タグ: Article 4(1)(xv)

Chrysler Wins Japan Trademark Invalidation Trial over “Jeeper”

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In a recent invalidation decision by the Japan Patent Office (JPO), Chrysler could finally achieve victory in a trademark dispute against “Jeeper”, regardless of their failed opposition in 2022.

[Invalidation case no. 2022-890064, decided on July 5, 2023]

Disputed mark

The wordmark “Jeeper” was filed by a Japanese individual for use on various hand tools in class 8 with the JPO on January 27, 2020 (TM App no. 2020-8907).

Since the JPO admitted registration of the mark on November 17, 2020, and published it for a post-grant opposition on December 8, 2020, Fiat Chrysler Automobiles (FCA US) LLC filed an opposition on Jan 26, 2021.

In the opposition, FCA argued the mark shall be canceled in contravention of Article 4(1)(xi) and (xv) of the Trademark Law due to the remarkable reputation and popularity of “JEEP” as a source indicator of Chrysler vehicles and a high degree of similarity between the mark “Jeeper” and Chrysler “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.

However, on April 6, 2022, the JPO Opposition Board dismissed the opposition by questioning the famousness of the “JEEP” mark among relevant consumers of hand tools and finding a low degree of similarity between the two marks (Opposition case no. 2021-900035).

Invalidation action by FCA US LLC

To contest the Opposition Board decision, FCA US LLC filed an invalidation action with the JPO on July 28, 2022, and repeatedly argued the mark “Jeeper” shall be invalid due to its similarity to and the likelihood of confusion with “JEEP” when used on the hand tools in class 8.

The applicant did neither file an answer nor respond to the invalidation claims at all.

JPO Decision

The JPO Trial Board admitted a high degree of reputation and recognition of the claimant’s trademark “JEEP” in connection with small 4WD cars. Besides, based on the facts that the JEEP mark has been used on T-shirts, backpacks, bags, mugs, lunch boxes, carabiners, key chains, spray bottles, containers, and cooler boxes, the Board found the JEEP mark has even become famous among consumers of goods other than automobiles.

Based on the above findings, the Board held that, by taking account of the famousness of the JEEP mark as a source indicator of the claimant’s small 4WD cars, the literal portion of “Jeep” shall play a prominent role in indicating the source of the disputed mark. If so, the disputed mark gives rise to the sound of “Jeep” and the meaning of “the claimant’s famous small 4WD cars” accordingly.

Bearing this in mind, the Board compared the prominent portion “Jeep” of the disputed mark with the claimant’s mark “JEEP” and found a close resemblance of both marks as a whole.

In assessing the likelihood of confusion, the Board held small 4WD cars are remotely associated with hand tools in class 8, however, the Board paid attention to the fact that camp items bearing the JEEP mark e.g., backpacks, mugs, carabiners, cooler boxes, etc., are closely associated with the goods in question.

Based on the foregoing, the Board found relevant consumers are likely to confuse a source of the goods in question bearing the disputed mark with the claimant and decided to invalidate the disputed mark based on Article 4(1)(xi) and (xv).

VOLVO Fails Trademark Opposition against VOLVOX

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The Japan Patent Office (JPO) dismissed a trademark opposition filed by Volvo Trademark Holding AB against TM Reg no. 6602236 for the mark “VOLVOX” due to the dissimilarity of the mark and unlikelihood of confusion with “VOLVO”.

[Opposition case no. 2022-900449, Gazette issued date: June 30, 2023]

Opposed mark

The opposed mark (see below) was filed in the name of VOLVOX Co., Ltd. for use on advertising and publicity services in class 35 with JPO on March 4, 2022.

The JPO granted protection of the opposed mark on August 8, 2022, and published it for post-grant opposition on August 25, 2022.

