カテゴリー: Similarity of goods

ZARA Unsuccessful in Trademark Opposition against ZARAHA

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The Japan Patent Office (JPO) dismissed a trademark opposition claimed by INDITEX, S.A. against TM Reg no. 6423743 for the wordmark “ZARAHA” by finding dissimilarity of the mark and unlikelihood of confusion with a famous fashion brand “ZARA”.

[Opposition case: 2021-900373, Decision date: September 8, 2022]

ZARAHA

ZARAHA BEAUTY CO., LTD., a Japanese company, filed a word mark “ZARAHA” in standard character for use on beauty care cosmetics and preparations (cl. 3); retail services for beauty care cosmetics (cl. 35); beauty arts instruction (cl. 41); aesthetician services, beauty salon services (cl. 44) with the JPO on October 15, 2020 (TM App no. 2020-127458).

The applicant opens the ZARAHA BEAUTY shop in Tokyo to provide beauty salon services. Click here.

The JPO granted protection of the applied mark on July 6, 2021, and published for opposition on August 24, 2021

Opposition by INDITEX

Inditex, S.A., an international fashion manufacturer, and distribution group filed an opposition against the wordmark “ZARAHA” by citing its flagship brand “ZARA” on October 21, 2021.

Inditex argued the opposed mark shall be canceled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law by taking into consideration the remarkable reputation of “ZARA” as a famous fashion brand, resemblance of both marks, and close association between apparels and cosmetics, beauty care-related services.

JPO Decision

The JPO Opposition Board admitted a certain degree of the reputation of the mark ZARA as a source indicator of the opponent’s apparel. However, the Board questioned if “ZARA” has acquired a substantial degree of popularity among relevant consumers of the goods and services in question from the totality of the produced evidence.

Besides, the Board found that “ZARAHA” and “ZARA” shall be easily distinguishable in appearance and pronunciation. Conceptually, both marks are not similar because they do not give rise to any specific meaning. Therefore, the Board has a reason to believe both marks are dissimilar.

Given that “ZARA” has not become famous among relevant consumers of the goods and services in question, and a low degree of similarity between the marks, it is unlikely that the consumers confuse a source of cosmetics and beauty care-related services bearing the opposed mark “ZARAHA” with Inditex.

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

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

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

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

BAMBI

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

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

BAMBI MAMA&BABY

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

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

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

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

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

JPO Decision

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

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

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

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

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

MARC JACOBS Failed Trademark Opposition over J Marc

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The Japan Patent Office (JPO) dismissed trademark opposition filed by Marc Jacobs Trademarks, L.L.C. against TM Reg no. 6462764 for an oval device mark due to dissimilarity to earlier registration for the J Marc logo.

[Opposition case no. 2022-900007, decided on August 24, 2022]

Opposed mark

ORPHE Inc., a Japanese business entity, applied trademark registration for an oval device mark (see below) to be used on goods and services in classes 9, 25, and 42, including computer software, PDAs, and footwear with the JPO on July 14, 2021.

The JPO examiner did not raise any objection in the course of the substantive examination and granted protection on October 19, 2021.

The mark was registered on October 27 and published for opposition on November 16, 2021.

Opposition by Marc Jacobs

On January 12, 2022, Marc Jacobs Trademarks, L.L.C. filed an opposition and alleged the opposed mark shall be canceled in relation to the designated goods of classes 9 and 25 in contravention of Article 4(1)(xi) of the Japan Trademark Law by citing IR no. 1282779 for the J Marc logo (see below), effectively registered on classes 3, 9, 14, 18 and 25 in Japan since 2017.

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.

Marc Jacobs argued both marks share the overall appearance consisting of two letters, “J” and “J”, combined in a way that constitutes an oval. A mere difference of direction (vertical or horizontal) would be anything but significant in assessing the similarity of marks because consumers would not consider the horizontal direction of the J Marc logo as a material factor to indicate the source. By taking into account of close resemblance in appearance and the same sound of “JJ”, the opposed mark shall be deemed similar to the J Marc.

