for Iconic Shape of “ROYAL OAK” Timepiece

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On June 8, 2023, the Japan Patent Office (JPO) dismissed an appeal filed by Audemars Piguet Holding SA, a Swiss luxury watchmaker, and affirmed the examiner’s rejection of TM App no. 2020-20319 for a device mark representing AP’s iconic “ROYAL OAK” watch collection by finding a lack of inherent and acquired distinctiveness. [Appeal case no. 2021-013234]

Audemars Piguet “ROYAL OAK” Watch Collection

On February 26, 2020, Audemars Piguet Holding SA (AP) filed a trademark application for the shape of the flagship watch collection “ROYAL OAK” (see below) to be used on ‘watches’ in class 14 with the Japan Patent Office (JPO) [TM application no. 2020-20319].

The mark consists of a dial with tapisserie pattern and hour markers, minute track, date window, an octagonal bezel with 8 hexagonal screws, case, crown, and a lug of the famed “ROYAL OAK” watch collections.

On July 1, 2021, the JPO examiner rejected the applied mark due to a lack of inherent distinctiveness based on Articles 3(1)(iii) of the Japan Trademark Law by stating that relevant consumers would simply recognize it as a generic shape of a wristwatch, not a specific source indication. Besides, from the produced evidence, the examiner did not find the shape per se has acquired nationwide recognition as a source indicator of AP’s watches.

Appeal against the examiner’s rejection by AP

AP filed an appeal against the rejection on October 1, 2021, and alleged inherent distinctiveness as well as acquired distinctiveness of the shape in relation to watches.

AP argued the shape shall be considered inherently distinctive by virtue of a combination of three unique features, namely, (i) an octagonal bezel, (ii) 8 hexagonal screws, and (iii) tapisserie pattern on the surface of a dial. It is inappropriate for the examiner to negate the distinctiveness of the applied mark based on similar watches by third parties that imitate “ROYAL OAK” collections.

Allegedly, “ROYAL OAK” luxury watches have been promoted for sale in Japan since 1972. Annual sales exceed JPY 8 billion on average in the past six years. Each year, AP spent more than JPY400 million on advertisement and promotion in Japan. As a result of the substantial use of the shape on famous AP watches over four decades, even if the shape inherently lacks distinctiveness, it has acquired a significant role as a source indication.

JPO Appeal Board decision

In the decision, the Board held “There are plenty of wristwatches placed in the marketplace by many watchmakers that have a similar shape to the dial, bezel, case, crown, and lug of the applied mark (see below examples). Therefore, the shape, even if it does not contain hands and strap, is unlikely to indicate the origin of goods and distinguish them from competitors”. If so, the examiner’s findings are adequate and the Board did not find any error in applying Article 3(1)(iii) of the Trademark Law on the case.

Besides, the Board questioned if the shape per se has played a role in the source indication of AP’s watches regardless of admitting the presence of “ROYAL OAK” watches in the market for long years on the following grounds.

  1. Number of official stores, 11 is by no means numerous.
  2. The evidence did not suggest any transaction of wristwatches using the applied mark (namely, a watch without strip and hands)
  3. AP did not submit objective evidence to support the sales of “ROYAL OAK” watches
  4. Since AP did not make clear the market share of “ROYAL OAK” watches, it is impossible to compare them with competitors’ watches.
  5. Publications and internet articles pertinent to the “ROYAL OAK” watches always features literal elements “ROYAL OAK”, “AP” or “AUDEMARS PIGUET”.
  6. AP did not produce a market survey to demonstrate how many consumers can identify a source of the wristwatch from the applied mark.

Based on the foregoing, the Board found the applied mark has not acquired a certain degree of recognition as a source indicator of a specific entity among relevant consumers in relation to watches under Article 3(2), and decided to refuse the shape of AP’s “ROYAL OAK” watches.

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.

Unsuccessful Trademark Opposition over MONCLER Logo Outline

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On May 5, 2023, the Japan Patent Office (JPO) dismissed an opposition against the composite mark (TM Registration no. 6561093) filed by Moncler SpA, the Italian luxury fashion label, due to the dissimilarity to a device mark for the Moncler logo outline (Opposition no. 2022-900312).

