The Japan Patent Office (JPO) dismissed an opposition filed by Fiat Chrysler Automobiles (FCA US) LLC against TM Reg no. 6689119 for the mark “GEEP” with device (cl. 18, 25) due to dissimilarity to and unlikelihood of confusion with the mark “JEEP”.
[Opposition case no. 2023-900142, decided on May 31, 2024]
“GEEP”
A Japanese individual filed a trademark application for the mark “GEEP” with device (see below) for use on goods “bags and pouches; umbrellas; canes; clothing for pets” and others in class 18, and “clothing; belts; footwear; masquerade costumes; sports shoes; sportswear” and others in class 25 with the JPO on October 14, 2022 (TM App no. 2022-118091).
The JPO examiner did not issue an office action to the mark and granted protection on April 4, 2023. Subsequently, the mark was published for post-grant opposition on April 20, 2023.
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 June 19, 2023.
FCA argued the opposed mark shall be canceled in contravention of Article 4(1)(vii), (xi), (xv) 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 “GEEP” and the opponent’s famous earlier registered mark “JEEP.”
Article 4(1)(xi) is a provision that prohibits the registration of a junior mark that is deemed identical with, or similar to, any earlier registered mark.
FCA contended that the opposed mark “GEEP” is similar to its own trademark “JEEP,” a globally famous automobile brand given a mere difference in the first letter “G” and “J”. Besides, the goods in question are identical or similar.
Article 4(1)(xv) prohibits the registration of trademarks that are likely to cause confusion with the business of other entities.
FCA contended that given the high degree of resemblance between the opposed mark and “JEEP”, relevant consumers of the goods in question are likely to confuse a source of goods bearing the opposed mark with the opposing party.
JPO decision
The JPO Opposition Board admitted that the mark “JEEP” has been widely recognized among general consumers to indicate the source of FCA’s goods and business.
However, the Board found both marks dissimilar on the grounds that:
- There are visual distinctions in the presence and absence of the blue device and between the first letter “G” and “J”. Thees differences are significant and clearly distinguishable in appearance. Consequently, both marks are anything but confusingly similar in appearance.
- The opposed mark does not give rise to a specific concept, whereas the cited mark has a meaning of “FCA’s automobile brand.” Accordingly, there is no risk of confusion in concept.
- Relevant consumers would consider respective mark different even if both marks have the same sound, because of clear distinction in appearance and concept as well as the overall impression of both marks.
By taking account of a low degree of similarity between the opposed mark and “JEEP”, and remote association between the goods in question and automobiles, the Board has no reason to believe that relevant consumers are unlikely to confuse the source of goods bearing the opposed mark with “JEEP”.
Based on the above findings, the Board conclude that the opposition was without merit and thus granted protection to the opposed mark as the status quo.