カテゴリー: Article 4(1)(xix)

Audemars Piguet Unsuccessful in Opposition to Trademark “ROYAL OAK”

Posted on

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.

BULLDOG vs GREEN BULLLDOG

Posted on

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.

Guerlain Unsuccessful Opposition to “MITSOUKO” mark

Posted on

The Japan Patent Office (JPO) dismissed an opposition filed by Guerlain, a legendary French perfume house, against TM Reg no. 6734165 for wordmark “mitsouko” in class 44 due to unlikelihood of confusion with perfume “MITSOUKO” by Guerlain.
[Opposition case no. 2023-90025, decided on June 27, 2024]

“mitsouko”

Yugen Kaisha AMERICA, a Japanese business entity, filed a trademark application for wordmark “mitsouko” in standard character for use on “beauty salon services, barbershops, massage, dietary and nutritional guidance, therapy services, rental of apparatus and instruments for use in beauty salons or barbers’ shops, providing medical information, manicuring, hair implantation” in class 44 with the JPO on March 22, 2023 (TM App no. 2023-30416).

The JPO examiner did not issue an office action to the mark and granted protection on September 5, 2023. Subsequently, the mark was published for post-grant opposition on September 15, 2023.

Opposition by Guerlain

To oppose registration within a statutory period of two months counting from the publication date, Guerlain, a legendary French perfume house, filed an opposition against the opposed mark on November 13, 2023.

Guerlain argued the opposed mark shall be canceled in contravention of Article 4(1)(xv) and (xix) of the Japan Trademark Law.

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

Guerlain contended that given the remarkable reputation and popularity of the perfume “MITSOUKO” by Guerlain and close association between perfume and the services in question, relevant consumers are likely to confuse a source of services bearing the opposed mark with Guerlain.

JPO decision

The JPO Opposition Board found that, considering the evidence submitted, the mark “MITSOUKO” may be recognized by persons having a deep knowledge of perfume, but there is a reasonable doubt whether the mark is widely known among relevant consumers to indicate the source of Guerlain perfume.

In addition, in view of the low degree of relatedness between beauty salon services, barbershops, massage, etc. and “perfume”, even if both marks are almost identical, it is unlikely that traders and consumers at the sight of the opposed mark used in relation to the service in question will associate or recall the cited mark, and consider a source of the services from an entity economically or systematically connected with Guerlain.

Therefore, the Board has no reason to believe the opposed mark shall be subject to Article 4(1)(xv) of the Trademark Law.

Even if the applicant has applied for the opposed mark with knowledge of Guerlain’s perfume “MITSOUKO”, the fact is insufficient to infer that the company has the purpose of making unfair profits or the purpose of causing harm to others. The submitted evidence does not reveal any fact to demonstrate a malicious intention by the applicant. If so, the opposed mark shall not be cancelled under Article 4(1)(xix).

Based on the above findings, the Board conclude that the opposition was without merit and thus granted protection to the opposed mark as the status quo.

SpaceX Scores Win in Trademark Invalidation Action

Posted on

The Japan Patent Office (JPO) sided with Space Exploitation Technologies Corporation (SpaceX) in an attempt to revoke TM Reg no. 6613282 for the mark “SPACEX / spacex.co.jp” (cl. 25, 26) in contravention of Article 4(1)(viii) and (xv) of the Japan Trademark Law.
[Invalidation case no. 2023-890010, decided on June 4, 2024]

Contested mark

NDR Tech Co., Ltd. filed trademark application for a mark composed of the two word-elements “SPACEX” and “spacex.co.jp”, arranged in two lines (see below) for use on apparels and footwear in class 25 and insignias for wear, buckles for clothing, badges for wear, brooches for clothing, brassards in class 26 with the JPO on December 20, 2021 (TM App no. 2021-163633).

The JPO examiner granted protection to the mark on August 19, 2022.

Invalidation action by SpaceX

Space Exploitation Technologies Corporation, aka SpaceX, filed an invalidation action on February 15, 2023 and claimed the contested mark shall be invalidated in contravention of Article 4(1)(viii), (x), (xv) and (xix) of the Japan Trademark Law.

