Likelihood of confusion – ページ 10

Chanel isn’t Gonna Getcha

Posted on2021年1月31日2022年1月3日1 Comment

Chanel lost in its attempt to block Japanese Trademark Registration No. 6160592 for a composite mark consisting of words “GONNA GETCHA” combined with a design made of two inverted and interlocked “G”.
[Opposition case no. 2019-900284, Gazette issued date: December 25, 2020]

Opposed mark

The opposed mark consists of the words “GONNA GETCHA” combined with a design made of two inverted and interlocked “G” (see below). Applicant, a Japanese company, M-Paulownia Co., Ltd., filed the opposed mark for use on ‘key rings; personal ornaments; shoe ornaments of precious metal; clocks and watches; unwrought and semi-wrought precious stones and their imitations’ under Class 14 on June 6, 2018.

The mark was published for post-granted opposition on August 6, 2019, without confronting any office action from the JPO examiner.

Opposition by CHANEL

On October 2, 2019, CHANEL SARL filed an Opposition and argued the opposed mark shall be canceled in contravention of Article 4(1)(xi), (xv), and (xix) of the Trademark Law on the ground that:

The opposed mark is similar to the prestigious Chanel’s monogram made of two inverted “c” displayed as an ellipse in its central point (see below) for goods in class 14 under Registration No. 4864605 and others.
Given the remarkable degree of popularity and reputation of Chanel’s monogram, relevant consumers with an ordinary care are likely to confuse a source of the goods bearing the opposed with CHANEL.
Applicant must have applied the opposed mark, confusingly similar to Chanel’s monogram with an unfair intention to take advantage of the reputation and goodwill associated with Chanel’s famous trademark.

JPO Decision

The JPO Opposition Board admitted that Chanel’s monogram has acquired a high degree of reputation among relevant consumers in Japan based on substantial use of the monogram on various fashion items including jewelry, accessories, and watches under Class 14. Allegedly, CHANEL spent more than 5 billion JP-Yen on advertising in Japan each year since 2014. Annual sales revenue exceeds 50 billion JP-Yen. Jewelry accounts for 3 billion JP-Yen of the revenue.

In the meantime, the JPO denied the similarity between the opposed mark and the monogram. From appearance, the differences arising from ‘C’ or ‘G’ and “GONNA GETCHA” would give rise to a distinctive impression. Phonetically and conceptually, it is obvious that both marks are sufficiently distinguishable by virtues of the differences.

Given a low degree of similarity between the marks, the Board held the opposed mark is unlikely to cause confusion when used on goods under class 14.

Assuming that both marks are dissimilar, the Board was unable to find any reasonable ground to believe that the applicant aimed for free-riding on the goodwill of Chanel’s monogram.

Based on the foregoing, the JPO dismissed the entire allegations of CHANEL SARL and allowed the opposed mark to register as the status quo.

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

Posted on2021年1月10日2022年1月3日

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.

iPad vs MI PAD

Posted on2020年12月20日2022年1月3日

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).

Google’s Trademark Battle over Street View

Posted on2020年11月8日2022年1月3日

The Opposition Board of the Japan Patent Office (JPO) sided with Google LLC and decided to cancel trademark registration no. 6086044 for word mark “STREET VIEW MODEL (SVM)” due to a likelihood of confusion with Google’s “STREET VIEW”.
[Opposition case no. 2018-900391, Gazette issued on September 25, 2020]

Opposed mark

A Japanese individual filed a trademark application for word mark “STREET VIEW MODEL (SVM)” written in Japanese Katakana character (see below) by designating the service of ‘providing online non-downloadable videos and photographs’ in class 41 with the JPO on December 27, 2017.

The opposed mark was registered and published for opposition on October 30, 2018.

Google “Street View”

On December 28, 2018, Google LLC filed an opposition against “STREET VIEW MODEL (SVM)” and argued that the opposed mark shall be canceled in contravention of Article 4(1)(xv) and (xix) of the Trademark Law based on its owned senior registration for the STREET VIEW mark (IR no. 12138361) in class 9 and 42 because both marks resemble and relevant consumers would confuse or associate the opposed mark, containing “STREET VIEW” famous for the service featured on Google map enabling to provide panoramic 360-degree views from the designated street, with the opponent when used on the designated service in question.

