GAP Unsuccessful in Trademark Opposition against “Gapace”

The Japan Patent Office (JPO) dismissed an opposition filed by the US apparel company, Gap (ITM) Incorporated, against TM Reg no. 6304400 for wordmark “Gapace” to be used on apparel in class 25 by finding dissimilarity to and the unlikelihood of confusion with “GAP.”

[Opposition case no. 2020-900346, Gazette issued date: December 24, 2021]

Opposed mark

The wordmark “Gapace” was filed by a Chinese individual for use on various goods and apparel belonging to class 25 with the JPO on October 15, 2019 (TM App no. 2019-132880).

The JPO admitted registration on October 15, 2020, and published for opposition on November 4, 2020.


Opposition by GAP

To oppose against registration within a statutory period of two months counting from the publication date, Gap (ITM) Inc. filed an opposition against the opposed mark on December 24, 2020.

GAP argued the opposed mark shall be canceled in contravention of Article 4(1)(xi), (xv), and (xix) of the Trademark Law because of the remarkable reputation and popularity of the GAP mark as a source indicator of US apparel giant and a high degree of similarity between the opposed mark “Gapace” and the opponent’s famous earlier registered mark “GAP.”

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.

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


JPO Decision

To my surprise, the JPO Opposition Board denied a substantial degree of reputation and popularity of the opponent trademark “GAP” in connection with apparel by stating that the produced evidence failed to demonstrate sales amount and its market share in Japan. A mere reference to the fact that the opponent has launched an apparel business in Japan since 1994 and promoted apparel bearing the GAP mark for sale at their 150 stores nationwide is insufficient. Likewise, a fact that GAP was ranked 4th in the Top 10 clothing retailers in the world in 2021 is not persuasive to find a high degree of popularity among relevant consumers in foreign countries at the time of both filling the opposed mark and registration.

In assessing the similarity of the mark, the Board held “GAP” and “Gapace” are totally dissimilar from visual and phonetical points of view. Conceptually, both marks are not similar because the opposed mark does not give rise to any specific meaning. In the meantime, the opponent mark “GAP” has a meaning of ‘separation in space.’

Given the opponent mark “GAP” was not proven to have become famous in relation to the goods in question, the Board found it is unlikely that relevant consumers would conceive the literal element of “Gap” as a prominent portion of the opposed mark when used on apparels.

Based on the foregoing, the Board had no reasonable ground to believe the opposed mark shall be canceled in contravention of Article 4(1)(xi), (xv), and (xix), and decided to dismiss the entire opposition accordingly.

DIOR Failed to Cancel Trademark “DIORLV”

The Japan Patent Office (JPO) did not side with Christian Dior Couture in a trademark opposition against TM Reg no. 6305075 for word mark “DIORLV” in class 25 by finding dissimilarity and unlikelihood of confusion with a world-renowned fashion brand “Dior”.

[Opposition case no. 2020-900352, Gazette issued date: November 26, 2021]

“DIORLV”

The opposed mark, “DIORLV” in standard character, was sought for registration by a Chinese individual to be used on underwear, coats, pajamas, swimsuits, raincoats, footwear, caps and hats, gloves, trousers, skirts, yoga shirts, yoga pants in class 25 on December 25, 2019.

The JPO examiner granted protection of the opposed mark on October 13, 2020, and published for opposition on November 4, 2020.


Opposition by Christian Dior

To contend registration within a statutory period of two months counting from the publication date, Christian Dior Couture filed an opposition on December 25, 2020.

In the opposition, Christian Dior asserted the opposed mark shall be canceled in contravention of Article 4(1)(viii), (xi), (xv), (xix) of the Japan Trademark Law on the grounds that the opposed “DIORLV” mark contains the term “Dior”, an abbreviation of a world-renowned fashion brand “Christian Dior” and the opponent. Besides, the opposed mark will be perceived as a combination of abbreviation of two famous brands, “Christian Dior” and “Louis Vuitton.” If so, it is reasonable to consider the term “DIOR” as a prominent portion of the opposed mark that gives rise to the same sound and concept with the senior registered mark “Dior” owned by the opponent.


