カテゴリー: Famous mark

Montblanc Unsuccessful in Trademark Opposition

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The Japan Patent Office (JPO) dismissed a trademark opposition claimed by Montblanc-Simplo GmbH, Germany, against Japanese trademark registration no. 6240752 for “MONTBLANC PROFESSIONAL PRIDES” with a device mark, stating that the opposed mark is unlikely to cause confusion with “Montblanc” known around the world for its superior writing instruments when used on the goods in question of class 25.
[Opposition case no. 2020-900159, Gazette issued date: February 26, 2021]

MONTBLANC PROFESSIONAL PRIDES

Opposed mark, consisting of words “MONTBLANC” and “PROFESSIONAL PRIDES” combined with a three-vertical-line design (see below) , was filed on April 17, 2019, by a Japanese business entity, SUMISHO MONTBLANC Co., Ltd. for use on ‘Medical scrubs; nurse dresses; nurse overalls; nurse pants; nurse uniforms; nurse caps; clothing; nurse shoes; footwear’ and other goods in class 25, and published for opposition on April 21, 2020, after registration on March 30, 2020.

Opposition by Montblanc-Simplo GmbH

On June 18, 2020, Montblanc-Simplo GmbH filed an opposition and claimed that the opposed mark shall be cancelled in contravention of Article 4(1)(xv) of the Japan Trademark Law due to a likelihood of confusion with the wordmark “MONTBLANC” known for its superior writing instruments.

Article 4(1)(xv)

Article 4(1)(xv) prohibits registering a trademark which is likely to cause confusion with the business of other entities.

Among other things, Montblanc argued the word “MONTBLANC” shall be considered as a prominent portion of the opposed mark since it does not indivisibly combine with the rest of the elements, namely, “PROFESSIONAL PRIDES” and three-vertical-line design. If so, taking account of a remarkable degree of reputation and popularity to the Montblanc writing instruments, relevant consumers would misconceive the source of goods bearing the opposed mark with the opponent.

Board Decision

It does not surprise me that the Opposition Board admitted a remarkable degree of reputation and popularity of the “Montblanc” mark in connection with fountain pens and ball-point pens based on the facts that the opponent has made and sold writing instruments identified by the MONTBLANC trademark for more than a hundred years since 1906 and operates 121 brick-and-mortar stores in Japan as of now.

Meanwhile, the Board questioned if “Montblanc” has been widely known even among relevant consumers of the goods in class 25 since the Board was unable to find a reasonable ground to believe that medical scrubs, nurse shoes and other goods in question are closely associated with the writing instruments. In this respect, a mere fact that the opposed mark contains the word “MONTBLANC” would be insufficient to find a likelihood of confusion with the opponent when used on goods in question.

Based on the foregoing, the Board decided the opposed mark shall not be subject to cancellation in contravention of Article 4(1)(xv) and allowed registration as the status quo.

JPO rejects “AIR NECKTIE” due to similarity to NIKE “AIR”

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The Japan Patent Office (JPO) dismissed an appeal filed by a Japanese individual who sought registration for use of the wordmark “AIR NECKTIE” on neckties in class 25 due to the similarity to NIKE “AIR.”
[Appeal case no. 2020-4106, Gazette issued date: February 26, 2021.]

AIR NECKTIE

The mark in question, consisting of two English words “AIR” and “NECKTIE”, and its transliteration in a Japanese katakana character (see below), was filed for use on ‘neckties’ in class 25 with the JPO on July 6, 2018 [TM Application no. 2018-88482].

TM App no. 2018-88482

AIR

The examiner raised her objection based on Article 4(1)(xi) of the Trademark Law by citing senior registration nos. 502137 and 4327964 for the mark “AIR” owned by NIKE Innovate C.V. (see below) which cover clothing, shoes, neckties, and other goods in class 25.

TM Reg no. 502137
TM Reg no. 4327964

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

Regardless of the arguments made on a written response to the office action by the applicant, the JPO examiner entirely rejected the “AIR NECKTIE” mark based on the ground.

On March 6, 2020, the applicant filed an appeal against the refusal with the JPO and disputed that the applied mark “AIR NECKTIE” is dissimilar to the cited mark “AIR.”

JPO decision

The JPO Appeal Board referred to the tests established by the Supreme Court ruling in 2008 to determine whether it is permissible to take out respective elements of the composite mark when assessing the similarity of two marks.