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

Board Decision

The Board did not question the famousness of the STREET VIEW mark as a source indicator of Google’s service for providing digital images on a map at the time of both initial filing and registration of the opposed mark.

In the assessment of similarity between the marks, the Board found that the average consumers would likely pay considerable attention to the term “STREET VIEW” of the opposed mark because of its fame. If so, a high degree of similarity exists between the opposed mark and “STREET VIEW”.

It is true that the “STREET VIEW” mark is anything but a fancy or invented word since it consists of two common English words that the relevant consumers are familiar with, however, given the designated service in question and Google “STREET VIEW” are related to providing digital images via the internet, these are supposedly purchased or consumed by the same consumers. If so, the Board considers the opponent business, and the service in question are closely associated.

Based on the foregoing, the Board concluded that relevant traders and consumers are likely to confuse or misconceive a source of the opposed mark when used in relation to the service (class 41) with Google or any entity systematically or economically connected with the opponent and thus decided cancellation in contravention of Article 4(1)(xv).

LEGO Triumphs In ‘CATTYLEGO’ Trademark Battle at JPO

Posted on2020年10月25日2022年1月3日

LEGO eventually scored a win over PETSWEET CO., Ltd., a Taiwanese company, in a trademark dispute against ‘CATTYLEGO’ thanks to the JPO’s finding a likelihood of confusion with “LEGO” famous for toy brick.
[Invalidation case no. 2018-890084, Gazette issued date: September 25, 2020]

CATTY LEGO

PETSWEEY Co. (派斯威特國際有限公司), Ltd., a Taiwanese company, applied for trademark registration in Japan for the mark consisting of a word “CATTYLEGO” and rectangle device (see below) on June 15, 2016, over toy boxes and chests, dog kennels, fodder racks, pet cushions, pet house in class 20 and toys for pets in class 28.

The Japan Patent Office (JPO) registered the mark on December 2, 2016 (TM Registration no. 5902786) and published for opposition on January 10, 2017.

LEGO

LEGO Juris A/S, the world’s largest Danish toy manufacturer, filed an opposition against the mark ‘CATTYLEGO’ on the final day of a two-month duration for the opposition, and argued it shall be canceled in contravention of Article 4(1)(viii), (xi), (xv) and (xix) of the Japan Trademark Law, but in vain. Click here to read more about the opposition.

Subsequently, LEGO lodged a trademark invalidation trial with the JPO on October 31, 2018, based on the same grounds.

JPO Decision

The Invalidation Board did not question a high degree of reputation and popularity of the LEGO trademark as a source indicator of toy brick by finding consecutive promotion of LEGO bricks in Japan for more than five decades, annual sales amounting to over 8 billion yen (Approx. USD 74 million ), its remarkable share in the sector of kids toys, and almost half of preschools in Japan have adopted the bricks for educational purpose.

Given the remarkable reputation of the LEGO mark, the Board held relevant consumers/traders at the sight of the ‘CATTYLEGO’ mark would inevitably conceive the term “LEGO” as a dominant portion. If so, both marks may give rise to a similar sound and concept pertinent to “LEGO”.

The Board also affirmed toy brick and the goods in question are closely associated in view of suppliers, commercial channels, usage, consumers.

Consequently, by taking into consideration the totality of the circumstances, the Board found relevant consumers with an ordinary care would confuse or associate the goods in question bearing the ‘CATTYLEGO’ mark with LEGO or any entity systematically or economically connected with LEGO, and thus the mark shall be invalidated based on Article 4(1)(xv) of the trademark law.

Bentley Victorious in Trademark Opposition over Winged B logo

Posted on2020年10月18日2022年1月3日

The Opposition Board of the Japan Patent Office (JPO) decided in favor of Bentley Motors Limited, the definitive British car company, in their attempt to oppose the registration of the trademark consisting of a copied winged B logo and “BENTLEY LIFE” in connection with educational services and others of class 41.
[Opposition case no. 2018-900160, Gazette issued on September 25, 2020]

Opposed mark

Opposed mark (TM Registration no. 6031879), consisting of a copied winged B logo and a word “BENTLEY LIFE” (see below), was applied for registration on August 3, 2017, for ‘health club services [health and fitness training]; club services [entertainment or education]; teaching and educational services; organization of competitions [education or entertainment]; presentation of movies; arranging and conducting of workshops [training]’ in class 41 by UK Arthur Brand Management Company Limited.