JPO decision

The Opposition Board of JPO admitted a substantial degree of reputation and popularity of “Dior” as an abbreviation of “Christian Dior” and the opponent in relation to fashion items, e.g., women’s dresses, bags, shoes, jewelry, glasses, watches, fountain pens, lighters.

In the meantime, the Board did not find the term “DIOR” as a prominent portion of the opposed mark. Based on the overall assessment of similarity, the Board held both marks dissimilarity by stating that:

  1. From appearance and pronunciation, “DIORLV” and “Dior” look sufficiently different with or without “LV” in the suffix position.
  2. Both marks are distinguishable in concept since “DIORLV” does not give rise to any specific meaning. “Dior” has a meaning of world-renowned fashion brand “Christian Dior.”

Given a low degree of similarity of the marks, it is unlikely that relevant consumers would recognize a source of goods in question bearing the opposed mark from Christian Dior Couture or any entity systematically or economically connected with the opponent.

Furthermore, the Board has no reason to believe the term “DIOR” of the opposed mark is separable from the term “LV” and independently plays a role in the source indicator. Accordingly, the opposed mark shall not be construed to contain a famous abbreviation of the opponent.

Based on the foregoing, the JPO dismissed the entire opposition and decided the opposed mark shall remain valid as the status quo.

Samsung Failed in TM Opposition against “Funky Galaxy”

The Japan Patent Office (JPO) dismissed an opposition filed by Samsung, the world’s largest smartphone maker, against TM Reg no. 6263685 for wordmark “Funky Galaxy” by stating the opposed mark would not cause confusion with Samsung “Galaxy” even when used on smartphones.

[Opposition case no. 2020-900229, Gazette issued date: November 11, 2021]

Opposed mark

On April 12, 2019, KING Entertainment Co., Ltd. applied for registration of wordmark “Funky Galaxy” in standard character for use on goods and services in classes 9, 16, 35, and 41. The goods in class 9 covers ‘telecommunication machines and apparatus; personal digital assistants; smartphones; electronic machines, and apparatus and their parts.’

JPO granted protection of the “Funky Galaxy” mark and published for opposition on July 14, 2020.


Opposition by Samsung

On September 11, 2020, Samsung, the world’s largest smartphone maker famous for Galaxy series mobiles, filed an opposition and claimed the Opposed mark shall be canceled in relation to goods and services in class 9, 35, and 41 in contravention of Article 4(1)(vii), (x), (xi), (xv) and (xix) of the Trademark Law by citing its own senior TM Reg nos. 4498554 “Galaxy”, IR1335923 “GALAXY STUDIO”, and 6309820 “Galaxy Harajuku”.

Article 4(1)(xv) is a provision to prohibit any mark from registering if it is likely to cause confusion with other business entities’ well-known goods or services.

Samsung argued the Opposed mark shall cause confusion with Samsung “Galaxy” especially when used on smartphones and related goods and services, given a remarkable reputation of “Galaxy” holding 3rd market share (7.4% in 2018, 8.0% in 2019, 9,0% in 2020) in Japan and the close resemblance between “Galaxy” and “Funky Galaxy”.


JPO Decision

The Opposition Board did not question a remarkable degree of reputation and popularity of trademark “Galaxy” as a source indicator of the opponent smartphones.

In the meantime, the Board did not consider the term “Galaxy” as a prominent portion of the opposed mark from visual and conceptual points of view. If so, the opposed mark shall be assessed in its entirety.

In the assessment of similarity of the mark, the Board found “Funky Galaxy” is visually and phonetically distinguishable from “Galaxy” due to the presence of “Funky.” From concept, both marks are less similar because the opposed mark does not give rise to a specific meaning and the opponent mark “Galaxy” means an extremely large group of stars and planets. Both marks have a low degree of similarity accordingly.

Even though “Galaxy” has been well-known as a source indicator of Samsung smartphones, and the goods and services in question are closely associated with smartphones, given a low degree of similarity between “Funky Galaxy” and “Galaxy”, the Board has a reasonable ground to believe that relevant consumers would not confuse a source of goods and services bearing the opposed mark “Funky Galaxy” with Samsung and any business entity economically or systematically connected with the opponent.

