カテゴリー: Violation of public order

Warner Defeated in Trademark Opposition over TWEETY

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The Japan Patent Office (JPO) dismissed an opposition filed by Warner Bros against Japanese trademark registration no. 6452448 for the TWETYBIRD mark with a device by finding dissimilarity to and less likelihood of confusion with “Tweety”, a yellow canary bird, featured in the Warner Bros Looney Tunes animated cartoons.

[Opposition case no. 2021-900459, Decision date: October 26, 2022]

Japan TM Reg no. 6452448

The opposed mark, consisting of the word “TWETYBIRD” and an encircled “B” device (see below), was filed by a Chinese company for use on various goods in classes 3,9,14,18,25, and advertising and other services in class 35 on December 16, 2020.

The JPO granted protection on August 25, 2021, and the mark was published for opposition on October 26, 2021.

Opposition by Warner Bros

On December 27, 2021, before the lapse of a two-month opposition period, Warner Brothers Entertainment Incorporated filed an opposition with the JPO, and argued the opposed mark shall be canceled in contravention of Article 4(1)(vii), (xi), (xv) and (xix) of the Japan Trademark Law by citing earlier trademark registrations for the mark “Tweety”, a yellow canary bird (see below) featured in the Looney Tunes animated cartoons.

Warner Bros alleged that the cited marks have been remarkably famous for the title of the animated cartoons or the name of the cartoon character produced by Warner Bros. In view of the close resemblance between the famous mark “Tweety” and a literal element “Twety” of the opposed mark, it shall be considered the opposed mark is similar to and likely to cause confusion with the opposed mark when used on the goods and service in question.

JPO decision

The JPO Opposition Board admitted a certain degree of reputation and popularity of the cited marks to indicate a cartoon character. However, the Board questioned such popularity as a source indicator of Warner Bros from the totality of the circumstances and the produced evidence.

Besides, the Board found the literal element “TWETYBIRD” of the opposed mark shall be assessed in its entirety from the visual configuration. If so, the opposed mark would not give rise to a similar sound and meaning to “Tweety”. Therefore, the Board has a reason to believe that relevant consumers are unlikely to confuse a source of the goods and services in question bearing the opposed mark with Warner Bros due to a low degree of similarity between marks and reputation of the cited marks as a source indicator of Warner Bros.

In the decision, the Board mentioned it is doubtful if relevant consumers acquaint themselves with “Tweety Bird” as the full name of “Tweety”. If so, there is no reasonable ground to find the opposed mark violates morality or public order.

Based on the foregoing, the Board found the opposed mark shall not be canceled in contravention of Article 4(1)(vii), (xi), (xv), and (xix) and dismissed the opposition entirely.

Olympic Lose Trademark Race with Olimple

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In a trademark opposition disputing the similarity and the likelihood of confusion between “Olympic” and “Olimple”, the JPO did not side with the IOC (International Olympic Committee).

[Opposition case no. 2021-900173]

Olimple

The opposed mark, consisting of the term “Olimple” written in the alphabet and the Japanese katakana character (see below), was applied with the Japan Patent Office (JPO) on January 28, 2020, for use on facial skin care gel, cosmetics, soaps, and other goods in class 3 by Olimple Co., Ltd.

The JPO granted protection on February 2, 2021, and published for opposition on March 9, 2021.

The applicant promotes medicated skin care gel for men bearing the Olimple mark.

Image credit: olimple.jp

Opposition by IOC

Opponent, IOC claimed the opposed mark shall be canceled in contravention of Article 4(1)(vi), (vii), (xi) and (xv) of the Japan Trademark Law by citing earlier International Registration no. 1128501 for wordmark “OLYMPIC” covering various goods and services in class 3 and other classes.

IOC argued a close resemblance between “OLYMPIC” and “Olimple” by stating:

  1. Both marks share four of the seven letters. Besides, the two letters at the end of the word, “le” and “IC” looks similar.
  2. The third letters “I” and “Y” of both marks are pronounced as “li” accompanied by the second letter “L”.
  3. Being that consumers are accustomed to several terms with a prefix of “OLYMP”, e.g., “OLYMPISM”, “OLYMPIAN” in connection with “OLYMPIC”, they will see the literal element “Olimp” as a dominant portion of the opposed mark.
  4. If so, relevant consumers are likely to confuse the opposed mark with “OLYMPIC” when used on goods in question.

JPO decision

The JPO did not question the famousness of the OLYMPIC mark as a source indicator of the IOC. However, the Opposition Board negated the similarity between “Olimple” and “OLYMPIC” on the following grounds.

