タグ: Article 4(1)(xi)

JPO decision to trademark dissimilarity, Unbelievable or Believable?

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On November 9, 2023, the JPO Appeal Board reversed the examiner’s rejection to TM Application no. 2021-98849 for word mark “ADEAM/ICHI” by finding dissimilarity to earlier trademark registrations for word mark “ICHI”.
[Appeal case no. 2022-19409]

Earlier TM registrations “ICHI”

Following trademarks have been effectively registered since 2015 at the latest.

  • TM Reg no. 4736544 (soaps and detergent, incense, cosmetics in class 3)
  • TM Reg no. 5756228 (clothing, waistbands, belts [clothing] in class 25)
  • TM Reg no. 5991461 (bags and pouches, wallets, umbrella, walking sticks in class 18)

Junior mark “ADEAM/ICHI”

On August 6, 2021, FOXY Corporation filed a word mark consisting of “ADEAM” with larger roman-font and “ICHI” with smaller gothic-font in two lines (see below) for use on various goods and services in classes 3,14,16,18,24,25, and 35.

The JPO examiner rejected the applied mark due to a conflict with the earlier TM registrations for the mark “ICHI” owned by other entity based on Article 4(1)(xi) of the Japan Trademark Law on September 6, 2022.

Subsequently, the applicant filed an appeal against the rejection on December 1, 2022 and disputed dissimilarity of mark.

JPO Appeal Board decision

To my surprise, the Appeal Board found the applied mark is dissimilar to the cited marks and decided to cancel the examiner’s rejection by stating that:

Since the term “ICHI” of the applied mark is placed just beneath the term “ADEAM” in the middle about a quarter of the font size, from appearance, the term “ADEAM” occupies a large portion of the applied mark in its entirety. Thus, relevant consumers would have an impression that the term “ADEAMN” is considered as a dominant portion to identify a source of goods and service.

Besides, the term “ADEAM” is apparently a coined word. The term “ICHI” also does not give rise to a clear meaning. Therefore, conceptually there is no particular difference in assessing distinctiveness of respective term.

The Board has no reason to believe that relevant consumers would focus only on the portion “ICHI” of the applied mark as a source indicator by separating the dominant element “ADEAM”.

If so, it shall not be permissible to compare the literal portion “ICHI” of the applied mark with the cited marks.

In this respect, the examiner made an error in applying Article 4(1)(xi).

Based on the foregoing, the Board granted registration of the applied mark

JPO decided trademark “MONO” dissimilar to “MONO+”

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In a trademark appeal disputing similarity between “MONO” and “MONO+”, the Appeal Board of the Japan Patent Office (JPO) reversed the examiner’s rejection and found both marks dissimilar and unlikely to cause confusion.

[Appeal case no. 2023-6307, decided on November 1, 2023]

MONO+

Onoya Inc. filed a mark “MONO+” (see below) for use on retail or wholesale services for furniture, joinery fittings, flowers [natural] and trees, kitchen equipment, cleaning tools and washing utensils in class 35 with the JPO on September 11, 2021.

The JPO examiner rejected the mark due to a conflict with earlier TM Reg no. 4533103 for wordmark “MONO” in standard character on goods of food wrapping plastic film for household purposes; garbage bags of paper or plastic for household purposes; hygienic hand tools of paper; towels of paper; table napkins of paper; hand towels of paper; handkerchiefs of paper in class 16 based on Article 4(1)(xi) of the Japan Trademark Law.

Article 4(1)(xi) is a provision to prohibit registration of a junior mark that is deemed identical with, or similar to, an earlier 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 Appeal Board decision

The Board found the applied mark “MONO+” gives rise to a sound of “mono-plus”, but it has no specific meaning in view of overall appearance and a meaning of respective word “MONO” and “+”.

As for the cited mark, the Board held the term “MONO” is not a foreign word familiar among relevant consumers in Japan. Thus, it has a sound of “mono”, but no specific meaning.

Comparing both marks, although they share the same appearance in that both contain the word “MONO”, they are sufficiently distinguishable because, by virtue of the presence or absence of the “+” symbol at the end, it is conceived both marks represent different words as a whole.  

Phonetically, they start with the same sound “mono”, but the overall tone and impression are different with or without the sound “plus” at the end. Due to the reason, both sounds can be distinguishable.

It is meaningless to compare the concept of both marks because neither does give rise to a specific meaning.