Based on the foregoing, the Board decided the allegations are groundless and the Opposed mark shall remain valid as the status quo.

TM Opposition: Claude Monet vs Monet Design

The Japan Patent Office (JPO) sided with ACADEMIE DES BEAUX-ARTS, an owner of Musée Marmottan Monet, and decided to cancel Japanese TM Registration no. 6245564 for a composite mark containing literal elements “Monet Design” in contravention of Article 4(1)(vii) of the Japan Trademark Law.

[Opposition case no. 2020-900171, Gazette issued date: October 29, 2021]

TM Reg no. 6245564

The opposed mark (see below) was sought for registration by a Japanese individual on various goods and services in class 16, 20, 25, 27, 35, 41, 42, and 45 on February 1, 2019.

The JPO granted protection on March 27, 2020, and published for opposition on May 12, 2020.


Opposition by ACADEMIE DES BEAUX ARTS

On July 10, 20210, before the lapse of a statutory period of two months counting from the publication date, ACADEMIE DES BEAUX-ARTS, an owner of Musée Marmottan Monet, filed an opposition. The opponent argued the opposed mark shall be canceled in contravention of Article 4(1)(vii) of the Japan Trademark Law by citing IR 958197 for the wordmark “CLAUDE MONET” (see below).

Article 4(1)(vii) of the Trademark Law prohibits any mark likely to cause damage to the social and public interest and disrupt the order of fair competition from registration. Trademark Examination Guidelines set forth any sign created after “the Name of a Historical Person or Name of a Well-Known or Famous Deceased Person” shall be objectionable under the article.

TEG provides six factors to apply the article.

  1. Popularity of the well-known or famous historical person;
  2. Acceptance of the name of the historical person among the nation or region;
  3. Availability of the name of the historical person;
  4. Relationship between the availability of the name of the historical person and the designated goods or services;
  5. Circumstance, purpose, or reason of the application; and
  6. Relationship between the historical person and the applicant.

JPO Decision

The JPO Opposition Board found the late Claude Monet has been a world-famous French painter known even among the general public in Japan. There is no doubt that the public at the sight of the word “Monet” would conceive the painter. Because of it, “Monet” has been highly recognized as an abbreviation of the late Claude Monet.

Besides, it is certain that the opponent inherits the property and paintings of Claudia Monet. In view of activities of the opponent as a public organization to exhibit, manage, and promote the paintings in France as well as other countries, the word “Monet” has not only played a significant role in the business field of sightseeing and art but also acquired substantial value as public property of France.

As for the opposed mark, the Board does not find a reason to believe that the word “Monet” inseparably combines with other elements. If so, relevant consumers are likely to consider the word “Monet” as a prominent portion of the opposed mark.

Based on the foregoing, the Board decided to cancel the opposed mark in contravention of Article 4(1)(vii).

Huda Kattan failed to take back trademark HUDABEAUTY

In a trademark opposition against TM Reg no. 6204338 for the stylized “HUDABEAUTY” mark in class 3, the Japan Patent Office (JPO) dismissed the opposition claimed by Huda Kattan due to insufficient famousness of trademark “HUDA BEAUTY” as a source indicator of a beauty mogul “Huda Kattan”.

[Opposition case no. 2020-900049, Gazette issued date: September 24, 2021]

Opposed mark

A Chinese company filed the stylized “HUDABEAUTY” mark (see below) on cosmetics; lotions; facial creams; lips; hand-cleaners; eye-shadows; whitening creams and other goods in class 3 with the JPO on November 22, 2018.

The JPO granted protection of the opposed mark on November 26, 2019, and published for opposition on January 7, 2020. [TM Reg. 6204338]


Opposition by Huda Kattan

On January 10, 2020, three days after the publishment of the opposed mark, Huda Kattan applied the same mark for use on cosmetics, perfumes, and fragrances in class 3 with the JPO and filed an opposition against TM Reg no. 6204338 on February 21, 2020.

The opponent argued the opposed mark shall be canceled in contravention of Article 4(1)(vii), (x), (xv) and (xix) of the Trademark Law because the opposed mark is completely identical with the stylized “HUDABEAUTY” mark that has acquired a substantial reputation and popularity as a source indicator of cosmetics line launched by famous beauty blogger “Huda Kattan” among relevant consumers at the filing date of the opposed mark.

