カテゴリー: Article 4(1)(vii)

Starbucks Trademark Dispute Brewing Over Bull Pulu Tapioca Logo

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The Japan Patent Office (JPO) has rejected an opposition from Starbucks to trademark registration no. 5897739 for the green-and white “BULL PULU TAPIOCA” concentric circle logo with a puppy white bull dog in the center.
[Opposition case no. 2017-900048]

 

BULL PULU TAPIOCA LOGO

Opposed mark (see below), designating goods of tapioca beverages, tapioca fruit juice beverages in class 32 and retail or wholesale services for tapioca beverages, tapioca fruit juice beverages in class 35, was applied for registration on May 10, 2016 by a Japanese individual. As a result of substantive examination, JPO granted a registration on October 28, 2016.

OPPOSITION by STARBUCKS

Subsequently, Starbucks Incorporated, a US coffee chain, filed an opposition based on a conflict with famous Starbucks trademarks.

In the opposition, Starbucks alleged violation of Article 4(1)(vii), (xi) and (xv) of the Japan Trademark Law.

Article 4(1)(vii) prohibits any mark likely to offend public order and morals from registering.

Article 4(1)(xi) is a provision to refrain from registering a junior mark which is deemed identical with, or similar to, any senior registered mark.

Article 4(1)(xv) excludes a junior mark which is likely to cause confusion with goods or services belonging to another business entity.

BOARD DECISION

The Opposition Board of JPO admitted a high degree of reputation and popularity to the iconic Starbucks logo among relevant consumers at the time of initial filing and registration of the opposed mark.

In the meantime, the Board found that both marks are dissimilar due to a distinctive difference in literal elements and design depicted in the center. Besides, by taking account of severe dissimilarity of both marks, the Board denied a likelihood of confusion between the marks as well.

To bolster the public disorder allegation, Starbucks revealed the facts that applicant of the opposed mark was a former CEO of J.J. Co., Ltd., a tapioca drink parlor, and Opposed mark has been used on shop signs and cups for drink managed by J.J. Co., Ltd. in fact (see below).

The Board held that such facts are insufficient to conclude Opposed mark may offend public order and morals if registered.

Accordingly, JPO rejected an opposition challenged by Starbucks.

ENRICO COVERI failed to remove “COVERI” from trademark registration

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The Opposition Board of Japan Patent Office (JPO) held in an opposition filed by Enrico Coveri Società a Responsabilità Limitata (Opponent) that trademark registration no. 5874843 for a word mark “COVERI” (Opposed mark) shall remain as valid as ever and dismissed claims in the opposition entirely.
[Opposition case no. 2016-900368]

Opposed mark (see below) was applied for registration on November 27, 2015 by designating various kinds of goods in class 25 including apparels and shoes, and published for registration on September 20, 2016without any office action from the JPO examiner.

Opponent claimed that the opposed mark “COVERI” shall be cancelled on the basis of Article 4(1)(vii), (viii), (x), (xi), (xv) and (xix) of the Japan Trademark Law by citing senior trademark registrations for word mark “ENRICO COVERI”, a name of the late Italian fashion designer, in class 18, 24 and 25.

In the opposition decision, the Board concluded that “ENRICO COVERI” and “COVERI” are both dissimilar in appearance, pronunciation and concept.

Besides, the Board did not admit a high degree of popularity and recognition to “ENRICO COVERI” among relevant public in Japan because of insufficient evidence to demonstrate amount of sales, number of stores and expenditure for promotion and advertisement (Opponent has just produced some photographs or articles appeared in fashion magazines).

Based on the fact finding, the Board concluded that opposed mark was not filed in a malicious intent to do harm to the designer’s fame, and “COVERI” shall not be deemed as an abbreviation of “ENRICO COVERI”. Therefore, there finds less likelihood of confusion between “COVERI” and “ENRICO COVERI” even if both marks are used on apparels or shoes.

It is highly advisable to an owner of high-end or luxurious brand, consisting of two or more alphabetical words, to have each word registered as well for the purpose of preventing free-riding and enjoying a broader scope of protection against use by others.