If so, from the totality of visual, aural, and conceptual points of view, the Board has no reason to believe that relevant consumers are likely to confuse the source of the services in class 35 bearing the applied mark with the earlier mark.

Based on the foregoing, the Board found both marks are dissimilar regardless of similarity in goods and services, and decided to cancel the rejection and granted protection of the applied mark.

Trademark dispute: HITACHI vs hitasi

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On October 16, 2023, the Japan Patent Office (JPO)dismissed an opposition claimed by Hitachi, Ltd. against TM Reg no. 6621366 for wordmark “hitasi” by finding dissimilarity to and unlikelihood of confusion with “Hitachi”.

[Opposition case no. 2022-900496]

Opposed mark

A Chinese individual filed a wordmark “hitasi” for use on glass, unworked or semi-worked, except building glass; mangers for animals; drinking troughs; toothbrushes, electric; nail brushes; comb cases; make-up brushes; gardening gloves; glass vials; decanters; vacuum bottles [insulated flasks]; oven mitts; place mats, not of paper or textile; drinking straws; bird baths; tanks [indoor aquaria]; utensils for household purposes in class 21 with the JPO on April 5, 2023.

The JPO granted protection of the opposed mark on September 29, 2022 and published it for a post-grant opposition on October 7, 2022.

Opposition by HITACHI

Hitachi, Ltd., founded in 1910, highly diversified Japanese manufacturing corporation that comprises more than 1,000 subsidiaries, including 335 overseas corporations filed an opposition on November 29, 2022 with the JPO and claimed the opposed mark shall be cancelled in contravention of Article 4(1)(xi) and (xv) of the Trademark Law due to similarity to and likelihood of confusion with its famous house mark “Hitachi”.

To bolster their arguments, Hitachi cited the IP High Court ruling dated Jan 27, 2022 that admitted a likelihood of confusion between “HITACHI” and “hihachi” when used on air conditioners for industrial purposes; non-electric cooking heaters for household purposes; non-electric stoves for household purposes in class 11.

JPO decision

The JPO Opposition Board found a high degree of reputation and popularity of the cited mark “HITACHI” as a source indicator of the Hitachi Group and their business.

However, the JPO pointed out a low degree of similarity between the marks by stating that:

  1. From appearance, there is a difference in the letter “s” and “CH”. It would cause non-negligible effect on the overall visual impression of the marks which consist of relatively few letters (sir or seven characters). In this respect, two marks are unlikely to cause confusion visually.
  2. Aurally, there is a difference in the last sound of “si” and “chi”. It would cause non-negligible effect on the overall sound of the marks which consist of three syllables. The Board has a reason to believe that two marks are unlikely to cause confusion phonetically.
  3. From concept, both marks are unable to compare since the opposed mark does not have any specific meaning, whereas the cited mark gives rise to a meaning of “HITACHI” as a source indicator of the claimant.

Given a low degree of similarity of the marks, the Board said, it is unlikely that relevant consumers confuse the source of the goods in question bearing the opposed mark with Hitachi, Ltd. or other entity systematically or economically connected with the claimant even if the cited mark “HITACHI” has been famous trademark

Based on the foregoing, the Board dismissed the entire allegations by Hitachi and decided validity of the opposed mark as the status quo.

ANYTIME FITNESS Unsuccessful Opposition against “anytime 24” mark in relation to fitness service

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On October 17, 2023, the Japan Patent Office (JPO) dismissed an opposition claimed by Anytime Fitness Franchisor LLC against TM Reg no. 6630608 for the mark “anytime 24” in class 41 due to dissimilarity and unlikelihood of confusion with “ANYTIME FITNESS”.

[Opposition case no. 2022-900541]

“anytime 24”

Opposed mark, consisting of “anytime”, “24” and a clock device (see below), was filed by ShinMaywa Industries, Ltd. for use on various services in classes 35, 37, 39 and 41, including sports instruction services; arranging, conducting and organization of seminars relating to sports; production of videotape file in the field of sports; providing electronic publications relating to sports on October 14, 2021.

The JPO granted protection of the “anytime 24” mark on October 19, 2022, and published it for a post-grant opposition on October 31, 2022.

Opposition by ANYTIME FITNESS

Anytime Fitness Franchisor LLC (AFF), an operator of the fastest-growing fitness club “ANYTIME FITNESS” franchise in the world, with more than 4 million members at more than 4,800 gyms on all seven continents, filed an opposition on December 29, 2022.