In bolstering the famousness of the opponent mark, the opponent alleged the founder, Kattan, achieved popularity on Instagram, attaining more than 47 million followers as of 2020. Huda is ranked #1 on the “2017 Influencer Instagram Rich List” and was declared one of the “ten most powerful influencers in the world of beauty” and “The Richest Self-Made Women and one of the Top Three Beauty Influencers ” by Forbes magazine. She was chosen as one of “The 25 Most Influential People on the Internet” by Time magazine in 2017.

Internet search does not reveal any goods of the opposed party. Meanwhile, the opponent’s “HUDABEAUTY” cosmetics are available at Amazon Japan and other online platforms for domestic consumers.


JPO decision

Astonishingly, the JPO Opposition Board did not admit the famousness of the “HUDABEAUTY” mark as a source indicator of Huda Kattan by stating that:

  1. It is unclear if the merchants promoting “HUDABEAUTY” cosmetics at Amazon Japan and other online platforms are licensed distributor.
  2. Produced invoices to demonstrate the actual sale of opponent’s goods to Japanese consumers are irrelevant because these are issued on a date after the registration of the opposed mark.
  3. Even though the opponent and Huda Kattan make good use of SNS and have a very high number of followers and been awarded as a beauty influencer, the Board can’t find reasonable grounds to believe from these facts the opponent mark has acquired a certain degree of reputation and popularity among relevant consumers in Japan.
  4. The opponent did not produce any evidence to demonstrate sales amount, publication, and advertisement in Japan.

Since it is one of the requisites in applying Article 4(1)(vii), (x), (xv), and (xix) to have a certain degree of reputation and popularity among relevant consumers before the filing date of the opposed mark, regardless of the close duplication, the Board decided to dismiss the opposition entirely and allowed registration of the opposed mark as it is.


This case teaches us how significant to be a “first-filer” in registering and protecting trademarks in Japan.

Failed Opposition by Longines over Winged Hourglass logo mark

The Japan Patent Office (JPO) dismissed a trademark opposition claimed by Swiss luxury watchmaker, Longines Watch Co., Francillon Ltd., against Japanese trademark registration no. 6165986 by finding dissimilarity to Longine winged hourglass logo.
[Opposition case no. 2019-900301, Gazette issued date: August 27, 2021]


Opposed mark

Opposed mark, consisting of a winged device (see below right), was filed by a Chinese undertaking on July 11, 2018, for use on jewelry, clocks, watches, chronometers, and other goods in class 14.

The JPO admitted registration of the opposed mark on July 26, 2019, and published for post-grant opposition on August 20, 2019.


Opposition by Longines

To oppose against registration within a statutory period of two months counting from the publication date, Compagnie des Montres Longines, Francillon S.A. filed an opposition on October 18, 2019.

In the opposition brief, Longines asserted the opposed mark shall be retroactively canceled in contravention of Article 4(1)(vii), (x), (xi), and (xix) of Japan Trademark Law due to a resemblance to Longine’s famed winged hourglass logo (see above left).

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

Article 4(1)(x) prohibits registering a trademark that is identical with, or similar to, other entity’s well-known mark over goods or services closely related to the entity’s business.

Article 4(1)(xi) is a provision to refrain from registering a junior mark that is identical with, or similar to, any senior registered mark.

Article 4(1)(xix) prohibits registering a mark that is identical with, or similar to, another entity’s famous mark, with an aim to gain unfair profits, or cause damage to the entity, even if goods or services sought for registration are unrelated to the entity’s business.


JPO decision

The JPO Opposition Board did admit a certain degree of the reputation of wordmark “LONGINES” from the produced evidence. In the meantime, the Board questioned if the winged hourglass logo per se has acquired a similar degree of reputation as a source indicator of the opponent’s watches by stating that the logo has been always used in conjunction with or adjacent to the LONGINES mark.

