The Japan Patent Office (JPO) dismissed a trademark opposition claimed by SCOTT USA Inc. against trademark registration no. 6025819 for stylized word mark “PRESCOTT” on bicycles in class 12 by finding dissimilarity to “SCOTT”.
[Opposition case no. 2018-900134, Gazette issue date: December 27, 2019]
“PRESCOTT”
Opposed mark, stylized word mark “PRESCOTT”
(see below), was filed by a Chinese individual to the JPO on June 19, 2017 by
designating ‘electric bicycles, motorized bicycles, bicycles and accessories/structural
parts, motorcycles’ in class 12.
The JPO admitted registration on March 9,
2018 and published for registration on April 3, 2018.
Opposition by
SCOTT
To contend registration within a statutory
period of two months counting from the publication date, SCOTT USA Inc. filed
an opposition on June 1, 2018.
In the opposition brief, SCOTT USA Inc. asserted the opposed mark shall be cancelled in violation of Article 4(1)(viii), (xi) and (xix) of the Japan Trademark Law given a remarkable reputation of opponent mark “SCOTT” to indicate opponent’s mountain bicycles and close resemblance between a senior registration no. 2700543 “SCOTT” in class 12 and opposed mark.
Article 4(1)(viii) prohibits registration of trademarks which contain the
representation or name of any person, famous pseudonym, professional name or
pen name of another person, or famous abbreviation thereof.
Article 4(1)(xi) is a provision to refrain from registering a junior mark which is
deemed identical with, or similar to, any senior registered mark.
Article 4(1)(xix) prohibits to register a trademark which 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.
Scott, founded in 1958 in Sun Valley, Idaho,
began as a manufacturer of aluminum ski poles before it branched out into a
huge range of other sectors in the sporting goods industry. These days the
brand produces bikes for a whole range of disciplines, but it cut its teeth
with mountain bikes, introducing its first model way back in 1986. Nowadays, as
the leading bike manufacturer in Europe, designing and fabricating an extensive
line of high-quality mountain bikes, road bikes, kids bikes and urban city
bikes, the SCOTT bikes have been ranked top mountain bicycles brands. In Japan,
SCOTT USA has progressively promoted the SCOTT bikes through its subsidiary, SCOTT Japan since 2013. SCOTT Japan
spent more than 20 million JP-Yen on advertisement annually.
SCOTT USA Inc. argued that these facts are sufficient
to demonstrate “SCOTT” has acquired a high degree of reputation and popularity in
the field of sports bicycles as an abbreviation or source indicator of opponent.
Given the reputation, it is undeniable that applicant of opposed mark must have
acquainted with opponent famous mark “SCOTT” before the filing. Besides, opponent
mark “SCOTT” is actually used in an italic font (see below) on the bikes, which
truly gives rise to a more resembled impression with opposed mark in the mind
of consumers visually.
If so, opposed mark “PRESCOTT” shall be revocable
because it contains a famous trademark name “SCOTT” without permission of
opponent and looks confusingly similar to opponent’s famous mark when used on
sports bicycles in fact. It is obvious that the applicant aims to gain unfair
profits by free-riding opponent famous trademark.
JPO decision
The Opposition Board denied a certain
degree of reputation and popularity of opponent trademark “SCOTT” in connection
with mountain bicycles by stating that the produced evidences have no reference
to sales amount and total number of participants to promotional events of the
SCOTT bikes in Japan. 20 million JP-Yen (approx. USD182,000) for advertising
expenses would be anything but a sufficient amount to prove famous bicycle
brands.
Even if it is true that SCOTT sold more
than 420,000 bicycles in European market in 2010 and achieved the largest market
share in the high-end sports bicycles in ten EU countries, e.g. Germany, Norway,
Sweden, the Board considers it insufficient to find a high degree of reputation
among consumers in specific country in EU from the produced evidences.
In the assessment of mark, the Board held “PRESCOTT”
and “SCOTT” are totally dissimilar from visual and phonetical points of view. Unless
the Board finds a term “SCOTT” becomes famous in relation to the goods in
question, there is no reason to see it as the dominant portion of opposed mark.
Based on the foregoing, the Board decided
opposed mark shall not be cancelled on the grounds of Article 4(1)(viii), (xi)
and (xix).
I often see the case like this where the JPO gives an unfavorable decision to famous brand owner. One reason is just due to insufficient production of evidences to show its famousness outside of Japan. Provided that Japanese consumers recognize such circumstance in foreign countries, the brand shall be broadly protected under the Japan Trademark Law.