AFF argued the opposed mark shall be canceled in contravention of Article 4(1)(vii), (viii), (x), (xi), (xv) and (xix) of the Japan Trademark Law on the grounds that “ANYTIME FITNESS” has become famous among relevant consumers as a source indicator of the fitness gym opening 24 hours a day, 365 days a year, and the term “ANYTIME” is a dominant portion of cited mark (TM Reg nos. 5284268 and 5742766) in connection with fitness-related services in class 41. If so, the consumers are likely to confuse the source of the opposed mark with AFF when used on fitness-related services because of close resemblance between the opposed mark and “ANYTIME FITNESS”.

JPO decision

The JPO Opposition Board found the opposed mark, from its configuration, gives rise to a pronunciation and meaning of “anytime” because the digit “24” is inherently descriptive.

In the meantime, the Board held the cited mark has a pronunciation of “ANYTIMIE FITNESS” and does not give rise to any specific meaning as a whole. Even if the word “FITNESS” lacks distinctiveness in relation to fitness-related services, the Board has a reason to believe the cited mark shall be assessed in its entirety by virtue of a tight combination with other elements.

When it comes to compare a dominant portion “anytime” of the opposed mark with “ANYTIME FITNESS”, the consumers are unlikely to confuse the source of two marks from visual, phonetical and conceptual points of view, the Board said.

Based on the foregoing, the JPO concluded dissimilarity of mark and unlikelihood of confusion, and decided to dismiss the opposition entirely.

Trademark Opposition Case: “DROP” vs “THE DROP”

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In a trademark opposition disputing similarity between “DROP” and “THE DROP”, the Japan Patent Office (JPO) decided to cancel TM Reg no. 6556243 for the mark “DROP” in class 35 due to similarity to IR no. 1258281 “THE DROP” in class 20 owned by Fritz Hansen A/S.

[Opposition case no. 2022-900306, decided on October 2, 2023]

Opposed mark “DROP”

Massdrop, Inc., a US e-commerce company, filed trademark application for word mark “DROP” in standard character for use on retail or wholesales services for various categories of goods including furniture in class 35 on October 9, 2018 (TM App no. 2018-126535).

The mark was registered on May 16, 2022 (TM Reg no. 6556243) and published for post-grant opposition on May 24, 2022.

Opposition by Fritz Hansen A/S

Fritz Hansen A/S, renowned Danish manufacturer of Scandinavian-style furniture, took a partial opposition action against the “DROP” mark on July 26, 2022 and claimed cancellation of the opposed mark in contravention of Article 4(1)(xi) of the Japan Trademark Law due to similarity to earlier IR no. 1258281 “THE DROP” for use on furniture in class 20 owned by the opponent.

Fitz Hasen argued “THE” is merely a definite article with no particular meaning for Japanese citizens with ordinary care. It commonly happens in Japan that consumers do not pay attention to definite article in the prefix where it is followed by other words. For example, “THE BEATLES” is called just as “BEATLES”. The Japanese title of the movie “The Lord of the Rings” does not include “THE”. Under the circumstance, relevant consumers would consider “DROP” as a prominent portion of the cited mark. Therefore, the opposed mark shall be similar to the cited mark. Besides, the goods “furniture” in class 20 is deemed similar to retail or wholesale services for furniture in class 35.

If so, the opposed mark should be canceled in relation to “retail or wholesale services for furniture” of class 35 under Article 4(1)(xi).

JPO decision

In the decision, the JPO Opposition Board mentioned “THE” is a definite article that functions to specify the following noun, however is usually not translated into Japanese. A basic English word “THE”, familiar among general public in Japan, is less distinctive as a source indicator per se. It is quite possible that relevant consumers and traders at the sight of the cited mark would highly focus on the term “DROP” of the cited mark.

Therefore, the Board has a reason to believe the cited mark gives rise to a pronunciation of “DROP” and a meaning ‘a small round-shaped amount of liquid’.

If so, the opposed mark has the same sound and concept with the cited mark.

A mere difference in appearance is insufficient to find dissimilarity of mark since the opposed mark consists of the same alphabets with “DROP” of the cited mark.

Also, the Board found “furniture” in class 20 shall be deemed similar to “retail or wholesale services for furniture” in class 35 by taking into consideration commercial channels, suppliers and consumers of respective goods and services.

Based on the foregoing, the Board sided with Fritz Hansen A/S and decided a partial cancellation of the opposed mark in relation to “retail or wholesale services for furniture”.