Article 4(1)(viii) is a provision to prohibit registration of trademark that contains the representation or name of any person, famous pseudonym, professional name, or pen name of another person, or famous abbreviation thereof.

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

SpaceX could not rely on Article 4(1)(xi) because their attempt to register the mark “SPACEX” in class 25 (TM App no. 2020-125746) was unsuccessful due to a conflict with the earlier TM Reg no. 6222450 for wordmark “SPACEX” owned by NDR Tech.

SpaceX argued that the mark “SpaceX” has been widely recognized as a commercial name of the claimant among the general public in Japan even before the time of initial application of the contested mark due to its frequent appearance in print and broadcast media.

NDR Tech asserted that the domain name “spacex.co.jp” is only available to companies registered in Japan. As the proprietor of the domain, they have a legitimate interest in registering and owning the contested mark.

JPO decision

The JPO Invalidation Board admitted that the mark “SpaceX” has become famous among the general public as an abbreviation of the claimant.

It is obvious that the contested mark contains the term “SPACEX” and “spacex”, which are known as a famous abbreviation of the claimant. Based on the fact that NDR Tech did not obtain the consent of SpaceX, the contested mark does not comply with the requirements of Article 4(1)(viii).

Bearing in mind that the mark “SpaceX” has been used on T-shirts, hoodies and caps, the Board has reasons to believe that relevant consumers are likely to confuse a source of goods in question bearing the contested mark with SpaceX. If so, the contested mark shall be revoked under Article 4(1)(xv) as well.

https://shop.spacex.com/

In the decision, the Board noted ‘The fact that NDR Tech owns the domain “spacex.co.jp” is irrelevant to the invalidity of the contested mark based on the above articles.’

Chrysler Lost Trademark Opposition against “GEEP”

Posted on

The Japan Patent Office (JPO) dismissed an opposition filed by Fiat Chrysler Automobiles (FCA US) LLC against TM Reg no. 6689119 for the mark “GEEP” with device (cl. 18, 25) due to dissimilarity to and unlikelihood of confusion with the mark “JEEP”.
[Opposition case no. 2023-900142, decided on May 31, 2024]

“GEEP”

A Japanese individual filed a trademark application for the mark “GEEP” with device (see below) for use on goods “bags and pouches; umbrellas; canes; clothing for pets” and others in class 18, and “clothing; belts; footwear; masquerade costumes; sports shoes; sportswear” and others in class 25 with the JPO on October 14, 2022 (TM App no. 2022-118091).

The JPO examiner did not issue an office action to the mark and granted protection on April 4, 2023. Subsequently, the mark was published for post-grant opposition on April 20, 2023.

Opposition by FCA US LLC

To oppose registration within a statutory period of two months counting from the publication date, FCA US LLC filed an opposition against the opposed mark on June 19, 2023.

FCA argued the opposed mark shall be canceled in contravention of Article 4(1)(vii), (xi), (xv) and (xv) of the Japan Trademark Law because of the remarkable reputation and popularity of the JEEP mark as a source indicator of Chrysler vehicles and a high degree of similarity between the opposed mark “GEEP” and the opponent’s famous earlier registered mark “JEEP.”

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.

FCA contended that the opposed mark “GEEP” is similar to its own trademark “JEEP,” a globally famous automobile brand given a mere difference in the first letter “G” and “J”. Besides, the goods in question are identical or similar.

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

FCA contended that given the high degree of resemblance between the opposed mark and “JEEP”, relevant consumers of the goods in question are likely to confuse a source of goods bearing the opposed mark with the opposing party.

JPO decision

The JPO Opposition Board admitted that the mark “JEEP” has been widely recognized among general consumers to indicate the source of FCA’s goods and business.

However, the Board found both marks dissimilar on the grounds that:

  1. There are visual distinctions in the presence and absence of the blue device and between the first letter “G” and “J”. Thees differences are significant and clearly distinguishable in appearance. Consequently, both marks are anything but confusingly similar in appearance.
  2. The opposed mark does not give rise to a specific concept, whereas the cited mark has a meaning of “FCA’s automobile brand.” Accordingly, there is no risk of confusion in concept.
  3. Relevant consumers would consider respective mark different even if both marks have the same sound, because of clear distinction in appearance and concept as well as the overall impression of both marks.