Opposition by VOLVO

Volvo Trademark Holding AB filed an opposition against the opposed mark on October 25, 2022, before the lapse of a two-month statutory period counting from the publication date and claimed the opposed mark shall be canceled in contravention of Article 4(1)(x), (xi) and (xv) of the Japan Trademark Law by citing earlier TM Reg no. 4729933 for wordmark “VOLVO” in standard character covering advertising and publicity services in class 35 and others.

VOLVO argued the literal element of the opposed mark “VOLVOX” is confusingly similar to “VOLVO” from visual, aural, and conceptual points of view by taking account of the remarkable reputation of “VOLVO” as a source indicator of VOLVO cars. If so, it is likely that relevant consumers confuse a source of the service in question bearing the opposed mark with the opponent.

JPO decision

The Board admitted that the “VOLVO” mark has acquired a substantial degree of reputation and popularity as a source indicator of VOLVO cars among relevant consumers.

However, the Board negated the similarity between “VOLVO” and “VOLVOX” by stating:

“The opposed mark gives rise to a sound of ‘vol-voks’ and a meaning of ‘freshwater green algae of the genus’. In the meantime, the cited mark has the sound of ‘Volvo’ and the meaning of ‘brand name of automobiles manufactured and sold by VOLVO’. The difference arising from the presence of the letter “X” and figurative elements would be anything but visually negligible. Likewise, both marks are aurally distinguishable due to the difference in the number of sounds and sound structure. Conceptually, there is no doubt to cause confusion because of clear distinction in respective meaning.”

By taking into consideration a lower degree of similarity between the marks, the Board found that relevant consumers are unlikely to associate and confuse the opposed mark with VOLVO even when used on services in question.

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

Champion loses trademark opposition over “C” logo

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The Japan Patent Office (JPO) dismissed an opposition filed by HBI Branded Apparel Enterprises, LLC against TM Reg no. 6560200 for the C device mark due to dissimilarity to and the unlikelihood of confusion with the iconic “C” emblem of Champion.

[Opposition case no. 2022-900315, decided on May 22, 2023]

Opposed mark

DAIEI TRADING CO., LTD. a Japanese company, applied a device mark consisting of the “C” curved line and a heart & circle placed vertically inside of the line (see below) for use on apparel, footwear, sports shoes, and sportswear in class 25 with the JPO on December 8, 2021.

The JPO examiner did not raise any objection to the mark at all in the course of the substantive examination.

Accordingly, the mark was registered on May 23, 2022, and published for post-grant opposition on May 31, 2022.

Opposition by Champion

HBI Branded Apparel Enterprises, LLC filed an opposition against the opposed mark on August 2, 2022.

HBI argued the opposed mark shall be canceled in contravention of Article 4(1)(vii), (x), (xi), (xv), and (xix) of the Japan Trademark Law on the grounds that a high degree of similarity between the opposed mark and the iconic “C” emblem (see below) becoming famous as a source indicator of the Champion brand in connection with casual wear, sportswear, and other related goods would inevitably cause confusion among relevant consumers when the opposed mark is used on goods in question.

JPO decision

The JPO Opposition Board admitted that the “C” emblem has acquired a high degree of reputation as a result of substantial use in Japan for more than four decades and become famous as a source indicator of the opponent.

In the meantime, the Board negated the similarity between the marks by stating that:

From the appearance, both marks contain a curved line that looks like a “C” letter; however, the respective line looks totally different by means of a wide difference in line thickness. Besides, there is a clear difference between figurative elements depicted inside of the line (a heart & circle device placed vertically in the opposed mark, a thick vertical line in the cited mark). Therefore, the two marks are visually distinguishable.

Conceptually, the opposed mark does not give rise to any specific meaning. Meanwhile, the cited mark has the meaning of ‘famous brand of the opponent.’ If so, both marks are dissimilar in concept.

Based on the foregoing, the Board has a reason to believe that the opposed mark is dissimilar to the cited mark, even if they cannot be compared in terms of pronunciation.

