タグ: Trademark opposition

Volkswagen Unsuccessful in TM Opposition contesting similarity between Touran and TURANO

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The Japan Patent Office (JPO) dismissed an opposition against TM Reg no. 6754807 “TURANO” in class 12 claimed by Volkswagen AG due to dissimilarity to IR no. 782978 “Touran” that has been used on the VW’s compact vans.
[Opposition case no. 2024-900017, decided on August 28, 2024]

TURANO

The opposed mark, consisting of a wordmark “TURANO” in standard character, was filed by DAIDO KOGYO Co., Ltd. for use on drive chains, transmission chains and belts, and other parts and accessories for land vehicles including automobiles in class 12 with the JPO on May 9, 2023.

The JPO examiner granted protection of the mark “TURANO” on October 31, 2023 without issuing any notice of grounds for refusal. The mark was published for a post-grant opposition on November 27, 2023.

Opposition by VW

Volkswagen AG filed an opposition against the mark “TURANO” on January 23, 2024 before the lapse of a statutory period of two months counting from the publication date.

Volkswagen claimed the opposed mark shall be canceled in contravention of Article 4(1)(xi) of the Japan Trademark Law.

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.

Volkswagen argued that the opposed mark “TURANO” is similar to IR no. 782978 for wordmark “Touran” in standard character. Besides, the goods in question are identical with or similar to “automobiles and parts of the aforementioned goods; coupling and transmission components for land vehicles; engines for land vehicles” that are designated under IR no. 782978.

JPO decision

The JPO Opposition Board denied similarity of the mark “TURANO” and “Touran” by stating that:

  1. Appearance
    • Two marks are relatively short, since each consists of six letters. There are the differences in spelling as well as a type of letter. Namely, the opposed mark consists only of upper-case letters, while the cited mark consists of upper-case and lower-case letters. Therefore, there is no risk of confusion between two marks in terms of appearance.
  2. Sound
    • Aurally, the first sound of the cited mark is pronounced with a long tone. In addition, there is a clear difference between the final sound “no” and “n”. In a relatively short form, these differences have a significant impact on the overall sound to the extent that the relevant consumers are able to easily distinguish two sounds easily. Therefore, there is no likelihood of confusion.
  3. Concept
    • A conceptual comparison is neutral as neither “TURANO” not “Touran” have any clear meaning.
  4. Conclusion
    • Even if the conceptual aspect does not have impact on the assessment of similarity since both marks are meaningless, the Board has a reason to believe that both marks are considered dissimilar because of less likelihood of confusion in appearance and sound.

Based on the foregoing, the Board decided to dismiss the entire opposition by Volkswagen and granted registration of the opposed mark as the status quo.

Trademark dispute: VALENTINO GARAVANI vs GIANNI VALENTINO

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In a trademark opposition claimed by Valentino S.p.A. against TM Reg no. 6550051 for the GIANNI VALENTINO mark, the Japan Patent Office (JPO) decided to cancel the registration due to a conflict with earlier IR no. 975800 for the VALENTINO GARAVANI mark.
[Opposition case no. 2022-900274, decided on August 23, 2024]

GIANNI VALENTINO

YOUNG SANGYO CO., LTD filed a trademark application with the JPO on November 10, 2021 for a mark consisting of a “V” device in a circle and the word “GIANNI VALENTINO” (see below) for use on footwear in class 25 [TM App no. 2021-140169].

The applicant, as one of the official licensees, has been distributing bags and pouches bearing the applied mark in the Japanese market.

https://shop.gianni-valentino.com/

The JPO examiner granted registration of the applied mark on April 19, 2022. The mark was published for a post-grant opposition on May 11, 2022 [TM Reg no. 6550051].

Opposition by Valentino S.p.A.

Valentino S.p.A. filed an opposition on July 6, 2022 and claimed cancellation of the GIANNI VALENTINO mark in contravention of Article 4(1)(xi) of the Japan Trademark Law on the ground that the contested mark is confusingly similar to earlier IR no. 975800 for a mark consisting of an iconic “V” device in a circle and the words “VALENTINO” and “GARAVANI” arranged in two lines (see below), which designates footwear and other goods in class 25.

