Chrysler Lost Trademark Opposition against “GEEP”

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:

  1. 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.
  2. 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.
  3. 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.

Trademark Opposition: JEEP vs JEIP321

The Japan Patent Office (JPO) dismissed an opposition filed by Fiat Chrysler Automobiles (FCA US) LLC against TM Reg no. 6586965 for the wordmark “JEIP321” to be used on covers and accessories for cars in class 12 by finding dissimilarity to and unlikelihood of confusion with the “JEEP” mark.

[Opposition case no. 2022-900391, decided on September 28, 2023]

Opposed mark

The wordmark “JEIP321” was filed by a Chinese individual for use on steering wheels covers for automobiles, vehicle covers [shaped], upholstery foe vehicles, two-wheeled trolleys, windscreen wipers, anti-dazzle devices for vehicles, ashtrays for automobiles, rearview mirrors, mudguards, cigar lighters for automobiles in class 12 with the JPO on January 25, 2022 (TM App no. 2022-7763).

The JPO admitted registration on July 13, 2022, and published for opposition on July 22, 2022.


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 September 14, 2022.

FCA argued the opposed mark shall be canceled in contravention of Article 4(1)(xi) 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 “JEIP321” and the opponent’s famous earlier registered mark “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.

Inter alia, FCA pointed out that the literal element “JEIP” shall be considered as a prominent portion of the opposed mark since numerals lack distinctiveness per se. If so, the opposed mark is confusingly similar to the “JEEP” mark from visual and phonetical points of view.


JPO Decision

The JPO Opposition Board admitted a high degree of reputation and popularity of the “JEEP” mark in connection with four-wheeled automobiles.

In assessing the similarity of the mark, the Board found that a prominent portion of the opposed mark “JEIP” and the “JEEP” mark are less likely to cause confusion from visual, phonetical and conceptual points of view by stating that:

“From appearance, there is a difference in the third letter, “I” and “E” between “JEIP” and “JEEP”. The effect would be anything but negligible on the overall visual impression of both marks, since they are composed of only four characters.

Comparing the sound of “JEIP” with “JEEP”, there is a clear difference at the beginning, “dʒeɪ” and “dʒiː” It shall cause a significant distinction on the overall tone and impression in a short three-sound structure to the extent that relevant consumers would not mishear them when pronounced in unison.

Conceptually, both marks are dissimilar because the opposed mark does not give rise to any specific meaning. In the meantime, the opponent mark “JEEP” has a meaning of ‘Jeep brand 4WD vehicles.’”

Even though “JEEP” has become famous in relation to 4WD vehicles, the Board has no reason to believe that relevant consumers would associate the goods in question bearing the opposed mark “JEIP321” with the opponent or any business entity systematically or economically connected with FCA because of a low degree of similarity between the marks.

Based on the foregoing, the Board found the opposed mark shall not be canceled in contravention of Article 4(1)(xi) and (xv), and decided to dismiss the entire opposition.

Chrysler Wins Japan Trademark Invalidation Trial over “Jeeper”

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).

Chrysler loses trademark opposition against “JEEPER” in Japan

The Japan Patent Office (JPO) dismissed an opposition filed by Fiat Chrysler Automobiles (FCA US) LLC against TM Reg no. 6317667 for the wordmark “Jeeper” to be used on hand tools in class 8 by finding the unlikelihood of confusion with “JEEP” vehicles.

[Opposition case no. 2021-900035, Gazette issued date: April 28, 2022]

Opposed 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).

The JPO admitted registration on November 17, 2020, and published for opposition on December 8, 2020.


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 January 26, 2021.

FCA argued the opposed mark shall be canceled in contravention of Article 4(1)(xi) and (xv) of the 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 “Jeeper” and the opponent’s famous earlier registered mark “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.


JPO Decision

The JPO Opposition Board admitted a certain degree of reputation and popularity of the opponent trademark “JEEP” in connection with automobiles. However, the Board questioned if relevant consumers of hand tools have the same perception.

In assessing the similarity of the mark, the Board held that “Jeeper” and “JEEP” are less likely to cause confusion from visual and phonetical points of view. Conceptually, both marks are distinctively dissimilar because the opposed mark does not give rise to any specific meaning. In the meantime, the opponent mark “JEEP” has a meaning of ‘Jeep brand 4WD vehicles.’

Given that “JEEP” has not become famous in relation to the hand tools in question, the Board has no reason to believe that relevant consumers would associate the goods bearing the mark “Jeeper” with the opponent or any business entity systematically or economically connected with Chrysler in view of a low degree of similarity between the marks.

Based on the foregoing, the Board found the opposed mark shall not be canceled in contravention of Article 4(1)(xi) and (xv), and decided to dismiss the entire opposition.