タグ: PUMA

Letter of Protest protects PUMA from Free-rider

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The JPO examiner raised her objection on the ground that TM App no. 2022-76159 for the stylized mark “SHIBA” was confusingly similar to the world-famous mark “PUMA” and filed with a malicious intent to harm PUMA as well as public interest.

Opposition vs Letter of Protest

Whenever a brand owner discovers a trademark application by a third party that may cause confusion or detrimental effect on your business, the owner is eager to block its registration by any means.

Opposition is one of the actions universally taken in such cases, however, it should be noted the success rate of opposition has been remarkably low (11% on average in the past six years) in Japan. Besides, the Japan Trademark Law does provide only “post-grant opposition” and the JPO has full discretion in deciding whether to cancel the opposed mark. Assumably, these factors affect the rate getting lower.

In this respect, a “letter of protest” is probably a better option instead.

Any person can use the letter of protest to give the JPO evidence about the registrability of a trademark in a pending application. There is no public data to show how effective the letter works to block the protested trademark, however, in my experience, as a Japanese trademark practitioner for twenty years, more than half of the letters resulted in a rejection of the protested trademark.

Protest to “SHIBA” mark

MARKS IP LAW FIRM, acting on behalf of PUMA SE, sent a letter of protest against TM App no. 2022-76159 for the stylized mark “SHIBA” (see below) in class 25 on November 25, 2022.

In the letter, we argued the protested mark is likely to cause confusion with PUMA SE because of its resemblance to the world-famous sports brand “PUMA”.

On February 17, 2023, the JPO examiner issued an office action refusing registration of the SHIBA mark in contravention of Article 4(1)(vii), (xi), (xv), (xix) of the Japan Trademark Law by stating that:

The protested mark gives rise to a pronunciation of “Shiba” and the concept of “Shina Inu; a breed of small thick-coated agile dogs developed in Japan”.

Even though there is a difference in meaning and sound, by virtue of the remarkable degree of reputation and popularity of the PUMA mark and the impressive resemblance of both marks in appearance, the examiner has a reason to believe relevant consumers would confuse a source of the designated goods of class 25, namely clothing, belts, footwear, sportswear, sports shoes, and headgear, bearing the SHIBA mark with PUMA.

Besides, there is reasonable doubt that the applicant must have been aware of PUMA and applied for the protested mark with malicious intent to harm not only PUMA but also the public interest.

Unless the applicant is successful in persuading the examiner of the dissimilarity of the mark, the unlikelihood of confusion with PUMA, and the non-existence of malicious intent, it will be rejected as a matter of course.

It is my advice to take advantage of the letter of protest, rather than opposition if you want to protect your brand against free-rider in Japan.

PUMA wins opposition over Formstrip mark

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The Opposition Board of Japan Patent Office (JPO) sided with PUMA SE in trademark opposition against TM Reg no. 6269999 for the stripe device by finding a likelihood of confusion with PUMA’s iconic “Formstrip”.

[Opposition case no. 2020-900248, decision date: June 21, 2022]

Opposed mark

The opposed mark (see below right) was filed with the JPO in the name of Strato Trading Group Inc, a US company, for use on footwear, sports shoes, headwear, trousers, pants, bottoms, jackets, tops, and shirts in class 25 on July 29, 2019.

The JPO examiner did not issue any office action and granted protection of the opposed mark on June 16, 2020 (TM Reg no. 6269999). The opposed mark was published for opposition on August 4, 2020.

PUMA Formstrip

MARKS IP LAW FIRM, as a representative of PUMA SA, filed an opposition against the opposed mark on October 1, 2020, and argued the mark shall be canceled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law by citing earlier trademark registrations for famous Formstrip mark (see above left) in class 25.

In 1958 PUMA trademarked their “Formstrip” – an ever-expanding band of color that extended from the heel of the shoe, before diving into the soles along the sides. This particular shape was originally created to stabilize the foot inside the shoe, is now a typical PUMA trademark found on almost all PUMA shoes, and is used as a design element on our apparel products.