Opposed mark

On December 4, 2021, COCOMi Corporation sought registration with the JPO of the composite mark consisting of the word “CONOMi” beneath the C logo and encircling outline (see below) for use on bags and pouches in Class 18 and apparel in Class 25.

The mark was registered on May 25, 2022, without receiving any refusal in the course of the substantive examination by the JPO. Thereafter, the mark was published for post-grant opposition on June 2, 2022.

Opposition by MONCLER

Italian luxury fashion brand MONCLER filed an opposition on July 28, 2022, contending that the opposed mark should be canceled for being in contravention with Article 4(1)(xi) and (xv) of the Japan Trademark Law.

MONCLER argued the opposed mark was similar to the earlier IR no. 991913 for the bell-shaped device mark representing the Moncler logo outline (see below) and was likely to cause confusion with MONCLER due to the resemblance between the opposed mark and Moncler’s famous mark, and the close relatedness of the goods in question with MONCLER’s business.

JPO decision

The JPO Opposition Board considered the relevant consumers would not see the encircling outline as a prominent portion of the opposed mark by taking account of the coined word “COCOMi” and the entire visual configuration of the mark.

In so far as the encircling outline of the opposed mark perse would not play a role in identifying the source of goods in question, regardless of the resemblance between the encircling outline and the cited mark, the Board has a reason to believe both marks are dissimilar from visual, aural and conceptual points of view in its entirety.

Given the low level of similarity with the cited mark or the Moncler emblem, the Board had no reason to find that there would be a likelihood of confusion where the opposed mark is used on the goods in question, even though the Moncler emblem has acquired a certain degree of reputation and popularity among relevant consumers in Japan.

Moncler emblem

Consequently, the JPO did not side with MONCLER and decided to dismiss the opposition entirely.

Harvey Ball wins trademark opposition over the double-eyed smiley face

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In a recent administrative decision, the Japan Patent Office (JPO) sided with Harvey Ball Smile Limited in opposition against TM Reg no. 6524017 due to a conflict with the Double-Eyed Smiley Face mark.

[Opposition case no. 2022-900202 decided on March 3, 2023]

Opposed mark

Capital Co., Ltd. filed a device mark (see below) for use on various goods including personal ornament, bags, pouches, and clothing in classes 14, 16, 18, and 25 with the JPO on September 30, 2021.

Apparently, the applicant promotes T-shirts, shoes, and bags bearing the opposed mark via the internet.

A screen capture of https://www.kapital-webshop.jp/category/MENSALL/EK1426.html

The JPO granted protection of the mark on March 7, 2022, and published it for opposition on March 15, 2022.

Opposition by Harvey Ball Smile Limited

Harvey Ball Limited filed an opposition against May 16, 2022, and claimed cancellation of the opposed mark in contravention of Article 4(1)(xi) of the Japan Trademark Law by citing earlier TM Reg nos. 6479744, 6504979, 6504980, 6504981, 6504982, and 6504983 for the Double-eyed Smiley Face mark (see below).

Article 4(1)(xi) is a provision to prohibit registration of a junior mark that is identical with, or similar to, any senior registered mark.

The applicant argued against the opposition and alleged relevant consumers can distinguish two marks because of distinctive visual impressions arising from a different shape of the mouth.

JPO decision

The JPO Opposition Board found the opposed mark is similar to the Double-eyed Smiley Face mark by stating that:

“Comparing the opposed mark and the citations, from appearance, both marks represent a face in yellow with two sets of eyes. Although there are differences in details (such as the size of the dots, the thickness of the arc lines, the degree of opening, and the presence or absence of single lines at both ends of the arc lines) and facial expressions, these differences have less impact on the overall impression. If so, both marks have similar visual impressions as a whole.

Besides, since respective mark does not give rise to any specific sound and meaning, they are not comparable from phonetical and conceptual points of view.

Therefore, the Board has a reason to believe that both marks are likely to cause confusion when used on the personal ornament, bags, and pouches, clothing in classes 14, 18, and 25 that are deemed similar to the goods designated under the citations.”

Based on the foregoing, the JPO decided to partially cancel the opposed mark in relation to personal ornament, bags, and pouches, clothing in classes 14, 18, and 25 in contravention of Article 4(1)(xi).