Trademark Opposition: JEEP vs JEIP321

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The Japan Patent Office (JPO) dismissed an opposition filed by Fiat Chrysler Automobiles (FCA US) LLC against TM Reg no. 6586965 for the wordmark “JEIP321” to be used on covers and accessories for cars in class 12 by finding dissimilarity to and unlikelihood of confusion with the “JEEP” mark.

[Opposition case no. 2022-900391, decided on September 28, 2023]

Opposed mark

The wordmark “JEIP321” was filed by a Chinese individual for use on steering wheels covers for automobiles, vehicle covers [shaped], upholstery foe vehicles, two-wheeled trolleys, windscreen wipers, anti-dazzle devices for vehicles, ashtrays for automobiles, rearview mirrors, mudguards, cigar lighters for automobiles in class 12 with the JPO on January 25, 2022 (TM App no. 2022-7763).

The JPO admitted registration on July 13, 2022, and published for opposition on July 22, 2022.

Opposition by FCA US LLC

To oppose registration within a statutory period of two months counting from the publication date, FCA US LLC filed an opposition against the opposed mark on September 14, 2022.

FCA argued the opposed mark shall be canceled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law because of the remarkable reputation and popularity of the JEEP mark as a source indicator of Chrysler vehicles and a high degree of similarity between the opposed mark “JEIP321” and the opponent’s famous earlier registered mark “JEEP.”

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.

Inter alia, FCA pointed out that the literal element “JEIP” shall be considered as a prominent portion of the opposed mark since numerals lack distinctiveness per se. If so, the opposed mark is confusingly similar to the “JEEP” mark from visual and phonetical points of view.

JPO Decision

The JPO Opposition Board admitted a high degree of reputation and popularity of the “JEEP” mark in connection with four-wheeled automobiles.

In assessing the similarity of the mark, the Board found that a prominent portion of the opposed mark “JEIP” and the “JEEP” mark are less likely to cause confusion from visual, phonetical and conceptual points of view by stating that:

“From appearance, there is a difference in the third letter, “I” and “E” between “JEIP” and “JEEP”. The effect would be anything but negligible on the overall visual impression of both marks, since they are composed of only four characters.

Comparing the sound of “JEIP” with “JEEP”, there is a clear difference at the beginning, “dʒeɪ” and “dʒiː” It shall cause a significant distinction on the overall tone and impression in a short three-sound structure to the extent that relevant consumers would not mishear them when pronounced in unison.

Conceptually, both marks are dissimilar because the opposed mark does not give rise to any specific meaning. In the meantime, the opponent mark “JEEP” has a meaning of ‘Jeep brand 4WD vehicles.’”

Even though “JEEP” has become famous in relation to 4WD vehicles, the Board has no reason to believe that relevant consumers would associate the goods in question bearing the opposed mark “JEIP321” with the opponent or any business entity systematically or economically connected with FCA because of a low degree of similarity between the marks.

Based on the foregoing, the Board found the opposed mark shall not be canceled in contravention of Article 4(1)(xi) and (xv), and decided to dismiss the entire opposition.

ZARA vs AZRA

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The Japan Patent Office (JPO) dismissed an opposition filed by Industria de Diseño Textil, SA (INDITEX), owner of the fashion brand “ZARA”, against trademark registration no. 6638156 for word mark “AZRA” in classes 11, 20, 21, 24 and 27 by finding dissimilarity to and less likelihood of confusion with “ZARA”.

[Opposition case no. 2023-900013, decided on September 1, 2023]

Opposed mark

Opposed mark, consisting of a wordmark “AZRA” in standard character, was applied for registration in the name of STREAK Co., Ltd., a Japanese company offering bedding, pillows, pillow covers, cushions [furniture], mattresses, curtains and sleeping pads, on August 9, 2022, by designating various goods in classes 11, 20, 21, 24 and 27, and published for post-grant opposition on November 16, 2022, without confronting with office action from the JPO.

Screen capture from Rakuten

Opposition by Inditex

Opponent, INDITEX, one of the world’s largest fashion retailers and owner of the fashion brand “ZARA”, filed an opposition on January 14, 2023 before the lapse of a two-month statutory period and claimed opposed mark “AZRA” shall be cancelled in contravention of Article 4(1)(xi), (xv) and (xix) of the Japan Trademark Law by citing earlier trademark registrations for word mark “ZARA”.