JPO decision

The JPO Appeal Board stated both marks are sufficiently distinguishable for three reasons.

  1. The opposed mark has an impression of a rounded oval because of smoothly curved portions and shorter straight portions. On the other hand, the cited mark gives rise to an impression of a thin oval because of steeply curved portions and longer straight portions.
  2. Encircled blank of the cited mark also looks narrow due to an equal width with the surrounding oval lines. In the meantime, encircled blank of the opposed mark looks wider by virtue of the narrower width of an oval line.
  3. The cutout portion of the opposed mark gives the impression that the entire oval line is cut diagonally. The cited mark would never give such an impression to relevant consumers.

Taking into consideration the above findings, the Board had a reason to believe that relevant consumers are unlikely to consider, contrary to the opponent’s allegations, that both marks consist of two letters “J” and “J”. A mere coincidence of oval configuration is insufficient to find both marks similar in view of the remarkable distinctions of respective marks mentioned above.

Based on the foregoing, the Board concluded the opposed mark shall not be deemed similar to the J Marc logo and decided to dismiss the opposition entirely.

Trademark dispute: LAPPI vs LAPPY

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In a recent appeal decision, the Japan Patent Office (JPO) disaffirmed the examiner’s rejection and found “LAPPI” is dissimilar to and unlikely to cause confusion with “LAPPY” when used on computer-related goods in class 9.

[Appeal case no. 2022-6493, decided on August 24, 2022]

LAPPI

Kabushiki Kaisha LAPPI filed a trademark application for the wordmark “Lappi” in standard character for use on various goods and services in classes 9, 35, 41, and 42 with the JPO on October 15, 2020.

On March 15, 2022, the JPO examiner rejected the LAPPI mark due to a conflict with earlier trademark registration no. 6360979 for the word mark “Lappy” in standard character in connection with computer-related goods and software of class 9 based on Article 4(1)(xi) of the Japan Trademark Law.

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.

The applicant filed an appeal and argued the dissimilarity of mark between “Lappi” and “Lappy” on April 28, 2022.

JPO Appeal decision

The JPO Appeal Board assessed the similarity between the marks from three aspects (visual similarity, aural similarity, and conceptual similarity) and stated:

Visual similarity

“Although the applied mark and the cited mark share the letter “Lapp” from the beginning of the respective word, they differ in the letters “i” and “y” at the end of the word. In a mark consisting of five letters, the difference at the end of the word shall be easily noticeable, visually impressive, and memorable. Therefore, both marks are sufficiently distinguishable from appearance.”

Aural similarity

The difference between the pronunciation of “Lappi” and “Lappy” rests on the presence or absence of a long vowel at the end of the word. The plosive sound in between makes the sound “pi” and “pi:” be pronounced strongly and clearly. In the short three- or four-note configuration, such differences have a significant impact on the overall pronunciation. Therefore, both marks are sufficiently distinguishable aurally.

Conceptual similarity

Being that either mark does not give rise to a specific meaning, the applied mark “Lappi” is incomparable with the cited mark “Lappy” in concept.

Based on the foregoing, the Board held both marks are dissimilar from the totality of the circumstances and decided to disaffirm the examiner’s rejection and grant protection of the applied mark.

Olympic Lose Trademark Race with Olimple

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In a trademark opposition disputing the similarity and the likelihood of confusion between “Olympic” and “Olimple”, the JPO did not side with the IOC (International Olympic Committee).

[Opposition case no. 2021-900173]

Olimple

The opposed mark, consisting of the term “Olimple” written in the alphabet and the Japanese katakana character (see below), was applied with the Japan Patent Office (JPO) on January 28, 2020, for use on facial skin care gel, cosmetics, soaps, and other goods in class 3 by Olimple Co., Ltd.

