タグ: Trademark opposition

COCO vs COCOMIST – Decision of the Opposition Board of the Japan Patent Office

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Chanel handed a loss in its attempt to block Japanese trademark registration no. 6202587 for wordmark “COCOMIST” to be used on cosmetics, perfumery, fragrances, incense, and other goods in class 3.
[Opposition case no. 2020-900047, Gazette issued date: February 26, 2021.]

COCOMIST

The opposed mark consists of the word “COCOMIST” written in standard character (see below). Applicant, a Japanese company, 196+ Inc., filed it for use on ‘cosmetics, perfumery, fragrances, incense, toiletry preparations’ and other goods in Class 3 on January 7, 2019.

The mark was published for post-grant opposition on December 24, 2019, without confronting any office action from the JPO examiner.

It is apparent that the applicant actually uses the opposed mark on cleaning mist.

Opposition by CHANEL

On February 20, 2020, CHANEL SARL filed an Opposition and argued the opposed mark shall be canceled in contravention of Article 4(1)(xi), (xv), and (xix) of the Trademark Law on the grounds that:

  1. Since 1995, the opponent has owned senior trademark registration no. 2704127 for wordmark “COCO” over cosmetics, perfumery, and fragrances, which has unquestionably acquired a remarkable degree of reputation and popularity as a source indicator of the opponent’s cosmetics as well as a nickname or short name of French fashion designer “Gabrielle COCO CHANEL”, the founder of the Chanel brand.
  2. The term “MIST” lacks distinctiveness in relation to cosmetics. If so, relevant consumers at the sight of the opposed mark would easily conceive “COCO” as a prominent portion when used on goods in question.
  3. In view of the close resemblance between two marks and goods, presumably, the applicant must have applied the opposed mark for use on cosmetics with prior knowledge of the cited mark and fraudulent intention of free-riding on its reputation.

JPO Decision

The JPO Opposition Board admitted a high degree of reputation and popularity of “COCO” as a source indicator of the opponent’s perfumery and fragrances among relevant consumers based on substantial use of the cited mark in Japan but questioned its famousness in relation to other cosmetics except for perfumery and fragrances.

The JPO denied the similarity between the opposed mark and “COCO”, stating that the opposed mark shall be taken as a whole in view of a tight combination of its literal element from appearance. If so, the opposed mark does not give rise to any specific meaning and the Board has no reasonable ground to believe that the opposed mark “COCOMIST” shall be similar to “COCO” from visual, phonetic, and conceptual points of view.

Given a low degree of similarity between the marks, the Board held the opposed mark is unlikely to cause confusion even when used on perfumery and fragrances.

Assuming that both marks are dissimilar, the Board was not convinced that the applicant aimed for free-riding on the goodwill of Chanel.

Based on the foregoing, the JPO dismissed the entire allegations of CHANEL SARL and allowed the opposed mark to register as the status quo.

Montblanc Unsuccessful in Trademark Opposition

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The Japan Patent Office (JPO) dismissed a trademark opposition claimed by Montblanc-Simplo GmbH, Germany, against Japanese trademark registration no. 6240752 for “MONTBLANC PROFESSIONAL PRIDES” with a device mark, stating that the opposed mark is unlikely to cause confusion with “Montblanc” known around the world for its superior writing instruments when used on the goods in question of class 25.
[Opposition case no. 2020-900159, Gazette issued date: February 26, 2021]

MONTBLANC PROFESSIONAL PRIDES

Opposed mark, consisting of words “MONTBLANC” and “PROFESSIONAL PRIDES” combined with a three-vertical-line design (see below) , was filed on April 17, 2019, by a Japanese business entity, SUMISHO MONTBLANC Co., Ltd. for use on ‘Medical scrubs; nurse dresses; nurse overalls; nurse pants; nurse uniforms; nurse caps; clothing; nurse shoes; footwear’ and other goods in class 25, and published for opposition on April 21, 2020, after registration on March 30, 2020.