  1. The term “Olimple” shall be deemed as a coined word because it is not a word that appeared in a language dictionary and does not give rise to any specific meaning in relation to the goods in question.
  2. There is a remarkable difference in the presence or absence of Japanese katakana characters. In addition to the difference between upper- and lower-case letters after the second letter, there are distinctions in the third letter “i” and “Y”, the sixth letter “l” and “I”, and the letters “e” and “C” at the end. In the configuration of the relatively short seven-letter alphabet, both marks are sufficiently distinguishable by appearance.
  3. Phonetically, both marks are unlikely to cause confusion as a whole because of a clear difference in the fourth and fifth sounds.
  4. It is obvious that both marks are dissimilar in concept.

The Board did not find a reason to believe relevant consumers would misconceive the source of the opposed mark merely because of close attention to the literal portion of “OLYMP” and “Olimp”, and its similarity.

Based on the foregoing, the JPO dismissed the entire allegations and decided on July 13, 2022, that the opposed mark shall remain valid as the status quo.

GUCCI Unsuccessful in Trademark Opposition

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On July 12, 2022, the Japan Patent Office (JPO) dismissed an opposition claimed by Italian fashion house Gucci against Japan Trademark Registration no. 6384970 for the mark “CUGGL” with a hand-painted line in pink by finding less likelihood of confusion with famous fashion brand “GUCCI”.

[Opposition case no. 2021-900284]

CUGGL

Opposed mark, consisting of the term “CUGGL” with a hand-painted line in pink, was applied for use on clothing, footwear, headwear, and apparel in class 25 by an individual on October 6, 2020.

The JPO granted protection of the opposed mark and published it for opposition on May 25, 2021.

Opposition by GUCCI

Italian high-end luxury fashion house, GUCCI filed an opposition with the JPO on July 26, 2021, and argued the opposed mark shall be canceled in contravention of Article 4(1)(vii), (xv), and (xix) of the Trademark Law due to similarity and likelihood of confusion with famous fashion brand “GUCCI”.

GUCCI claimed the opposed mark was sought with malicious intention to free-ride goodwill and reputation in a manner of hiding the lower part of the term “CUGGL” by a pink painted line to the extent consumers could recognize it as if “GUCCI”. In fact, the registrant promotes T-shirts bearing the opposed mark with the most part of the term hidden.

JPO Decision

The JPO Opposition Board admitted a remarkable degree of popularity and reputation of the opponent’s “GUCCI” mark.

In the meantime, the Board did not find a resemblance between “GUCCI” and “CUGGL” from visual, phonetic, and conceptual points of view. Due to a low degree of similarity of the mark, the Board had no reason to believe that relevant consumers would misconceive a source of goods in question bearing the opposed mark from GUCCI or any entity systematically or economically connected to the opponent.

Assuming a low degree of similarity of the mark and less likelihood of confusion, the Board can’t find a reasonable ground to admit the applicant had a malicious intention to free-ride goodwill and reputation of GUCCI and do harm to the opponent.

Based on the foregoing, the JPO dismissed the entire allegations and decided the opposed mark was valid.

Adidas Unsuccessful in Opposition over BOOST mark

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On May 18, 2022, the Japan Patent Office (JPO) dismissed an opposition filed by Adidas AG against Trademark Reg no. 6383132 for the wordmark “G-BOOST” by finding dissimilarity and unlikelihood of confusion with Adidas “BOOST”.

[Opposition case no. 2021-900273]

G-BOOST

UNI WORLD Co., Ltd. filed wordmark “G-BOOST” in standard character for use on ‘gloves for protection against accidents; clothing for protection against accidents; protective industrial shoes; dust masks’ in class 9 and ‘clothing; footwear; gloves; thermal gloves; sports shoes; sportswear; socks’ in class 25 on March 30, 2020.

The applicant promotes worker gloves bearing the mark “G-BOOST.”

The JPO granted protection of the mark on March 30, 2021, and published for opposition on May 25, 2021.

Opposition by Adidas

On July 14, 2021, Adidas AG filed an opposition and argued the opposed mark shall be canceled in contravention of Article 4(1)(vii), (x), (xi), and 4(1)(xv) of the Japan Trademark Law due to a conflict with earlier trademark registrations pertinent to Adidas BOOST shoes, namely, TM Reg nos. 5212257 “BOOST” and 5941352 “ULTRABOOST” on shoes and sports shoes in class 25.

Allegedly, Adidas introduced Boost in 2013 as its revolutionary cushioning system, which provided the highest energy return in any running sneaker. The technology was designed to provide runners with soft cushioning and long-lasting energy that more rigid sneakers couldn’t.

Adidas argued the opposed mark “G-BOOST” is confusingly similar to “BOOST” because the term “BOOST” shall be a prominent portion of the opposed mark given an alphabetical letter “G” perse lacks distinctiveness in relation to the goods in question. Besides, “BOOST” has become famous as a source indicator of Adidas in relation to running shoes. If so, relevant consumers are likely to confuse the source of goods bearing the opposed mark with Adidas.