Valentino argued that the literal element “VALENTINO” was dominant in the cited mark because of a high degree of recognition as a source indicator of the opponent’s business as a result of substantial and continuous use in relation to fashion industries. Therefore, relevant consumers with an ordinary care are likely to consider the term “VALENTINO” as a prominent portion of the contested mark when used on the goods in question. If so, the contested mark shall be deemed similar to the cited mark from visual, aural and conceptual points of view.

JPO decision

The JPO Opposition Board found that the mark “VALENTINO” is famous among relevant consumers and traders in Japan for apparel.

The Board noted the contested mark can be dissected into individual parts on account of its appearance and famousness of the term “VALENTINO”. Given the mark “GIANNE VALENTINO” as a whole has not been recognized among relevant consumers as a source indicator of the applicant, it is reasonable to consider the literal element “VALENTINO” as a dominant part of the contested mark, which plays a role in identifying the source of the goods in question.

Similarly, the literal element “VALENTINO” of the cited mark can be considered as a dominant part because of its famousness to indicate the opponent’s business.

It is obvious that the dominant part of both marks has the same appearance, sound and meaning. If this is the case, the Board has a reason to believe that the contested mark, even as a whole, is confusingly similar to the cited mark from a visual, aural and conceptual point of view.

Based on the above findings, the JPO sided with Valentino S.p.A. and decided to cancel the contested mark in its entirety in contravention of Article 4(1)(xi).

TRILITH STUDIOS vs TRILITH

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The Japan Patent Office (JPO) declared the invalidation of TM Reg no. 6371496 “TRILITH” due to similarity with earlier IR no. 1534597 “TRILITH STUDIOS” owned by Trilith IP Holdings, LLC.
[Invalidation case no. 2022-890066, decide on July 8, 2024]

TRILITH

On January 5, 2021, GAIAMOND Inc., a Japanese company, filed an application for registration of wordmark “TRILITH” (‘the contested mark’) with the JPO (TM app no. 2021-745), designating, inter alia, “game trading cards; toys” in Class 28.

Immediately after the filing, the applicant requested an accelerated examination based on the fact the company uses the contested mark in relation to display frame for game trading cards.

https://ginzo-shop.com/items/62a42b262bf901166cb94227

Accordingly, the JPO examiner granted protection of the contested mark in two months on March 15, 2021 (TM Reg no. 6371496).

TRILITH STUDIOS

Trilith IP Holdings, LLC, a holder of IR no. 1534597 for word mark “TRILITH STUDIOS” that is known as one of the largest purpose-built movie studios in North America and home to blockbuster films and independent shows like Avengers: Endgame, Zombieland: Double Tap, and Moon and Me, filed a notice of opposition to registration of the contested mark in respect of game trading cards and toys with the JPO on June 18, 2021. The ground relied on in support of the opposition was that set out in Article 8(1) of the Trademark Law.

Article 8(1) is a provision to prohibit registration of a junior mark that is identical with, or similar to any earlier applied mark which is pending before the substantive examination at the time of registration of the junior mark in accordance with the “first-to-file” principle.

The opposition applicant argued that the contested mark “TRILITH” is not eligible for registration under Article 8(1) because of similarity to earlier IR no. 1534597 “TRILITH STUDIOS”, and the goods in question is deemed similar to “downloadable video game software; recorded video game software” in Class 9 designated under the cited mark.

However, the JPO Opposition Board dismissed the opposition on the ground that there is no similarity between the mark “TRILITH STUDIOS” and “TRILITH” on April 7, 2022 (Opposition case no. 2021-900241).

On August 10, 2022, MARKS IP LAW FIRM, on behalf of Trilith IP Holdings, LLC, filed an application for a declaration of invalidity to the contested mark with the JPO based on the same ground.