The mark was published for registration on April 24, 2018, without confronting any office action from the JPO examiner.

Opposition by Bentley Motors Limited

On June 22, 2018, before the lapse of a two-months opposition period, Bentley Motors Company Limited filed an opposition before the JPO and claimed that the opposed mark shall be canceled in contravention of Article 4(1)(vii), (xv) and (xix) of the Japan Trademark Law by citing trademark registration for its iconic Winged B logo and the BENTLEY wordmark (see below) in class 12, which the opponent allegedly has used on luxury cars since the 1920s.

Article 4(1)(vii) prohibits any mark likely to cause damage to public order or morality from registration.

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 brand owner and users’ benefits.

Article 4(1)(xix) prohibits registering a trademark that is identical with, or similar to, other entity’s famous mark, if such trademark is aimed for unfair purposes, e.g. gaining unfair profits, or causing damage to the entity.

Bentley argued that both the winged B logo and its tradename has unquestionably acquired a high degree of reputation and popularity as a source indicator of the opponent cars. It is evident that the figurative element of the opposed mark is almost identical with a renowned winged B logo and the literal element of the opposed mark contains “BENTLEY”. If so, the opposed mark resembles the cited marks closely.

Bentley also strongly alleged that the applicant must have acquainted with the cited mark and filed the opposed mark with a fraudulent intention to deceive or free-ride.

JPO Decision

The JPO Opposition Board admitted Bentley’s winged B logo, as well as its tradename, has become famous among relevant traders in the car business and consumers interested in automobiles as a result of continuous use since the 1920s.

Given the close resemblance between the opposed mark and the cited marks, even if the services in question are remotely associated with cars, there still exists a possibility that consumers may confuse the source of services bearing the opposed mark with Bentley by taking into consideration a high degree of reputation and originality of the winged B logo and “BENTLEY”.

Based on the foregoing, the JPO sided with Bentley and decided to cancel the opposed mark in contravention of Article 4(1)(xv).

Coffee Trademark Battle

Posted on2020年10月4日2022年1月3日

Colombian Coffee Federation (FNC) failed a fight for invalidation of Japanese TM Registration no. 5901554 for word mark “EMERALD” in class 30 owned by The Coca-Cola Company, one of the world’s largest beverage company in the US.
[Invalidation case no. 2018-890017, Gazette issued date: August 28, 2020]

EMERALD MOUNTAIN

Emerald Mountain is a top brand name of Colombian coffee approved by FNC (NGO organization, the union of coffee producer established in 1927 joining over 560,000 members for enhancing quality, production, and export) guaranteed hand-picked and hand-screened beans of which quantity is only 3 –1% of the total production of Colombia coffee beans.

The FNC owns several trademark registrations for “EMERALD MOUNTAIN” in Japan.

In the early 90s, Emerald Mountain began to be sold by Coca-Cola as canned liquid coffee under the Georgia brand in thousands of vending machines across Japan. Since 1997 it has become the most sold coffee in Japanese history as well as the #1 beverage sold by Coca-Cola in Japan. Every can of Georgia Emerald Mountain coffee has an explanation of the Colombian origin of the coffee as well as the high-quality certification of the FNCS. With annual sales of more than 630 million cans, Georgia Emerald Mountain Blend is undoubtedly Emerald Mountain’s leading product within the Japanese market.

EMERALD

Irrespective of a long-standing relationship, The Coca Cola Company, in 2011, sought registration for a wordmark “EMERALD” over artificial coffee, coffee-based beverages, prepared coffee and cocoa, tea, ice in class 30 which confronted with a severe objection from FNC.

FNC was successful in removing the registration by means of a non-use cancellation in 2017. However, The Coca Cola Company deliberately filed a new trademark application for the same mark in 2015 immediately when the registered mark was vulnerable for cancellation on grounds of non-use. The JPO allowed registration of the new application in December 2016.

