タグ: Trademark opposition

No confusion between WeWork and iWork

Posted on

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.

JPO found likelihood of confusion between SONY and SONICODE

Posted on

The Japan Patent Office sided with Sony Corporation and declared invalidation of TM Registration no. 5764615 for wordmark “SONICODE” due to a likelihood of confusion with “SONY”.

[Invalidation case no. 2020-890039, Gazette issued date: July 30, 2021]

SONICODE

Field System Inc., a mobile application developer, applied wordmark “SONICODE” in standard character for registration on various goods including telecommunication apparatus, electronic machines, consumer video game programs, and its related services in class 9, 38, and 41 with the JPO on December 12, 2014 (TM App no. 2014-105218).

The mark did not face any refusal during the substantive examination and it was registered on date May 15, 2015.

Apparently, the mark has been used on mobile applications for smartphones.

SONY

SONY CORPORATION, a major Japanese manufacturer of consumer electronics products, filed an opposition against the SONICODE mark on August 5, 2015, before the lapse of a two-month statutory period for the opposition, in contravention of Article 4(1)(xi), (xv), and (xix) of the Japan Trademark Law. However, the JPO Opposition Board found both marks dissimilar and no likelihood of confusion between the marks SONY and SONICODE and dismissed SONY’s allegations entirely. [Opposition case no. 2015-900260]

On May 12, 2020, just three days before the lapse of the five-year statute of limitations, SONY CORPORATION files a petition for invalidation and alleged that the contested mark shall be invalidated based on Article 4(1)(x), (xi), (xv).

SONY argued that relevant consumers would conceive SONY at the sight of the contested mark SONICODE because of a high reputation of SONY and less distinctiveness of the term “CODE” in relation to the goods and services in question.

To bolster the arguments, SONY demonstrated how AI speakers, e.g., Amazon Alexa, Google Assist, Microsoft Cortana, Apple Siri, reacted to hear “SONICODE”. Allegedly, the AI speakers recognized it as ‘SONY code’ or ‘SONY cord’ and displayed information relating to SONY.

Field System Inc. did neither answer to the petition nor dispute at all during the invalidation procedure.

JPO decision

The JPO Invalidation Board did not question a remarkable degree of reputation, popularity, and originality of “SONY” as a source indicator of the opponent’s business and its products (telecommunication apparatus, electronic machines, consumer video game programs).

Besides, the Board found the prefix “SONI” of the contested mark gives rise to a similar appearance and pronunciation with “SONY”. Relevant consumers are likely to consider that the contested mark consists of “SONI” and “CODE”. If so, even if both marks are deemed dissimilar in their entirety, the Board has good reason to believe “SONICODE” has a certain degree of similarity to “SONY”.

In view of a close association between the goods and services in question and the opponent business, the Board concluded the contested mark shall be retroactively invalidated in contravention of Article 4(1)(xv). In the meantime, because of the dissimilarity of the marks, the Board dismissed allegations based on Article 4(1)(x) and (xi).

Dolce & Gabbana failed in a trademark opposition to block DolceSport

Posted on

The Japan Patent Office dismissed a trademark opposition claimed by the Italian luxury firm, Dolce & Gabbana against trademark registration no. 6259630 for word mark “DolceSport” in class 18, 20, 22, 25, and 28 by finding a less likelihood of confusion with “Dolce & Gabbana.”

[Opposition case no. 2020-900206, Gazette issued date: July 30, 2021]

“Dolce Sport”

Opposed mark, consisting of the word “Dolce Sport” in standard character, was filed by a Japanese company, SIS Co., Ltd. for use on various goods belonging to class 18,20, 22, 25 and 28 with the JPO on May 30, 2019 (TM Application no. 2019-83931).

The JPO admitted registration on June 15, 2020 and published for registration on July 7, 2020.

Opposition by Dolce & Gabbana

Dolce & Gabbana filed an opposition on August 19, 2020 and argued the opposed mark “Dolce Sport” shall be cancelled in contravention of Article 4(1)(xv) of the Japan Trademark Law since relevant consumes are likely to confuse the source of goods bearing the opposed mark with Dolce & Gabbana because of a close resemblance between “Dolce Sport” and a word “Dolce” that has become famous per se as a source indicator of the opponent.

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.

To apply the article, it is requisite that the mark of other entities has acquired a certain degree of reputation and popularity among relevant consumers in Japan.

Opponent produced evidence to demonstrate the word “Dolce” per se has been used on their goods, e.g. perfume, cosmetics, and bags. See below.

JPO decision

The JPO Opposition Board did not admit the term “Dolce” per se has become famous as a source indicator of Dolce & Gabbana by stating that famous brand “Dolce & Gabbana” is obviously represented adjacent to the term “Dolce” on their goods. If so, the Board has good reason to believe that it would be unclear whether the term has acquired a certain degree of reputation as a source indicator of the opponent from the produced evidence. Besides, the Board questioned whether “Dolce” has been known as an abbreviation of “Dolce & Gabbana” due to the same reason.