To bolster the arguments, the invalidity applicant presented evidence to show a low degree of distinctiveness of the word “STUDIOS” in connection with the goods in question. Bearing in mind that the term “TRILITH” is a coined word unfamiliar to the relevant consumers in Japan, it is obvious that the term “TRILITH” is dominant in the cited mark. If so, the contested mark should be invalidated in contravention of Article 8(1).

JPO decision

Noticeably, the Invalidation Board found that the literal element “TRILITH” to be dominant in the cited mark by stating that:

 A space separates the terms “TRILITH” and “STUDIOS.” The word “STUDIOS” is commonly known as a term to indicate ” a film or video production facility.” or “workshop for painters or cameramen, recording room for radio or television, recording studio for music.” Therefore, the cited mark is easily recognizable as a combination of the terms “TRILITH” and “STUDIOS.

In light of the fact that the term “GAME STUDIOS” has been generally used to indicate workplaces where games are created in the relevant industry, the word “STUDIOS” would be less distinctive in connection with the cited goods.

Meanwhile, the term “TRILITH” is a coined and highly distinctive word with no specific meaning. Accordingly, the Board has a reason to believe that the term to be dominant in the cited mark.

Based on the above finding, the Board compared the dominant portion of the cited mark with the contested mark and found that both marks are similar from visual and aural points of view in spite that a conceptual comparison is neutral as neither the contested mark nor the cited mark have any clear meaning.

Given that the goods in question is similar to “downloadable video game software; recorded video game software” in Class 9 designated under the cited mark, the invalidation applicant is successful in proving the requirements of Article 8(1).

Consequently, in light of the foregoing, the Board decided to invalidate the contested mark in relation to “game trading cards; toys” in Class 28.

Trademark dispute over Chandler Bats

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In a trademark opposition contesting the validity of the mark “CHANDLER,” the Japan Patent Office (JPO) dismissed the oppositions claimed by Group Authentic, LLC and David Chandler.
[Opposition case nos. 2023-900161, 2023-900212, and 2023-900213, decided on July 18, 2024]

Opposed mark

La Potencia LLC filed three trademark applications with the JPO on September 6, 2022 for the wordmark “CHANDLER”, “CHANDLER BATS,” and a composite mark consisting of the word “Chandler” in script with a “C” shaped design representing a bat knob inside for use on various goods and retail or wholesale services related to baseball in Classes 9, 18, 25, 28 and 35.

The marks were all granted for registration and published for post-grant opposition accordingly.

Opposition by David Chandler

Group Authentic, LLC and David Chandler jointly filed a trademark opposition against the marks before the lapse of two months from the publication date at the JPO.

In the opposition, they argued “Chandler” has been highly known in relation to baseball bats to indicate a name of David Chandler who has manufactured hundreds of models of baseball bats for Major League Baseball players since 2009. The opposing parties has no intention to give a consent for La Potencia LLC to register the opposed marks in Japan. Under the circumstance, the opposed mark shall be cancelled in contravention of Article 4(1)(vii) and (viii) of the Japan Trademark Law.

Article 4(1)(vii) prohibits any mark likely to cause damage to the social and public interest and disrupt the order of fair competition from registration.

Article 4(1)(viii) is a provision to prohibit registration of trademark that contains the representation or name of any person, famous pseudonym, professional name, or pen name of another person, or famous abbreviation thereof.

The JPO decision

The JPO Opposition Board found that the mere fact and documents regarding the USPTO’s rejection of US App Nos. 97313019, 97312938, and 97313467 for the opposed marks by the USPTO were insufficient to establish a high degree of popularity and reputation of the mark “Chandler” as an abbreviation of Mr. David Chandler.

Based on the above finding, the Board has no reason to believe a lack of the consent would cause damage to the social and public interest and disrupt the order of fair competition.

To the extent that insufficient evidence has been produced to establish that the mark “Chandler” is famous as an abbreviation of Mr. David Chandler, it is inadmissible to find that the opposed marks contain a famous abbreviation of a living person.

