The Japan Patent Office (JPO) dismissed an opposition filed by Audemars Piguet Holding SA (AP), a Swiss luxury watchmaker, against TM Reg no. 6754358 for wordmark “ROYAL OAK” in class 33 due to insufficient recognition of “ROYAL OAK” luxury watches among general consumers.
[Opposition case no. 2024-900016, decided on October 16, 2024]
Opposed mark
On May 12, 2023, St. Michael Wine and Spirits Co., Ltd. filed an application for the registration of a word mark “ROYAL OAK” in standard character, in connection with whisky, spirits [beverages], liqueurs, and western liquors (class 33) with the JPO.
The applicant sells whisky and soda in cans bearing the mark “ROYAL OAK”.
The JPO did not raise any office action in the course of substantive examination and published it for a post-grant opposition on November 24, 2023.
Opposition by Audemars Piguet
On January 23, 2024, before the lapse of a two-month statutory period counting from the publication date, AP filed an opposition and claimed cancellation of the applied mark in contravention of Article 4(1)(vii), (xv) and (xix) of the Japan Trademark Law.
AP argued that “ROYAL OAK” has been well known for AP’s luxury watches even among relevant consumers of the goods in question. Allegedly, “ROYAL OAK” luxury watches have been promoted for sale in Japan since 1972. Annual sales exceed JPY 8 billion on average in the past six years. Each year, AP spent more than JPY400 million on advertisement and promotion in Japan. Due to the high degree of reputation and popularity of “ROYAL OAK” luxury watches, consumers are likely to consider whiskey and western spirits bearing the “ROYAL OAK” mark as coming from the opponent or other business entity economically or systematically connected with AP.
JPO decision
The Opposition Board admitted a certain degree of recognition of the opponent’s “ROYAL OAK” among the consumers who have purchased or interest in luxury watches. However, the Board questioned a high degree of recognition among general consumers because the opponent’s watches are priced at a premium, with relatively low sales volumes and a limited distribution network in Japan. There are about 50 stores only that engage in the resale of the “ROYAL OAK” watches in Japan in addition to the AP official salon or shop. Presumably, lots of general consumers have seldom visited these stores and seen the “ROYAL OAK” watches.
Besides, the Board found whisky, spirits [beverages], liqueurs, and western liquors do not closely relate to luxury watches.
Given that the AP’s “ROYAL OAK” has not acquired a high degree of recognition among relevant consumers and a low degree of relatedness between the goods, the Board has no reason to find a likelihood of confusion between the opposed mark and the opponent business even if both marks are same.
Based on the foregoing, the Board concluded AP’s allegations groundless and decided to maintain the registration of the opposed mark.