カテゴリー: Alphabetical word

JPO found “Pitta” dissimilar to “PITTA MASK”

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In an administrative decision on Jan 14, 2025, the Japan Patent Office (JPO) overturned the examiner’s rejection that found similarity of mark between earlier TM Reg no. 6486979 “PITTA MASK” (Cl. 35) and junior TM App no. 2023-61590 “Pitta” (Cl. 35).
[Appeal case no. 2024-6542]

Applied mark “Pitta”

Pitta Co., Ltd. filed a trademark application for word mark “Pitta” in standard character with the JPO on June 5, 2023.

The application designates various services in classes 35 and 42, in particular ‘advertising and publicity services; promoting the goods and services of others through the administration of sales and promotional incentive schemes involving trading stamps; business management; marketing research or analysis; providing commercial information and advice for consumers in the choice of products and services’.

Earlier mark “PITTA MASK”

On November 20, 2023, the JPO examiner raised her objection due to a conflict with earlier TM Reg no. 6486979 “PITTA MASK” (see below) based on Article 4(1)(xi) of the Japan Trademark Law.

Article 4(1)(xi) is a provision that prohibits the registration of a junior mark that is deemed identical with, or similar to, any earlier registered mark.

https://www.arax.co.jp/pittamask/en/product/

Though the cited mark is just in use for sanitary masks, it is allowed under the trademark law to designate goods and services other than masks as long as the total number of similarity code does not exceed 22 in each class. Since the cited mark also covers the same services unrelated to sanitary masks with the applied mark in class 35, the JPO examiner decided to reject the applied mark on March 18, 2024.

The applicant filed an appeal against the rejection with the JPO on April 17, 2024 and claimed cancellation of the examiner’s rejection by arguing dissimilarity of the marks.

JPO decision

The JPO Appeal Board found the examiner errored in finding similarity of mark and decided to reverse the rejection.

The Board reasoned that the term “SELECT” is a less distinctive word since it is commonly used to exaggerate quality of goods and service. Meanwhile, the term “PITTA” and “MASK” are depicted in a larger and conspicuous font, and visually represented as a combined element. The term “MASK” would not be less distinctive when used on goods and services unrelated to sanitary masks. If so, the literal portion consisting of “PITTA” and “MASK” can be extricable part of the cited mark. Therefore, it is permissible to consider the portion as a dominant in the cited mark and assess similarity of mark by comparing the dominant portion with the applied mark.

Based on the above findings, the Board found the cited mark gives rise to a pronunciation of ‘pitta mask” but no specific meaning.

Visually, the applied mark is distinguishable from the dominant portion due to non-existence of the term “MASK” and horizontal lines.

Phonetically, comparing ‘pitta’ with ‘pitta mask’, both marks are easily distinguishable.

A conceptual comparison is neutral as both marks have any clear meaning.

As a conclusion, given both marks are dissimilar, even if the designated services in class 35 are overlapping, the Board has no reason to find the applied mark subject to Article 4(1)(xi).

TOMMY HILFIGER vs TOMTOMMY

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The Japan Patent Office (JPO) did not side with Tommy Hilfiger Licensing B.V. in an opposition against TM Reg no. 6604265 “TOMTOMMY” due to dissimilarity and unlikelihood of confusion with “TOMMY” and “TOMMY HILFIGER”.
[Opposition case no. 2022-900456, gazette issued on December 27, 2024]

TOMTOMMY

The contested mark, consisting of the word “TOMTOMMY” in standard characters, was filed with the JPO by a Chinese individual on January 20, 2022 for use on shoulder bags, tote bags, sports bags, wallets, umbrellas and other goods in Class 18, and underwear, belts, shoes, caps, coats, socks and other goods in Class 25 on January 30, 2022 (TM App no. 2022-10028).

The JPO examiner made an administrative decision to grant registration of the mark on August 3, 2022. Subsequently, the mark was published in Trademark Gazette for post-grant opposition on August 31, 2022.

Opposition by Tommy Hilfiger

Tommy Hilfiger Licensing B.V. filed an opposition with the JPO on October 31, 2022 by citing its own earlier trademark registrations for the wordmark “TOMMY” or “TOMMY HILFIGER”.

Tommy Hilfiger claimed that the contested mark should be cancelled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law.

Article 4(1)(xi) is a provision that prohibits the registration of a junior mark that is deemed identical with, or similar to, any earlier registered mark.