By taking account of a low degree of similarity between the opposed mark and “JEEP”, and remote association between the goods in question and automobiles, the Board has no reason to believe that relevant consumers are unlikely to confuse the source of goods bearing the opposed mark with “JEEP”.

Based on the above findings, the Board conclude that the opposition was without merit and thus granted protection to the opposed mark as the status quo.

Trademark dispute: MARNI vs. MARNO

Posted on

The Italian fashion brand “MARNI” lost the trademark opposition against TM Reg no. 6658657 for the wordmark “MARNO” (cl. 14,18,25). The Japan Patent Office (JPO) found both marks dissimilar and less likelihood of confusion because there was insufficient evidence to support a certain degree of recognition of the mark “MARNI” among general consumers.
[Opposition case no. 2023-900065, decided on May 16, 2024]

“MARNO”

Godo Kaisha MARNO filed a trademark application for the word mark “MARNO” in standard character for use on goods “precious metals; jewelry; key rings; jewelry boxes; personal ornaments; clocks and watches” in class 14, “bags and pouches; umbrellas; canes; clothing for pets” in class 18, “clothing; belts; footwear; masquerade costumes; sports shoes; sportswear” in class 25 with the JPO on July 29, 2022 (TM App no. 2022-88022).

Apparently, the applicant promotes apparels for lady using the mark on their website.

https://marno.life/products/ivy-skirt

The JPO examiner did not issue an office action to the application and granted protection on December 13, 2024. Subsequently, the mark was published for post-grant opposition on January 13, 2023.

Opposition by MARNI

Marni Group S.r.l., an Italian luxury fashion house, filed an opposition on March 13, 2023 just before the lapse of a two-month statutory period and claimed the opposed mark “MARNO” shall be cancelled in contravention of Article 4(1)(vii), (xi), (xv) and (xix) of the Japan Trademark Law by citing earlier trademark registrations (TM Reg no. 4842090, 4791866, 4786424, 3200522, 2339221, 6676890, IR1007074, IR1520528, IR1689338, IR698847) for the mark “MARNI”.

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.

MARNI contended that the opposed mark “MARNO” is similar to its own trademark “MARNI,” a globally renowned fast-fashion brand given a mere difference in the last letter “O” and “I”. Besides, the goods in question are identical or similar.

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

MARNI contended that the mark “MARNI” has become renowned among relevant consumers in connection with apparel. Given the high degree of resemblance between “MARNO” and “MARNI” as well as the goods, it is likely that consumers will confuse or misconceive the goods bearing the opposed mark “MARNO” with “MARNI.”

Article 4(1)(xix) proscribes the registration of a trademark that is identical with or similar to another entity’s famous mark if the trademark is intended for the purpose of gaining unfair profits or causing damage to the entity.

MARNI contended that the applicant had filed the opposed mark with the intention of obtaining unfair profits through free-riding on the well-known trademark “MARNI”.

JPO decision

The JPO Opposition Board admitted that the mark “MARNI” has been recognized among consumers who has high interest to fashion to some extent from the produced evidence, however, in view of the facts that the dates of the evidence are after the grant of protection of the opposed mark, the period and evaluation method of the brand ranking is unclear, and no evidence regarding the sales amount and advertisement of the goods bearing the mark MARNI are provided, the Board questioned whether the mark “MARNI” has been widely recognized among general consumers to indicate the source of MARNI’s goods and business.

Next, the Board assessed similarity of mark. In appearance and sound between “MARNO” and “MARNI”, the distinction of “O” and “I” at the end of the word has a significant impact on the overall visual and oral impression of the two marks, which both have only five letters and three sounds. Therefore, the marks are visually and phonetically distinguishable. Since both marks do not give rise to any specific meaning, it is impossible to compare the concept of the two marks. Accordingly, the Board has reason to believe that both marks are significantly dissimilar.

By taking account of insufficient recognition of the mark “MARNI” among relevant consumers and a low degree of similarity between two marks, it is unlikely that the consumer at the sight of the goods in question bearing the opposed mark confuse the source with MARNI.

Besides, the evidence presented to the Board does not provide grounds to believe that the applicant intended to obtain profits through the exploitation of the well-known trademark.