JPO Decision

By taking into consideration the produced evidence and substantial use of the cited mark on PUMA shoes that have annual sales exceeded JP15billion-yen and held a 4% market share in Japan for long years, the Opposition Board found “the Formstrip mark is highly distinctive and has acquired a remarkable degree of reputation and popularity as a source indicator of PUMA shoes among relevant consumers at the time of filing and registration of the opposed mark.

Besides, the Board found a high degree of similarity of marks by stating that both marks have the similar configuration of gradually becoming narrower and narrower with a gentle curve from a wide width. Although there are some differences in detail, such as the slight curvature at the narrow end, the opposed mark can be conceived of as a reversed version of the Formstrip.

In view of a close association between the goods in question and PUMA’s business, attention to be paid by relevant consumers, and the totality of circumstances and transactions in the relevant industry, the Board has a reasonable ground to believe that relevant consumers and traders are likely to confuse the source of the goods bearing the opposed mark from PUMA or an entity economically or systematically connected with PUMA.

Based on the foregoing, the Board decided to cancel the opposed mark entirely in contravention of Article 4(1)(xv) of the Japan Trademark Law.

Trademark Battle – PUMA vs KUMA

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The Japan Patent Office (JPO) decided to invalidate trademark registration no. 5661816 for a stylized word “KUMA”, which means ‘bear’ in Japanese, due to similarity to, and a likelihood of confusion with a world-renowned sports brand, PUMA. [Invalidation case no. 2019-890021, Gazette issue date: January 31,2020]

KUMA mark

Disputed mark (see below),consisting of a stylized word “KUMA” with a partial island shape of Hokkaido, Japan’s most northerly main island, depicted on the inside of letter “U”, was filed on October 24, 2013 by a Japanese business entity having its principal place of business in Hokkaido over various goods in class 25 including sportswear and shoes.

It was found Applicant has used the KUMA mark on T-shirts and other goods with a bear silhouette facing left in the upper right of the mark.

The JPO admitted registration on April 4, 2014 and published for opposition on May 13, 2014.

PUMA’s Opposition / Invalidation Trial

On June 13, 2014, PUMA SE filed an opposition against the KUMA mark based on Article 4(1)(vii) and 4(1)(xv) of the Trademark Law. PUMA argued relevant consumers or traders are likely to confuse or misconceive a source of disputed mark with PUMA when used on designated goods in class 25 because of a high reputation and close resemblance between PUMA word logo and the KUMA mark.

The Opposition Board admitted a high degree of popularity and reputation of PUMA word logo, however, Board dismissed the opposition entirely due to unlikelihood of confusion because of a low degree of similarity between the marks (Opposition case no. 2014-900177).

Subsequently, PUMA SE entrusted the case to us. On April 3, 2019, just one day before the lapse of five-year Statute of limitations, MARKS IP LAW FIRM on behalf of PUMA SE requested for an invalidation trial and challenged invalidating the KUMA mark based on Article 4(1)(vii), (xi), (xv) and (xix) of the Japanese Trademark Law.

Article 4(1)(vii) of the Trademark Law prohibits any mark likely to cause damage to public order or morality from registration.

Article 4(1)(xi) is a provision to refrain from registering a junior mark which is deemed identical with, or similar to, any senior registered mark on identical or similar goods/service.

Article 4(1)(xv) prohibits to register a trademark which is likely to cause confusion with a business of other entity.

Article 4(1)(xix) prohibits to register a trademark which is identical with, or similar to, other entity’s famous mark, if such trademark is aimed for unfair purposes, e.g. gaining unfair profits, or causing damage to the entity.

Invalidation Decision

The Invalidation Board reversed the opposition decision and decided in favor of PUMA on all grounds by finding that:

