IP High Court Rejected TM Registration of AP “ROYAL OAK” Watch Design

On March 28, 2024, the Japan IP High Court decided to dismiss the appeal filed by Audemars Piguet Holding SA, a Swiss luxury watchmaker, against the JPO’s decision (Appeal No. 2021-013234) to reject TM Application No. 2020-20319 for the device mark representing AP’s iconic “ROYAL OAK” watch collection for lack of both inherent and acquired distinctiveness.
[Court case no. Reiwa5(Gyo-ke)10119]


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, a crown, and a lug of the famed “ROYAL OAK” watch collections.


JPO Refusal

On June 8, 2023, the JPO Appeal Board affirmed the examiner’s rejection and decided to refuse registration of 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 since many watchmakers have supplied with similar shape to the dial, bezel, case, crown, and lug of the applied mark (see below examples).

Besides, the Board found the produced evidence is insufficient to determine whether the shape per se has acquired nationwide recognition as a source indicator of AP’s watches.

Audemars Piguet Holding SA filed a lawsuit with the Japan IP High Court on October 20, 2023, and disputed inherent and acquired distinctiveness of the applied mark.


IP High Court ruling

  • Inherent distinctiveness: Article 3(1)(iii)

In the decision, the judge said “There is no particular circumstance in which the shape represented by the applied mark is taken novel in comparison with the shapes of other wristwatches. If so, it is considered within the range of shapes normally required to achieve basic function of the goods. Even supposing that the shape is unique as a whole, the shape of each component is made in a form suitable for use as a wristwatch, and selected from the viewpoint to achieve the function of the goods. Therefore, the applied mark lacks distinctiveness since it remains within the scope of expected selection of the shape for functional reasons of a wristwatch.”

AP claimed the JPO finding is inadequate because none of competitors watches have the same combination of three unique features, namely, (i) an octagonal bezel, (ii) 8 hexagonal screws, and (iii) tapisserie pattern on the surface of a dial. Visual similarity in one or two components are insufficient to deny inherent distinctiveness of the applied mark.

However, the court did not agree with this allegation and said “It is sufficient to assess whether each shape of components is distinctive as part of the shape of wristwatch”.

  • Acquired distinctiveness: Article 3(2)

AP argued acquired distinctiveness of the applied mark as a result of substantial use since 1972. Allegedly, annual sales of the “ROYAL OAK” luxury watches 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.

In this respect, the court pointed out the “ROYAL OAK” watches have some collections that do not represent three unique features, such as, “Royal Oak Offshore” and “Royal Oak Concept” (see below). If so, the annual sales and expenditures on advertisement and promotion would not all attribute to watches representing the applied mark.

Besides, AP has not produced the result of market research to demonstrate a certain degree of recognition of the applied mark. Accordingly, the court has no reason to believe the applied mark per se has played a role in identifying the source of famous luxury watch, Audemas Piguet.

Based on the foregoing, the court determined that the JPO did not err in its findings and that the application of Article 3(1)(iii) and 3(2) was appropriate. As a result, the court decided to dismiss the appeal in its entirely.

Japan IP High Court said No to registering the color of Hermes packaging.

The Japan IP High Court ruled to dismiss Herme’s appeal against the JPO decision that rejected Hermes packaging color due to a lack of inherent and acquired distinctiveness.
[Court case no. Reiwa5 (Gyo-ke) 10095, ruled on March 11, 2024]


Color mark of Hermes box

On August 23, 2023, HERMES INTERNARTIONAL filed an appeal with the Japan IP High Court to seek the cancellation of the JPO refusal decision (Appeal case no. 2021-13743) that denied registration of TM App no. 2018-133223 for a color mark consisting of orange on the entire box and brown on the upper outline of the box. (see below)

The application designates various goods in classes 3, 14, 16, 18, and retail services for the goods in class 35.


Second Market Research

HERMES conducted a second market research study in August 2023 to demonstrate acquired distinctiveness of its packaging color. The study targeted men and women in their 30s to 50s residing in nine prefectures who expressed interest in bags, accessories, watches, cosmetics, or perfume and had purchased either of these items within the past six months.