To contend, FNC filed an invalidation action against the EMERALD mark in March 2018.

Invalidation petition by FNC

FNC argued the EMERALD mark shall be invalidated in contravention of Article 4(1)(vii), (x), (xi), (xv), and (xix) of the Trademark Law by stating that “EMERALD MOUNTAIN” has acquired substantial reputation and popularity as an indicator of high-quality Columbian coffee as a result of continuous sales promotion in Japan since 1970. In the coffee industry, coffee beans grown in highland are often named with the term “MOUNTAIN”, e.g. “BLUE MOUNTAIN”, “CRYSTAL MOUNTAIN”, “CARRIBERAN MOUNTAIN”, “CORAL MOUNTAIN”. In this respect, “EMERALD” shall play a prominent role in “EMERALD MOUNTAIN”. If so, both marks are deemed similar and it is likely that relevant consumers confuse or associate artificial coffee, coffee-based beverages, prepared coffee and cocoa, tea, ice bearing the EMERALD mark with “EMERALD MOUNTAIN”.

Besides, The Coca Cola Company has been using “EMERALD MOUNTAIN” on canned-liquid coffee under license from FNC. Presumably, the disputed mark was filed in anticipation of non-use cancellation claimed by FNC. In the cancellation proceeding, The Coca-Cola Company did neither answer nor respond. These facts clearly show the disputed mark was filed just to avoid cancellation even if The Coca-Cola Company had no intention to use it. It is really annoyance and free-riding on the famous marks with a fraudulent intention.

JPO decision

From the totality of evidence and circumstances, the JPO admitted a high degree of reputation and popularity of EMERALD MOUNTAIN as a source indicator of FNC’s high-quality Columbian coffee beans. In the meantime, the JPO questioned if relevant consumers connect the term “EMERALD” with FNC when used on coffee since the evidence did not disclose EMERALD MOUNTAIN is actually abbreviated to “EMERALD” in commerce. Likewise, it is suspicious whether “BLUE MOUNTAIN”, “CRYSTAL MOUNTAIN”, “CARRIBERAN MOUNTAIN”, “CORAL MOUNTAIN” are recognized with its short name, namely, “BLUE”, “CRYSTAL”, “CARRIBEAN”, “CORAL”.

In assessing the similarity of the mark, the JPO found “EMERALD MOUNTAIN” and “EMERALD” are dissimilar from visual, phonetic, and conceptual points of view. Given both marks are distinctively dissimilar, it is unlikely to find a likelihood of confusion in connection with the goods in dispute.

Even if The Coca-Cola Company filed the disputed mark with an intention to avoid the non-use cancellation, it would be anything but punishable in view of dissimilarity between marks. Besides, from the produced evidence, the JPO was unable to find fraudulent intention by Coca Cola to be blamed for invalidation.

Based on the foregoing, the JPO decided to dismiss the invalidation action.

Starbucks defeated in trademark battle to defend the logo

Posted on2020年9月27日2022年1月3日1 Comment

On September 16, 2020, the Japan IP High Court dismissed an appeal by the American multinational coffee house chain, Starbucks Corporation, challenging the unfavorable decision made by the Japan Patent Office (JPO) that did not find a likelihood of confusion with the previous Starbucks logo. [Court case no. Reiwa1(Gyo-ke)10170]

BULL PULU TAPIOCA LOGO

Starbucks has been eagerly struggling to invalidate trademark registration for BULL PULU TAPIOKA logo (see below) because it contains a green circular frame with white lettering inside.

Disputed mark was applied for registration over tapioca-based milk products in class 29, tapioca-flavored coffee, cocoa, confectionery; tapioca powder for foods in class 30, and restaurant service in class 43 on March 9, 2016, by a Japanese Company who operates tapioca drink parlors bearing the disputed mark in Japan. JPO registered the mark on December 9, 2016.

Invalidation action to JPO

On September 15, 2017, Starbucks Corporation filed a petition for invalidation and alleged among others the disputed mark shall be invalidated in contravention of Article 4(1)(xi) and (xv) of the Trademark Law due to similarity to, or a likelihood of confusion with senior trademark registration no. 4806987 for the previous Starbucks logo.