Based on the foregoing, the Board dismissed the opposition entirely.

Trademark battle: FORTNITE vs FORTNIGHT

Posted on

In an invalidation trial against TM Reg no. 6389929 for word mark “FORTNIGHT” in classes 9, 16, 28, 35, 41 and 43, the Japan Patent Office (JPO) did not rule in favor of Epic Games, Inc. due to an unlikelihood of confusion with “FORTNITE”.
[Invalidation case no. 2023-890068, decided on May 9, 2024]

FORTNIGHT

A Japanese company sought registration of word mark “FORTNIGHT” in standard character for use on various goods and services in classes 9, 16, 28, 35, 41 and 43 (including games) with the JPO on June 4, 2018 (TM App no. 2028-79647).

The JPO examiner rejected the mark due to a likelihood of confusion with famous game software and distribution platform “FORTNITE” managed by Epic Games, Inc.

However, the JPO Appeal Board disaffirmed the rejection by stating that there is no reason to find “FORTNITE” has been widely recognized among relevant consumers to indicate Epic business and the applicant deleted games from designation. If so, it is unlikely that relevant consumers would not confuse the source of goods and service bearing “FORTNIGHT” with Epic’s “FORTNITE”.

The mark “FORTNIGHT” was registered on June 8, 2021.

Invalidation action by Epic Games, Inc.

Epic Games, Inc. is an American video game development and distribution company, widely known for the success of “Fortnite”, a free multiplayer online video game first released in 2017, and its game marketplace. On August 10, 2021, Epic filed a post-grant opposition against TM Reg no. 6389929 “FORTNIGHT” on August 10, 2021, but the opposition was unsuccessful (Opposition case no. 2021-900304).

On August 22, 2023, Epic filed an invalidation action and claimed that the mark “FORTNIGHT” should be invalidated in contravention of Article 4(1)(xv) and (xix) of the Japan Trademark Law.

Epic repeatedly argued “FORTNIGHT” has a high degree of similarity to “FORTNITE” from visual, phonetical and conceptual points of view. Taking account of famous online game “FORTNITE” among game users and close relation between online games and the goods and services in question, relevant consumers are likely to confuse “FORTNIGHT” with “FORTNITE”.

Given that the initial filing designated the game in question, it is presumed that the company had knowledge of the well-known online game software “FORTNITE” and aimed to benefit from its reputation.

JPO decision

The JPO Invalidation Board found that “FORTNITE” has been widely recognized to indicate video games of Epic among consumers and traders in video game industry. However, given that the launch of the video games in Japan precedes the application date of the mark “FORTNIGHT” by three months, such recognition would be limited to the industry.

With regard to the similarity of the marks, the Board stated, “Although “FORTNIGHT” and “FORTNITE” share the same sound, they are distinguishable in appearance, and the concepts are not comparable. In assessing the overall impression, the Board has a reason to find a low degree of similarity between the marks.”

In light of the aforementioned findings, the Board determined that relevant consumers are unlikely to confuse the source of the goods and services in question bearing the mark “FORTNIGHT” with “FORTNITE.”

Furthermore, there is no evidence to suggest that the applicant had any malicious intention of free-riding on or damaging Epic’s online video games “FORTNITE.”

Consequently, the Board dismissed the invalidation action and declared the validity of TM Reg. No. 6389929.

ZARA Unsuccessful Opposition against TM “LAZARA”

Posted on

On April 22, 2024, the Japan Patent Office (JPO) dismissed an opposition filed by Industria de Diseño Textil, SA (INDITEX), owner of the fashion brand “ZARA”, against TM Reg no. 6699667 for word mark “LAZARA” in classes 25 due to dissimilar marks and unlikelihood of confusion with “ZARA”.
[Opposition case no. 2023-900175]

Opposed mark

Opposed mark, consisting of a wordmark “LAZARA” in standard character, was applied for registration by Japanese individual to be used on clothing in class 25 on November 20, 2022, and published for post-grant opposition on May 29, 2023.