Based on the foregoing, the Board decided that, even if the opposed mark “Dolce Sport” has a medium degree of similarity with the “Dolce” and the goods in question are somewhat associated with the opponent business, relevant consumers are unlikely to confuse or misconceive a source of the opposed mark with Dolce & Gabbana by taking account of less originality of the term “Dolce” having a meaning of ‘sweet; dessert’ in Italian language and lack of good-will protectable under Article 4(1)(xv) enough to indicate a source of “Dolce & Gabbana”.

Trademark Dispute over “RED HOT”

Posted on

The Japan Patent Office (JPO) dismissed trademark opposition against wordmark “REDHOT” written in Katakana character opposed by The French’s Food Company LLC who owns senior trademark “REDHOT” and “FRANK’S REDHOT” in class 30.

[Opposition case no. 2020-900289, Gazette issued date: June 25, 2021]

Opposed mark “REDHOT”

Opposed mark, consisting of the word “REDHOT” written in Japanese Katakana character (see below), was filed by Kentucky Fried Chicken Japan (KFC) for use on fried chicken, meat, processed meat products, and other goods in class 29 and hamburgers, hot dog sandwiches, bread rolls, and other goods except for seasonings and spices in class 30 with the JPO on November 6, 2018 (TM Application no. 2018-142676).

KFC Japan has begun selling the “Red Hot Chicken”, red and white pepper with a touch of habanero, giving it a crisp, spicy flavor and the taste of domestic chicken in limited quantities since 2004.

FRANK’S REDHOT

The French’s Food Company LLC, an owner of the #1 brand of hot sauce “Frank’s RedHot” in America, filed an opposition on November 2, 2020.

Opponent argued that the opposed mark shall be canceled in contravention of Article 4(1)(xi) and (xv) because of similarity to senior TM Reg nos. 4723565 and 5523112 for wordmark “REDHOT” on seasonings and spices in class 30 (Citation 1), and a likelihood of confusion with TM Reg no. 5523111 for wordmark “FRANK’S REDHOT” (Citation 2) which has become famous as a source indicator in connection with hot sauce as a result of substantial and continuous use since 1920.

JPO decision

The Opposition Board of JPO found that Article 4(1)(xi) shall not be applicable to the opposed mark.

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

Since the designated goods, seasonings and spices, of the opposed mark are deemed dissimilar to any other goods belonging to class 30. In so far as respective goods in question are dissimilar, the opposed mark shall not be subject to the article even though the mark is identical with Citation 1.

The Board questioned whether the mark “FRANK’S REDHOT” has acquired a certain degree of reputation and popularity among relevant consumers in Japan by taking account of the produced evidence. The mere fact that the opponent’s hot sauces get to be a popular choice at specific dining restaurants is insufficient to support the famousness of Citation 2 in Japan.

Besides, relevant consumers would be easily able to distinguish the opposed mark with “FRANK’S REDHOT” by means of the distinctive term “FRANK’S” of Citation 2.

Given the low degree of similarity and unproven famousness as a source indicator of the opponent, the Board concluded it is unlikely that relevant consumers would confuse the source of goods bearing the opposed mark with the opponent or Citation 2 from the totality of circumstances, and thus dismissed the opposition entirely.

Hummel scores win in a trademark dispute over Chevron

Posted on

Hummel gained a victory in a trademark opposition against Japanese TM registration no. 6190746 for sixfold chevron right device mark due to a conflict with Hummel Chevron.
[Opposition case no. 2020-90007, Gazette issued date: May 28, 2021]

TM Reg no. 6190746

Opposed mark, consisting of a sixfold Chevron right device, was filed by a Japanese company for use on apparel and shoes in class 25 on November 14, 2018.

The JPO examiner did not raise her objection to the opposed mark and granted protection on September 27, 2019.

Hummel Chevron

On January 14, 2020, Hummel Holding A/S, the leading sportswear company from Denmark, filed an opposition and argued the opposed mark shall be canceled in contravention of Article 8(1) of the Trademark Law because of similarity to senior trademarks that consist of multiple Chevron right, left or down devices (see below) in class 25 owned by Hummel.

Article 8(1) is a provision to prohibit registration of any junior mark that is identical with, or similar to earlier applied marks based on the “first-to-file” principle.

Apparently, Hummel has been eager to claim broader protection of the Hummel Chevron.

JPO decision

Among the citations, the JPO Opposition Board found the opposed mark is confusingly similar to the sixfold Chevron down mark from a visual point of view regardless of dissimilar in direction of Chevron based on the finding that both marks would not give rise to any specific meaning and different pronunciation. Besides, the goods in question are deemed identical or similar respectively.