According to the second research report, 39.2% of respondents (2,060 in total) answered Hermes when shown three Hermes boxes in different shapes. 44.4% chose Hermes from the ten options (It is notable that 27.2% of respondents selected “Louis Vuitton” as their answer).


IP High Court decision

In their ruling, the judges pointed out the applied mark is classified into a mark consisting of colors, but from descriptions of mark, it is considered a two-color mark combined with a three-dimensional shape (a box).

The judges also noted the submitted evidence did not demonstrate the actual use of the applied mark in relation to perfumery of class 3 and paper boxes, paper bags, paper packages and wrapping papers of class 16, nor did it substantiate the use of the mark in relation to retail services for these goods in class 35.

The judge recognized that the “Hermes” brand has gained significant recognition in Japan, and its degree of renown is considered to be one of the most prominent among all fashion brands. From the submitted advertisement and publications, the applied mark evidently has been used as a symbolic color to indicate “Hermes” in a marketing tactic designed to enhance brand value. It is clear that the Hermes box is a well-known and important identifier for consumers interested in or who have purchased luxury fashion items.

The issue is whether relevant consumers can identify Hermes from the colors per se on Hermes box, without the word “Hermes” and the horse and carriage emblem. In this respect, the court said it useful to review brand recognition research especially in a case for color mark. The judges said the result of two market researches are sufficient (Recognition rate: approximately 40%) to admit acquired distinctiveness in general. However, two researches do not target general consumers by excluding age under 29 and over 60, and limiting their incomes JPY10,000,000 and above (1st research) or those who expressed interest in bags, accessories, watches, cosmetics, or perfume and had purchased either of these items within the past six months (2nd research).

Given the applied mark covers various goods that are regularly consumed by the general public, the researches with such limitations are inadequate and insufficient as evidence to demonstrate acquired distinctiveness of the color mark in question.

Therefore, the court has a reason to believe the JPO did not make an error in denying inherent and acquired distinctiveness of the applied mark and rejecting it based on Article 3(1)(iii) and 3(2) of the Trademark Law.

Based on the foregoing, the court decided to dismiss the entire appeal by Hermes.

Hermes Victory with Invalidating Birkin Lookalike Design

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.

Trademark dispute: “CLUB MOET” vs “Moët & Chandon”

The Japan Patent Office (JPO) cancelled trademark registration no 6687666 due to a likelihood of confusion with ‘Moët’, which is known as an abbreviation for the world-famous ‘Moët & Chandon’ champagne.
[Opposition case no. 2023-900130, decided on February 29, 2024]


CLUB MOET

Opposed mark, consisting of words “CLUB” and “MOET” combined with a rose design (see below), was filed on June 27, 2021 for use on restaurant services in class 43 by a Japanese individual.

The JPO examiner rejected the mark due to a likelihood of confusion with famous mark “Moët” in connection with alcoholic beverages based on Article 4(1)(xv) of the Trademark Law on January 14, 2022. To contest the decision, the applicant filed an appeal with the JPO and claimed to cancel the examiner’s rejection.

On March 16, 2023, the JPO Appeal Board disaffirmed the examiner’s rejection and found that the mark would not contain the term “MOET” visually because of a rose design in between “M” and “ET”. If so, relevant consumers are unlikely to associate the mark with “Moët & Chandon” even if the term “MOET” has acquired a certain degree of recognition as an abbreviation of world-famous “Moët & Chandon” champaign. [Appeal case no. 2022-5881]

Accordingly, the Board granted protection of the mark and published for a post-grant opposition on April 17, 2023.


MHCS – OPPOSITION

On May 31, 2023, MHCS, the producer of the famous Moët & Chandon champagne, sought cancellation of the opposed mark in contravention of the same article, and claimed the opposed mark is likely to cause confusion with “Moët & Chandon” when used on restaurant service in class 43.

MHCS argued that the combination of literal elements and the rose design can be considered to represent the term ‘MOET’, as the rose design resembles a stylised letter ‘O’. As ‘CLUB’ lacks distinctive character in relation to restaurant service, the term ‘MOET’ should be considered a significant portion as a source indicator.

If so, relevant consumers are likely to associate or misconnect the restaurant using the opposed mark with “Moët & Chandon” due to the high degree of reputation and popularity of the mark “MOET” as an abbreviation of the world-famous champaign, as well as the close resemblance between the opposed mark and “MOET”.