Opposition by Inditex

Opponent, INDITEX, one of the world’s largest fashion retailers and owner of the fashion brand “ZARA”, filed an opposition on July 27, 2023 before the lapse of a two-month statutory period and claimed opposed mark “LAZARA” shall be cancelled in contravention of Article 4(1)(xi), (xv) and (xix) of the Japan Trademark Law by citing earlier trademark registrations (TM Reg no. 4108998 and IR no. 752502 in class25) for word mark “ZARA”.

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.

INDITEX contended that the opposed mark “LAZARA” is similar to its own trademark “ZARA,” a globally renowned fast-fashion brand given the suffix “LA” is a descriptive word that merely indicates the definite article in Spanish. Besides, the goods in question are identical.

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

INDITEX contended that the mark “ZARA” has become renowned among relevant consumers in connection with apparel. Given the high degree of resemblance between “LAZARA” and “ZARA” as well as the goods, it is likely that consumers will confuse or misconceive the goods bearing the opposed mark “LAZARA” with “ZARA.”

Article 4(1)(xix) proscribes the registration of a trademark that is identical with or similar to another entity’s famous mark if the trademark is intended for the purpose of gaining unfair profits or causing damage to the entity.

INDITEX contended that the applicant had filed the opposed mark with the intention of obtaining unfair profits through free-riding on the well-known trademark “ZARA”.

JPO decision

The JPO Opposition Board held that “ZARA” has acquired a certain degree of recognition among relevant consumers in Japan and foreign countries as a source indication of clothing, however, the Board denied a high degree of recognition of the mark among the consumers by taking into consideration the produced evidence. The Board criticized “INDITEX produced precedent administrative decisions as evidence that admitted famousness of the mark “ZARA” in Japan. But, famousness of trademark shall be assessed on a case-by-case basis based on relevant facts and evidence produced in each case. Therefore, the precedent decisions would not bind the ongoing case. INDITEX did not reveal sales figure and expenditure for advertisement in connection with apparel bearing the mark ZARA.”

Furthermore, the Board found the consumers would perceive the opposed mark “LAZARA” as a whole, which would suggest an unfamiliar foreign word from a visual perspective. If so, “LAZARA” and “ZARA” are evidently dissimilar in appearance and pronunciation because of the distinction between the presence and absence of the letter “LA” in the suffix and the overall sound. As for the concept, it is not comparable since either mark does not give rise to any specific meaning. Consequently, both marks are unlikely to cause confusion due to their dissimilarity.

Additionally, the Board noted that INDITEX had not presented any evidence to substantiate their assertion that the applicant had filed the opposed mark for the purpose of gaining unfair profits or causing harm to INDITEX.

Based on the foregoing, the JPO dismissed the entire allegations of INDITEX and allowed “LAZARA” to survive.

CHANEL Lost in Trademark opposition against “COCOBABY”

Posted on

The Japan Patent Office (JPO) did not side with CHANEL in an opposition against TM Reg no. 6650252 for wordmark “COCOBABY” in class 25 by finding dissimilarity of mark between “COCOBABY” and “COCO”.
[Opposition case no. 2023-900041, decided on February 9, 2024]

COCOBABY

On September 22, 2022, a Japanese individual applied to register the word mark ‘COCOBABY’ for use in relation to apparel and toddler clothes of class 25 and immediately after the filing, the applicant requested an accelerated examination based on the fact that he operates the online shop “COCOBABY”, which offers a wide range of clothes for toddlers and babies.

A screen capture from https://www.rakuten.co.jp/princessdream/

Accordingly, the JPO examiner granted protection on November 30, 2022 without raising her objection due to a conflict with Chanel’s COCO mark.

Opposition by CHANEL

On February 14, 2023, Chanel SARL filed an opposition against TM Reg no. 6650252 for the mark “COCOBABY”, and claimed cancellation of the mark in contravention of Article 4(1)(xi), (xv) and (xix) of the Japan Trademark Law by citing earlier trademark registrations for their historical mark “COCO”.

Chanel argued that the term “BABY” was descriptive in relation to the designated goods, namely children’s clothing in class 25. In addition, the mark “COCO” has become famous as an indication of origin for Chanel’s perfumes and cosmetics. In those circumstances, the relevant consumers would consider the term “COCO” to be a prominent part of the opposed mark and would be likely to confuse the source of the clothes bearing the opposed mark with Chanel and an entity economically or systematically liked to Chanel.