The third version of the Starbucks logo design, used from 1992 to 2010, consists of a black and white two-tailed siren wearing a starred crown and framed around a green circle in which the words “Starbucks Coffee” are written.

The JPO Invalidation Board questioned given five years have already passed since Starbucks redesigned its iconic emblem to the new logo whether the previous logo has continuously retained a substantial degree of reputation and popularity in Japan at the time of filing the disputed mark. Besides, the Board did see both marks are totally dissimilar and the configuration of a green circular frame with white lettering inside per se would never be known for a source indicator of Starbucks. If so, the Board found that relevant consumers are unlikely to confuse the source of goods and services in question bearing the disputed mark with Starbucks and decided to dismiss the invalidation action on August 21, 2019. [Invalidation case no. 2017-890065]

On December 19, 2019, Starbucks brought the case to the IP High Court and demanded the cancellation of the JPO decision.

IP High Court ruling

Starbucks argued the JPO erred in finding a likelihood of confusion based on the interview report which indicated more than 70% of the interviewees (total of 552 people ranging in age from 20 to 69) associated the following image of a green circular frame with white lettering inside with Starbucks.

The IP High Court held the previous logo has become remarkably famous as a source indicator of Starbucks in 2011 when it was replaced with the new logo. The Court also found the portion of a green circular frame with white lettering inside shall be impressive to consumers at the sight of the previous Starbucks logo. However, the court raised the same question if relevant consumers conceive Starbucks even when different words other than “STARBUCKS” and “COFFEE” appear inside the frame. If so, there is no reasonable ground to believe a mere image of a green circular frame with white lettering inside has played a significant role in the source indicator of Starbucks by taking account of the fact that the disputed mark was filed four years after the redesign to the new logo.

As for the interview report, the court strictly viewed that the image was not precisely identical to the previous Starbucks logo. It just focused on extracting the generic concept of the frame with lettering. In addition, interviewees were notified in advance that the image originally contained a design in the center and words to represent a company inside the frame. Such information shall be misleading and biased. If so, the report would be anything but appropriate and relevant to assess the high recognition of the frame as well as a likelihood of confusion on the case.

Based on the foregoing, the IP High Court upheld the JPO decision.

ZARA successful in invalidating the Zarbleu mark

Posted on2020年9月20日2022年1月3日

The Japan Patent Office (JPO) sided with Industria de Diseño Textil, SA (INDITEX), owner of the fashion brand “ZARA” in an invalidation action against Japanese TM Registration no. 6110359 for word mark “Zarbleu” in class 25 by finding a likelihood confusion with “ZARA”.
[Invalidation case no. 2019-890038, Gazette issued date: August 28, 2020]

Zarbleu

Disputed mark “Zarbleu” was applied for registration by a Chinese corporation on January 24, 2018, by designating sweaters, shirts, trousers, outers, skirts, dresses, T-shirts, underwear, headgear, gloves, coats, and other clothing in class 25, and registered on December 28, 2018, without confronting with office action from the JPO.

Invalidation action by Inditex

INDITEX, one of the world’s largest fashion retailers and owner of the fashion brand “ZARA”, filed an invalidation action on July 20, 2019, and claimed “Zarbleu” shall be retroactively invalidated in contravention of Article 4(1)(xv) of the Japan Trademark Law by citing senior trademark registrations for word mark “ZARA” in relation with clothing in class 25 and 35.

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

INDITEX argued, given “ZARA” has acquired a remarkable reputation among relevant consumers and the close resemblance between the marks and goods, relevant consumers are likely to confuse or misconceive opposed mark with “ZARA”.

JPO Decision

It would not surprise us that the JPO Invalidation Board admitted a high degree of reputation and popularity of “ZARA” among relevant consumers and traders as a source indicator of INDITEX in connection with clothing based on the facts that (i) “ZARA” launched fashion business in Japan since 1998 and increased the number of its stores in Japan to 100 as of December 2019, (ii) worldwide sales in excess of EUR 18 billion. (iii) ZARA has been ranked No.24(2017), No.25(2018) on Interbrand’s list of the most valuable global brands.