In a global assessment of the likelihood of confusion, the Board found:

Even if the cited mark is widely recognized among consumers in Japan as a source indicator of the Champion’s business, given the low degree of similarity to the opposed mark, it would be unlikely that relevant traders and consumers at the sight of the opposed mark used on goods in question immediately associate or recall the cited mark or the opponent business.

If so, it is reasonable to consider that relevant consumers are unlikely to confuse the source of the goods bearing the opposed mark with Champion or another entity systematically or economically connected with the opponent.

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

Unsuccessful Trademark Opposition over MONCLER Logo Outline

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On May 5, 2023, the Japan Patent Office (JPO) dismissed an opposition against the composite mark (TM Registration no. 6561093) filed by Moncler SpA, the Italian luxury fashion label, due to the dissimilarity to a device mark for the Moncler logo outline (Opposition no. 2022-900312).

Opposed mark

On December 4, 2021, COCOMi Corporation sought registration with the JPO of the composite mark consisting of the word “CONOMi” beneath the C logo and encircling outline (see below) for use on bags and pouches in Class 18 and apparel in Class 25.

The mark was registered on May 25, 2022, without receiving any refusal in the course of the substantive examination by the JPO. Thereafter, the mark was published for post-grant opposition on June 2, 2022.

Opposition by MONCLER

Italian luxury fashion brand MONCLER filed an opposition on July 28, 2022, contending that the opposed mark should be canceled for being in contravention with Article 4(1)(xi) and (xv) of the Japan Trademark Law.

MONCLER argued the opposed mark was similar to the earlier IR no. 991913 for the bell-shaped device mark representing the Moncler logo outline (see below) and was likely to cause confusion with MONCLER due to the resemblance between the opposed mark and Moncler’s famous mark, and the close relatedness of the goods in question with MONCLER’s business.

JPO decision

The JPO Opposition Board considered the relevant consumers would not see the encircling outline as a prominent portion of the opposed mark by taking account of the coined word “COCOMi” and the entire visual configuration of the mark.

In so far as the encircling outline of the opposed mark perse would not play a role in identifying the source of goods in question, regardless of the resemblance between the encircling outline and the cited mark, the Board has a reason to believe both marks are dissimilar from visual, aural and conceptual points of view in its entirety.

Given the low level of similarity with the cited mark or the Moncler emblem, the Board had no reason to find that there would be a likelihood of confusion where the opposed mark is used on the goods in question, even though the Moncler emblem has acquired a certain degree of reputation and popularity among relevant consumers in Japan.

Moncler emblem

Consequently, the JPO did not side with MONCLER and decided to dismiss the opposition entirely.

Trademark dispute: iTunes vs HiTune

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On May 1, 2023, the Japan Patent Office (JPO) dismissed an opposition filed by Apple Inc. against TM Reg no. 6536066 for the wordmark “HiTune” by finding dissimilarity to and an unlikelihood of confusion with “iTunes”.

[Opposition case no. 2022-900242]

Opposed mark

UGREEN GROUP LIMITED, a Chinese company, filed the wordmark “HiTune” (see below) for use on computer peripheral devices, data processors, earphones, headphones, microphones, sound transmitting apparatus, and other goods in class 9 with the JPO on November 10, 2021.

The mark was registered on March 29, 2022, without receiving any refusal in the course of the substantive examination taken place by the JPO.

UGREEN has promoted wireless stereo earphones/earbuds bearing the mark.

Opposition by Apple Inc.

On June 6, 2022, Apple Inc. filed an opposition to “HiTune” and contended that the opposed mark shall be canceled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law by citing earlier trademark registration nos. 4570713 “iTUNE”, 4610312 “ITUNES”, 5155781 “iTunes”, IR943547 “ITUNES” in class 9.

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.

Apple Inc. argued that the mark “iTunes” has been famous as a source indicator of the opponent in relation to application software and multi-content distribution service. In view of the remarkable similarity between “HiTune” and “iTunes” by representing the second letter “i” in lower case and the third letter “T” in upper case, relevant consumers would associate the opposed mark with the opponent when used on goods of class 9 in question.