“Where a mark in dispute is recognized as a composite mark consisting of two elements or more, it is not permissible to assess the similarity of marks simply by means of taking out an element of the composite mark and then comparing such element with the other mark, unless consumers or traders are likely to perceive the element as a dominant portion indicating its source of origin of goods/service, or remaining elements truly lack inherent distinctiveness as a source indicator in view of sound and concept.”

Based on the tests, the Board found that it is permissible to take out a literal element “AIR” from the applied mark and compare it with the citations by stating the following grounds:

  1. The applied mark can be seen as a composite mark consisting of ‘AIR’ and ‘NECKTIE’ because of the space between two words.
  2. “NECKTIE” is unquestionably recognized as a generic term in connection with ‘neckties’ in class 25.
  3. Relevant consumers at the sight of neckties bearing the mark “AIR NECKTIE” would conceive the term “AIR” as a prominent source indicator.
  4. “AIR NECKTIE” does not give rise to any specific meaning in its entirety.
  5. The above facts suggest that “NECKTIE” lacks inherent distinctiveness in relation to the goods in question, and it would not play the role of source indicator of the applied mark in view of sound as well as concept.

Based on the foregoing, the Board affirmed the examiner’s rejection and decided that the applied mark “AIR NECKTIE” is similar to the cited marks as a whole given the remarkable similarity in sound and concept, even if the word “NECKTIE” differentiates two marks in appearance.

“MACSELL” for use on PC value estimation service is unlikely to cause confusion with Apple “Mac”

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The Japan Patent Office (JPO) dismissed an opposition claimed by Apple Inc. against trademark registration no. 6223514 for word mark “MACSELL” on used mobile phone, Smartphone, PC and tablet computer value estimation service in class 36 by finding less likelihood of confusion with Apple “Mac” series.
 [Opposition case no. 2020-900114, Gazette issued date: Jan 29, 2021]

MACSELL

Opposed word mark “MACSELL” in standard character was filed on March 22, 2019, for the service of used mobile phone, Smartphone, PC and tablet computer value estimation, and others in class 36. Going through the substantive examination, the JPO admitted registration on February 6, 2020.

Apparently, the opposed mark is used as a tradename of used Mac and Surface recycle shop managed by the applicant.

Capture from “MACSELL” website
Capture from Google “Street View”

Apple’s Opposition

Apple Inc. argued the opposed mark “MACSELL” shall be canceled in violation of Article 4(1)(xv) of the Japan Trademark Law.

“Mac” has become famous as a source indicator of Apple’s PC by virtue of substantial use with various trademarks, e.g. “MacBook Air” and “MacBook Pro” on laptops, “iMac” and “iMac Pro” on desktops, “Mac Pro” and “Mac mini” on computer hardware.

The opposed mark, consisting of “MAC” and “SELL”, would easily give rise to a meaning of offering Apple’s PC for sale.

If so, relevant consumers at the sight of the opposed mark when used on the service in question are likely to associate and confuse the origin of the opposed mark with Apple Inc. or any entity related to the opponent.

JPO decision

The JPO Opposition Board admitted a remarkable degree of reputation and popularity of “Mac” as a source indicator of Apple Inc. and a close association between Apple’s goods and the service in question.

However, the Board found a low level of similarity between “MACSELL” and “Mac” by stating that the term “SELL” would severely cause a distinctive impression between both marks from visual, phonetical, and conceptual points of view, even if the marks share the word “MAC.”

Besides, taking into account a low level of originality of the opponent mark “Mac,” the Board questioned if relevant consumers and traders are likely to associate or connect the opposed mark with the opponent when used on the service in question.

Consequently, the Board held that relevant consumers would be unlikely to confuse the source of the opposed mark with Apple Inc. and any entity economically or systematically connected with the opponent.

Based on the foregoing, the Board decided to dismiss the opposition entirely and allowed registration of the opposed mark as status quo.

Like a Jaguar, but not JAGUAR

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The Japan Patent Office (JPO) dismissed an opposition filed by Jaguar Land Rover Ltd. against trademark registration no. 6244325 for word mark “Like a Jaguar” on cosmetics and other goods in class 3 by finding dissimilarity and unlikelihood of confusion with “JAGUAR.”
[Opposition case no. 2020-900165, Gazette issued date: December 14, 2020]

Opposed mark

An opposed mark consists of the term “Like a Jaguar” in a gothic type and its transliteration in a Japanese katakana character as below.