Opposition by Montblanc-Simplo GmbH

On June 18, 2020, Montblanc-Simplo GmbH filed an opposition and claimed that the opposed mark shall be cancelled in contravention of Article 4(1)(xv) of the Japan Trademark Law due to a likelihood of confusion with the wordmark “MONTBLANC” known for its superior writing instruments.

Article 4(1)(xv)

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

Among other things, Montblanc argued the word “MONTBLANC” shall be considered as a prominent portion of the opposed mark since it does not indivisibly combine with the rest of the elements, namely, “PROFESSIONAL PRIDES” and three-vertical-line design. If so, taking account of a remarkable degree of reputation and popularity to the Montblanc writing instruments, relevant consumers would misconceive the source of goods bearing the opposed mark with the opponent.

Board Decision

It does not surprise me that the Opposition Board admitted a remarkable degree of reputation and popularity of the “Montblanc” mark in connection with fountain pens and ball-point pens based on the facts that the opponent has made and sold writing instruments identified by the MONTBLANC trademark for more than a hundred years since 1906 and operates 121 brick-and-mortar stores in Japan as of now.

Meanwhile, the Board questioned if “Montblanc” has been widely known even among relevant consumers of the goods in class 25 since the Board was unable to find a reasonable ground to believe that medical scrubs, nurse shoes and other goods in question are closely associated with the writing instruments. In this respect, a mere fact that the opposed mark contains the word “MONTBLANC” would be insufficient to find a likelihood of confusion with the opponent when used on goods in question.

Based on the foregoing, the Board decided the opposed mark shall not be subject to cancellation in contravention of Article 4(1)(xv) and allowed registration as the status quo.

“MACSELL” for use on PC value estimation service is unlikely to cause confusion with Apple “Mac”

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The Japan Patent Office (JPO) dismissed an opposition claimed by Apple Inc. against trademark registration no. 6223514 for word mark “MACSELL” on used mobile phone, Smartphone, PC and tablet computer value estimation service in class 36 by finding less likelihood of confusion with Apple “Mac” series.
 [Opposition case no. 2020-900114, Gazette issued date: Jan 29, 2021]

MACSELL

Opposed word mark “MACSELL” in standard character was filed on March 22, 2019, for the service of used mobile phone, Smartphone, PC and tablet computer value estimation, and others in class 36. Going through the substantive examination, the JPO admitted registration on February 6, 2020.

Apparently, the opposed mark is used as a tradename of used Mac and Surface recycle shop managed by the applicant.

Capture from “MACSELL” website
Capture from Google “Street View”

Apple’s Opposition

Apple Inc. argued the opposed mark “MACSELL” shall be canceled in violation of Article 4(1)(xv) of the Japan Trademark Law.

“Mac” has become famous as a source indicator of Apple’s PC by virtue of substantial use with various trademarks, e.g. “MacBook Air” and “MacBook Pro” on laptops, “iMac” and “iMac Pro” on desktops, “Mac Pro” and “Mac mini” on computer hardware.

The opposed mark, consisting of “MAC” and “SELL”, would easily give rise to a meaning of offering Apple’s PC for sale.

If so, relevant consumers at the sight of the opposed mark when used on the service in question are likely to associate and confuse the origin of the opposed mark with Apple Inc. or any entity related to the opponent.

JPO decision

The JPO Opposition Board admitted a remarkable degree of reputation and popularity of “Mac” as a source indicator of Apple Inc. and a close association between Apple’s goods and the service in question.

However, the Board found a low level of similarity between “MACSELL” and “Mac” by stating that the term “SELL” would severely cause a distinctive impression between both marks from visual, phonetical, and conceptual points of view, even if the marks share the word “MAC.”

Besides, taking into account a low level of originality of the opponent mark “Mac,” the Board questioned if relevant consumers and traders are likely to associate or connect the opposed mark with the opponent when used on the service in question.

