カテゴリー: Composite mark

SMART vs SMART TYRE

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The Japan Patent Office (JPO) dismissed an opposition against trademark registration no. 6227071 for work mark “SMART TYRE” over a tire and other goods in class 12 claimed by Daimler AG who argued the mark is confusingly similar to senior registrations for the “SMART” mark in the same class owned by smart Automobile Co., Ltd.
[Opposition case no. 2020-900136, Gazette issued date: December 25, 2020]

“SMART TYRE”

The opposed mark, composing of wordmark “SMART TYRE” written in standard character, was sought for registration by Sumitomo Rubber Industries, Ltd., famous for “DUNLOP” tire brand, by designating various tires, automobiles, motorcycles, bicycles, and its structural parts and accessories in class 12 on August 21, 2018.  
[TM Application no. 2018-105830]

The mark was registered and published for opposition on March 10, 2020.

Opposition by Daimler AG

On May 11, 2020, just before the lapse of a two-months opposition period, Daimler AG filed an opposition before the JPO and claimed that the opposed mark shall be canceled in contravention of Article 4(1)(xi) and (xvi) of the Japan Trademark Law by citing senior trademark registrations for the “SMART” mark (see below) in class 12, which the opponent allegedly has used on the micro compact cars since 1998.

Daimler AG argued the opposed mark is a composite mark consisting of “SMART” and “TYRE”. The term “TYRE” undoubtedly lacks distinctiveness in relation to the goods of ‘tires’. If so, the dominant portion of the opposed mark shall be the term “SMART” which is identical to the cited marks. Besides, the ‘tires’ is considered as a structural part of automobiles and thus deemed similar to automobiles designated under the citations.

Therefore, the opposed mark shall be canceled based on Article 4(1)(xi).

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

Board decision

Surprisingly, the Opposition Board of the JPO found the opposed mark “SMART TYRE” shall be considered in its entirety irrespective of the fact that the term “TYRE” means ‘tire’. In addition, the Board held the opposed mark does not give rise to any specific meaning at all, and it is deemed a coined word.

Based on this finding, the Board assessed the similarity of marks as follows.

From appearance, both marks are sufficiently distinguishable since the opposed mark contains the term “TYRE” unlike the citations.

Phonetically, the opposed mark consists of seven sounds. In the meantime, the citations have four sounds. Due to the difference, relevant consumers are unlikely to confuse both marks.

The citations truly give rise to adjective meanings of ‘clever, bright, intelligent’. Meanwhile, the opposed mark has no meaning.

Therefore, the opposed mark “SMART TYRE” is dissimilar to the citations from visual, phonetical, and conceptual points of view even if the goods in question is deemed similar to the citations.

By stating that the term “TYRE” is inseparably and tightly incorporated into the opposed mark to the extent that relevant consumers would not conceive it as a descriptive indication in relation to the goods of class 12, the Board concluded the opposed mark shall not cause misapprehension of quality even when used on goods in question other than tires.

Based on the foregoing, the Board decided the opposed mark shall not be canceled in contravention of Article 4(1)(xi) and (xvi) of the Trademark Law and allowed “SMART TYRE” to survive.

The JPO’s finding does not look reasonable to me. It is clear that “TYRE” indicates ‘tire’. I suppose the Board rather should have mentioned the term “SMART” nowadays becomes generic when used in combination with the descriptive word(s) on the goods in question.

The University of Oxford Failed in Opposition Against “OXFORD” mark

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The Japan Patent Office (JPO) dismissed an opposition filed by Oxford Limited against trademark registration no. 6164941 for composite mark comprised of term “OXFORD” and a square X symbol in class 25, 35,40 by questioning whether the term per se has been known as a source indicator of the University.
[Opposition case no. 2019-900303, Gazette issued date: October 13, 2020]

Opposed mark

Japanese trademark registration no. 6164941 for composite mark comprised of term “OXFORD” and a square X symbol colored in dark blue (see below), was filed on October 26, 2018, by Oxford Corporation Co., Ltd., a Japanese business entity tailoring custom-made suits, over clothing, footwear made in England in class 25, retail or wholesale services for clothing, footwear and other goods in class 35, and dressmaking, treatment or processing of cloth, clothing or fur, custom tailoring services, and others in class 40.

JPO granted to protect the opposed mark and published for registration on August 20, 2019.

Opposition

On October 18, 2019, Oxford Limited, a wholly-owned subsidiary of the University of Oxford, filed an opposition and claimed the Opposed mark shall be canceled in contravention of Article 4(1)(vii), (viii), (xi), (xv) and (xix) of the Trademark Law by citing its own marks (see below).

Oxford Limited argued that the University of Oxford is an extremely well-known university worldwide. It has been ranked in 5th and 3rd places in tables of top international higher education institutes. Besides, Oxford Limited has promoted and licensed commercial goods bearing trademarks of the University. In Japan, various licensed goods e.g. apparel, accessories, interiors, stationery, educational toys are distributed via Ingram Co., Ltd., an authorized broker.