The mark was filed by KOSE Corporation on May 10, 2019, for use on ‘cosmetics; soaps and detergents; dentifrices; perfume and flavor materials; incense; breath-freshening preparations; false nails; false eyelashes; cosmetic cotton wool; fabric softeners for laundry use; adhesives for affixing false eyelashes; adhesive paper; cotton sticks for cosmetic purposes’ in class 3.

JPO, going through substantive examination, admitted registration and published for post-grant opposition on April 28, 2020.

Apparently, KOSE uses the mark “Like a Jaguar” to represent a lipstick color for ‘ADDICTION The Lipstick Satin’ 008.

Captured from website – everglowcosmetics.com

Opposition by Jaguar Land Rover

Jaguar Land Rover Ltd. filed a trademark opposition on June 25, 2020, before the JPO and claimed that the opposed mark shall be canceled in contravention of Article 4(1)(viii), (xi), and (xv) of the Trademark Law by citing trademark registrations for its iconic logo consisting of the image of a leaping jaguar and the word “JAGUAR” (see below), which allegedly has been used on the opponent’s products since 1935.

Article 4(1)(viii) prohibits registration of trademarks that contain the representation or name of any person, famous pseudonym, professional name or pen name of another person, or famous abbreviation thereof for the purpose of protecting the personal rights of a living individual.

Article 4(1)(xi) is a provision to prohibit registering a junior mark that is deemed 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 entity’s well-known goods or services, to the benefit of a brand owner as well as users’ benefits.

Jaguar Land Rover argued that the opposed mark has been confusingly similar to the cited mark since the opposed mark “Like a Jaguar” gives rise to a meaning of ‘Similar to Jaguar’ in its entirety. Besides, given the mark “JAGUAR” has obtained a high level of popularity among relevant consumers as a source indicator of the opponent’s motorcars, apparels, fragrances, and other licensed goods, the consumers would notice the term “Jaguar” as a dominant portion of the opposed mark and thus confuse or misconceive it with the opponent consequently.

JPO decision

The Opposition Board did not admit a high level of popularity of the cited mark by stating that the opponent failed to produce sufficient evidence in an objective manner. According to the allegation, opponents sold more than 100,000 cars around the globe in 2019. But relevant evidence was not produced to demonstrate the sales. Due to this reason, it is unknown how many cars of the opponent were sold in Japan. Likewise, there was little evidence to show a high recognition of the cited mark in relation to goods other than cars.

Provided that the mark “JAGUAR” was found insufficiently famous for the opponent cars, the Board has no reason to believe that relevant consumers would see the term “Jaguar” of the opposed mark as a dominant source indicator. If so, both marks shall be assessed in their entirety.

The opposed mark gives rise to a meaning of ‘similar to a large spotted wild cat of South America’ and a pronunciation of ‘laɪk ə dʒæɡ.wɑːr’. The term “Like a” sufficiently differentiates the opposed mark from the cited mark in appearance, sound, and concept.

Based on the foregoing, the Board found relevant traders and consumers are unlikely to confuse or associate the opposed mark with the opponent or any business entity economically or systematically connected with Jaguar Land Rover when used on the goods in question. In conclusion, the opposed mark shall remain valid as the status quo.

Ariana Grande Loses Trademark Opposition at Japan Patent Office

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The Japan Patent Office (JPO) dismissed an opposition filed by GrandAri Inc., the owner of a trademark “ARIANA GRANDE”, against TM Reg no. 6202585 for wordmark “Arianna” to be used on cosmetics by finding dissimilarity between “Arianna” and “ARIANA GRANDE.”
[Opposition case no. 2020-900051, Gazette issued date: January 29, 2021.]

Opposed mark

Arianna Co., Ltd. applied for a wordmark “Arianna” registration for use on cosmetics, soaps, and detergents of Class 3 and medical apparatus of Class 10 with the JPO on January 7, 2019 (TM Application no. 2019-000339).

The JPO admitted the registration of the opposed mark on November 29, 2019, and published for opposition on Christmas Eve of the year.

Opposition by GrandAri Inc.