Besides, the Board considered both marks dissimilar as a whole from visual, phonetic, and conceptual points of view. The cited mark consists of an hourglass and straight wings. The opposed mark consists of geometrical figures conceived as a human body and spread wing. Taking account of distinctions in appearance, the Board has reasonable ground to believe that relevant consumers would be unlikely to confuse a source of the opposed mark with Longines when used on the goods in question.

Due to a low degree of similarity and popularity, the Board did not find a reasonable doubt that the opposed mark was sought for registration with an aim to obtain unfair profits from Longines and disorder public interest and morality from the totality of the circumstances.

Based on the foregoing, the Board decided to dismiss the opposition entirely and found opposed mark shall not be canceled under Article 4(1)(vii), (x), (xi), and (xix).

Isn’t it MIRACLE?

In recent administrative decision, the Japan Patent Office (JPO) decided TM Reg no. 6253344 for wordmark “Miracle Volume” is dissimilar to senior registered mark “MIRACLESUIT” and “MIRACLEBODY” and dismissed an opposition claimed by A&H Sportswear Co., Inc., the owner of senior marks.

[Opposition case no. 2020-900196, Gazette issued date: August 27, 2021]

Miracle Volume

Opposed mark, consisting of the word “Miracle Volume” in standard character, was filed by a Chinese company for use on clothing, footwear, headgear as well as swimsuits in class 25 with the JPO on June 4, 2019 (TM Application no. 2019-77831).

The JPO admitted registration on May 12, 2020 and published for opposition on July 9, 2020.


Opposition by A&H Sportswear

A&H Sportswear Co., Ltd. filed an opposition on August 11, 2020, and argued the opposed mark “Miracle Volume” shall be cancelled in contravention of Article 4(1)(xi) of the Japan Trademark Law since the opposed mark is similar to its owned senior marks, “MIRACLESUIT” and “MIRACLEBODY”.

Allegedly, the word “Volume” has a low degree of distinctiveness since it just implies the goods in question voluminous. If so, a prominent portion of the opposed mark shall be undoubtedly “Miracle”.

Senior TM Reg no. 4789644 for wordmark “MIRACLESUIT” in class 25, consists of two words, “MIRACLE” and “SUIT”. It is obvious that the word “SUIT” lacks distinctiveness in relation to the goods in questions since it means ‘a set of clothes or a piece of clothing to be worn in a particular situation or while doing a particular activity’. Consequently, a prominent portion of “MIRACLESUIT” shall be “MIRACLE”.

TM Reg no. 5121472 for wordmark “MIRACLEBODY” in class 25, also consists of two words, “MIRACLE” and “BODY”. The word “BODY” has a low degree of distinctiveness in relation to the goods in question since it suggests the goods bearing the mark for consumers to put on. If so, likewise, a prominent portion of “MIRACLEBODY” shall be “MIRACLE”.

In so far as relevant consumers conceive of the literal element of “MIRACLE” as a prominent portion on both marks, they shall be confusingly similar accordingly, A&H Sportswear alleged.


JPO decision

The Opposition Board did not find a reasonable ground to believe that the consumers consider the word “Miracle” as a prominent portion of the opposed mark from visual and phonetical points of view. Besides, the word “Volume” per se would not entirely be descriptive in relation to apparels. If so, the opposed mark shall be taken for a coined word in its entirety.

Similarly, from visual, phonetical and conceptual points of view, the cited marks, “MIRACLESUIT” and “MIRACLEBODY”, shall be taken for a coined word in its entirety.

In assessing similarity of mark, the Board opined that the opposed mark “Miracle Volume” and the cited marks are sufficiently distinguishable because of difference arising from the word “Volume”, “SUIT”, and “BODY”.

Even if the goods in question are deemed similar to that of the cited marks, severe distinction in appearance and sound would be unlikely to cause confusion among relevant consumers.

Based on the foregoing, the Board did not side with A&H Sportswear and dismissed the opposition totally.

HUGO BOSS Unsuccessful in Blocking “BOSS”

German luxury fashion house Hugo Boss failed in their attempt to block Japanese TM Reg no. 6218609 for word mark “BOSS” on SaaS and order processing services.

[Opposition case no. 2020-900096, Gazette issued date: August 27, 2021]

Opposed mark

Opposed mark, filed on January 22, 2019, by Rakuten, Japanese electronic commerce and online retailing company, consists of the word “BOSS” in standard character (see below).