Consequently, the Board held that relevant consumers would be unlikely to confuse the source of the opposed mark with Apple Inc. and any entity economically or systematically connected with the opponent.

Based on the foregoing, the Board decided to dismiss the opposition entirely and allowed registration of the opposed mark as status quo.

Like a Jaguar, but not JAGUAR

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The Japan Patent Office (JPO) dismissed an opposition filed by Jaguar Land Rover Ltd. against trademark registration no. 6244325 for word mark “Like a Jaguar” on cosmetics and other goods in class 3 by finding dissimilarity and unlikelihood of confusion with “JAGUAR.”
[Opposition case no. 2020-900165, Gazette issued date: December 14, 2020]

Opposed mark

An opposed mark consists of the term “Like a Jaguar” in a gothic type and its transliteration in a Japanese katakana character as below.

The mark was filed by KOSE Corporation on May 10, 2019, for use on ‘cosmetics; soaps and detergents; dentifrices; perfume and flavor materials; incense; breath-freshening preparations; false nails; false eyelashes; cosmetic cotton wool; fabric softeners for laundry use; adhesives for affixing false eyelashes; adhesive paper; cotton sticks for cosmetic purposes’ in class 3.

JPO, going through substantive examination, admitted registration and published for post-grant opposition on April 28, 2020.

Apparently, KOSE uses the mark “Like a Jaguar” to represent a lipstick color for ‘ADDICTION The Lipstick Satin’ 008.

Captured from website – everglowcosmetics.com

Opposition by Jaguar Land Rover

Jaguar Land Rover Ltd. filed a trademark opposition on June 25, 2020, before the JPO and claimed that the opposed mark shall be canceled in contravention of Article 4(1)(viii), (xi), and (xv) of the Trademark Law by citing trademark registrations for its iconic logo consisting of the image of a leaping jaguar and the word “JAGUAR” (see below), which allegedly has been used on the opponent’s products since 1935.

Article 4(1)(viii) prohibits registration of trademarks that contain the representation or name of any person, famous pseudonym, professional name or pen name of another person, or famous abbreviation thereof for the purpose of protecting the personal rights of a living individual.

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

Article 4(1)(xv) provides that a mark shall not be registered where it is likely to cause confusion with other business entity’s well-known goods or services, to the benefit of a brand owner as well as users’ benefits.

Jaguar Land Rover argued that the opposed mark has been confusingly similar to the cited mark since the opposed mark “Like a Jaguar” gives rise to a meaning of ‘Similar to Jaguar’ in its entirety. Besides, given the mark “JAGUAR” has obtained a high level of popularity among relevant consumers as a source indicator of the opponent’s motorcars, apparels, fragrances, and other licensed goods, the consumers would notice the term “Jaguar” as a dominant portion of the opposed mark and thus confuse or misconceive it with the opponent consequently.

JPO decision

The Opposition Board did not admit a high level of popularity of the cited mark by stating that the opponent failed to produce sufficient evidence in an objective manner. According to the allegation, opponents sold more than 100,000 cars around the globe in 2019. But relevant evidence was not produced to demonstrate the sales. Due to this reason, it is unknown how many cars of the opponent were sold in Japan. Likewise, there was little evidence to show a high recognition of the cited mark in relation to goods other than cars.

Provided that the mark “JAGUAR” was found insufficiently famous for the opponent cars, the Board has no reason to believe that relevant consumers would see the term “Jaguar” of the opposed mark as a dominant source indicator. If so, both marks shall be assessed in their entirety.

The opposed mark gives rise to a meaning of ‘similar to a large spotted wild cat of South America’ and a pronunciation of ‘laɪk ə dʒæɡ.wɑːr’. The term “Like a” sufficiently differentiates the opposed mark from the cited mark in appearance, sound, and concept.

Based on the foregoing, the Board found relevant traders and consumers are unlikely to confuse or associate the opposed mark with the opponent or any business entity economically or systematically connected with Jaguar Land Rover when used on the goods in question. In conclusion, the opposed mark shall remain valid as the status quo.