On February 21, 2020, GrandAri Inc. filed an opposition before the JPO and claimed that the opposed mark shall be revocable in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law by citing International Registration no. 1260129 for wordmark “ARIANA GRANDE” and others over the goods of ‘Perfume; eau de parfum; fragranced body care preparations, namely, body lotions, body scrubs’ in Class 3.

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

GrandAri argued that relevant consumers would easily think of American pop superstar from the cited mark “ARIANA GRANDE”. Besides, because of her celebrity and popularity, she is affectionately called by her first name “ARIANA”. In view of the space between “ARIANA” and “GRANDE”, it is highly likely that the consumers would consider the term “ARIANA” as a dominant source indicator at the sight of the cited mark. It is no doubt that the opposed mark “Arianna” is confusingly similar to “ARIANA” since the mere difference of the letter ‘n’ is negligible in appearance and both terms give rise to the same pronunciation.

Article 4(1)(xv) provides that any mark shall not be registered where it is likely to cause confusion with other business entity’s well-known goods or services, to the benefit of brand owners and users’ benefits.

GrandAri argued the cited mark is used on fragrances developed by Ariana herself, which are also called “ARIANA” in the advertisement.

Given a close resemblance between the opposed mark and the “ARIANA” mark, and a certain degree of popularity of the fragrances, firstly sold in November 2015 in Japan, it is likely to cause confusion with the cited mark when the opposed mark is used on the goods in question.

JPO Decision

The JPO admitted a high level of reputation and popularity of American pop singer, “ARIANA GRANDE” in Japan. In the meantime, the JPO questioned, from the produced evidence, whether the term “ARIANA” per se plays a role of the source indicator of Ariana Grande fragrances since it is constantly adjacent to the cited mark “ARIANA GRANDE.”
Consequently, the JPO negated the famousness of the term “ARIANA” as a source indicator of the opponent’s goods.

As for the similarity of the marks, the JPO assessed that relevant consumers would see the cited mark “ARIANA GRANDE” in its entirety because she is known and called by her full name. If so, both marks are distinctively dissimilar since the opposed mark does neither give rise to a pronunciation of “ARIANA GRANDE” nor a concept of American pop superstar.

The JPO dared to assess the similarity between the opposed mark “Arianna” and “ARIANA” and held that “Arianna” is not confusingly similar to “ARIANA” from a phonetical point of view. Due to a low level of similarity of the marks, the JPO does not have any reason to believe that the opposed mark would cause confusion with the cited mark “ARIANA GRANDE” as well as “ARIANA” when used on cosmetics, soaps, and detergents of Class 3.

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

The University of Oxford Failed in Opposition Against “OXFORD” mark

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The Japan Patent Office (JPO) dismissed an opposition filed by Oxford Limited against trademark registration no. 6164941 for composite mark comprised of term “OXFORD” and a square X symbol in class 25, 35,40 by questioning whether the term per se has been known as a source indicator of the University.
[Opposition case no. 2019-900303, Gazette issued date: October 13, 2020]

Opposed mark

Japanese trademark registration no. 6164941 for composite mark comprised of term “OXFORD” and a square X symbol colored in dark blue (see below), was filed on October 26, 2018, by Oxford Corporation Co., Ltd., a Japanese business entity tailoring custom-made suits, over clothing, footwear made in England in class 25, retail or wholesale services for clothing, footwear and other goods in class 35, and dressmaking, treatment or processing of cloth, clothing or fur, custom tailoring services, and others in class 40.

JPO granted to protect the opposed mark and published for registration on August 20, 2019.

Opposition

On October 18, 2019, Oxford Limited, a wholly-owned subsidiary of the University of Oxford, filed an opposition and claimed the Opposed mark shall be canceled in contravention of Article 4(1)(vii), (viii), (xi), (xv) and (xix) of the Trademark Law by citing its own marks (see below).

Oxford Limited argued that the University of Oxford is an extremely well-known university worldwide. It has been ranked in 5th and 3rd places in tables of top international higher education institutes. Besides, Oxford Limited has promoted and licensed commercial goods bearing trademarks of the University. In Japan, various licensed goods e.g. apparel, accessories, interiors, stationery, educational toys are distributed via Ingram Co., Ltd., an authorized broker.