The services sought for registration are order processing services in class 35 and providing computer programs on e-commerce, software as a service (SaaS), and other related services in class 42. Rakuten is using the opposed mark “BOSS” as an abbreviation of ‘Back Office Support System’ to indicate their service for sales order management and automated shipping system.

The JPO admitted registration on June 22, 2020, and published for post-grant opposition on February 12, 2020.


Opposition by Hugo Boss

HUGO BOSS Trademark Management GmbH & Co KG filed an opposition against the opposed mark on April 3, 2020, and claimed the opposed mark “BOSS” shall be canceled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law.

Article 4(1)(xi) is a provision to prohibit registering a junior mark that is identical with, or similar to, any senior registered mark.

Article 4(1)(xv) is a provision to prohibit registration of a trademark which is likely to cause confusion with the business of other entities.

HUGO BOSS argued that not only tradename “HOGO BOSS but also their mark “BOSS” has been well known for a luxury fashion brand and source indicators of the opponent by producing Deloitte’s annual list of the world’s largest luxury companies on which HUGO BOSS was ranked No.19(2015), No.21(2016), No.23(2017).

In view of a high degree of similarity between the opposed mark and the opponent’s mark “BOSS” (see below), relevant consumers are likely to confuse the source of services bearing the opposed mark with HUGO BOSS.


Board Decision

The JPO Opposition Board admitted a certain degree of the reputation of the “HUGO BOSS” mark as a source indicator of the opponent in connection with fashion items, e.g., clothing, watches, sunglasses, fragrances.

In the meantime, the Board questioned if the word “BOSS” has also acquired such popularity, stating that produced materials are insufficient to find the word perse plays the source indicator since the cited mark contains a famous mark “HUGO BOSS” adjacent to it.

Even if there is a high degree of similarity between the marks, the Board has a reasonable ground to believe the services in question, namely, order processing services (cl.35) and SaaS (cl.42) are less associated with fashion items, e.g., clothing, watches, sunglasses, fragrances.

If so, it is unlikely that relevant consumers at the sight of the opposed mark would conceive or associate it with HUGO BOSS or any entity who is systematically or economically connected with the opponent when used on the services in question.

Based on the foregoing, the JPO dismiss the entire allegations of HUGO BOSS and allowed the opposed mark “BOSS” to survive.

BEYOND MEAT defeats “Beyond Meat Burger”

The Japan Patent Office (JPO) sided with Beyond Meat Inc. and canceled TM Reg no. 6197193 for wordmark “Beyond Meat Burger” by free-riding on the business reputation of “BEYOND MEAT”.

[Opposition case no. 2020-900023, Gazette issued date: July 30, 2021]

Beyond Meat Burger

Opposed mark, consisting of a wordmark “Beyond Meat Burger” written in a Japanese katakana character (see below), was filed by a Japanese individual on July 23, 2018, for use on ‘meat products’ in class 29 and ‘clothing’ in class 25.

Subsequently, the applicant deleted the designated goods in class 29.

The mark was registered on November 15, 2019, and published for opposition on December 10, 2019.


BEYOND MEAT

Beyond Meat Inc., a US food processing company that specializes in providing plant-based meat, filed an opposition against the “Beyond Meat Burger” mark with the JPO on January 24, 2020, before the lapse of a two-month statutory period for the opposition.

In the opposition brief, Beyond Meat argued the opposed mark shall be canceled in contravention of Article 4(1)(xix) of the Japan Trademark Law.

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

It is interpreted that the “famous mark” under the article does not require a high reputation among Japanese consumers. If domestic consumers recognize such a reputation in foreign countries, it will suffice.

Beyond Meat alleged that the “BEYOND MEAT” mark has been well known for plant-based meat substitutes by the opponent to meat distributors as well as US consumers (It should be noted that Beyond Meat has yet to launch the business in Japan as of now). It is obvious that the opposed mark is confusingly similar to “BEYOND MEAT”. Presumably, the opposed party must have filed the opposed mark with a fraudulent intention to prevent registration of the “BEYOND MEAT” mark in Japan and gain unjust enrichment by doing so.