Article 4(1)(xv) prohibits the registration of trademarks that are likely to cause confusion with the business of other entities.

Tommy Hilfiger contends that the contested mark is composed of two distinctive words, “TOM” and “TOMMY”. Since “TOMMY” has been widely recognized by the relevant consumers to indicate the world-famous fashion brand “TOMMY HILFIGER”, the average consumers, uppon seeing the goods in question bearing the contested mark, will consider the term “TOMMY” as a prominent part of the contested mark in order to identify its origin. If so, the contested mark is similar to the cited marks a high degree.

Moreover, Tommy Hilfiger has used not only the mark “TOMMY”, but also various marks containing “TOMMY”, such as “TOMY JEANS”, “TOMMY NOW”, “TOMMY SPORT”, “TEAM TOMMY”, “TOMMY FACTORY”. In those circumstances, the consumers are likely to mistakenly believe that the goods in question bearing the contested mark “TOMTOMMY” come from the same undertaking or from economically-linked undertaking.

JPO decision

To my surprise, the JPO Opposition Board questioned the high degree of recognition of fashion brands, “TOMMY” and “TOMMY HILFIGER”, because the claimant did not provide sufficient evidence to prove the substantial and extensive use of the cited marks in Japan.

Furthermore, the Board denied similarity even between “TOMTOMMY” and “TOMMY” by stating:

  1. The contested mark is considered to be a coined word, and therefore has no specific meaning.
  2. Visually, both marks are distinguishable due to the difference in the number of letters that constitutes respective mark (8 letters vs 5 letters).
  3. Aurally, both sounds are dissimilar because the prefix sound “TOM” has a significant impact on the overcall pronunciation.
  4. A conceptual comparison is neutral because neither “TOMTOMMY” nor “TOMMY” has any clear meaning.

Because Tommy Hilfiger failed to demonstrate a high degree of popularity of the cited marks, the Board found that there was no reason to believe that the relevant consumer would confuse the source of the goods at issue bearing the contested mark with Tommy Hilfiger or an economically-linked undertaking due to a low degree of similarity between the marks.

Based on the foregoing, the Board decided the contested mark shall not be canceled and dismissed the oppositions entirely.

Trademark dispute: MONSTER EVERGY vs POCKET MONSTERS

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In a trademark opposition disputed between “MONSTER ENERGY” and “POCKET MONSTERS”, the Japan Patent Office (JPO) did not side with Monster Energy Company and decided in favor of Nintendo.
[Opposition case no. 2023-900162, decided on December 19, 2024]

POCKET MONSTERS

Nintendo / Creatures Inc. / Game Freak Inc., the IP owners of “Pocket Monsters”, widely known as its abbreviation, “Pokémon” as well, filed a trademark application for wordmark “POCKET MONSTRERS” in standard character for use on various categories of goods and services in classes 3, 9, 14, 16, 18, 20, 21, 24, 25, 28, 30 and 41 with the JPO on September 1, 2022 (TM App no. 2022-101055).

Pokémon, a blend of the words “Pocket Monsters”, means not only fictional creatures that inhabit the fictional Pokémon World, but also a Japanese media franchise that includes video games, animated series, films, and a trading card game.

The JPO granted protection of the applied mark without issuing any office action on April 3, 2023. Subsequently, the mark was published for post-grant opposition on May 12, 2023.

Opposition by Monster Energy

Monster Energy Company, the parent company of Monster Energy Drink, filed an opposition against “POCKET MONSTERS” with the JPO on July 10, 2023 before the lapse of a two-month statutory period counting from the publication date.

Monster Energy claimed a partial cancellation of the applied mark in relation to the designated goods of class 30 including tea, tea-based beverages, coffee, coffee beverages, cocoa based on Article 4(1)(vii) and (xv) of the Japan Trademark Law by citing its owned earlier marks that consist of “MONSTER ENERGY” or “MONSTER” in class 32.

Monster Energy alleged that the mark “MONSTER” has become famous among consumers to indicate energy drinks originating from the claimant. There was no dispute that the applied mark contains the term “MONSTER”. Therefore, relevant consumers would mistakenly associate the opposed mark with the claimant and consider a source of the beverages bearing the mark “POCKET MONSTERS” from a licensee of the claimant.

