カテゴリー: Article 4(1)(xi)

How do you pronounce “Q-revo” mark?

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In an administrative appeal disputing trademark similarity between TM registration no. 2705284 for word mark “REVO” and a junior trademark represented as below, the Appeal Board of Japan Patent Office (JPO) decided that both marks are deemed dissimilar and allowed to register the junior trademark accordingly.
[Appeal case no. 2017-8341]

Disputed mark

Disputed mark (see above) was applied for trademark registration on October 30, 2015 by designating goods of telecommunication machines, electronic machines and others belonging to class 9.

As a result of substantive examination by the JPO, examiner refused the disputed mark by citing a senior TM registration “REVO” based on Article 4(1)(xi) of the Trademark Law to find that the citation has also covered telecommunication machines, electronic machines in the designation which are deemed identical with disputed mark.

Subsequently, the applicant of disputed mark filed an appeal to the case.

TRADEMARK APPEAL

Main issue at the appeal rested on how disputed mark should be pronounced in the assessment of trademark similarity.

In this respect, the Board held that disputed mark gives rise to a sole pronunciation of “kju- riːvo” in view of overall configuration fully consolidated from appearance.

Based on the finding, the Board compared the disputed mark and the citation in the aspect of visual appearance, sound and concept, and concluded, inter alia, both sounds, “kju- riːvo” and “ riːvo”, are distinctively dissimilar.

It has been recognized in Japan that hyphen (-) serves as a separator of words at fore-and-aft position. To see a graphical distinction between the “Q” logo and “revo”, I believe the decision isn’t quite persuasive enough.

JPO : KAPAPA is unlikely to cause confusion with Kappa

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In a recent trademark opposition, Opposition Board of the Japan Patent Office (JPO) decided the mark “KAPAPA” is unlikely to cause confusion with “Kappa”, one of the world’s largest sport brands founded in 1960s, Italy even when used on sport wears.[Opposition case no. 2017-900115, decisively concluded on August 17, 2017]

Opponent, a Japanese business entity authorized to distribute “Kappa” goods in Japan, filed a trademark opposition against TM registration no. 5912402 for the “KAPAPA” logo mark (see below).

Opposed mark was applied for registration on April 20, 2016 by designating various goods in class 18 and 25, e.g. bags, clothing, sport wears, sport shoes, caps and socks.

Opponent asserted that the opposed mark violates Article 4(1)(xi) and 4(1)(xix) of the Trademark Law by citing senior registrations for the “Kappa” mark.

Based on substantive evidential materials to show the facts the “Kappa” is ranked as 6th sport brand in annual sale and has been promoted in Japan over three decades, the Opposition Board admitted that “Kappa” has acquired a certain degree of popularity and reputation among relevant consumers as a source indicator of workout clothes, gym clothes, athletic wear and soccer wear.

In the meantime, the Board denied similarity between “KAPAPA” and “Kappa” by taking into consideration a distinctive gap in sound and meaning of respective mark as a whole.

As a conclusion, the opposition is groundless since it shall be unlikely that relevant consumers with an ordinary care would confuse or associate “KAPAPA” wears with “Kappa” and any entity systematically or economically connected with opponent, the Board held.

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.

V&W is unlikely to cause confusion with VW emblem

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In a recent trademark opposition involving the circular Volkswagen logo, the Opposition Board of Japan Patent Office (JPO) decided that famous VW emblem is entirely dissimilar to, or unlikely to cause confusion with, the word mark “V&W” in standard character when used on retail services for automobiles [Opposition Case no. 2017-900009].

Trademark opposition

German car giant Volkswagen AG filed an opposition against TM registration no. 5888513 for word mark “V&W” written in standard character (Opposed mark) on the grounds that Opposed mark violates Article 4(1)(xi), 4(1)(xv) and 8(1) of the Trademark Law based on senior trademark registrations for the VW emblems and a word mark “VW”.
The opposed mark designates retail services or wholesale services for automobiles and various other goods in class 35.

Volkswagen argued Opposed mark gives rise to a pronunciation of “vi: dʌb·l·juː” by omitting “&” since the prevalent symbol representing a word of “AND” is just to connect “V” and “W”, and relevant traders and consumers are prone to omit the symbol in pronouncing the entire mark in light of transactional customs at present. If so, Opposed mark is deemed similar to the VW emblem as well as “VW” in visual, phonetical and conceptual point of view.

Besides, the VW emblem has acquired substantial popularity and reputation as a source indicator of famous automobile maker, Volkswagen. Thus, it is highly likely that relevant traders and consumers confuse the source of retail service for automobiles and its parts using Opposed mark “V&W” with opponent or a business entity systematically or economically connected with the opponent.

 

Board decision

The Board admitted the VW emblem has become famous for a source indicator of opponent by taking into consideration of the facts that opponent’s cars with the VW emblem have been continuously imported to Japan since 1978 at the latest and ranked in the top 3 of new imported automobile registrations for the past three years.

In the meantime, the Board denied high awareness of the word mark “VW” as a source indicator of opponent. A mere definition of VW to indicate the opponent in a dictionary is insufficient since the term is often seen in conjunction with corporation name “Volkswagen” in newspaper, magazines and newsarticle on a website.

In the assessment of trademark similarity, the Board concluded that “V&W” is obviously dissimilar to the VW emblem and “VW” in appearance, pronunciation and meaning. Due to substantial distinction between the marks, relevant traders and consumers are less likely to confuse or associate “V&W” with opponent and any business entity systematically or economically connected with opponent.

Based on the foregoing, the Board dismissed opposition and allowed “V&W” to survive.

It is noteworthy that a mark consisting of two alphabetical letters written in a plain font design is considered less distinctive in Japan. In this respect, IR no. 1272004 for the word mark “VW” did not function to broadly protect the VW emblem in favor of Volkswagen.