JPO decision

The JPO Opposition Board ruled in favor of MHCS, stating that both ‘Moët & Chandon’ and its abbreviation ‘Moët’ have gained significant recognition as a leading champagne brand distributed by MHCS.

The Board determined that the rose design’s outline is almost circular and can be substituted with the letter ‘O’. Therefore, the combination of the literal elements and the rose design will be identified as the term ‘MOET’ in its entirety.

The difference between ‘MOET’ and ‘Moët’ is insignificant. The term ‘CLUB’ lacks distinctiveness in relation to the service in question. Therefore, the Board has reason to find a high degree of similarity between the opposed mark and ‘Moët’.

Besides, there is a certain degree of association between champagne and restaurant services.

Based on the foregoing, the Opposition Board decided that found relevant consumers are likely to confuse a source of restaurant using the opposed mark with MHCS or any business entity that is economically or systematically connected with the opponent. As a result, the opposed mark was cancelled in contravention of Article 4(1)(xv).

RIMOWA Unsuccessful in Trademark Opposition

On February 26, 2024, the Japan Patent Office (JPO) dismissed an opposition filed by Rimowa GmbH against TM Reg no. 6701836 for wordmark “RIMOWA” written in Japanese character in class 38 and 42 by finding dissimilarity to earlier IR no. 1303010 “Rimowa Electronic Tag”.
[Opposition case no. 2023-900179]


Opposed mark

Opposed mark, consisting of three Japanese hiragana character “りもわ” that corresponds to the Japanese transliteration of “RIMOWA”, was flied with the JPO by Computer Engineering & Consulting Ltd. (CEC) a Japanese company, for use on ‘Telecommunication; Providing online forums; Communications by mobile phones; Streaming of data; Electronic bulletin board services [telecommunications services]; Video-on-demand transmission; Videoconferencing services’ in class 38 and ‘Providing computer programs on data networks; Software as a service [SaaS]; Platform as a service [PaaS]; Providing virtual computer systems through cloud computing; Providing computer software for virtual reality’ in class 42 on Nov 21, 2022 (TM App no. 2022-133281).

The JPO examiner issued an office action based on Article 4(1)(xi) of the Japan Trademark Law by citing IR no. 1452467 “RIMOWA” (cl. 9) owned by Rimowa GmbH.

As the applicant deleted the services in class 42 that conflict with the goods in class 9 designated under IR no. 1452467, the examiner granted protection of the mark on May 12, 2023.

The applicant uses the mark in relation to virtual office services. If this is the case, the mark indicates an abbreviation of ‘Remote working’.


Opposition by RIMOWA

Rimowa GmbH, the renowned German luxury luggage-maker, filed an opposition with the JPO on August 7, 2023 and claimed cancellation of the opposed mark in contravention of Article 4(1)(xi) by citing IR no. 1303010 for wordmark “Rimowa Electronic Tag” that covers services in class 38 and 42.

Rimowa argued that the term ‘Rimowa’ is well-known among relevant consumers as a high-end luggage brand and should play a significant role in identifying the source of services in classes 38 and 42. This is because the term ‘Electronic Tag’ is less distinctive in relation to these services. Therefore, the opposed mark may be confusingly similar to the cited mark from a visual point of view.


JPO decision

The JPO Opposition Board found the opposed mark is not an ordinary word in dictionaries and has a sound of “Rimowa” but does not give rise to any specific meaning.

Regarding the cited mark, the Board determined that it should be evaluated as a whole, rather than based on the individual words ‘Electronic Tag’. This approach considers the tight combination of all the letters in the cited mark.

If so, the Board stated that there is no reason to believe that the term ‘Rimowa’ is a significant part of the cited mark as a source indicator.

When comparing the opposed mark to the cited mark in terms of appearance, it is easy to distinguish between them due to the obvious differences in characters (hiragana and alphabets) and the number of letters. In terms of pronunciation, the term ‘Electronic Tag’ makes a clear difference in the overall sound of two marks. Therefore, it is easily distinguishable when pronounced, even though the initial sound is the same. Furthermore, in terms of concept, neither of the two marks produces a specific meaning, making them incomparable. Therefore, considering these findings and circumstances, there is no risk of confusion regarding the origin, even when they are used for the same or similar services.