JPO decision

To my surprise, the JPO Opposition Board admitted a certain level of recognition of the mark “iTunes” as a source indicator of Apple Inc. in connection with application software enabling to download music or movies and to manage the contents among consumers of music distribution service, however, denied a substantial level of reputation and popularity of the opponent mark due to a lack of objective evidence produced to the Board.

In assessing the similarity of marks, the Board stated:

Differences such as the presence or absence of “H” at the beginning of the word, the difference between upper- and lower-case letters, and the presence or absence of “s” at the end of the word have a significant impact on the overall visual impression of both marks, which consist of relatively short letters. Therefore, the marks are clearly distinguishable from appearance.

There are distinctions between the sound “ha” and “a” at the beginning of a word, and the presence or absence of the sound “z” at the end of a word. These differences have a material effect on overall sounds given the relatively short sound structure. Therefore, there is less risk of mishearing each other when pronounced.

Since both marks do not give rise to any specific meanings, there is no room to cause confusion in concept.

If so, the Board has a reason to believe both marks are distinctively dissimilar.

Bearing in mind the Board finds that the opponent mark “iTunes” has not become famous among relevant consumers in Japan and has a low degree of similarity to the opposed mark “HiTune”, it is unlikely that the consumers confuse or misunderstand a source of goods in question bearing the opposed mark with Apple Inc. from the totality of the circumstances.

Based on the foregoing, the JPO decided the opposed mark shall not be canceled and dismissed the opposition entirely.

Jimmy Choo Unsuccessful in Trademark Opposition against “CHUU”

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On April 10, 2023, the JPO dismissed a trademark opposition against TM Reg no. 6523561 for the wordmark “chuu” contested by J. Choo Limited due to the dissimilarity of the mark and unlikelihood of confusion with “Jimmy Choo”.

[Opposition case no. 2022-900189]

Opposed mark “chuu”

PPB Studios Corporation Limited, a Korean fashion and beauty e-commerce company, sought registration of the wordmark “chuu” (see below) for use on apparel in class 25 and retail services for contact lenses, clothing, footwear, and bags in class 35 with the Japan Patent Office (JPO) on March 8, 2021.

The JPO examiner did not raise an objection by citing earlier trademark registration for the stylized mark “CHOO” owned by J. Choo Limited and granted protection on February 28, 2022.

Opposition by Jimmy Choo

The luxury-footwear brand Jimmy Chou, a luxury footwear brand, filed the opposition on May 6, 2022, and contend that the opposed mark “chuu” shall be canceled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law.

Jimmy Choo argued the opposed mark is similar to earlier registration for his company-owned mark “CHOO” (see below) and is likely to cause confusion with Jimmy Choo because of a close resemblance between the opposed mark and his famous mark, and relatedness of the goods in question with Jimmy Choo’s business.

JPO decision

The JPO Opposition Board questioned the famousness of the cited mark “CHOO” as a source indicator of the luxury footwear brand “Jimmy Choo” from the produced evidence and totality of the circumstances.

Next, the Board assessed the similarity of marks and found that there are distinctions between the opposed mark and the cited marks in terms of lower-case and upper-case letters, the thickness of the letters, the presence or absence of design, and the difference between the word “uu” and the word “OO” in the latter part of the respective mark. The visual impression that these differences give to the overall appearance of the two marks, both of which consist of four letters, is significantly different, and thus both marks are clearly distinguishable in appearance.

The opposed mark gives rise to the sound of “Chu”, while the cited is pronounced “Chu” or “Cho”. If so, both marks share the same pronunciation and are deemed aurally similar.

Both marks are not comparable conceptually because the respective mark does not give rise to any specific meaning at all.

Based on the foregoing, the Board held “Even if the opposed mark and the cited mark are not comparable in conception and share some similarities in sound, since they are significantly different in impression and clearly distinguishable in appearance, the Board has a reason to believe that the similarity in sound would not outweigh the visual difference. Taking all of the above into consideration as a whole, both marks are dissimilar and not likely to cause confusion as to the origin of the goods or services.