In light of the foregoing, the Board decided the opposed marks shall not be cancelled based on Article 4(1)(vii) and (viii), and dismissed the entire oppositions.

Trademark Opposition: FITBIT vs Fitbeing

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The Japan Patent Office (JPO) did not side with Google LLC in an opposition against TM Reg no. 6715471 for wordmark “Fitbeing” in class 14 by finding dissimilarity to and unlikelihood of confusion with “Fitbit” wearable devices.
[Opposition case no. 2023-900195, decided on June 28, 2024]

“Fitbeing”

Wordmark “Fiteing” was applied for registration in relation to “clocks and watches; watch bands and straps; stopwatches; watch cases [parts of watches]; clocks and watches, electric; chronometric instruments; presentation boxes for watches” in class 14 by a Chinese company with the JPO on January 4, 2023 (TM App no. 2023-172).

The JPO examiner did not issue an office action to the mark and granted protection on June 28, 2023. Subsequently, the mark was published for post-grant opposition on July 18, 2023.

Opposition by Google LLC

To oppose registration within a statutory period of two months counting from the publication date, Google LLC filed an opposition against the opposed mark on August 31, 2023.

Google argued the opposed mark shall be canceled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law by citing earlier trademark registrations for the wordmark “FITBIT” that has allegedly become famous as a source indication of Google’s wearable devices.

Google argued that due to the same spelling that starts with “FITB”, relevant consumers with an ordinary care would consider the opposed mark “Fitbeing” confusingly similar to the cited mark “FITBIT” from visual, aural and conceptual points of view.

By taking int consideration the high degree of reputation and popularity of the mark “FITBIT”, it is likely that the consumers would confuse a source of goods in question bearing the opposed mark with Google or their devices.

JPO decision

The JPO Opposition Board found that, considering the evidence submitted, the mark “FITBIT” has not been widely recognized among the consumers to indicate Google’s wearable devices even if some of them may have known.

Secondly, the Board assessed the similarity of marks and states:

  • Comparing the marks “Fitbeing” and “FITBIT” visually, although they have the same initial letter “Fitb (FITB)”, there is a clear difference in the endings “ing” and “IT” and the number of letters is different from 8 to 6. Therefore, the two marks are visually different.
  • As regards pronunciation, although both marks have the same initial sound ‘fitbi’, they differ in the ending ‘-ing’ and ‘it’ and the number of sounds is not as long (8 and 6 sounds). This difference would make a meaningful difference in the overall pronunciation.
  • The conceptual comparison is not possible because both marks have no meaning.
  • Accordingly, the Board has reason to believe that both marks are dissimilar and unlikely to cause confusion, taking into account the overall consideration as well as the impressions, memories, associations of the consumers.

In light of the foregoing, the Board dismissed the entire opposition and granted status quo protection to the mark “Fitbeing” in class 14.

Guerlain Unsuccessful Opposition to “MITSOUKO” mark

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The Japan Patent Office (JPO) dismissed an opposition filed by Guerlain, a legendary French perfume house, against TM Reg no. 6734165 for wordmark “mitsouko” in class 44 due to unlikelihood of confusion with perfume “MITSOUKO” by Guerlain.
[Opposition case no. 2023-90025, decided on June 27, 2024]

“mitsouko”

Yugen Kaisha AMERICA, a Japanese business entity, filed a trademark application for wordmark “mitsouko” in standard character for use on “beauty salon services, barbershops, massage, dietary and nutritional guidance, therapy services, rental of apparatus and instruments for use in beauty salons or barbers’ shops, providing medical information, manicuring, hair implantation” in class 44 with the JPO on March 22, 2023 (TM App no. 2023-30416).

The JPO examiner did not issue an office action to the mark and granted protection on September 5, 2023. Subsequently, the mark was published for post-grant opposition on September 15, 2023.

Opposition by Guerlain

To oppose registration within a statutory period of two months counting from the publication date, Guerlain, a legendary French perfume house, filed an opposition against the opposed mark on November 13, 2023.