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

INDITEX argued “AZRA” is similar to its own trademark “ZARA”, a worldwide famous fast-fashion brand, from visual, phonetic and conceptual points of view. Besides, the goods in question are identical.

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

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

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.

INDITEX argued the applicant must have filed the opposed mark aiming to gain unfair profits by the free-riding opponent famous trademark “ZARA”.

JPO decision

To my surprise, the JPO Opposition Board had a view that “ZARA” has not acquired a high degree of reputation and popularity among general consumers even though widely recognized among fashion conscious consumers by taking into consideration the produced evidence. The Board pointed a high number of followers on Facebook (31millions), Instagram (57millions) by itself would be insufficient and irrelevant to demonstrate a high degree of recognition among general consumers of the goods in question.

Besides, the Board found “AZRA” and “ZARA” are obviously dissimilar in appearance and pronunciation by stating that difference on the first and second letter and sound would be sufficiently distinguishable given both marks visually consist of four alphabets and aurally just two or three sounds. As for the concept, it is incomparable since either mark does not give rise to any specific meaning. Therefore, both marks are unlikely to cause confusion due to dissimilarity between the marks.

Since no evidence was shown by Inditex to support that the applicant filed the opposed mark for unfair purposes or causing damage to the opponent.

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

McDonald Unsuccessful in Trademark Opposition against “mac”

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The Japan Patent Office (JPO) did not side with McDonald in opposition against Japanese TM Reg no. 6575774 for stylized wordmark “mac” in class 35 due to dissimilarity to “Mc” and unlikelihood of confusion with McDonald.

[Opposition case no. 2022-900294, decided on August 15, 2023]

Opposed mark “mac”

The opposed mark, consisting of a stylized word “mac” (see below), was filed by Daiya Group Inc. for use on retail services or wholesale services for various goods including, meat, milk, carbonated drinks [refreshing beverages] and non-alcoholic fruit juice beverages, tea, coffee and cocoa in class 35 with the JPO on October 27, 2021.

The applicant has used the opposed mark as a tradename of their drug store “mac”.

Screen capture from Google map

The JPO granted protection of the opposed mark on June 22, 2022 and published it for post-grant opposition on June 30, 2022.

Opposition by McDonald

McDonald International Property Company Limited filed an opposition against the opposed mark on July 20, 2022 with the JPO and claimed cancellation of the opposed mark in contravention of Article 4(1)(x), (xi) and (xv) of the Japan Trademark Law based on earlier trademark registrations and various marks used in relation to their business.

McDonald argued that the mark “Mc” has been remarkably famous as a source indicator of the opponent and it gives rise to a same sound with the opposed mark “mac”. If so, relevant consumers would confuse the source of retail services or wholesale services for meat, milk, carbonated drinks [refreshing beverages] and non-alcoholic fruit juice beverages, tea, coffee and cocoa bearing the opposed mark with McDonald due to close resemblance of the marks and relatedness to food business.

JPO decision

The Opposition Board pointed out McDonald has been regularly using the mark “Mc” in a tight combination with other word. Regardless of the fact that consumers are accustomed to call McDonald as “MAC”, there is no evidence to show the opponent has used “MAC” in connection with their business.

By taking account of insufficient evidence to demonstrate substantial recognition of the cited marks, the Board has no reason to admit famousness of the mark “Mc” as a source indicator of McDonald.

In assessing the similarity of mark, the Board found the cited marks are aurally dissimilar to the opposed mark since they are pronounced as “emˈsiː” or “mækˈkæfˈeɪ” in its entirety. Besides, there is no ground to find visual and conceptual similarity of respective mark. If so, the Board believes the opposed mark is clearly dissimilar to the cited marks.

To the extent that there is insufficient evidence to support how the term “MAC” has played a significant role in indicating the source of McDonald, the Board held it unlikely that relevant consumers confuse the opposed mark with McDonald when used on the services in question.

Based on the foregoing, the Board dismissed the opposition entirely and decided that the opposed mark “mac” shall remain valid as the status quo.

Trademark Dispute: Louis Vuitton vs Rui vuit

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The Japan Patent Office (JPO) didn’t side with LOUIS VUITTON MALLETIER in an opposition against TM Reg no. 6595438 for wordmark “Rui vuit” in class 25 due to dissimilarity to the “LOUIS VUITTON” mark.

[Opposition case no. 2022-900422, decided on August 14, 2023]

Rui vuit

Opposed mark, consisting of a word “Rui vuit” in standard character, was sought for registration by a Chinese citizen for use on clothing and sports shoes (cl.25) with the JPO on December 24, 2021.