The JPO granted protection on February 2, 2021, and published for opposition on March 9, 2021.

The applicant promotes medicated skin care gel for men bearing the Olimple mark.

Image credit: olimple.jp

Opposition by IOC

Opponent, IOC claimed the opposed mark shall be canceled in contravention of Article 4(1)(vi), (vii), (xi) and (xv) of the Japan Trademark Law by citing earlier International Registration no. 1128501 for wordmark “OLYMPIC” covering various goods and services in class 3 and other classes.

IOC argued a close resemblance between “OLYMPIC” and “Olimple” by stating:

  1. Both marks share four of the seven letters. Besides, the two letters at the end of the word, “le” and “IC” looks similar.
  2. The third letters “I” and “Y” of both marks are pronounced as “li” accompanied by the second letter “L”.
  3. Being that consumers are accustomed to several terms with a prefix of “OLYMP”, e.g., “OLYMPISM”, “OLYMPIAN” in connection with “OLYMPIC”, they will see the literal element “Olimp” as a dominant portion of the opposed mark.
  4. If so, relevant consumers are likely to confuse the opposed mark with “OLYMPIC” when used on goods in question.

JPO decision

The JPO did not question the famousness of the OLYMPIC mark as a source indicator of the IOC. However, the Opposition Board negated the similarity between “Olimple” and “OLYMPIC” on the following grounds.

  1. The term “Olimple” shall be deemed as a coined word because it is not a word that appeared in a language dictionary and does not give rise to any specific meaning in relation to the goods in question.
  2. There is a remarkable difference in the presence or absence of Japanese katakana characters. In addition to the difference between upper- and lower-case letters after the second letter, there are distinctions in the third letter “i” and “Y”, the sixth letter “l” and “I”, and the letters “e” and “C” at the end. In the configuration of the relatively short seven-letter alphabet, both marks are sufficiently distinguishable by appearance.
  3. Phonetically, both marks are unlikely to cause confusion as a whole because of a clear difference in the fourth and fifth sounds.
  4. It is obvious that both marks are dissimilar in concept.

The Board did not find a reason to believe relevant consumers would misconceive the source of the opposed mark merely because of close attention to the literal portion of “OLYMP” and “Olimp”, and its similarity.

Based on the foregoing, the JPO dismissed the entire allegations and decided on July 13, 2022, that the opposed mark shall remain valid as the status quo.

Trademark Opposition or Invalidation, Which Is Useful in Japan?

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Opposition

A trademark opposition is a proceeding in which a third party can oppose a newly registered trademark under Article 43bis of the Japan Trademark Law. For example, once a trademark is newly registered by JPO, this fact is published in the Official Gazette of Trade Marks immediately after it is actually registered. This kicks off a two (2) month period known as the ‘opposition period’ during which other parties are then given an opportunity to ‘oppose’ the registration of the trademark.

Invalidation

Trademark invalidation is an inter-partes proceeding in which a party has a legal interest in the result that can null a trademark registration under Article 46 of the Japan Trademark Law. If the registration is less than five years old, the party challenging the trademark rights can rely on any ground that could have prevented registration initially.

Comparison

Conflict with earlier registration (similarity of mark and goods/service), a likelihood of confusion with famous mark, and descriptiveness are the most common grounds asserted both in opposition and invalidation action.

 Trademark OppositionTrademark Invalidation
Statute of limitations2 months from the publication date5 years from the registration date
Official feeJPY11,000 for 1 class
JPY19,000 for 2 classes		JPY55,000 for 1 class
JPY95,000 for 2 classes
StandingLegal interest is not requiredLegal interest is required
CounterargumentNo obligation to counterargue unless the JPO notifies a cancellation ground to a registrant.Mandatory for a registrant to counterargue, otherwise it may adversely affect.
Pendency period7.9 months11.5 months
Appeal to decisionOnly the registrant can file an appeal against an unfavorable decisionEither party can file an appeal against the JPO decision

Which action to take?