Given the cited mark has not acquired a certain degree of recognition as a source indicator of “Jimmy Choo” among relevant consumers in Japan, there is no reason to find a likelihood of confusion when the opposed mark is used on the goods in question.

Based on the above findings, the JPO Opposition Boards did not side with Jimmy Choo and decided the validity of the opposed mark as the status quo.

FURLA vs FURNA

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Italian heritage label Furla lost a trademark opposition in Japan against TM Reg no. 6501195 for the wordmark “FURNA” in class 25 as a result of the JPO’s decision finding no likelihood of confusion with “FURLA”.

[Opposition case no. 2022-900128, decided on April 6, 2023]

FURNA

The opposed mark, consisting of the wordmark “FURNA” in standard character, was filed for use on clothing, dresses, footwear, garters, waistbands, belts [clothing] and other goods in class 25 with the JPO by URBAN TEX Co., Ltd., a Japanese company on November 1, 2021.

The company opens an online shop for wedding dresses under the trade name “FURNA” on Rakuten online shopping platform.

In accordance with a request for accelerated examination from the company based on the actual use of the mark on any one of the designated goods, the JPO carried out a substantive examination and granted protection on January 14, 2022. Subsequently, the mark was published for post-grant opposition on January 27, 2022.

Opposition by FURLA

Italian luxury retailer FURLA S.P.A. filed an opposition on May 28, 2022, and claimed the opposed mark shall be canceled in contravention of Article 4(1)(xi), (xv), and (xix) of the Japan Trademark Law.

FURLA argued a mere difference of “N” and “L” in the fourth letter of the respective word would be trivial and thus inadequate to find a low degree of similarity in appearance and sound. Given a close association between the goods in question and the opponent goods covered by earlier registrations for the FURLA marks that have acquired a high level of recognition among relevant consumers in Japan, the consumers are likely to confuse a source of the goods bearing the opposed mark with Furla or mistakenly consider it from an entity systematically or economically connected with FURLA S.P.A.

JPO decision

The JPO Opposition Board admitted a high level of recognition of the mark “FURLA” in connection with bags among relevant consumers as a source indicator of the opponent.

In the meantime, the Board questioned if both marks are deemed similar in visual, aural, and conceptual points of view by stating:

Comparing the opposed mark and the opponent mark, “FURNA” and “FURLA” differ in appearance in the fourth letter of “N” and “L” but the difference in these letters in the short five-character composition has a substantial effect on the overall composition, and they are sufficiently distinguishable in appearance.

Pronunciation arising from “FURNA” and “FURLA” are different even when they are called in succession, and there is no risk of mishearing each other.

The opposed mark is conceptually distinguishable because it does not give rise to any specific meaning, whereas the opponent mark has been known as “Furla’s brand”.

Even if the “FURLA” mark is widely recognized among Japanese consumers as an indication of the opponent’s business, given the low degree of similarity between “FURNA” and “FURLA”, the Board has no reason to believe that the consumers having a glimpse of the opposed mark used on the goods in question would associate or recall the opponent mark.

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

L’Oréal loses trademark fight against “NOREAL”

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The Japan Patent Office (JPO) dismissed an opposition filed by L’Oréal against TM Reg no. 6520304 for the wordmark “NOREAL” in class 3 due to dissimilarity to the L’OREAL mark and unlikelihood of causing confusion with L’Oréal.

[Opposition case no. 2022-900195, decided on April 5, 2023]

NOREAL

The opposed mark, consisting of the wordmark “NOREAL” in standard character, for use on cosmetics, soaps, shampoos, perfumes, fragrances, and other goods in class 3 was filed by a Japanese individual with the JPO on May 20, 2021.

The JPO examiner, without raising any objection, granted protection of the opposed mark on January 7, 2022. Subsequently, the mark was published for post-grant opposition on March 9, 2022.