JPO decision

The JPO Opposition Board found evidence sufficient to establish a high degree of recognition of the mark “MONSTER ENERGY” to indicate energy drinks from the claimant. However, the Board questioned whether the cited marks have been widely recognized even among general consumers of carbonated beverages and juices other than energy drinks.

In addition, the Board found evidence insufficient to find a certain degree of recognition of the mar “MONSTER” per se.

Based on the above findings, the Board assessed similarity of mark by comparing overall appearance, sound and meaning between “MONSTER ENERGY” and “POCKET MONSTERS”.

From appearance and sound, the difference of words, “ENERGY” and “POCKET” has a material effect on overall visual and aural impression to the extent that relevant consumers can easily distinguish. Conceptually, the marks are unlikely to cause confusion because the opposed mark does not give rise to any specific meaning contrary to the cited marks. Therefore, the opposed mark is deemed dissimilar to the cited mark “MONSTER ENERGY”.

Given the low degree of similarity between “MONSTER ENERGY” and “POCKET MONSTERS”, the Board has no reason to believe that relevant consumers are likely to associate the opposed mark used on the goods in class 30 with Monster Energy or its licensee.

If so, the opposed mark should not be cancelled in contravention of Article 4(1)(vii) and (xv).

JPO Decision: Trademark “Dear U plus” dissimilar to “dear U”

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The Japan Patent Office (JPO) overturned the examiner’s refusal and granted registration of TM App no. 2023-99199 for wordmark “Dear U plus” by finding dissimilarity to earlier marks, “dear U” and “DEAR YOU”.
[Appeal Case no. 2024-13602, decided on December 12, 2024]

TM App no. 2023-99199

Fanplus, Inc. filled a trademark application for wordmark “Dear U plus” in standard character for use on goods and services in classes 9, 35, 41 and 42 with the JPO on September 6, 2023.

Article 4(1)(xi)

On June 3, 2024, the JPO examiner rejected the applied mark based on Article 4(1)(xi) of the Japan Trademark Law by citing earlier TM Reg nos. 6570375 “dear U” (classes 9, 38, 41, and 45) and 6756169 “DEAR YOU” (classes 20, 21, 24, 27, 29, 30, 35, and 43).

In the refusal, the examiner asserted that the word “plus” is often used in conjunction with a source indicator to represent that the quality of the goods or services offered is more advanced or improved than that of existing goods or services. Under the circumstances, relevant consumers would consider the word “plus” less distinctive in connection with the goods and services in question. Therefore, the “Dear U” element is dominant in the applied mark. If so, it is reasonable to conclude that the applied mark is aurally and conceptually similar to the cited marks.

JPO Appeal Board decision

The applicant filed an appeal against the examiner’s refusal with the JPO on August 23, 2024, and argued dissimilarity of mark.

The JPO Appeal Board found that the applied mark “Dear U plus” did not have a specific meaning and would be recognized as a whole, taking into account a visual configuration represented by the same font and a less redundant pronunciation.

In assessing similarity of mark, the Board held:

The applied mark is visually distinguishable from the cited marks because of the presence of the term “plus” and the difference between the letter “U” and “YOU”. Furthermore, there are differences in the upper and lower case of the words “Dear,” “dear,” and “DEAR”.

Aurally, even though the applied mark and the cited marks contain the same sound “dɪr-juː”, the whole sounds are distinguishable because the difference in the suffix sound “plʌs” makes the overall tone and nuance of respective mark significantly different.

The conceptual aspect does not have impact on the assessment as the applied mark has no specific meaning.

Based on the foregoing, the Board found both marks dissimilar and held that the examiner erroneously applied Article 4(1)(xi). Consequently, the JPO decided to overturn the examiner’s refection.

COSME MUSEUM vs Cosmetic Museum

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In a trademark invalidation action disputing similarity between “COSME MUSEUM” and “Cosmetic Museum”, the Japan Patent Office (JPO) found both marks dissimilar and unlikely to cause confusion when used in relation to cosmetics.
[Invalidation case no. 2024-890015, decided on November 6, 2024]

COSME MUSEUM

CEL-ENA Co., Ltd. filed a trademark application for the wordmark “COSME MUSEUM” (Contested mark) with the JPO on February 24, 2023. It designates various services classified in class 35, including retail or wholesale services for cosmetics (TM App no. 2023-18992).