JPO decision

The JPO Opposition Board accepted that the mark “COCO” has been well known for Chanel’s perfume. However, the Board questioned whether, on the basis of the evidence submitted, the mark has become also well known among consumers of other goods.

In addition, the Board found that the opposed mark had to be assessed as a whole, even in relation to children’s clothing, from a visual point of view. The mark “COCOBABY”, taken as a whole, does not have a specific meaning.

If so, the opposed mark is not conceptually comparable to the mark “COCO”, but is visually and aurally distinguishable from it.

In view of the low degree of similarity between the marks and the insufficient evidence of the reputation of the mark “COCO” among consumers of the goods in question, the Board has no reason to believe that the consumers are unlikely to confuse the source of the clothing and children’s clothing bearing the opposed mark with Chanel.

Based on the foregoing, the Board dismissed the opposition entirely and decided to maintain the opposed mark as the status quo.

New Balance Unsuccessful Opposition against “nyan balance” mark

Posted on

On December 22, 2023, the Japan Patent Office (JPO) dismissed an opposition filed by New Balance Athletics, Inc. against TM Reg no. 6669617 for the “nyan balance” mark with a landing cat device due to dissimilarity to and unlikelihood of confusion with “NEW BALANCE”.
[Opposition case no. 2023-900073]

“nyan balance”

A Japanese individual applied a composite mark consisting of the word “nyan balance” and a landing cat device (see below) for use on apparel, headgear, footwear, sports shoes, and sportswear in class 25 with the JPO on May 26, 2022 (TM App no. 2022-65756).

“Nyan” is known as the sound cats make in Japan. Because of it, “nyan balance” reminds us of a combination of cat sounds and “balance”.

The JPO examiner allowed registration of the opposed mark on February 7, 2023 without raising any objection, and published it for post-grant opposition on February 15, 2023.

Opposition by NEW BALANCE

To oppose registration within a statutory period of two months counting from the publication date, New Balance Athletics, Inc. filed an opposition against the “nyan balance” mark on March 31, 2023.

NEW BALANCE 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 the NEW BALANCE brand in relation to apparels and shoes, and a close resemblance between the literal portion “nyan balance” of opposed mark and famous brand “NEW BALANCE” to the extent that relevant consumers are likely to confuse a source of the goods in question bearing the opposed mark with “New Balance”.

In the opposition, NEW BALANCE pointed out a fact that the applicant once sought registration of a mark containing famous “NB” logo (see below. TM App 2022-65755) with the JPO. Since he did not make a response to the examiner’s rejection that asserted a likelihood of confusion with NEW BALANCE and a malicious intent to obtain unjustifiable benefits by using the similar mark to famous “NB” logo, the opponent alleged the applicant must have had a bad faith in filing the opposed mark.

JPO decision

Astonishingly, the JPO Opposition Board did not admit a high degree of popularity and reputation of “NEW BALANCE” brand as a source indicator of the opponent by finding that the opponent did not submit detail and sufficient evidence, such as sales record, advertisement and sales promotion, to demonstrate famousness of the cited mark objectively.

Besides, the Board negated the similarity between the marks by stating that:

From the appearance, the difference in the prefix of literal elements, “nyan” and “NEW” would suffice for relevant consumers to distinguish them. Therefore, even though the term “nyan balance” is considered as a prominent portion of the opposed mark, both marks are sufficiently distinguishable in appearance.

Phonetically, “nyan balance” is easily distinguishable from “NEW BALANCE” because of the difference in the first sound given both marks just consist of six sounds respectively.

Conceptually, since both marks do not give rise to any specific meaning, it is not possible or adequate to find similarity in concept.

By virtue of a low degree of similarity, the Board found relevant consumers are unlikely to confuse or associate the source of the goods bearing the opposed mark with “NEW BALANCE” and any entity systematically or economically connected with the opponent.

Provided that the opponent failed to demonstrate famousness of “NEW BALANCE” brand, the Board has no reason to believe the applicant filed the opposed mark with a malicious intent to free-ride on the opponent’s reputation and goodwill.

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