In a recent decision, the Japan Patent Office (JPO) Appeal Board sided with Cobra Golf Incorporated, represented by MARKS IP LAW FIRM, and disaffirmed the examiner’s rejection by finding dissimilarity between TM Reg no. 6208087 and Cobra’s mark “MIM” for use on golf clubs.
[Appeal case nos. 2023-16540, decided on July 9, 2024]
Cobra Golf “MIM”
Cobra Golf Incorporated, one of the leasing US golf club and golf equipment manufacturer, applied for registration of wordmark “MIM” in standard character with the JPO on December 7, 2020 for use on golf clubs in class 28 (TM App no. 2020-151063).
Cobra Golf uses the mark on their golf irons produced with a new innovative “MIM” technology which stands for ‘Metal Injection Molding’.
The JPO examiner rejected the mark in contravention of Article 4(1)(xi) of the Trademark Law due to a conflict with an earlier trademark registration no. 6208087 for a composite mark consisting of the word “MITZKAN MUSEUM” with a device that can be seen as the word “MIM” (see below) in class 21 on June 30, 2023.
Marks IP Law Firm, on behalf of Cobra Golf, filed an appeal with the JPO on September 29, 2023, arguing that the cited mark is dissimilar to the word mark “MIM” because the figurative element of the cited mark would not be considered as a word “MIM” due to its stylization, but rather as a design consisting of a vertical line in between two “M” letters representing an initial letter of “MIZKAN” and “MUSEUM” respectively.
JPO decision
The JPO Appeal Board found that the cited mark would not give rise to a pronunciation of “MIM” from the figurative element by stating that:
There is a slight possibility that the building-like figures on the left and right sides of the upper part of the cited mark will be perceived as the letter “M” from appearance. However, the Board considers that the relevant consumers are unlikely to find so because of the considerable stylization. The vertical line between the letters, combined with the fact that it is of a shorter length than the letters, will also not be identified as the letter “I.”
It is therefore reasonable to conclude that the upper part of the cited mark would never be immediately recognized as representing the word “MIM” as a whole. Rather, the relevant consumers would recognize it only as a representation of a design with no specific meaning in its entirety.
Given the upper part of the cited mark has neither sound nor meaning, both marks, when considered globally, are easily distinguishable from visual, phonetical and conceptual points of view and unlikely to cause confusion when used on goods in class 28.
Based on the foregoing, the Board held that the examiner errored in applying Article 4(1)(xi) and decided to grant registration of Cobra’s mark “MIM”.