From a cost-saving point of view, opposition undoubtedly looks more attractive than invalidation, however, when you look at the success rate of opposition (see below table), it may change your mind. There has been a big gap in the success rate between opposition and invalidation for years.

YearThe success rate of the OppositionThe success rate of Invalidation
201513%32%
201616%42%
201711%33%
201811%34%
201911%56%
202011%35%

Therefore, in terms of probability theory, invalidation action is by far preferable to opposition for the purpose of removing trademark registration in Japan.

Lacoste Prevails in Trademark Parody Case

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On February 18, 2022, the Japan Patent Office (JPO) decided in favor of Lacoste and canceled Japanese TM Registration No. 6289888 for a flipped crocodile device mark in class 25 due to a likelihood of confusion with the famous crocodile logo of Lacoste.

[Opposition case no. 2020-900312, Decision date: February 18, 2022]

Opposed mark

The opposed mark, consisting of flipped crocodile device and term “OCOSITE” (see below), was filed by a Japanese individual for use on clothing, footwear, headgear, sports shoes, and sportswear in class 25 on March 17, 2020.

T-shirts printing the opposed mark are promoted for sale with a catchphrase of “funny parody T-shirt.” As the term, “OCOSITE” means ‘wake me up, get me up’ in Japanese, the opposed mark gives rise to the meaning of a crocodile struggling to get up.

The opposed mark was registered on September 9, 2020, and published for opposition on September 29, 2020.

Opposition by Lacoste

It was anything but funny to the luxury sportswear brand, Lacoste.

Lacoste filed an opposition on November 27, 2020, within a statutory period of two months counting from the publication date.

In the opposition, Lacoste claimed the opposed mark shall be canceled in contravention of Article 4(1)(vii), (xv), and (xix) of the Japan Trademark Law on the grounds that a flipped crocodile device of the opposed mark closely resembles the world-famous Lacoste crocodile logo from its appearance.

Besides, the term “OCOSITE” is depicted in a similar font to “LACOSTE” and five letters “COS” and “TE” among seven letters are identical. Given the close resemblance between crocodile devices and the meaning of “OCOSITE”, relevant consumers at the sight of clothing and sportswear bearing the opposed mark would immediately conceive of the Lacoste crocodile struggling to get up and thus likely to confuse its souse with Lacoste.

JPO decision

The Opposition Board of JPO admitted a substantial degree of reputation and popularity of the Lacoste crocodile logo in relation to clothing, footwear, and sportswear.

The Board found a high degree of similarity between the flipped crocodile of the opposed mark and the Lacoste crocodile. Noticeably, the Board held respective element, namely, the crocodile device and the term “OCOSITE” of the opposed mark shall not be inseparably combined as a whole regardless of close adjacency.

In view of a high degree of reputation and originality of the opponent mark, and close association between the opponent business and the goods in question, the Board has reason to believe relevant consumers with an ordinary care would be likely to confuse the source of goods bearing the opposed mark with Lacoste or any business entity systematically or economically connected with the opponent.

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

GAP Unsuccessful in Trademark Opposition against “Gapace”

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The Japan Patent Office (JPO) dismissed an opposition filed by the US apparel company, Gap (ITM) Incorporated, against TM Reg no. 6304400 for wordmark “Gapace” to be used on apparel in class 25 by finding dissimilarity to and the unlikelihood of confusion with “GAP.”

[Opposition case no. 2020-900346, Gazette issued date: December 24, 2021]

Opposed mark

The wordmark “Gapace” was filed by a Chinese individual for use on various goods and apparel belonging to class 25 with the JPO on October 15, 2019 (TM App no. 2019-132880).

The JPO admitted registration on October 15, 2020, and published for opposition on November 4, 2020.

Opposition by GAP

To oppose against registration within a statutory period of two months counting from the publication date, Gap (ITM) Inc. filed an opposition against the opposed mark on December 24, 2020.