The applicant owns the domain “cosme-museum.com” and uses the contested mark on the domain’s web pages.

https://cosme-museum.com/

The JPO examiner granted registration of the contested mark on August 9, 2023 without issuing a notice of refusal. Upon payment of the statutory registration fee, the mark was registered on October 19, 2023 [TM Reg no. 6746429].

Cosmetic Museum

MOMOTANIJUNTENKAN Co., Ltd. filed a trademark application for the wordmark “Cosmetic Museum” in standard character with the JPO on February 16, 2023 (8 days prior to the contested mark) for use on breath freshening preparations, deodorants for animals, soaps and detergents, dentifrices, bath preparations, not for medical purposes, perfumes and flavor materials, incense, false nails, false eyelashes, and cosmetics in class 3 (TM App no. 2023-16082) in order to secure online use of the mark in connection with cosmetics on its websites under the domain “cosmeticmuseum.jp”.

https://cosmeticmuseum.jp/shop

The JPO registered the earlier mark on July 13, 2023 (3 months prior to the contested mark) [TM Reg no. 6717335].

On March 28, 2024, five months after the registration of the contested mark, MONOTANIJUNTENKAN filed an invalidation petition with the JPO requesting that the contested mark be retroactively annulled based on Article 4(1)(xi) of the Japan Trademark Law.

Article 4(1)(xi) is a provision that prohibits the registration of a junior mark that is deemed identical with, or similar to, any earlier registered mark.

JPO decision

The JPO Invalidation Board found the contested mark “COSME MUSEUM” is dissimilar to the cited mark “Cosme Museum” by stating that:

Firstly, comparing the appearance of the contested mark and the cited mark, there are visual distinctions in the presence or absence of the term “tic”, and the upper-case letters or lower-case letters consisting of respective mark. Therefore, the Board has a reason to believe that two marks are clearly distinguishable, and unlikely to cause confusion in appearance.

Secondly, the pronunciation of the contested mark and that of the cited mark clearly differ in the presence or absence of a “tic” sound in the middle, and are clearly audible.

Thirdly, both marks do not give rise to any specific meaning at all. In this regard, they are not comparable in conception.

Based on the foregoing, even if the contested mark and the cited mark are conceptually incomparable, they are unlikely to cause confusion due to a low degree of similarity in appearance and pronunciation. Taking a global view of the impression, memory, and association that the relevant consumers will have from the appearance, sound and concept of the marks, the Board has a reason to believe that the contested mark “COSME MUSEUM” should be found dissimilar to the earlier mark “Cosmetic Museum” and unlikely to cause confusion.”

Accordingly, the Board decided to dismiss the invalidation action and declared the contested mark valid.

COSTCO vs MINICOS

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In a trademark opposition regarding a likelihood of confusion between the mark “COSTCO” and “MINICOS” in relation to retail or wholesale services, the Japan Patent Office (JPO) found no confusion with the American mega-chain Costco.
[Opposition case no. 2024-900059, decided on November 6, 2024]

MINICOS

The contested mark, consisting of the terms “MINICOS” and “RETAIL SHOP” arranged in two lines with five-star devices (see below), was filed with the JPO on October 31, 2023 for use in retail or wholesale services for food and beverages in Class 35.

The applicant uses the mark in their retail and online shops that resell the food and beverages purchased at Costco Wholesale.

As the applicant requested the JPO to accelerate examination procedure, the examiner granted registration of the MINICOS mark in two months without issuing any office action.

Accordingly, the mark was officially registered on December 27, 2023 (TM Reg no. 6766577) and published for a post-grant opposition on January 11, 2024.

Opposition

MINISO Hong Kong Limited filed an opposition on March 8, 2024 to contest validity of the mark based on Article 4(1)(vii) and (xv) of the Japan Trademark Law by citing the earlier mark “COSTCO”.

The opponent argued that the applicant undoubtedly has knowledge of Costco Wholesale in view of their business and that the relevant consumers are likely to associate the contested mark with Costco because of the concept of “a small-size Costco retail store” and the same color combinations of red and blue.

In light of the relatedness between the Costco Wholesale business and the services in question as well as the high level of recognition of the cited mark among Japanese consumers, it is likely to cause confusion with Costco Wholesale when the contested mark is used in connection with the retail services for food and beverages.

JPO Decision

Astonishingly, the JPO Opposition Board questioned famousness of the cited mark among Japanese consumers because of insufficient evidence to show sales, market share, advertisement and promotional activities by Costco in Japan.