Since the opponent mark was applied for one month before the opposed mark on October 17, 2018, Hummel is entitled to claim a prior application right under the article.

Based on the foregoing, the JPO side with Hummel and decided to cancel the opposed mark entirely in contravention of Article 8(1).

The Opposition Board did not mention whether the opposed mark is deemed similar to the Hummel Chevron other than the sixfold down.

Which to win, first to file or first to trademark?

Posted on

A recent JPO decision over trademark opposition for “Le Tan” will serve as a cautionary message to brand owners who intend to launch business in Japan before too long.

Le Tan

Heritage Le Tan Pty Limited, an Australian Private Company, acquired the Le Tan brand in 2015 for use on tanning lotions & sprays, tanning oils, coconut screen, after sun, which has been made in Australia since 1977 and grown into the number one tanning brand in Australia.

Heritage filed a trademark application with the Japan Patent Office (JPO) for its iconic house mark (see below) on ‘Sunscreen preparations; lotions for cosmetic purposes; sun protection oils [cosmetics]; sunscreen creams; sun-tanning preparations [cosmetics]; self-tanning creams; self-tanning lotions; self-tanning preparations [cosmetic]; cosmetics’ in class 3 on October 28, 2019, when six months have passed after actual sales took place allegedly in April 2019, in Japan.

On November 30, 2020, the JPO examiner raised her objection due to a conflict with senior trademark registration no. 6251672 in contravention of Article 4(1)(xi) of the Japan Trademark Law.

Opposed mark “LE TAN”

Chanson cosmetics Inc., a Japanese private company, filed the cited mark “LE TAN” for use on ‘cosmetics and toiletries’ in class 3 on June 20, 2019, with the JPO.

The mark, consisting of words “LE TAN” and its transliteration written in Japanese Katakana characters (see below), was registered on May 14, 2020, and published for post-grant opposition on June 2, 2020.

Opposition: “Le Tan” vs “LE TAN”

Apparently, in anticipation of the upcoming refusal or perhaps, because of any other reason, Heritage filed an opposition against the mark on July 30, 2020.

In the opposition brief, Heritage argued the opposed mark shall be cancelled in contravention of Article 4(1)(xix) of the Trademark Law.

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

Heritage argued a remarkable degree of reputation and popularity of the Le Tan mark in Australia in relation to sunscreen and suntan preparations [cosmetics] as a result of substantial use of the mark by producing evidence to demonstrate growing annual sales (approx. 16 million Australian dollars in 2017), the second market share of 16 % in Australia (2013) , increasing website visitors (approx. 86,000 in 2019) , email subscriptions (24,000) and followers (Instagram: 250,000, Facebook: 180,000) , and annual expense for advertisement and publication (approx. 0.6 ~ 1 million Australian dollars for the past decade) by means of television, radio, magazine, the internet.

Heritage mentioned they had begun to export their products since 2015 and launched promotion and distribution to Japanese consumers in April 2019.

In an attempt to prove Chanson’s unlawful intention, Heritage pointed out the fact that Chanson has registered the mark “LE TEMPS” pronounced the same as “LE TAN” on the same class since 1984 and used the mark on skin-care cosmetics in fact. Heritage alleged that it appeared unreasonable for Chanson to file the opposed mark which has a same pronunciation but different spelling since Chanson must be convinced that skin-care conscious consumers are unwilling to use cosmetics giving rise to an impression of ‘the suntan.’ If so, Chanson must have filed the opposed mark just two months after the launch of trademarking Australian brand “Le Tan” in Japan simply because of interrupting their business.

JPO Decision

The Opposition Board of the JPO admitted a certain degree of reputation and popularity of the “Le Tan” mark in Australia in view of substantial use on sunscreen or suntan preparations [cosmetics] over four decades, however, the Board denied Heritage’s allegation that the opposed mark was filed with a malicious intention by stating:

From the totality of circumstance, the Board can’t find any reason to believe that Chanson sought for protection of the opposed mark to gain unfair profits or cause damage to the opponent. A mere fact the opposed mark was filed a few months after the opponent started to use the “Le Tan” mark in Japan was insufficient to find unfair purposes subject to Article 4(1)(xix). Heritage failed to convince the Board of the likelihood of interruption. Noticeably, according to the produced evidence, the opponent business in Japan is expanding contrary to their allegations.

Based on the foregoing, the JPO decided to dismiss the opposition entirely and concluded the Opposed mark shall remain valid as the status quo.