Guerlain argued the opposed mark shall be canceled in contravention of Article 4(1)(xv) and (xix) of the Japan Trademark Law.

Article 4(1)(xv) prohibits the registration of trademarks that are likely to cause confusion with the business of other entities.

Guerlain contended that given the remarkable reputation and popularity of the perfume “MITSOUKO” by Guerlain and close association between perfume and the services in question, relevant consumers are likely to confuse a source of services bearing the opposed mark with Guerlain.

JPO decision

The JPO Opposition Board found that, considering the evidence submitted, the mark “MITSOUKO” may be recognized by persons having a deep knowledge of perfume, but there is a reasonable doubt whether the mark is widely known among relevant consumers to indicate the source of Guerlain perfume.

In addition, in view of the low degree of relatedness between beauty salon services, barbershops, massage, etc. and “perfume”, even if both marks are almost identical, it is unlikely that traders and consumers at the sight of the opposed mark used in relation to the service in question will associate or recall the cited mark, and consider a source of the services from an entity economically or systematically connected with Guerlain.

Therefore, the Board has no reason to believe the opposed mark shall be subject to Article 4(1)(xv) of the Trademark Law.

Even if the applicant has applied for the opposed mark with knowledge of Guerlain’s perfume “MITSOUKO”, the fact is insufficient to infer that the company has the purpose of making unfair profits or the purpose of causing harm to others. The submitted evidence does not reveal any fact to demonstrate a malicious intention by the applicant. If so, the opposed mark shall not be cancelled under Article 4(1)(xix).

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: HUGO vs. Hugoo

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In a recent administrative decision, the Japan Patent Office (JPO) dismissed an opposition filed by German luxury fashion house Hugo Boss against Japanese TM Reg no. 6706891 for stylized word mark “Hugoo” in class 18.
[Opposition case no. 2023-900185, decided on June 11, 2024]

Opposed mark

Opposed mark, filed on May 31, 2022, by GRIT Incorporated, consists of the stylized word “Hugoo” (see below). The goods sought for registration are bags, baby carriers, sling bags for carrying babies and infants in class 18. GRIT sells sling bags for carrying babies and infants via their website.

The JPO granted protection to the mark on May 12, 2023, and published it for post-grant opposition on June 21, 2023.

Opposition by Hugo Boss

HUGO BOSS Trademark Management GmbH & Co KG filed an opposition against the opposed mark on August 21, 2023, and claimed the opposed mark “Hugoo” shall be canceled in contravention of Article 4(1)(xi) of the Japan Trademark Law by citing its owned earlier trademark registration nos. 2301695, 3265268, IR776148, IR1657111, IR1676995 for the mark “HUGO”.

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

HUGO BOSS argued that a mere difference on the 2nd letter “O” in the last is trivial from visual and phonetical points of view. Accordingly, the opposed mark “Hugoo” shall be considered similar to the cited mark “HUGO”. Besides, the goods in question are all similar to designated goods under the cited marks.

JPO Decision

The JPO Opposition Board denied similarity between “HUGO” and “Hugoo” by stating that:

There is a difference in the ending ‘oo’ or ‘O’. The difference has no small effect on the visual impression of the appearance of both marks, which are composed of five and four relatively short characters. Therefore, it is reasonable to assume that both marks are clearly distinguishable in appearance.

From pronunciation, it is reasonable to conclude that both sounds are clearly audible and distinguishable since respective sound of both are clearly different.

Furthermore, both marks do not give rise to a specific meaning. Therefore, it is not possible to compare the conception of them.

Accordingly, both marks are distinguishable in appearance and sound, and incomparable in concept.

By making global assessment of the impression, memory and association of respective mark given to traders and consumers as a whole, the Board has reason to believe that both marks should be considered dissimilar without any possibility of confusion.

In the event that both marks are dissimilar, the opposed mark shall not be cancelled in contravention of Article 4(1)(xi), even though the goods in question are similar to those of the cited marks.