GAP argued the opposed mark shall be canceled in contravention of Article 4(1)(xi), (xv), and (xix) of the Trademark Law because of the remarkable reputation and popularity of the GAP mark as a source indicator of US apparel giant and a high degree of similarity between the opposed mark “Gapace” and the opponent’s famous earlier registered mark “GAP.”

Article 4(1)(xi) is a provision to refrain from registering a junior mark that is deemed identical with, or similar to, an earlier registered mark.

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.

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

JPO Decision

To my surprise, the JPO Opposition Board denied a substantial degree of reputation and popularity of the opponent trademark “GAP” in connection with apparel by stating that the produced evidence failed to demonstrate sales amount and its market share in Japan. A mere reference to the fact that the opponent has launched an apparel business in Japan since 1994 and promoted apparel bearing the GAP mark for sale at their 150 stores nationwide is insufficient. Likewise, a fact that GAP was ranked 4th in the Top 10 clothing retailers in the world in 2021 is not persuasive to find a high degree of popularity among relevant consumers in foreign countries at the time of both filling the opposed mark and registration.

In assessing the similarity of the mark, the Board held “GAP” and “Gapace” are totally dissimilar from visual and phonetical points of view. Conceptually, both marks are not similar because the opposed mark does not give rise to any specific meaning. In the meantime, the opponent mark “GAP” has a meaning of ‘separation in space.’

Given the opponent mark “GAP” was not proven to have become famous in relation to the goods in question, the Board found it is unlikely that relevant consumers would conceive the literal element of “Gap” as a prominent portion of the opposed mark when used on apparels.

Based on the foregoing, the Board had no reasonable ground to believe the opposed mark shall be canceled in contravention of Article 4(1)(xi), (xv), and (xix), and decided to dismiss the entire opposition accordingly.

Letter of Consent in Japanese Trademark Practice

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When trademark applicants receive a refusal of their trademark applications due to a conflict with a prior similar registered mark cited by the JPO examiner, how can the applicants overcome the refusal?

In some jurisdictions, it has become a routine to submit a letter of consent (LOC) issued in the name of the owner of the cited mark agreeing on the use and registration of the applied mark for the purpose of overcoming the refusal, apart from arguing against the similarities between the respective marks.

However, the Japan Patent Office (JPO) is negative to withdraw refusals arising from a conflict with a senior registered mark under Article 4(1)(xi) of the Trademark Law simply by means of LOC.

Trademark Examination Guideline (TEG) 42.111.03 in relation to Article 4(1)(xi) provides special conditions where the JPO accepts LOC and withdraws refusals as follows.

Where an applicant claims that he/she is in any of the relationships (1) and (2) with the owner of a cited trademark right and submits evidence (3), the case shall be handled as if Article 4(1)(xi) does not apply.

(1) The owner of a cited trademark right is under the control of the applicant.

(2) The applicant is under the control of the owner of a cited trademark right.

(3) Evidence to the effect that the owner of a cited trademark right agrees that the trademark as applied is to be registered.

Condition (1) and (2) – “Under the control” relation between cited owner and applicant will be satisfied if:

(a) Business of the owner of a cited trademark right of which the majority of voting rights of all shareholders are owned by the applicant;

(b) Business of the owner of a cited trademark right which has a capital alliance with the applicant and whose corporate activities are substantially under the control of the applicant, although the requirement specified in (a) above is not satisfied.

Therefore, LOC is useful only where either party has a controlling interest in the other entity, the so-called parent-child relationship between companies.

Due to the restriction, LOC would not be available in most cases to overcome the refusal based on Article 4(1)(xi).

Under the circumstance, practically, we are able to select three options.

  1. Arguing dissimilarity of mark or goods/ services　
  2. Filing a non-use cancellation against the cited mark　
  3. Transferring an applied mark to an owner of the cited mark and assigning it back after registration, vice versa.