Under the circumstances, there is no doubt that relevant consumers at the sight of the term “OXFORD” would conceive the University when used on goods and services in question. If so, the opposed mark shall be deemed similar to and likely to cause confusion with the cited mark since the term “OXFORD” per se plays a dominant role in identifying a source.

JPO Decision

The JPO Opposition Board admitted a high degree of the reputation of “University of Oxford” among the general public. In the meantime, the Board opined that it is questionable if the term “OXFORD” has acquired a substantial degree of popularity as a source indicator of the University from the produced evidence and totality of the circumstances in view of the fact that the term is also a geographical indication, namely, the capital of the county of Oxfordshire.

Based on the foregoing, the Board found relevant consumers would recognize the term “OXFORD” of the Opposed mark just to indicate ‘the capital of the county of Oxfordshire’. Meanwhile, the cited marks give rise to a sound and concept pertinent to the University. The figurative element of both marks is sufficiently distinguishable from appearance. There was a low level of visual, aural, and conceptual similarity between the marks to the extent that relevant consumers would be unlikely to confuse the Opposed mark with the University of Oxford. Therefore, the allegations are groundless and the Opposed mark shall remain valid as the status quo.

I am not convinced with the JPO’s finding of “the term OXFORD of the Opposed mark just to indicate ‘the capital of the county of Oxfordshire”. I firmly believe the term immediately reminds us of the University rather than the name of the capital of Oxfordshire.

Mercedes-Benz StarParts vs Star-Parts

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In an administrative decision, the Japan Patent Office (JPO) held the “Mercedes-Benz Star Parts” with a car device mark is dissimilar to the “Star-Parts” word mark.
[Appeal case no. 2020-650009, Gazette issued date: November 27, 2020]

Mercedes-Benz StarParts

Daimler AG applied for registration of a composite mark consisting of “Mercedes-Benz StarParts” in two lines, a car device overlapping with checkmark icon, and a blue horizontal line in between (see below), in relation to ‘Parts for vehicles for locomotion by land, air, water or rail’ of class 12 via the Madrid Protocol (IR No. 1402813).

On December 5, 2019, the JPO examiner refused the applied mark based on Article 4(1)(xi) of the Trademark Law due to a conflict with senior trademark registration no. 5806962 for word mark “Star-Parts” in standard character which designates retail services or wholesale services for automobiles, parts, and accessories thereof in class 35.

Daimler AG filed an appeal against the refusal on March 4, 2019.

JPO Appeal Board’s decision

The Appeal Board overturned the examiner’s rejection by stating that the respective element of the applied mark shall be separably conceivable in view of a low degree of phonetic and conceptual association between figurative and literal elements. In the meantime, “StarParts” shall not be perceived as a dominant portion appealing its source of origin of goods, given “Mercedes-Benz” unquestionably plays an impressive role in identifying the source known for Germany luxury car maker. If so, it is not permissible to assess the similarity between the cited mark “Star-Parts” and the applied mark by dissecting the literal portion of “StarParts” from the applied mark.

Based on the foregoing, the Board concluded the refusal shall be disaffirmed since the examiner erroneously assessed the similarity between the marks.

I am of the view that the JPO’s decision looks unreasonable. From this viewpoint, any composite mark containing a famous or strong source indicator can be deemed dissimilar and eligible for registration.

Hermès beat Birkin Bag Imitator for Trademark Infringement

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On December 17, 2020, the Japan IP High Court upheld awards for JPY2,900,000 for damages suffered by Hermès in relation to a trademark infringement and passing-off case regarding the Birkin Bag imitations.
[Court case no. Reiwa2(Ne)10040]

Hermès Birkin Bag

HERMES INTERNATIONAL, a French luxury fashion house, has owned Japanese trademark registration no. 5438059 for the 3D shape of the “Birkin” bag in connection with handbags of class 25 since 2011 by successfully demonstrating acquired secondary meaning as a specific source indicator of Hermès’ luxury bags.

The iconic Birkin bag was firstly created for Jane Birkin in 1984. It is known for its superior craftsmanship and jaw-dropping price tag, with standard models starting around JPY1,000,000. Its annual sales figures exceed 3,000 in 1998, 8,000 in 2003, and 17,000 in 2009.

Birkin Bag Imitations

Hermes sued Kabushiki Kaisha Tia Maria at the Tokyo District Court for violating its trademark right and the unfair competition prevention law by allegedly promoting 100 or more Birkin look-alike bags (see below) in Japan with a price tag of JPY27,300 from August 2010 to February 2018.