Based on the above, the Board found that both marks were dissimilar and decided to dismiss all allegations.

CHANEL Lost in Trademark opposition against “COCOBABY”

The Japan Patent Office (JPO) did not side with CHANEL in an opposition against TM Reg no. 6650252 for wordmark “COCOBABY” in class 25 by finding dissimilarity of mark between “COCOBABY” and “COCO”.
[Opposition case no. 2023-900041, decided on February 9, 2024]


COCOBABY

On September 22, 2022, a Japanese individual applied to register the word mark ‘COCOBABY’ for use in relation to apparel and toddler clothes of class 25 and immediately after the filing, the applicant requested an accelerated examination based on the fact that he operates the online shop “COCOBABY”, which offers a wide range of clothes for toddlers and babies.

A screen capture from https://www.rakuten.co.jp/princessdream/

Accordingly, the JPO examiner granted protection on November 30, 2022 without raising her objection due to a conflict with Chanel’s COCO mark.


Opposition by CHANEL

On February 14, 2023, Chanel SARL filed an opposition against TM Reg no. 6650252 for the mark “COCOBABY”, and claimed cancellation of the mark in contravention of Article 4(1)(xi), (xv) and (xix) of the Japan Trademark Law by citing earlier trademark registrations for their historical mark “COCO”.

Chanel argued that the term “BABY” was descriptive in relation to the designated goods, namely children’s clothing in class 25. In addition, the mark “COCO” has become famous as an indication of origin for Chanel’s perfumes and cosmetics. In those circumstances, the relevant consumers would consider the term “COCO” to be a prominent part of the opposed mark and would be likely to confuse the source of the clothes bearing the opposed mark with Chanel and an entity economically or systematically liked to Chanel.


JPO decision

The JPO Opposition Board accepted that the mark “COCO” has been well known for Chanel’s perfume. However, the Board questioned whether, on the basis of the evidence submitted, the mark has become also well known among consumers of other goods.

In addition, the Board found that the opposed mark had to be assessed as a whole, even in relation to children’s clothing, from a visual point of view. The mark “COCOBABY”, taken as a whole, does not have a specific meaning.

If so, the opposed mark is not conceptually comparable to the mark “COCO”, but is visually and aurally distinguishable from it.

In view of the low degree of similarity between the marks and the insufficient evidence of the reputation of the mark “COCO” among consumers of the goods in question, the Board has no reason to believe that the consumers are unlikely to confuse the source of the clothing and children’s clothing bearing the opposed mark with Chanel.

Based on the foregoing, the Board dismissed the opposition entirely and decided to maintain the opposed mark as the status quo.

Calvin Klein vs Cailin Kailun

The Japan Patent Office (JPO) dismissed an opposition against TM Reg no. 6686442 for wordmark “Cailin Kailun” in class 25 claimed by Calvin Klein Trademark Trust who argued a likelihood of confusion with “Calvin Klein”.
[Opposition case no. 2023-900108, Gazette issued date: January 26, 2024]


Cailin Kailun

A Chinese individual applied for registration of the wordmark “Cailin Kailun” in standard characters for use on coats, suits, trousers, T-shirts, dresses, socks, stockings, underwear and other clothing, and sports shoes in class 25 on September 1, 2022.

Apparently, men’s underwear bearing the mark is sold online.

The JPO examiner granted protection of the mark on January 30, 2023.


Opposition by Calvin Klein

On May 15, 2023 within two-month statutory deadline starting from the issued date of TM gazette on April 12, 2023, Calvin Klein Trademark Trust filed an opposition against the Cailin Kailun mark and claimed cancellation in contravention of Article 4(1)(vii) and (xv) of the Trademark Law.

Calvin Klein argued that the opposed mark “Cailin Kailun” is confusingly similar to a global fashion brand “Calvin Klein” in appearance and sound. In view of a high degree of distinctiveness and popularity of the “Calvin Klein” mark and close relatedness between the goods in question and the business lineup of Calvin Klein, relevant consumers with an ordinary care would confuse a source of the goods in question bearing the mark “Cailin Kailun” with Calvin Klein even if both marks are not similar in concept.