  1. PUMA word logo has been continuously well-known in Japan for a source indicator of PUMA in connection with sports shoes, sportswear and others among relevant consumers and traders.
  2. A mere difference on initial letter of both marks and the Hokkaido island shape shall be insufficient to overturn an overall impression of the mark from visual and phonetic points of view. Conceptually, the KUMA mark, having a meaning of bears in Japanese, would give rise to a similar meaning with PUMA word logo, four-footed mammal. If so, by taking into consideration a high degree of reputation and popularity of PUMA word logo, both marks shall be deemed similar.
  3. Configuration of PUMA word logo looks unique, creative, and impressive in itself.
  4. Besides, given close association between designated goods in class 25 and PUMA’s business, relevant consumers of the goods in question with an ordinary care are likely to confuse its source with PUMA.
  5. It has good reasons to believe that the applicant of disputed mark did fraudulently apply the KUMA mark for registration with an aim to free-ride and dilute PUMA’s goodwill based on totality of the circumstances.
  6. If so, applicant must have filed disputed mark with a malicious intention to dilute or do harm to PUMA’s goodwill, which was impermissible to protect public order and morals

Based on the foregoing, the JPO decided to invalidate the KUMA mark based on Article 4(1)(vii), (xi), (xv) as well as 4(1)(xix) of the Japan Trademark Law.

PUMA’s Fight Against Logo Parody

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On August 1, 2019, the Japan Patent Office (JPO) decided to invalidate trademark registration no. 5861923 for composite mark consisting of a word “KUMA”, which means ‘bear’ in Japanese, and the bear device by finding a likelihood of confusion with a world-renowned sports brand, PUMA and detrimental effect to public policy or morality.
[Invalidation case no. 2019-890001]

KUMA device mark

Disputed mark (see below) was filed on January 7, 2016 by a Japanese business entity in Hokkaido, Japan’s most northerly main island, an otherworldly volcanic land with eastern Asia’s highest concentration of brown bears, over various goods in class 25 including sportswear and shoes.

Precedently, applicant applied for registration of following trademarks, consist of four alphabets in bold font and an animal silhouette facing left depicted in the upper right of the alphabets, on goods in classes 9, 14, 16, 24, 25 and 28, but in vain.

“UUMA” means ‘horse’, “BUTA” means ‘pig’, “KUMA” means ‘bear’ in Japanese. It is obvious that both literal element and figurative element of respective mark give rise to a same meaning, which is the same for PUMA.

It is likely the applicant intended to use these marks on souvenirs from Hokkaido since we get accustomed to see scenes at a famous tourist spot that T-shirts and other small items displayed at gift shops parody famous brands by featuring local specialty to attract tourists for fun.

PUMA’s Opposition / Invalidation Trial

On September 26, 2016, PUMA SE filed an opposition against the KUMA mark based on Article 4(1)(vii) and 4(1)(xv) of the Trademark Law. PUMA argued relevant consumers or traders are likely to confuse or misconceive a source of disputed mark with PUMA when used on designated goods in class 25 because of a high reputation and close resemblance between PUMA logo and the KUMA mark.

The Opposition Board admitted a high degree of popularity and reputation of PUMA logo, however, the Board dismissed the opposition entirely due to unlikelihood of confusion as a result of low degree of similarity between the marks (Opposition case no. 2016-900308).

Subsequently, PUMA SE entrusted the case to MARKS IP LAW FIRM. On New Year’s Eve of 2018, MARKS IP LAW FIRM on behalf of PUMA SE requested for an invalidation trial and sought to annul the KUMA mark on the same grounds.

Invalidation Decision

The Invalidation Board reversed the opposition decision and decided in favor of PUMA by finding that:

  1. PUMA logo has been continuously famous as a source indicator of PUMA in connection with sports shoes, sportswear and others among relevant consumers and traders in Japan.
  2. Configuration of PUMA logo looks unique, creative, and impressive in itself.
  3. Regardless of visual difference in detail between the marks, overall impression of both marks is quite similar.
  4. Given close association between designated goods in class 25 and PUMA business, relevant consumers of the goods with an ordinary care are likely to confuse its source with PUMA
  5. Besides, it is presumed the current registrant of disputed mark was knowingly assigned a similar KUMA mark that applicant had a fraudulent intent to free-ride and dilute PUMA’s goodwill.
  6. If so, current registrant must have filed disputed mark with a fraudulent intention to dilute or do harm to PUMA’s goodwill given a close resemblance of between disputed mark and a rejected KUMA mark (see above right).

Based on the foregoing, the JPO decided to invalidate disputed marks based on Article 4(1)(xv) as well as 4(1)(vii) of the Japan Trademark Law.