Ariana Grande Loses Trademark Opposition at Japan Patent Office

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The Japan Patent Office (JPO) dismissed an opposition filed by GrandAri Inc., the owner of a trademark “ARIANA GRANDE”, against TM Reg no. 6202585 for wordmark “Arianna” to be used on cosmetics by finding dissimilarity between “Arianna” and “ARIANA GRANDE.”
[Opposition case no. 2020-900051, Gazette issued date: January 29, 2021.]

Opposed mark

Arianna Co., Ltd. applied for a wordmark “Arianna” registration for use on cosmetics, soaps, and detergents of Class 3 and medical apparatus of Class 10 with the JPO on January 7, 2019 (TM Application no. 2019-000339).

The JPO admitted the registration of the opposed mark on November 29, 2019, and published for opposition on Christmas Eve of the year.

Opposition by GrandAri Inc.

On February 21, 2020, GrandAri Inc. filed an opposition before the JPO and claimed that the opposed mark shall be revocable in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law by citing International Registration no. 1260129 for wordmark “ARIANA GRANDE” and others over the goods of ‘Perfume; eau de parfum; fragranced body care preparations, namely, body lotions, body scrubs’ in Class 3.

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

GrandAri argued that relevant consumers would easily think of American pop superstar from the cited mark “ARIANA GRANDE”. Besides, because of her celebrity and popularity, she is affectionately called by her first name “ARIANA”. In view of the space between “ARIANA” and “GRANDE”, it is highly likely that the consumers would consider the term “ARIANA” as a dominant source indicator at the sight of the cited mark. It is no doubt that the opposed mark “Arianna” is confusingly similar to “ARIANA” since the mere difference of the letter ‘n’ is negligible in appearance and both terms give rise to the same pronunciation.

Article 4(1)(xv) provides that any mark shall not be registered where it is likely to cause confusion with other business entity’s well-known goods or services, to the benefit of brand owners and users’ benefits.

GrandAri argued the cited mark is used on fragrances developed by Ariana herself, which are also called “ARIANA” in the advertisement.

Given a close resemblance between the opposed mark and the “ARIANA” mark, and a certain degree of popularity of the fragrances, firstly sold in November 2015 in Japan, it is likely to cause confusion with the cited mark when the opposed mark is used on the goods in question.

JPO Decision

The JPO admitted a high level of reputation and popularity of American pop singer, “ARIANA GRANDE” in Japan. In the meantime, the JPO questioned, from the produced evidence, whether the term “ARIANA” per se plays a role of the source indicator of Ariana Grande fragrances since it is constantly adjacent to the cited mark “ARIANA GRANDE.”
Consequently, the JPO negated the famousness of the term “ARIANA” as a source indicator of the opponent’s goods.

As for the similarity of the marks, the JPO assessed that relevant consumers would see the cited mark “ARIANA GRANDE” in its entirety because she is known and called by her full name. If so, both marks are distinctively dissimilar since the opposed mark does neither give rise to a pronunciation of “ARIANA GRANDE” nor a concept of American pop superstar.

The JPO dared to assess the similarity between the opposed mark “Arianna” and “ARIANA” and held that “Arianna” is not confusingly similar to “ARIANA” from a phonetical point of view. Due to a low level of similarity of the marks, the JPO does not have any reason to believe that the opposed mark would cause confusion with the cited mark “ARIANA GRANDE” as well as “ARIANA” when used on cosmetics, soaps, and detergents of Class 3.

Based on the foregoing, the JPO dismissed the entire allegations of GrandAri and allowed “Arianna” to survive.