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

Chrysler Lost Trademark Opposition against “GEEP”

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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 dispute: MARNI vs. MARNO

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The Italian fashion brand “MARNI” lost the trademark opposition against TM Reg no. 6658657 for the wordmark “MARNO” (cl. 14,18,25). The Japan Patent Office (JPO) found both marks dissimilar and less likelihood of confusion because there was insufficient evidence to support a certain degree of recognition of the mark “MARNI” among general consumers.
[Opposition case no. 2023-900065, decided on May 16, 2024]

“MARNO”

Godo Kaisha MARNO filed a trademark application for the word mark “MARNO” in standard character for use on goods “precious metals; jewelry; key rings; jewelry boxes; personal ornaments; clocks and watches” in class 14, “bags and pouches; umbrellas; canes; clothing for pets” in class 18, “clothing; belts; footwear; masquerade costumes; sports shoes; sportswear” in class 25 with the JPO on July 29, 2022 (TM App no. 2022-88022).

Apparently, the applicant promotes apparels for lady using the mark on their website.

https://marno.life/products/ivy-skirt

The JPO examiner did not issue an office action to the application and granted protection on December 13, 2024. Subsequently, the mark was published for post-grant opposition on January 13, 2023.

Opposition by MARNI

Marni Group S.r.l., an Italian luxury fashion house, filed an opposition on March 13, 2023 just before the lapse of a two-month statutory period and claimed the opposed mark “MARNO” shall be cancelled in contravention of Article 4(1)(vii), (xi), (xv) and (xix) of the Japan Trademark Law by citing earlier trademark registrations (TM Reg no. 4842090, 4791866, 4786424, 3200522, 2339221, 6676890, IR1007074, IR1520528, IR1689338, IR698847) for the mark “MARNI”.

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.

MARNI contended that the opposed mark “MARNO” is similar to its own trademark “MARNI,” a globally renowned fast-fashion brand given a mere difference in the last letter “O” and “I”. 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.

MARNI contended that the mark “MARNI” has become renowned among relevant consumers in connection with apparel. Given the high degree of resemblance between “MARNO” and “MARNI” as well as the goods, it is likely that consumers will confuse or misconceive the goods bearing the opposed mark “MARNO” with “MARNI.”

Article 4(1)(xix) proscribes the registration of a trademark that is identical with or similar to another entity’s famous mark if the trademark is intended for the purpose of gaining unfair profits or causing damage to the entity.

MARNI contended that the applicant had filed the opposed mark with the intention of obtaining unfair profits through free-riding on the well-known trademark “MARNI”.

JPO decision

The JPO Opposition Board admitted that the mark “MARNI” has been recognized among consumers who has high interest to fashion to some extent from the produced evidence, however, in view of the facts that the dates of the evidence are after the grant of protection of the opposed mark, the period and evaluation method of the brand ranking is unclear, and no evidence regarding the sales amount and advertisement of the goods bearing the mark MARNI are provided, the Board questioned whether the mark “MARNI” has been widely recognized among general consumers to indicate the source of MARNI’s goods and business.

Next, the Board assessed similarity of mark. In appearance and sound between “MARNO” and “MARNI”, the distinction of “O” and “I” at the end of the word has a significant impact on the overall visual and oral impression of the two marks, which both have only five letters and three sounds. Therefore, the marks are visually and phonetically distinguishable. Since both marks do not give rise to any specific meaning, it is impossible to compare the concept of the two marks. Accordingly, the Board has reason to believe that both marks are significantly dissimilar.

By taking account of insufficient recognition of the mark “MARNI” among relevant consumers and a low degree of similarity between two marks, it is unlikely that the consumer at the sight of the goods in question bearing the opposed mark confuse the source with MARNI.

Besides, the evidence presented to the Board does not provide grounds to believe that the applicant intended to obtain profits through the exploitation of the well-known trademark.

Based on the foregoing, the Board dismissed the opposition entirely.