Besides, the Board found that given the cited mark has not acquired a high degree of recognition, the contested mark would not give rise to any specific meaning. If so, there is no reason to find similarity between the contested mark and the cited mark from visual, aural and conceptual points of view.

Even if the Costco Wholesale business is highly related to the contested services, given the low degree of similarity between the marks, the Board has reason to believe that the relevant consumers are unlikely to confuse a source of the services represented by the contested mark with Costco.

A mere fact that the applicant filed the contested mark with a knowledge of Costco in their business to resell the food and beverages purchased at Costco Wholesale is irrelevant to find fraudulent intention to obtain unjustifiable benefit from it.

Based on the foregoing, the JPO decided to dismiss the opposition entirely.

BULLDOG vs GREEN BULLLDOG

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The Japan Patent Office (JPO) dismissed an opposition against TM Reg no. 6724674 for the wordmark “GREEN BULLDOG” claimed by DAVIDE CAMPARI – MILANO N.V. on the grounds of dissimilarity to and unlikelihood of confusion with earlier IR no. 1141768 for the wordmark “BULLDOG” for use on gin in Class 33.
[Opposition No. 2023-900229, decided on October 1, 2024]

GREEN BULLDOG

On April 15, 2022, Green Wave Unlimited Japan Co., Ltd (GWUJ) filed a trademark application with the JPO for the word mark “GREEN BULLDOG” and its Japanese transliteration arranged in two lines in connection with various goods in Classes 3, 5, and 33, including gin (Cl. 33) [TM App No. 2022-44073].

The applicant sells CBD products bearing the contested mark.

https://www.greenbulldog.jp/

The JPO examiner granted protection of the contested mark on June 2, 2023.

BULLDOG

DAVIDE CAMPARI – MILANO N.V. filed a partial opposition to the contested mark in respect of Western spirits, alcoholic fruit beverages, Japanese shochu-based beverages in Class 33 within the two-month statutory period from the date of publication on August 17, 2023, claiming that “GREEN BULLDOG” should be partially cancelled in contravention of Article 4(1)(x), (xi), (xv) and (xix) of the Japan Trademark Law by citing its own earlier IR no. 1141768 for the word mark “BULLDOG” in Class 33.

CAMPARI argued that since “BULLDOG” gin has achieved a high degree of recognition among relevant consumers and traders in Japan and abroad, the literal part of “BULLDOG” plays a dominant role in identifying the source of the contested mark when used in relation to the goods in question. If so, both marks should be considered similar and consumers are likely to confuse a source of alcoholic beverages bearing the contested mark with CAMPARI or “BULLDOG” gin.

JPO decision

The JPO Opposition Board did not allow a certain degree of recognition of the cited mark due to insufficient evidence provided by CAMPARI.

With respect to the similarity of the mark, the Opposition Board found that both marks are clearly distinguishable from appearance because the contested mark consists of alphabets and Japanese katakana characters arranged in two lines. On the other hands, the cited mark does not contain Japanese katakana characters and is not arranged in two lines.

Aurally, “BULLDOG” and “GREEN BULLDOG” are distinguishable because of a clear difference in the prefix sound.

A conceptual comparison is noteworthy as each mark evokes a different meaning.

Based on the above findings, the Board found that the two marks were dissimilar and unlikely to cause confusion when used for the goods in question.

Consequently, the Board decided to reject the opposition in its entirety and to maintain the contested mark as the status quo.

BVLGARI Defeated with TM Opposition over “SERPENTI” Collection

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The Japan Patent Office (JPO) dismissed an opposition claimed by BULGARI S.P.A. against TM Reg no. 6629637 for wordmark “Serpent Eternal” in class 14 due to dissimilarity to and unlikelihood of confusion with Italian luxury fashion brand, Bvlgari “Serpenti” Collection.
[Opposition case no. 2022-900520, decided on September 20, 2024]

Contested mark

NEW ART CIMA Co., Ltd., a Japanese jeweler, filed trademark application for wordmark “Serpent Éternel” and its Japanese transliteration arranged in two lines (see below) for use on jewelry, rings, personal ornaments, precious metal, watches and other goods in class 14 with the JPO on May 18, 2022 (TM App no. 2022-55932).