Opposition by L’Oréal

Global cosmetic giant L’Oréal filed an opposition on May 10, 2022, and claimed the opposed mark shall be canceled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law.

In the opposition brief, L’Oréal argued, given a close resemblance in appearance and sound between the world-famous mark “L’OREAL” and the opposed mark “NOREAL”, there is a high degree of similarity between the marks and thus relevant consumers of goods in question are likely to confuse a source of cosmetics bearing the opposed mark with L’Oréal or any entity economically or systematically connected with the opponent.

JPO decision

Astonishingly, the JPO Opposition Board found it unobvious from the produced evidence that the L’OREAL mark has been highly recognized as a source indicator of the opponent among a wide range of consumers.

On the assessment of the similarity of marks, the Opposition Board considered a difference between “N” and “L'” at the beginning of respective marks would play a significant role in distinguishing the appearance and sound of wordmark and have a substantial influence on the visual and aural impression of two marks, which consist of relatively few letters, as a whole. Therefore, the Board has a reason to believe that both marks are sufficiently distinguishable in appearance and sound. Since both marks do not give rise to any specific meaning, it is unable to assess the conceptual similarity of the two marks. Based on the above findings, the Board found both marks are dissimilar from visual, aural, and conceptual points of view.

Due to insufficient brand recognition of the L’OREAL mark and the low degree of similarity between the two marks, “NOREAL” and “L’OREAL”, the Board has a reason to believe relevant consumers are unlikely to confuse a source of cosmetics bearing the NOREAL mark with L’Oréal regardless of overlapping goods and consumers.

Based on the foregoing, the JPO did not side with L’Oréal and decided the validity of the opposed mark as the status quo.

Trademark case: Wilson vs Werwilson

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The Japan Patent Office (JPO) dismissed an opposition filed by Wilson Sporting Goods Company against TM Reg no. 6520718 for the mark “Werwilson” with a device in class 25 by finding less likelihood of confusion with “Wilson”, the iconic American sporting goods brand when used on goods in class 25.

[Opposition case no. 2022-900124, decided on March 29, 2023]

Opposed mark

The opposed mark, consisting of two literal elements “Wer”, “wilson” and encircled “w” device placed in between them (see below), was sought registration by a Chinese company for use on apparel, footwear, and sports shoes in class 25 with the JPO on July 9, 2021.

The JPO granted protection of the opposed mark and registered on March 1, 2022, and published it for a post-grant opposition on March 9, 2022.

Opposition by Wilson

On March 28, 2022, Wilson Sporting Goods Company, originally known as the Ashland Manufacturing Company, created in 1913 in Chicago (US), a subsidiary of Amer Sports Corporation, opposed registration and claimed the opposed mark is confusingly similar to earlier registrations for their iconic mark “Wilson” (see below) and thus shall be canceled in contravention of Article 4(1)(xi), (xv) and (xix) of the Japan Trademark Law.

Wilson argued that visually the opposed mark can be conceived of as “We’re Wilson”. By virtue of a high level of brand recognition of “Wilson”, the opposed mark would give rise to a pronunciation and meaning of “Wilson” from its prominent portion. Given a close association of goods and consumers between the opposed mark and Wilson, relevant consumers are likely to confuse a source of the goods in question bearing the opposed mark with Wilson or another entity economically or systematically connected with the opponent.

JPO decision

The JPO Opposition Board admitted the famousness of the “Wilson” mark as a source indicator of the opponent in connection with tennis and sporting goods among relevant consumers in Japan.

However, the Board found that the opposed mark would not be conceived of as “We’re Wilson” from its configuration. Besides, the opposed mark does not give rise to the pronunciation and meaning of “Wilson” as a whole or in part.

If so, both marks are dissimilar from visual, phonetical, and conceptual points of view.

In view of the low degree of similarity of the marks, the Board has a reason to believe that relevant consumers with ordinary care are unlikely to confuse the source of goods in question using the opposed mark with Wilson.

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