JPO Decision

The JPO Opposition Board did not admit a certain degree of reputation and popularity of the BOOST mark as a source indicator of Adidas running shoes among relevant consumers in Japan by stating that the opponent failed to produce sufficient evidence to disclose sales figures, market share, and advertising expenditures, media space and time of the goods bearing the BOOST mark even though the opponent produced evidence to demonstrate marketing campaign for the BOOST shoes in Japan.

In addition, the Board compared “G-BOOST” with “BOOST” as a whole and negated the similarity of the marks because of a clear distinction in appearance and sound.

Given the low degree of similarity of the mark and unproved famousness of the opponent mark, the Board has no reason to believe relevant consumers would confuse a source of the goods bearing the opposed mark with Adidas.

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

Canada Goose Failed Trademark Opposition Over Roundel Logo

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On May 11, 2022, the Japan Patent Office (JPO) dismissed an opposition filed by Canada Goose International AG against TM Reg no. 6367416 for a composite mark consisting of red, white, and blue roundel logo and literal elements by finding dissimilarity to and the unlikelihood of confusion with Canada Goose roundel logo.

[Opposition case no. 2021-900228]

Opposed mark

The opposed mark consists of a silhouette of an island or region in white placed right at the center of the emblem, a navy field with twelve red lines radiating from the center, and a wide rounded white frame with the text “KITAKYU GOODS” (top) and “NORTH NINE PROGRAM” (bottom) and five five-pointed-start-like devices (on each side of the frame) in red (see below left).

A Japanese business entity applied for use on seals and stickers [stationery] in class 16 and ornamental adhesive patches for jackets and brassards in class 26 with the JPO on June 29, 2020.

The JPO examiner granted protection of the opposed mark on March 3, 2021, and published for opposition on April 13, 2021.

Opposition by Canada Goose

To oppose registration within a statutory period of two months counting from the publication date, Canada Goose International AG filed an opposition against the opposed mark on June 14, 2021.

Canada Goose argued the opposed mark shall be canceled in contravention of Article 4(1)(vii), (xi), (xv), and (xix) of the Japan Trademark Law because of the remarkable reputation and popularity of earlier trademark registrations for the Canada Goose Roundel Logo (see above right) in relation to apparels and a close resemblance between the opposed mark and the opponent mark by using “confusingly similar” red, white, and blue logo patch.

JPO Decision

The JPO Opposition Board did not find a high degree of reputation and popularity of the Canada Goose Roundel Logo as a source indicator of the opponent among relevant consumers in Japan by stating that the opponent failed to produce evidence pertinent to the sales and advertisement of goods bearing the opponent logo in Japan even though the Canada Goose ranked fourth for a must-buy down jacket in 2021.

From the totality of the evidence, the Board had no choice but to question if the opponent mark has become famous among relevant consumers in Japan as well as Canada, and other countries.

Besides, the Board negated similarity between the marks by virtue of visual distinctions caused by (i) a land-like device depicted at the center and (ii) text and devices placed in the rounded frame. Due to the distinction, both marks give rise to a dissimilar sound. Conceptually, both marks are incomparable since either mark does not have any specific meaning.

Given the low degree of similarity of the mark and unproved famousness of the opponent mark, the Board has no reason to believe relevant consumers would confuse a source of the goods bearing the opposed mark with Canada Goose.

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

Samsung Failed in TM Opposition against “Funky Galaxy”

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

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

Opposed mark

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

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

Opposition by Samsung

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

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

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

JPO Decision

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

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

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

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

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

TM Opposition: Claude Monet vs Monet Design

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

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

TM Reg no. 6245564

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

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

Opposition by ACADEMIE DES BEAUX ARTS

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

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

TEG provides six factors to apply the article.

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

JPO Decision

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

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

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

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

To whom does “Mary Poppins” return?

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The Japan Patent Office (JPO) dismissed an invalidation petition by Disney Enterprises, Inc. against Japanese TM Reg no. 5710595 for the wordmark “Mary Poppins” by finding that “Mary Poppins” has not been well known as a source indicator of Disney.

[Invalidation case no. 2019-890040, Gazette issued date: June 25, 2021]

TM Registration no. 5710595

Disputed mark, consisting of the word “Mary Poppins” in standard character (see below), was applied for registration on February 28, 2014, in respect of caring for babies [excluding services provided at facilities]; babysitting in class 45.

Without confronting refusal during the substantive examination, the disputed mark was registered on October 17, 2014.

The applicant of the disputed mark, Mary Poppins Inc., has apparently offered babysitting services in Kobe, Japan since its establishment in 1988.

Screen capture from https://www.marypoppins.co.jp/en/

Petition for invalidation by Disney

Japan Trademark Law has a provision to retroactively invalidate trademark registration for certain restricted reasons specified under Article 46 (1), provided that the interested party files an invalidation petition within a five-year statute of limitations.