JPO decision

The JPO Opposition Board admitted that the “BEYOND MEAT” mark has acquired a remarkable degree of reputation among US consumers as a source indicator of plant-based meat substitutes by Beyond Meat Inc. even before the application date of the opposed mark

The Board assessed the opposed mark is confusingly similar to “BEYOND MEAT”. Relevant consumers with an ordinary care would see the term “Beyond Meat” as a prominent portion of the opposed mark because the consumers get familiar with the English word “Burger.”

A fact that the opposed party initially designated ‘meat products’ implies the applicant’s intention to use the opposed mark on the goods that are closely associated with meat substitutes. If so, the Board had a reasonable ground to believe the opposed mark was filed with an intention to take advantage of goodwill and business reputation associated with Beyond Meat’s tradename and trademark.

Based on the foregoing, the JPO decided to retroactively cancel the opposed mark “Beyond Meat Burger” in contravention of Article 4(1)(xix).

No confusion between WeWork and iWork

The Japan Patent Office (JPO) dismissed a trademark opposition claimed by WeWork Companies Inc. against Japanese trademark registration no. 6271212 for wordmark “iWork” by finding less likelihood of confusion with “WeWork”.

[Opposition case no. 2020-900249, Gazette issued date: July 30, 2021]

iWork

Desigmassion Company Ltd. applied the wordmark “iWork” in standard character for registration on ‘rental of offices for coworking’ in class 36 and ‘rental of temporary accommodation; providing foods and beverages; rental of meeting rooms; rental of facilities for exhibitions’ in class 43 wit the JPO on February 1, 2021 (TM App no. 2020-011256).

The mark did not face any refusal during the substantive examination and was published for opposition on August 4, 2020.

The company offers all-inclusive coworking space and private office “iWork” in Downtown Tokyo.


WeWork

WeWork Companies Inc., one of the leading global flexible space providers, filed an opposition against the iWork mark on October 1, 2020, before the lapse of a two-month statutory period for the opposition, in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law.

Article 4(1)(xv) prohibits registering a trademark that is likely to cause confusion with a business of another entity.

The likelihood of confusion is a key criterion when assessing the similarity of trademarks. To establish whether there is the likelihood of confusion, the visual, phonetic, and conceptual similarity will be assessed as well as the goods and/or services involved. This assessment is based on the overall impression given by those marks, account being taken, in particular, of their distinctive and dominant components. A low degree of similarity between the goods or services may be offset by a high degree of similarity between the marks, and vice versa.

WeWork argued that “iWork” shall be deemed similar to the opponent’s senior registered mark “WeWork” (IR no. 1453286) because a mere difference of the prefix “we” and “i” would be insufficient for relevant consumers to distinguish two marks from phonetical and visual points of view.

Besides, in view of a remarkable degree of reputation and popularity of the opponent mark as a source indicator of coworking space among relevant consumers, a close association between their services, and resemblance in appearance and sound between the marks, it is unquestionable that relevant consumers are likely to conceive “WeWork” at the sight of the opposed mark “iWork” when used on the services in question.


JPO decision

To my surprise, the JPO Opposition Board did not admit the famousness of the “WeWork” mark by stating that the opponent just had 27 locations in six cities and 22,000 users in Japan at the time of filing the opposed mark, and the produced evidence was insufficient to find a high degree of recognition among domestic consumers.

In the assessment of similarity between the marks, the Board found that relevant consumers were apt to pay higher attention to the prefix of a mark. Given the short sound consisting of four syllables, a different letter and pronunciation in the prefix position shall give rise to a distinctive impression in the minds of the consumer. Both marks are undisputedly dissimilar in concept.

By taking into consideration a low degree of similarity between “iWork” and “WeWork”, and insufficient evidence to assume the famousness of “WeWork”, even if the services in dispute are closely associated with WeWork’s business, the Board had no reason to believe the opposed mark would cause confusion with WeWork when used on the disputed services in class 36 and 43.

Based on the foregoing, the Board decided the opposed mark would not be canceled in contravention of Article 4(1)(xi) and (x) of the Trademark Law and dismissed the opposition entirely.