Court decision

On June 3, 2020, the Tokyo District Court decided in favor of HERMES INTERNATIONAL and awarded damages for trademark infringement and passing-off in the amount of JPY2,900,000.
[court case no. Heisei31(wa)9997]

In the decision, the Tokyo District Court found that Hermès Birkin Bag has acquired distinctiveness and become remarkably famous as a source indicator of Hermès’ luxury bags by 2009.

Besides, the court held that defendant’s goods constitutes an infringement of the 3D shape of the “Birkin” bag trademark since both are confusingly similar in view of the following aspects:
(a) a distinctive three-lobed flap design with keyhole-shaped notches to fit around the base of the handle, (b) a dimpled triangular profile, (c) a closure which consists of two thin, horizontal straps designed to fit over the flap, with metal plates at their end that fit over a circular turn lock, (d) a padlock which fits through the center eye of the turn lock and (e), typically, a key fob affixed to a leather strap, one end of which is affixed to the bag by wrapping around the base of one end of the handle.

Screen capture of TIA MARIA’s website (http://tiamaria.zf.shopserve.jp/SHOP/V1172S.html)

The court measured damages to recover (i) defendant’s actual sales of infringing bags (JPY2,730,780) by subtracting appropriate variable cost (40% of the offered price) for JPY1,638,468, (ii) “mental suffering” caused by an infringement for JPY1,000,000, and (iii) reasonable attorney fee for JPY260,000.

The district court decision was challenged by the defendant before the High Court to set aside or vary it, however, the IP High Court dismissed the appeal entirely and sided with HERMES INTERNATIONAL.

To read a full text of the IP High Court decision (Japanese only), click here.

iPad vs MI PAD

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JPO sided with Apple Inc. in a dispute with a China-based consumer electronics company, Xiaomi that registers and uses the “MI PAD” trademark on tablet computers by finding that “MI PAD” is likely to cause confusion with “iPad”.
[Opposition case no. 2019-685002, Gazette issued date: November 27, 2020]

Xiaomi “MI PAD”

Xiaomi, a China-based electronics manufacturer headquartered in Beijing, filed a trademark application for word mark “MI PAD” via the Madrid Protocol (IR 1223839) in respect of various goods including table computers, downloadable music files, downloadable image files in class 9, and telecommunication access services and others in class 38 on August 22, 2017.

Prior to filing the application, Xiaomi newly introduced its first tablet, the Tegra K1-powered “Mi Pad” in 2014.

The JPO admitted registration of the MI PAD mark on December 7, 2018.

Opposition by Apple “iPad”

The Opponent, whose earlier ‘iPad’ trademark for its computer tablet products was also registered in Classes 9 and 38, is the U.S. tech giant, Apple Inc.

The heart of this dispute concerned the grounds of opposition raised by Apple Inc. against Xiaomi’s ‘MI PAD’ mark registration in Japan under Article 4(1)(xv) of the Japan Trademark Law.

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

The Opponent argued the “MI PAD” mark shall cause confusion with Apple “iPad” when used tablet computers and related goods and services, given a remarkable reputation of “iPad” holding a top market share (42% in 2017, 43.2% 2018) in Japan and the close resemblance between “iPad” and “MI PAD”.

JPO decision

The Opposition Board admitted a remarkable degree of reputation and popularity of opponent trademark “iPad” based on the produced evidence boasting the top market share consecutively for the past nine years in Japan. Besides, the Board found “iPad”, consisting of “i” and “Pad”, is highly unique because the term “Pad” is anything but descriptive in relation to tablet computers.

In the assessment of mark, the Board held the dissimilarity between the signs at issue, resulting from the presence of the additional letter ‘m’ at the beginning of “MI PAD”, is not sufficient to offset the high degree of visual and phonetic similarity between the two signs. It is unquestionable that the designated goods and services are closely associated with tablet computers and consumed by the same consumers.

If so, it is likely that the consumers at the sight of disputed goods and services bearing the “MI PAD” mark would confuse or misconceive its source with Apple Inc. or any entity systematically or economically connected with the opponent.

Based on the foregoing, the Board decided opposed mark shall be canceled in contravention of Article 4(1)(xv).