In a recent administrative decision to trademark opposition filed by Jaguar Land Rover Limited who alleged trademark registration no. 6011666 for word mark “DISCOVERER” designating goods of “batteries and cells, telecommunication machines and apparatus, recorded video discs, and other goods” belonging to class 9 owned by a Japanese business entity is confusingly similar to “DISCOVERY” famous for four-wheel-drive vehicles produced by the opponent, the Opposition Board of Japan Patent Office (JPO) dismissed the opposition due to an unlikelihood of confusion.
[Opposition case no. 2018-900086, Gazette issue date: January 25, 2019]
Opposed mark – DISCOVERER
Opposed mark (trademark registration no. 6100666) just consists of a term “DISCOVERER” in a plain roman type and its transliteration in a Japanese katakana character.
The mark was filed on April 24, 2017 by designating “batteries and cells, telecommunication machines and apparatus, recorded video discs, and other goods” belonging to class 9.
JPO, going through substantive examination, admitted registration and published for opposition on February 13, 2018.
Opposition by Land Rover “DISCOVERY”
On April 6, 2018, before the lapse of a two-months opposition period, Jaguar Land Rover Limited filed an opposition, stating that relevant consumers are likely to confuse or misconceive opposed mark with opponent or any business entity systematically or economically connected with Land Rover due to high popularity of “DISCOVERY” for Land Rover SUV and similarity between “DISCOVERY” and “DISCOVERER”.
Article 4(1)(xv)
Jaguar Land Rover sought to retroactively cancel opposed mark in relation to all designated goods in class 9 based on Article 4(1)(xv) of the Trademark Law.
Article 4(1)(xv) provides that a mark shall not be registered where it is likely to cause confusion with other business entity’s well-known goods or services, to the benefit of brand owner and users’ benefits.
Board decision
The Board negated a certain degree of popularity and reputation of opponent mark “DISCOVERY”, stating that produced materials are insufficient and non-objective to demonstrate famousness of the cited mark.
Besides, the Board found that both marks are sufficiently distinguishable from visual, phonetic and conceptual points of view and deemed dissimilar.
Even if car makers are looking at ways to speed up development of self-driving and recent cars consist of batteries and telecommunication apparatus in fact, given non-originality of opponent “DISCOVERY” mark and remoteness between opposed goods and vehicles, the Board held that relevant consumers of opposed goods are unlikely to confuse or associate “DISCOVERER” with opponent or any business entity systematically or economically connected with Jaguar Land Rover Limited.
Thus, opposed mark shall not be revocable to Article 4(1)(xv) of the Trademark Law and dismissed the opposition entirely.