Astonishingly, the Board found a certain degree of similarity between “ZARA” and “Zarbleu” by stating that relevant consumers have a tendency to pay higher attention to the prefix of a mark and “Zarbleu” incorporates the same prefix “Zar” with “ZARA” which has acquired a high degree of reputation among the consumers in connection with clothing.

In addition, addressing sufficient strength of the ZARA mark as a fanciful term and close relatedness of goods in dispute, the Board concluded that relevant consumers and traders are likely to confuse clothing bearing the disputed mark “Zarbleu” with ZARA or misconceive a source from any entity systematically or economically connected with INDITEX. Thus, the disputed mark shall be invalidated in contravention of Article 4(1)(xv) of the Trademark Law.

Based on the foregoing, the JPO decided in favor of INDITEX and declared invalidation of the disputed mark “Zarbleu”.

HENNESSY vs. INESSY

Posted on2020年9月6日2022年1月3日1 Comment

The Japan Patent Office (JPO) dismissed a trademark opposition claimed by SOCIETE JAS HENNESSY ET COMPAGNIE against trademark registration no. 6167837 for word mark “INESSY” in class 33 by finding dissimilarity to a world-renowned cognac brand “Hennessy”.
[Opposition case no. 2019-900315, Gazette issued date: July 31, 2020]

Hennessy

SOCIETE JAS HENNESSY ET COMPAGNIE has registered its trademark “Hennessy” over alcoholic beverages of class 33 in Japan since 1983.

Needless to mention, Hennessy is the largest Cognac producer in the world, and a highly regarded brand the world over, the range stretches from VS to XO and beyond. With its headquarters in Cognac, France, the company produces about 40% of smooth liquor in the world.

INESSY

Junior mark, consisting of a word “INESSSY” in standard character, was applied for registration on January 8, 2019 over cookies and confectionery in class 30 and whisky in class 33 [TM application no. 2019-1234].

The JPO admitted registration on August 2, 2019 and published for opposition on August 27, 2019.

Opposition by Hennessy

To contend registration within a statutory period of two months counting from the publication date, SOCIETE JAS HENNESSY ET COMPAGNIE filed an opposition on October 28, 2019.

In the opposition brief, SOCIETE JAS HENNESSY ET COMPAGNIE asserted the opposed mark shall be cancelled in contravention of Article 4(1)(xi) of the Japan Trademark Law on the grounds that “INESSY” and “Hennessy” look closely associated in appearance and pronunciation because of sharing the same suffix (in this case, “NESSY”). According to the allegation, 55 trademarks with the “NESSY” suffix are effectively registered in Japan. Among them, 48 registrations are owned by opponent. As far as class 33 goes, no one owns trademark with the suffix other than opposed mark. If so, relevant consumers at the sight of whisky bearing opposed mark would conceive world-renowned “Hennessy”.

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

There is criterion that the examiner is checking when assessing the similarity between the marks:

visual similarity
aural similarity
conceptual similarity

and taking into account all these three aspects examiner makes a decision if a mark is similar (at least to some extent) with the earlier mark and if there is a likelihood of confusion for the consumers.

JPO decision

In the decision, the Opposition Board held that:

“From appearance, even if both marks share the same suffix “NESSY”, difference in number of letters and prefix “I” and “Hen” would be anything but negligible. Because of it, the marks as a whole give rise to a distinctive visual impression in the minds of relevant consumers. Accordingly, both marks are unlikely to cause confusion from appearance.
Opposed mark “INESSY” is pronounced as “ine-siː”. In the meantime, the opponent mark “Hennessy” shall be “hene-siː”. The difference in the initial sound, “i” and “he”, would be influential in the overall pronunciation given both marks aurally consist of just three sounds. Due to the difference, both sounds can be distinguishable in tone and linguistic feeling when pronounced at a time.
Conceptually, opposed mark is incomparable with the opponent mark since both marks would not give rise to any specific meaning at all.”

Based on the foregoing, the Board concluded that opposed mark “INESSY” would be deemed dissimilar to the opponent mark “Hennessy” from the global appreciation of the visual, aural and conceptual similarity of the marks in question, and based on the overall impression and association given by the marks to relevant traders and consumers with ordinary care“.