Two months later, the applicant unveiled a new line of diamond rings featuring the snake motif.

https://www.exelco.com/bridal_jewelry/marriagering/serpent-eternel.php

The JPO granted protection of the applied mark without raising any refusal ground (TM Reg no. 6629637) and published it for a post-grant opposition on October 27, 2022.

Opposition by Bvlgari

BULGARI S.P.A., an Italian luxury fashion house, filed an opposition against the contested mark with the JPO on December 15, 2022, and claimed cancellation in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law.

BULGARI alleged that the contested mark is similar to their luxury jewelry brand “Serpenti” that has been renowned for the iconic snake motif, and thus likely to cause confusion when used on the designated goods in class 14 by citing the following trademarks registered on the same class.

  • TM Reg no. 6614600 “SERPENTI“
  • IR no. 1319881 “SERPENTI SEDUTTORI“
  • IR no. 1323844 “SERPENTI INCANTATI“
  • IR no. 1331470 “SERPENTI HYPONOTIC“
  • IR no. 1332000 “SERPENTI FOREVER“
  • IR no. 1376153 “SERPENTI VIPER“
https://www.bulgari.com/ja-jp/collection/serpenti.html

JPO decision

The JPO Opposition Board questioned a high degree of recognition of the mark “Serpenti” per se among relevant consumers in Japan because lots of presence in magazines, advertisings, and web articles for the “Serpenti” collection accompany with famous luxury brand “BVLGARI” or “BVLGARI.COM”. The Board pointed out that no commercial records were submitted regarding the sales and market share of the collection.

Comparing the marks, the Board found the contested mark is distinguishable from the cited marks in appearance because none of them have visual arrangement in two lines. Although the initial sound produced by the prefix “ser” is identical, the subsequent sound is different, thereby establishing that the contested mark is clearly distinguishable from the cited marks in pronunciation. A conceptual comparison is neutral as neither the contested mark nor the cited marks have any clear meaning.

In light of the aforementioned findings, the Board has determined that the contested mark is not similar to any of the cited marks. Therefore, even if the goods in question are identical or similar to those of the cited marks, the contested mark shall not be subject to Article 4(1)(xi).

Given the low degree of similarity between the marks and the uncertain degree of recognition of the cited marks, the Board has no reason to believe that relevant consumers are likely to confuse a source of goods in question bearing the cited mark with BVLGARI. Therefore, the contested mark shall not be cancelled under Article 4(1)(xv).

Consequently, the Board did not align with BVLGARI and decided to dismiss the entire opposition against the contested mark.

PAGANI Lost Trademark Opposition Against PAGANI DESIGN

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PAGANI S.p.A. lost in a bid to oppose TM Reg no. 6731316 for word mark “PAGANI DESIGN” in class 14 as the JPO denied a likelihood of confusion with Italian sports car brand “PAGANI”.
[Opposition case no. 2023-900251, decided on September 3, 2024]

PAGANI DESIGN

The contested mark, consisting of word “PAGANI DESIGN” in standard character, was filed by a Chinese company for use on watches in class 14 with the Japan Patent Office (JPO) on August 31, 2022.
The watches bearing the contested mark have been distributed via the internet.

Capture from https://pagani-design.co.jp/

In the course of substantive examination, the JPO examiner issued an office action based on Article 4(1)(xi) of the Japan Trademark Law by citing senior IR no. 979660 for wordmark “PAGANI” covering horological and chronometric instruments of class 14.

As a countermeasure, the applicant filed a non-use cancellation action against the cited mark in order to overcome the examiner’s office action.

Since IR no. 979660 was partially cancelled because PAGANI could not demonstrate actual use of the mark “PAGANI” in connection with the goods in question for the past three years at all [Cancellation case no. 2022-670054], the examiner withdrew her refusal and granted registration of the contested mark on August 25, 2023. The JPO registered the contested mark on August 30, 2023 and published it for a post-grant opposition on September 7, 2023.

Opposition by PAGANI

Italian sports car manufacturer, PAGANI, filed an opposition against the mark “PAGANI DESIGN” with the JPO on November 7, 2023, shortly before the lapse of the two-month statutory period counting from the publication date.

In the opposition, PAGANI argued that the contested mark “PAGANI DESIGN” should be cancelled in contravention of Article 4(1)(xv) of the Trademark Law because the relevant consumers, especially those who like sports cars and hyper cars, are likely to confuse a source of watches bearing the contested mark with the opponent, well known as an Italian manufacturer of the prestigious high-end sports cars PAGANI.