“COSTA COFFEE” vs “Caffè la Costa”

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The Japan Patent Office (JPO) dismissed a trademark opposition claimed by Costa Limited, operating the UK’s largest and the World’s second-largest International chain of coffee shops “COSTA COFFEE”, against trademark registration no. 6230027 for the “Caffè la Costa” mark for use on coffee, coffee beans in class 30 and restaurant services in class 43 by finding both marks are dissimilar and less likely to cause confusion.
[Opposition case no. 2020-900137, Gazette issued date: December 25, 2020]

Opposed mark

The mark “Caffè la Costa” (see below) was filed by a Japanese individual on March 11, 2019, for use on tea; coffee; cocoa; coffee beans; confectionery, and bread in class 30 and restaurant service in class 43, and published for opposition on May 17, 2020, after registration on February 27, 2020.

Opposition by Costa Limited

On May 14, 2020, Costa Limited filed an opposition and alleged the opposed mark shall be revocable in contravention of Article 4(1)(xi) of the Japan Trademark Law due to close resemblance to senior trademark registration for a wordmark “COSTA” and the “COSTA COFFEE” logo (see below) in class 30 and 43.

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

Costa Limited argued that relevant consumers are accustomed to discriminating coffee shops by means of a distinctive literal element contained in their name. As a universal habit of shortening the full name, “Starbucks Coffee” is referred to as “Starbucks.” Likewise, “Doutor Coffee” as “Doutor”, “Excelsior Caffè” as “Excelsior”, “Tully’s Coffee” as “Tully’s”. Because the term “Coffee” and “Caffè” lack distinctiveness as a source indicator in relation to coffee; coffee beans and restaurant services.

In this respect, the consumers would consider the term “Costa” to be a dominant portion of the opposed mark when used on the goods and services in question. Therefore, “Caffè la Costa” shall be deemed confusingly similar to a wordmark “COSTA” and the “COSTA COFFEE” logo mark owned by Costa Limited.

Board Decision

The Opposition Board found the opposed mark does not give rise to any particular meaning as a whole. The mere fact that the respective word of the opposed mark (“Caffè”, “la”, “Costa”), is in the Italian dictionary would not change the finding since relevant consumers are unfamiliar with these Italian words. If so, the consumers would perceive the opposed mark as a coined word in its entirety and pronounce the entire mark as it sounds. In this regard, the Board doubted whether the term “Costa” is considered the dominant portion of the opposed mark by stating the facts show no evidence.

Based on the findings, the Board assessed the similarity of both marks as follows.

It looks obvious that the opposed mark is distinguishable from the cited marks, “COSTA” and the “COSTA COFFEE” logo, in appearance and sound, on account of different term and position of “Caffè la” and “COFFEE” combined with “Costa” and other distinction of figurative elements.
Provided that “COSTA” is an Italian word unfamiliar to relevant consumers with ordinary care, the Board believes both marks are incomparable in concept.
Even if both marks are incomparable in concept, the low level of similarity in appearance and sound would suffice to conclude that the consumers are unlikely to associate, connect the opposed mark with “COSTA COFFEE” when used on the goods and services in question.

Accordingly, the Board decided the opposed mark wasn’t revocable in contravention of Article 4(1)(xi) of the Trademark Law.

SMART vs SMART TYRE

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The Japan Patent Office (JPO) dismissed an opposition against trademark registration no. 6227071 for work mark “SMART TYRE” over a tire and other goods in class 12 claimed by Daimler AG who argued the mark is confusingly similar to senior registrations for the “SMART” mark in the same class owned by smart Automobile Co., Ltd.
[Opposition case no. 2020-900136, Gazette issued date: December 25, 2020]

“SMART TYRE”

The opposed mark, composing of wordmark “SMART TYRE” written in standard character, was sought for registration by Sumitomo Rubber Industries, Ltd., famous for “DUNLOP” tire brand, by designating various tires, automobiles, motorcycles, bicycles, and its structural parts and accessories in class 12 on August 21, 2018.  
[TM Application no. 2018-105830]

The mark was registered and published for opposition on March 10, 2020.