Glenfiddich Wins Trademark Dispute Over Deer Design

Posted on

The Japan Patent Office (JPO) sided with Glenfiddich, the world’s most awarded Single Malt Scotch Whisky, who fought against trademark registration for the BLACK FOREST composite mark in class 33 due to close resemblance to the Glenfiddich deer design. [Opposition case no. 2018-685017, Gazette issued date: April 30, 2021]

BLACK FOREST composite mark

The opposed mark, consisting of the words “BLACK FOREST”, “FINEST WINE QUALITY FROM GERMANY” and a stylized stag’s head (see below), was filed with the JPO on May 12, 2017, for use on ‘Wines and sparkling wines; all the above goods made in Germany’ in class 33 by Badischer Winzerkeller eG via the Madrid Protocol (IR no. 1353061).

On June 6, 2018, the JPO granted protection of the opposed mark and published for post-registration opposition.

Opposition by Glenfiddich

Glenfiddich owner William Grant & Sons opposed on the basis of its earlier international registrations (IR no. 919341&919342) in the mark GLENFIDDICH and a stylized stag head (see below) for use on whisky and whisky-based liqueurs are concerned, only scotch whisky and scotch whisky-based liqueurs produced in Scotland of class 33, in contravention of Article 4(1)(xi) of the Japan Trademark Law.

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.

In the opposition, the opponent argued, inter alia, a close resemblance of the stylized deer design. Taking into consideration the design element is visually separable from literal elements, relevant consumers at the sight of the stylized stag head of the opposed mark that appeared on a wine label are likely to connect it with Glenfiddich.

JPO decision

The Opposition Board of the JPO found that judging from the configuration of each mark, it is allowed to assess the similarity of both marks by means of comparing its design element.

The Board held the stylized stag head of both marks would give rise to a resembled impression from appearance and the same concept regardless of some differences in detail.

If so, even though the pronunciation of respective design is incapable of comparison, from the totality of the circumstances, relevant consumers are likely to confuse the origin of the goods in question bearing the opposed mark with Glenfiddich.

Based on the foregoing, the JPO decided to retroactively cancel IR no. 1353061 in contravention of Article 4(1)(xi) of the Trademark Law.

AlphaGo Unsuccessful in Defeating AlphaMini

Posted on

“AlphaGo” AI system, developed by Google-owned artificial intelligence company DeepMind, has gained the world’s attention after defeating the top human players of the world in a game of go in the year 2016. But, in a recent opposition decision, the Japan Patent Office (JPO) did not admit the famousness of the trademark “AlphaGo”.
[Opposition case no. 2020-900207, Gazette issued date: March 26, 2021]

AlphaMini

Opposed mark “AlphaMini” (see below) was filed with the JPO by UBTECH Robotics, Inc., Chinese artificial intelligence and humanoid robotic company on July 26, 2019, and designated ‘computer programs; AI-powered humanoid robots; application software for smartphones; security surveillance robots; sensors; teaching robots; navigational instruments; mobile phones; facial recognition software; cameras’ in class 9 and ‘games; toy robots; toys; board games; balls for games; body-building apparatus; fishing tackle; archery implements’ in class 28.

According to the website of URTECH Robotics, Inc., the mark is used as a name of their humanoid educational robot.

Opposition by DeepMind “AlphaGo”

DeepMind Technologies Limited filed an opposition against “AlphaMini” and argued the opposed mark shall be canceled in contravention of Article 4(1)(xv) of the Japan Trademark Law because relevant consumes would confuse the source of goods bearing the opposed mark “AlphaMini” with DeepMind due to a close resemblance between two marks and famousness of “AlphaGo”.

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.

Besides, DeepMind owns several trademarks that begin with the term “ALPHA”, namely, “ALPHACHESS”, “ALPHAZERO”, “ALPHAFOLD”, “ALPHASHOGI”. Taking into consideration a highly renowned computer program “AlphaGo” as the very first AI program that was able to beat one of the highest-ranked human players in the world in 2016, as well as a naming strategy for “ALPHA” AI system series, relevant consumers are likely to associate the opposed mark “AlphaMini” with DeepMind when used on its designated goods in class 9 and 28.

JPO Decision

The Opposition Board of the JPO had concluded that insufficient evidence had been submitted to support the assumption of a well-known mark that is protectable under Article 4(1)(xv).

The Board pointed out that most of the produced newspapers and magazines did not prove the use of the mark “AlphaGo” as a source indicator of the computer program for Go developed by DeepMind. Instead, they just revealed the term “アルファ碁” has been used to represent the AI system by DeepMind. “アルファ碁” is precisely a translation and transliteration of “AlphaGo” written in Japanese character.

The JPO held the mere fact that the first word of both marks is identical would be insufficient. Overall impression of “AlphaGo” and “AlphaMini” is remarkably different from visual, phonetic, and conceptual points of view. Thus, the Board found a low level of similarity between the two marks.

Even if the goods in dispute are closely associated with DeepMind’s business, given a low level of similarity and insufficient evidence to assume the famousness of “AlphaGo”, the Board had no reason to believe the opposed mark would cause confusion with DeepMind when used on the disputed goods in class 9 and 28.

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