タグ: VISA

VISA lost in a bid to oppose AIR VISA

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The Japan Patent Office (JPO) dismissed an opposition claimed by Visa International Service Association (VISA) against TM Reg no. 6512071 for the wordmark “AIRVISA” due to an unlikelihood of confusion with “VISA” in connection with goods and services of classes 9, 35, 39, and 42.

[Opposition case no. 2022-900159, decided on March 9, 2023]

AIR VISA

SmartHR, Inc. filed the wordmark “AIRVISA” in standard character for use on various goods and services in classes 9, 35, 39, and 42, inter alia, computer application software, personal management, application service of working visa and residence status, and SaaS with the JPO on July 29, 2021.

AIRVISA Inc., a subsidiary of SmartHR, provides services for Japanese companies to support online working visa applications and residence status management for their foreign workers.

The JPO granted protection of the AIR VISA mark on February 1, 2022, and subsequently, the mark was published for opposition on February 21, 2022.

Opposition by VISA

Visa International Service Association (VISA) filed an opposition on April 21, 2022, before the lapse of a two-month opposition period, and contended that the opposed mark shall be canceled in contravention of Article 4(1)(xv) of the Japan Trademark Law.

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.

VISA argued relevant consumers would conceive of VISA’s famous service mark “VISA” at the sight of the opposed mark, consisting of “AIR” and “VISA” when used on its designated goods and services because of a remarkable degree of the reputation of the “VISA” mark and business circumstances that credit card companies provide application program for online payment service at present

JPO decision

The JPO Opposition Board admitted the famousness of the “VISA” mark in relation to the service of credit card services and electronic credit card transaction processing as a source indicator of the opponent based on substantial use since 1958 and a top market share of over 50% in Japan.

In the meantime, the Board questioned whether the “VISA” mark has become famous as a source indicator in connection with computer programs for online payment services from the produced evidence.

The Board considered the opposed mark “AIR VISA” shall be assessed in its entirety because of a tight combination of two words that is familiar to relevant consumers in Japan respectively. If so, both marks are dissimilar in the presence and absence of the term “AIR” from visual, phonetical, and conceptual points of view.

Bearing in mind that the term “VISA” is not a coined word, having its original meaning as an official mark, usually made in a passport, that allows one to enter or leave a particular country, the Board has a reason to believe that relevant consumers are unlikely to associate the goods and services in question bearing the opposed mark with VISA.

Based on the foregoing, the Board decided the opposed mark shall not be canceled in contravention of Article 4(1)(xv) of the Trademark Law and dismissed the entire allegations by VISA.

Trademark Opposition: “VISA” vs. “V-ISA”

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The Opposition Board of Japan Patent Office (JPO) dismissed an opposition filed by a global payments technology company, Visa International Service Association (VISA) against trademark registration no. 6077944 for a word mark “V-ISA” due to unlikelihood of confusion with VISA’s famous service mark “VISA”.
[Opposition case no. 2018-900365, Gazette issued date: July 26, 2019]

Opposed mark

Opposed mark, consisting of a word mark “V-ISA” in standard character, was filed in the name of Machine Vision Lighting Inc., a Japanese company deploying in business field of lighting apparatus.

The mark was filed to JPO on November 3, 2017. Going through substantive examination, JPO admitted registration over the goods of “lighting apparatus” in class 11 and published for opposition on October 2, 2018.

Opposition by VISA

To oppose the mark, Visa International Service Association filed an opposition on December 3, 2018.

VISA argued that opponent has use the mark “VISA” since 1976 as a tradename of credit card company and unquestionably it has become famous in Japan as source indicator of opponent business. Besides, opposed mark “V-ISA” gives rise to a pronunciation ‘viː.zə’ just like with “VISA”. Therefore, both marks are identical or similar in phonetic and visual point of view. Nowadays, in the age of global e-commerce, consumers are accustomed to purchase various goods and services by means of credit card payment. Under the circumstance, opponent business gets all the more associated with a wide variety of goods or service traded via e-commerce. If so, relevant consumers and traders of lighting apparatus are likely to confuse opposed mark with famous service mark “VISA”.

Accordingly, VISA alleged that opposed mark “V-ISA” shall be retroactively cancelled in violation of Article 4(1)(xv) of the Japan Trademark Law.

Article 4(1)(xv)

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 brand owner and users’ benefits.

Board decision

The Opposition Board did not question a remarkable degree of popularity and reputation of mark “VISA” in relation to credit card payment as a source indicator of opponent business.

In the meantime, the Board emphasized the term “VISA” is not a coined word, having its original meaning as an official mark, usually made in a passport, that allows you to enter or leave a particular country. Besides, the Board considered both marks are distinctively dissimilar by stating that:

From appearance, even if opposed mark “V-ISA” consists of the same literal elements with opponent mark “VISA”, they are visually distinguishable because of a hyphen (-).

Opposed mark just gives rise to pronunciation of ‘vui-isa’ or ‘vui-ai-esu-ei”. If so, the pronunciations are clearly dissimilar to ‘viː.zə’ of opponent mark.

Given opposed mark does not give rise to any specific meaning, both marks are not comparable in concept.

Since “lighting apparatus” in class 11 is obviously dissimilar to and less associated with opponent business, relevant consumers with an ordinary care would not conceive of opponent mark at the sight of opposed mark.

Based on the foregoing, the Board concluded that relevant consumers and traders are unlikely to confuse opposed mark with VISA or any business entity systematically or economically connected with opponent.

Thus, opposed mark shall not be cancelled based on Article 4(1)(xv), and remains valid as a status quo.