JPO decision

The JPO Opposition Board admitted the cited mark “Calvin Klein” has been well-known among consumers as a source indicator of the claimant’s business in relation to clothing.

In the meantime, the Board denied similarity of the marks by assessing clear distinctions in appearance, sound and meaning.

Comparing both marks, it is obvious that they start with the same spelling of ‘Ca’ at the first word, and ‘K’ at the second word, and end with ‘n’ at both words. However, because of clear distinction at the other letters, they are easily distinguishable in appearance.

Although both marks have the same sounds at the beginning, in the fourth and last, due to severe difference in other five sounds, they are audibly distinguishable.

There is no similarity in concept because the opposed mark has no meaning at all. Meanwhile, the cited mark gives rise to a meaning of “famous brand called Calvin Klein”.

Given a low degree of similarity between the marks, the Board did not find any reason to believe that relevant consumers would associate or connect the goods bearing the opposed mark with “Calvin Klein” even though the goods in question is highly related to the business lineup of Calvin Klein.

Based on the foregoing, the Board found the opposed mark shall not be cancelled in contravention of Article (1)(vii) and (xv), and decided to dismiss the opposition entirely.

Trademark Dispute: Chateau Mouton Rothschild vs MOUTON

The Japan Patent Office (JPO) declared invalidation of TM Reg no. 6090508 for wordmark “MOUTON” in classes 35 and 43 due to a likelihood of confusion with famous mark “Mouton” as a source indicator of Chateau Mouton Rothschild, one of the most famous wine estates in the world.
[Invalidation case no. 2022-890079, decided on January 22, 2024]



TM Reg no. 6090508 “MOUTON”

WALTZ Co., Ltd. filed a trademark application for wordmark “MOUTON” in relation to retail or wholesale services of various foods and drinks (not including wine) of class 35 and restaurant services of class 43 with the JPO on November 17, 2017. The applicant operates a bar and restaurant named “MOUTON” in Shinjuku, Tokyo.

A screen capture from https://www.pub-mouton.com/

The mark was granted protection on September 5, 2018, published for a post-grant opposition on November 13, 2018.


Unsuccessful Opposition

Baron Philippe de Rothschild S.A. filed an opposition against TM Reg no. 6090508 “MOUTON” on January 15, 2019 and claimed cancellation of the mark in contravention of Article 4(1)(vii) and (xv) of the Trademark Law. However, the JPO Opposition Board decided to dismiss the opposition on September 6, 2019 (Opposition case no. 2019-900012).

Subsequently, to challenge the validity of the trademark registration for the MOUTON mark, Baron Philippe de Rothschild S.A. filed an invalidation with the JPO on October 7, 2022, a month before the five-year statute of limitations from the registration date was set to lapse. The claimant argued the disputed mark is identical with a well-known abbreviation of the world-famous wine “Chateau Mouton Rothschild”. Besides, in view of close association between wine and the services in question, relevant consumers and traders would confuse a source of the services bearing the mark “MOUTON” with the claimant. If so, the disputed mark shall be invalidated in contravention of Article 4(1)(xv) of the Trademark Law.

WALTZ did not respond to the arguments during the invalidation trial procedure.


JPO Invalidation decision

On January 22, 2024, the JPO Trial Board decided to annul TM Reg no. 6090508 “MOUTON” in relation to all of the retail or wholesale services designated in class 35 and restaurant services in class 43 by stating that:

From the facts revealed by the produced evidence, the Board has a reason to believe that the term “Mouton” has acquired a substantial degree of reputation and popularity among relevant consumers and traders to indicate the world-famous wine and its abbreviation.

Undoubtedly, the disputed mark “MOUTON” shall be similar to the mark “Chateau Mouton Rothschild” from phonetical and conceptual points of view even if there is a distinction in appearance between the marks.

There is a close association between wine and retail or wholesale services of various foods and drinks as well as restaurant services.

If so, relevant consumers are likely to confuse a source of the services bearing the disputed mark with the claimant or other business entity systematically or economically connected with them.

Based on the foregoing, the Trial Board found the disputed mark shall be invalidated in contravention of Article 4(1)(xv) of the Trademark Law.

Yves Saint Laurent Failed Opposition against USL monogram

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

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.