Capture from https://www.sky-g.org/pagani/

JPO decision

The JPO Opposition Board questioned a high degree of popularity and reputation of the opponent mark “PAGANI” among relevant consumers by stating that:

The produced evidences show that in Japan, the public gets to see the opponent cars in 2013 for the first time, and from 2020, the cars were displayed by the authorized import car dealers in their showrooms located in Kobe and Tokyo. However, the number of “Pagani Huayra” sold in Japan, only two units, is extremely small. It is undeniable that most of Japanese consumers has not purchased the opponent cars.

Taking account of several presence in magazines and events at major motor car races in Japan, the opponent mark “PAGANI” has obtained a certain degree of recognition among the consumers who have a high interest to automobiles. However, the evidence is insufficient to find a high degree of recognition of the opponent mark among relevant consumers in question.

Given the mark “PAGANI” has not acquired a high degree of recognition, the Board has no reason to find that the consumers consider the term “PAGANI” as a dominant element to indicate a source of the contested mark.

Moreover, cars are rarely related to watches by nature, purpose and consumers.

Therefore, a mere fact that the contested mark contains the term “PAGANI” is not enough to find a likelihood of confusion based on the above findings.

As a conclusion, the Board dismissed the opposition entirely.

“Uber Finish” Causes No likelihood of confusion with “Uber”?

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In an appeal trial against the examiner’s refusal to TM App no. 2023-19561 for word mark “Uber Finish”, the Japan Patent Office (JPO) decided to reverse the refusal by finding unlikelihood of confusion with trademark “Uber”.
[Appeal case no. 2024-4656, decided on September 3, 2024]

Uber Finish

A Japanese individual filed a trademark application for wordmark “Uber Finish” in standard character for use on adult dating services and others of class 45 in the field of adult entertainment business with the JPO on February 24, 2023.

Uber

On January 4, 2024, the JPO examiner rejected the mark on following grounds.

Article 4(1)(viii)

The examiner pointed out that the applied mark “Uber Finish” contains the term “Uber” that is identical with a famous abbreviation of the global company Uber Technologies Inc.
Provided that the applicant has not obtained an approval to register the applied mark in Japan from the company, it is not registrable under Article 4(1)(viii) of the Trademark Law.

Article 4(1)(xv)

Unquestionably, the term “Uber” is identical with a famous mark “Uber” that has been used by the global company Uber Technologies Inc. on ride-sharing services and food delivery services prior to the filing of the applied mark. Accordingly, it is not registrable under Article 4(1)(xv) of the Trademark Law because relevant consumers of the service in question are likely to confusion a source of the services bearing the applied mark “Uber Finish” with Uber Technologies or other business entity systematically or economically connected with Uber.

The applicant filed an appeal against the refusal on March 18, 2024 and argued registrability of the applied mark.

JPO decision

To my surprise, the JPO Appeal Board denied famousness of the mark “Uber” as an abbreviation of Uber Technologies Inc., even though they admitted the company has operated ride-hailing and food delivery services in the name of “Uber Taxi” and “Uber Eats”.

Based on the above finding, the Board found the applied mark does not contain a famous abbreviation of the company name, Uber Technologies Inc. Therefore, the examiner erroneously applied Article 4(1)(viii) to the case.

The Board found the mark “Uber Finish” and “Uber” dissimilar by stating that:

“From appearance, the marks share the word “Uber” at the beginning of the word, but the difference in the word “Finish” that follows makes them different words as a whole, and therefore, it is easy to distinguish them.
Although the four sounds of “Uber” at the beginning of the word may be common, the difference in the sound of “Finish” at the end of the word makes the overall tone and impression different, so it is easy to distinguish two marks.
A conceptual comparison is neutral as neither “Uber Finish” not “Uber” have any clear meaning.
Taking a global account of visual and aural distinctions, average consumers would consider them as different trademarks to indicate a different source respectively.”

Besides, the business managed by Under Technologies Inc. is remotely associated with the services in question, namely, adult entertainment services. If so, relevant consumers with an ordinary care are unlikely to confuse a source of services bearing the applied mark with Uber Technologies Inc. In this respect, the examiner made an error in applying Article 4(1)(xv).

Consequently, the Board decided to overturn the examiner’s refusal and grant registration of the applied mark.