Opposition by Daimler AG

On May 11, 2020, just before the lapse of a two-months opposition period, Daimler AG filed an opposition before the JPO and claimed that the opposed mark shall be canceled in contravention of Article 4(1)(xi) and (xvi) of the Japan Trademark Law by citing senior trademark registrations for the “SMART” mark (see below) in class 12, which the opponent allegedly has used on the micro compact cars since 1998.

Daimler AG argued the opposed mark is a composite mark consisting of “SMART” and “TYRE”. The term “TYRE” undoubtedly lacks distinctiveness in relation to the goods of ‘tires’. If so, the dominant portion of the opposed mark shall be the term “SMART” which is identical to the cited marks. Besides, the ‘tires’ is considered as a structural part of automobiles and thus deemed similar to automobiles designated under the citations.

Therefore, the opposed mark shall be canceled based on Article 4(1)(xi).

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

Board decision

Surprisingly, the Opposition Board of the JPO found the opposed mark “SMART TYRE” shall be considered in its entirety irrespective of the fact that the term “TYRE” means ‘tire’. In addition, the Board held the opposed mark does not give rise to any specific meaning at all, and it is deemed a coined word.

Based on this finding, the Board assessed the similarity of marks as follows.

From appearance, both marks are sufficiently distinguishable since the opposed mark contains the term “TYRE” unlike the citations.

Phonetically, the opposed mark consists of seven sounds. In the meantime, the citations have four sounds. Due to the difference, relevant consumers are unlikely to confuse both marks.

The citations truly give rise to adjective meanings of ‘clever, bright, intelligent’. Meanwhile, the opposed mark has no meaning.

Therefore, the opposed mark “SMART TYRE” is dissimilar to the citations from visual, phonetical, and conceptual points of view even if the goods in question is deemed similar to the citations.

By stating that the term “TYRE” is inseparably and tightly incorporated into the opposed mark to the extent that relevant consumers would not conceive it as a descriptive indication in relation to the goods of class 12, the Board concluded the opposed mark shall not cause misapprehension of quality even when used on goods in question other than tires.

Based on the foregoing, the Board decided the opposed mark shall not be canceled in contravention of Article 4(1)(xi) and (xvi) of the Trademark Law and allowed “SMART TYRE” to survive.

The JPO’s finding does not look reasonable to me. It is clear that “TYRE” indicates ‘tire’. I suppose the Board rather should have mentioned the term “SMART” nowadays becomes generic when used in combination with the descriptive word(s) on the goods in question.

The University of Oxford Failed in Opposition Against “OXFORD” mark

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The Japan Patent Office (JPO) dismissed an opposition filed by Oxford Limited against trademark registration no. 6164941 for composite mark comprised of term “OXFORD” and a square X symbol in class 25, 35,40 by questioning whether the term per se has been known as a source indicator of the University.
[Opposition case no. 2019-900303, Gazette issued date: October 13, 2020]

Opposed mark

Japanese trademark registration no. 6164941 for composite mark comprised of term “OXFORD” and a square X symbol colored in dark blue (see below), was filed on October 26, 2018, by Oxford Corporation Co., Ltd., a Japanese business entity tailoring custom-made suits, over clothing, footwear made in England in class 25, retail or wholesale services for clothing, footwear and other goods in class 35, and dressmaking, treatment or processing of cloth, clothing or fur, custom tailoring services, and others in class 40.

JPO granted to protect the opposed mark and published for registration on August 20, 2019.

Opposition

On October 18, 2019, Oxford Limited, a wholly-owned subsidiary of the University of Oxford, filed an opposition and claimed the Opposed mark shall be canceled in contravention of Article 4(1)(vii), (viii), (xi), (xv) and (xix) of the Trademark Law by citing its own marks (see below).

Oxford Limited argued that the University of Oxford is an extremely well-known university worldwide. It has been ranked in 5th and 3rd places in tables of top international higher education institutes. Besides, Oxford Limited has promoted and licensed commercial goods bearing trademarks of the University. In Japan, various licensed goods e.g. apparel, accessories, interiors, stationery, educational toys are distributed via Ingram Co., Ltd., an authorized broker.