Disney filed a petition for invalidation against the disputed mark on July 18, 2019, three months before the lapse of the limitations period, and argued the mark unquestionably freerides on the world-famous Walt Disney film “Mary Poppins” and thus relevant consumers would associate the disputed mark with Disney when used on the services in question. If so, it shall be invalid in contravention of Article 4(1)(vii), (xv), and (xix) of the Japan Trademark Law.

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

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, to the benefit of brand owners and users.

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

Mary Poppins, an American musical film, released in 1964, features the now-iconic screen debut of Julie Andrews. A children’s classic, Mary Poppins is considered to be among the finest of Walt Disney’s productions based on the original books by P.L Travers.

JPO Decision

The JPO Invalidation Board admitted a certain degree of reputation and popularity of “Mary Poppins” as the title of the beloved Walt Disney film and the name of the main character of the film.

In the meantime, the Board questioned if “Mary Poppins” has played a distinctive role in indicating a source of Disney’s goods or services. A mere fact that goods featuring the Walt Disney films and its characters are merchandised at the Tokyo Disney Resort and Disney Shops in Japan is insufficient to prove Disney has used “Mary Poppins” as a source indicator to identify their business, the Board found.

In so far as “Mary Poppins” has not been recognized as a source indicator, but a title of the world-famous Walt Disney film or the main character of the film, it is unlikely that relevant consumers would consider the disputed mark “Mary Poppins” used on the services in question coming from Disney or entities systematically or economically connected with the opponent.

The Board also referred to the precedent court cases that ruled invalidation of the trademark “Anne of Green Gables” and “Tarzan” in contravention of Article 4(1)(vii). Contrary to these films, the Board could find no authorized activity to protect or preserve the film or original books of “Mary Poppins” as cultural heritage and prohibit unlicensed use by the private sector. If so, it is inadequate to treat the case equally with them. The Board held that the disputed mark shall not be likely to cause damage to public order or morality.

Based on the foregoing, the JPO decided the disputed mark shall remain valid and dismissed the invalidation entirely.

“MONA LISA” May Smile At You

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In a recent decision, the Japan Patent Office (JPO) disaffirmed the examiner’s refusal and accepted for registration of the world-famous painting, ‘Mona Lisa’ by Leonardo da Vinci.
[Appeal case no. 2020-9377, Gazette issued date: May 28, 2021]

“MONA LISA”

Disputed mark, consisting of a wordmark “MONA LISA” written in a Japanese katakana character (see below), was filed by a Japanese company, Negibito Co., Ltd on February 20, 2019, for use on ‘edible live aquatic animals; edible unprocessed seaweeds; fresh vegetables; fresh fruits; live mammals, fish [not for food], birds and insects and other goods in class 32.

Apparently, the company uses the disputed mark on specially grown scallions with a high sugar content of more than 20 degrees to be sold at JPY10,000 (USD92) for one stalk!

Article 4(1)(vii)

JPO examiner raised her objection by stating that since “MONA LISA” has been known for the world-famous painting, ‘Mona Lisa’ by Leonardo da Vinci, it shall contravene the generally accepted sense of morality or the international faith if registered. Accordingly, the disputed mark shall be rejected in contravention of Article 4(1)(vii) of the Japan Trademark Law.

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

Trademark Examination Guidelines 42.107.05 provides seven criteria to take into consideration to determine if a mark, consisting of valuable cultural products (works of art), shall contravene the article.

(i) Famousness of the cultural products
(ii) Recognition of the cultural products among citizens or local residents
(iii) State of use of the cultural products
(iv) Relationship between the state of use of the cultural products and the designated goods or services
(v) Background, purpose, and reason for filing an application
(vi) Relationship between the cultural products and the applicant
(vii) Authorized entity that manages and owns the cultural products (if any)

The applicant filed an appeal against the refusal on July 3, 2020.

JPO Appeal Board decision

The Appeal Board assessed seven criteria pertinent to the works of art “MONA LISA” in accordance with the Trademark Examination Guideline.

The Board admitted a remarkable degree of recognition and reputation of “MONA LISA” among the general public in Japan as the world-famous painting by Leonardo da Vinci.

In the meantime, the Board questions if the goods in question are closely related to works of art and art exhibitions that the term “MONA LISA” has been used.

Besides, the Board found that the term is not used to promote or develop certain regions associated with the painting in relation to the goods in question.

Based on the foregoing, the Board held that it is unlikely that registration of the disputed mark would constitute a genuine and sufficiently serious threat to a fundamental interest of society when used in connection with the goods in class 32. Therefore, the disputed mark “MONA LISA” shall not be refused on the basis of the public policy exception provided for in Article 4(1)(vii) of the Trademark Law.

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.