タグ: Calvin Klein

Calvin Klein vs Cailin Kailun

Posted on

The Japan Patent Office (JPO) dismissed an opposition against TM Reg no. 6686442 for wordmark “Cailin Kailun” in class 25 claimed by Calvin Klein Trademark Trust who argued a likelihood of confusion with “Calvin Klein”.
[Opposition case no. 2023-900108, Gazette issued date: January 26, 2024]

Cailin Kailun

A Chinese individual applied for registration of the wordmark “Cailin Kailun” in standard characters for use on coats, suits, trousers, T-shirts, dresses, socks, stockings, underwear and other clothing, and sports shoes in class 25 on September 1, 2022.

Apparently, men’s underwear bearing the mark is sold online.

The JPO examiner granted protection of the mark on January 30, 2023.

Opposition by Calvin Klein

On May 15, 2023 within two-month statutory deadline starting from the issued date of TM gazette on April 12, 2023, Calvin Klein Trademark Trust filed an opposition against the Cailin Kailun mark and claimed cancellation in contravention of Article 4(1)(vii) and (xv) of the Trademark Law.

Calvin Klein argued that the opposed mark “Cailin Kailun” is confusingly similar to a global fashion brand “Calvin Klein” in appearance and sound. In view of a high degree of distinctiveness and popularity of the “Calvin Klein” mark and close relatedness between the goods in question and the business lineup of Calvin Klein, relevant consumers with an ordinary care would confuse a source of the goods in question bearing the mark “Cailin Kailun” with Calvin Klein even if both marks are not similar in concept.

JPO decision

The JPO Opposition Board admitted the cited mark “Calvin Klein” has been well-known among consumers as a source indicator of the claimant’s business in relation to clothing.

In the meantime, the Board denied similarity of the marks by assessing clear distinctions in appearance, sound and meaning.

Comparing both marks, it is obvious that they start with the same spelling of ‘Ca’ at the first word, and ‘K’ at the second word, and end with ‘n’ at both words. However, because of clear distinction at the other letters, they are easily distinguishable in appearance.

Although both marks have the same sounds at the beginning, in the fourth and last, due to severe difference in other five sounds, they are audibly distinguishable.

There is no similarity in concept because the opposed mark has no meaning at all. Meanwhile, the cited mark gives rise to a meaning of “famous brand called Calvin Klein”.

Given a low degree of similarity between the marks, the Board did not find any reason to believe that relevant consumers would associate or connect the goods bearing the opposed mark with “Calvin Klein” even though the goods in question is highly related to the business lineup of Calvin Klein.

Based on the foregoing, the Board found the opposed mark shall not be cancelled in contravention of Article (1)(vii) and (xv), and decided to dismiss the opposition entirely.

Calvin Klein defeated with trademark battle over “CK”

Posted on

Japan Patent Office (JPO) dismissed an opposition by Calvin Klein Trademark Trust, a well-known name in fashion, who claimed “CK” device mark is likely to cause confusion with Calvin Klein when used on various designated goods in class 16 and 21. [Opposition case no. 2019-900068]

Opposed mark

Opposed mark, TM Registration no. 6102531, was filed in the name of Crecia Kasuga Co., Ltd., having its head office in Fuji city located at the southern base of Mt. Fuji, on February 22, 2018.

Opposed mark, consisting of two alphabetical letters “CK” and a device looking like Mt. Fuji or paper roll (see below), designates toilet paper, tissue paper, kitchen paper and other paper products for home use in class 16 and cleaning tools and washing utensils in class 21.

JPO granted to register opposed mark and published for registration on December 25, 2018.

Opposition

On February 22, 2019, Calvin Klein Trademark Trust filed an opposition against the CK device mark.

Calvin Klein argued that opposed mark is subject to cancellation in violation of Article 4(1)(xv) of the Trademark Law on the grounds that “CK” and “ck” have acquired such fame as a source indicator of famous fashion brand “Calvin Klein” that, upon seeing the opposed mark used on goods in class 16 and 21, the average consumer would be led to infer the existence of a connection to the owner of the famous brand.

Board decision

The Opposition Board pointed out that, from the produced evidences, “CK” has been ordinarily used in conjunction with or adjacent to ‘Calvin Klein’ as well as “ck” and thus questioned whether “CK” and “ck” have become famous in itself as a source indicator of Calvin Klein among relevant traders and consumers at the time of both the application and the grant of registration of Opposed mark.

Besides, two alphabetical letters are deemed descriptive and unregistrable under the Japan Trademark Law. If so, unless opponent is successful in demonstrating acquired distinctiveness of “CK” or “ck”, a mere coincidence of two alphabetical letters is insufficient to find similarity between opposed mark and opponent’s marks.

Based on the foregoing, the Board concluded relevant traders and consumers are unlikely to confuse or associate the goods using opposed mark with opponent or any business entity economically or systematically connected with Calvin Klein. Therefore, opposed mark shall not be cancelled due to Article 4(1)(xv) of the Trademark Law.