The JPO examiner did not raise any refusal and granted protection of the mark on July 12, 2023. Subsequently, it was published for a post-grant opposition on August 10 ,2022.

Opposition by Louis Vuitton

On October 7, 2022, LOUIS VUITTON MALLETIER filed an opposition with the JPO and claimed that the opposed mark shall be cancelled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law by citing earlier TM registrations for wordmark “LOUIS VUITTON” in classes 9, 14, 18, 24, 25, 35.

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

Article 4(1)(xv) provides that a mark shall not be registered where it is likely to cause confusion with other business entities’ well-known goods or services.

Louis Vuitton argued the opposed mark “Rui Vuit” shall be confusingly similar to “LOUIS VUITTON” especially in sound. A mere difference of sound “n” in the suffix would be trivial and give a similar impression as a whole to the extent that consumers are unable to sufficiently distinguish.

JPO Decision

The JPO Opposition Board denied similarity between “Rui vuit” and “LOUIS VUITTON” by stating:

“There is no doubt that both marks are visually distinguishable because respective mark represents a different word with different spellings.

Aurally, even if both sounds share the two initial sounds “lü-ˈē”, the overall sounds are easily distinguishable by virtue of difference in an “n” sound at the end.

Conceptually, the opposed mark does not have a specific conception. In the meantime, the cited mark gives rise to a meaning of famous fashion brand “Louis Vuitton”. If so, there is no similarity in concept.

Therefore, the Board has a reason to find a low degree of similarity between two marks, and even when used on the same or similar goods, there is no risk of confusion due to the dissimilarity of the marks.”

Based on the foregoing, the Board dismissed the entire allegations and decided the validity of the opposed mark as the status quo.

Shangri-La Unsuccessful in Trademark Opposition Over “Shangri-La Golf”

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The Japan Patent Office (JPO) dismissed an opposition claimed by Shangri-La Hotels against TM Reg no. 6610570 for the mark “Shangri-La-Golf” in class 35 due to dissimilarity between “Shangri-La” and “Shangri-La-Golf”.

[Opposition case no. 2022-900465, decided on July 26, 2023]

Opposed mark

A Japanese individual filed a stylized word mark “Shangri-La-Golf” (see below) for use on retail and wholesale services in relation to woven fabrics, beddings, clothing, footwear, and personal articles in class 35 with the JPO on June 22, 2020.

The JPO examiner rejected the mark in contravention of Article 4(1)(xi) of the Japan Trademark Law by citing earlier trademark registrations for wordmark “SHANGRI-LA”.

However, as a result of the JPO Appeal Board’s decision that found dissimilar to “SHANGRI-LA”, the mark could be registered on September 6, 2022.

Opposition by Shangri-La Hotels

Shangri-La International Hotel Management Ltd filed an opposition against the opposed mark on November 11, 2022 and argued the opposed mark shall be canceled in contravention of Article 4(1)(vii), (viii), (x), (xi), (xv), and (xix) of the Japan Trademark Law due to a remarkable degree of recognition of the cited mark “Shangri-La” and close resemblance between the opposed mark and “Shangri-La”.

JPO decision

The JPO Opposition Board questioned a remarkable degree of recognition of the cited mark among relevant public in Japan by stating that the produced evidence is insufficient to find such recognition objectively.

As for appearance, sound and meaning of the opposed mark, the Board found

“The opposed mark consists of “Shangri”, “La”, and “Golf” written in the same font and size, and tightly united by a hyphen (-). Visually, there is no reason to find respective element perse independently plays a role in source indicator of the opposed mark. Besides, the sound arising from the opposed mark as a whole can be pronounced easily.

Even if the term “Golf” has the meaning of a kind of ball game, it is reasonable to find that the term would not be recognized as directly indicating a descriptive meaning or specific quality of the services in question. Relevant consumers would see the opposed mark as a whole.

Therefore, the opposed mark shall be assessed in its entirety and give rise to a pronunciation of “Shangri-La-Golf” and no specific meaning.”

Based on the above finding, the Board decided the opposed mark “Shangri-La-Golf” is dissimilar to the cited mark “Shanri-La” because there is visual and phonetical distinction between the marks by virtue of the term “Golf” and the opposed mark does not give rise to a meaning related to ‘a remote usually idyllic hideaway’.

Accordingly, the Board found the opposition baseless and decided the opposed mark remains as the status quo.