Under the circumstances, there is no doubt that relevant consumers at the sight of the term “OXFORD” would conceive the University when used on goods and services in question. If so, the opposed mark shall be deemed similar to and likely to cause confusion with the cited mark since the term “OXFORD” per se plays a dominant role in identifying a source.

JPO Decision

The JPO Opposition Board admitted a high degree of the reputation of “University of Oxford” among the general public. In the meantime, the Board opined that it is questionable if the term “OXFORD” has acquired a substantial degree of popularity as a source indicator of the University from the produced evidence and totality of the circumstances in view of the fact that the term is also a geographical indication, namely, the capital of the county of Oxfordshire.

Based on the foregoing, the Board found relevant consumers would recognize the term “OXFORD” of the Opposed mark just to indicate ‘the capital of the county of Oxfordshire’. Meanwhile, the cited marks give rise to a sound and concept pertinent to the University. The figurative element of both marks is sufficiently distinguishable from appearance. There was a low level of visual, aural, and conceptual similarity between the marks to the extent that relevant consumers would be unlikely to confuse the Opposed mark with the University of Oxford. Therefore, the allegations are groundless and the Opposed mark shall remain valid as the status quo.

I am not convinced with the JPO’s finding of “the term OXFORD of the Opposed mark just to indicate ‘the capital of the county of Oxfordshire”. I firmly believe the term immediately reminds us of the University rather than the name of the capital of Oxfordshire.

iPad vs MI PAD

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JPO sided with Apple Inc. in a dispute with a China-based consumer electronics company, Xiaomi that registers and uses the “MI PAD” trademark on tablet computers by finding that “MI PAD” is likely to cause confusion with “iPad”.
[Opposition case no. 2019-685002, Gazette issued date: November 27, 2020]

Xiaomi “MI PAD”

Xiaomi, a China-based electronics manufacturer headquartered in Beijing, filed a trademark application for word mark “MI PAD” via the Madrid Protocol (IR 1223839) in respect of various goods including table computers, downloadable music files, downloadable image files in class 9, and telecommunication access services and others in class 38 on August 22, 2017.

Prior to filing the application, Xiaomi newly introduced its first tablet, the Tegra K1-powered “Mi Pad” in 2014.

The JPO admitted registration of the MI PAD mark on December 7, 2018.

Opposition by Apple “iPad”

The Opponent, whose earlier ‘iPad’ trademark for its computer tablet products was also registered in Classes 9 and 38, is the U.S. tech giant, Apple Inc.

The heart of this dispute concerned the grounds of opposition raised by Apple Inc. against Xiaomi’s ‘MI PAD’ mark registration in Japan under Article 4(1)(xv) of the Japan Trademark Law.

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.

The Opponent argued the “MI PAD” mark shall cause confusion with Apple “iPad” when used tablet computers and related goods and services, given a remarkable reputation of “iPad” holding a top market share (42% in 2017, 43.2% 2018) in Japan and the close resemblance between “iPad” and “MI PAD”.

JPO decision

The Opposition Board admitted a remarkable degree of reputation and popularity of opponent trademark “iPad” based on the produced evidence boasting the top market share consecutively for the past nine years in Japan. Besides, the Board found “iPad”, consisting of “i” and “Pad”, is highly unique because the term “Pad” is anything but descriptive in relation to tablet computers.

In the assessment of mark, the Board held the dissimilarity between the signs at issue, resulting from the presence of the additional letter ‘m’ at the beginning of “MI PAD”, is not sufficient to offset the high degree of visual and phonetic similarity between the two signs. It is unquestionable that the designated goods and services are closely associated with tablet computers and consumed by the same consumers.

If so, it is likely that the consumers at the sight of disputed goods and services bearing the “MI PAD” mark would confuse or misconceive its source with Apple Inc. or any entity systematically or economically connected with the opponent.

Based on the foregoing, the Board decided opposed mark shall be canceled in contravention of Article 4(1)(xv).