Under the circumstances, there is no doubt that relevant consumers at the sight of the term “OXFORD” would conceive the University when used on goods and services in question. If so, the opposed mark shall be deemed similar to and likely to cause confusion with the cited mark since the term “OXFORD” per se plays a dominant role in identifying a source.

JPO Decision

The JPO Opposition Board admitted a high degree of the reputation of “University of Oxford” among the general public. In the meantime, the Board opined that it is questionable if the term “OXFORD” has acquired a substantial degree of popularity as a source indicator of the University from the produced evidence and totality of the circumstances in view of the fact that the term is also a geographical indication, namely, the capital of the county of Oxfordshire.

Based on the foregoing, the Board found relevant consumers would recognize the term “OXFORD” of the Opposed mark just to indicate ‘the capital of the county of Oxfordshire’. Meanwhile, the cited marks give rise to a sound and concept pertinent to the University. The figurative element of both marks is sufficiently distinguishable from appearance. There was a low level of visual, aural, and conceptual similarity between the marks to the extent that relevant consumers would be unlikely to confuse the Opposed mark with the University of Oxford. Therefore, the allegations are groundless and the Opposed mark shall remain valid as the status quo.

I am not convinced with the JPO’s finding of “the term OXFORD of the Opposed mark just to indicate ‘the capital of the county of Oxfordshire”. I firmly believe the term immediately reminds us of the University rather than the name of the capital of Oxfordshire.

Mercedes-Benz StarParts vs Star-Parts

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In an administrative decision, the Japan Patent Office (JPO) held the “Mercedes-Benz Star Parts” with a car device mark is dissimilar to the “Star-Parts” word mark.
[Appeal case no. 2020-650009, Gazette issued date: November 27, 2020]

Mercedes-Benz StarParts

Daimler AG applied for registration of a composite mark consisting of “Mercedes-Benz StarParts” in two lines, a car device overlapping with checkmark icon, and a blue horizontal line in between (see below), in relation to ‘Parts for vehicles for locomotion by land, air, water or rail’ of class 12 via the Madrid Protocol (IR No. 1402813).

On December 5, 2019, the JPO examiner refused the applied mark based on Article 4(1)(xi) of the Trademark Law due to a conflict with senior trademark registration no. 5806962 for word mark “Star-Parts” in standard character which designates retail services or wholesale services for automobiles, parts, and accessories thereof in class 35.

Daimler AG filed an appeal against the refusal on March 4, 2019.

JPO Appeal Board’s decision

The Appeal Board overturned the examiner’s rejection by stating that the respective element of the applied mark shall be separably conceivable in view of a low degree of phonetic and conceptual association between figurative and literal elements. In the meantime, “StarParts” shall not be perceived as a dominant portion appealing its source of origin of goods, given “Mercedes-Benz” unquestionably plays an impressive role in identifying the source known for Germany luxury car maker. If so, it is not permissible to assess the similarity between the cited mark “Star-Parts” and the applied mark by dissecting the literal portion of “StarParts” from the applied mark.

Based on the foregoing, the Board concluded the refusal shall be disaffirmed since the examiner erroneously assessed the similarity between the marks.

I am of the view that the JPO’s decision looks unreasonable. From this viewpoint, any composite mark containing a famous or strong source indicator can be deemed dissimilar and eligible for registration.

Securely Protecting Trademark Abbreviations

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Japanese is prone to abbreviate trademarks. Occasionally, the abbreviation has no resemblance to its original name. A brand owner should be mindful of how the public perceives and uses its trademarks in Japan. Abbreviations or nicknames used by the public are not protected under the respective registrations given that they have no resemblance to the original names.

“Family Mart”, Japan’s second-largest convenience store franchiser since 1973, with more than 15,000 locations, is commonly called “Fa-mi-ma” among consumers. It is true that Family Mark has used only “Family Mart” in the ordinary course of their business for more than three decades. But, eventually, Family Mart decided to adopt the name on their store opened in urban office or commercial buildings.

I suppose it aims at avoiding risks of the “Famima” mark registration by a third party in view of high recognition for the name among relevant consumers and dissimilarity to “Family Mart”. Now, the mark is securely registered in the name of Family Mart.

Trademark abbreviations may serve as a barometer for well-recognition of the mark among the general public in Japan. In this respect, trademark abbreviations would not be a matter only for the Japanese company, but also for foreign brand owners. Where a trademark is composed of five sounds or more, you should mind that the general public in Japan gets to call the mark in abbreviation contrary to the brand owner’s intention. A combination mark is an easy target for abbreviation as well. BOTTEGA VENETA is called “BOTTEGA”. LUIS VUITTON is known as “VITON”. DOLCE & GABBANA is popularly called “DOLU-GABA”. STARBUCKS COFFEE is known as “SUTABA”. TOMMY HILFIGER is called “TOMI-HIRU”. Undoubtedly, the most popular name recognized in the abbreviation is “McDonald”. We seldom call it in the full name. One of the most popular fast-food chains and one of the top franchises in the world has always been called “MAKUDO” or “MAC”.

Using abbreviations, nicknames, and acronyms as trademarks may be appealing from a marketing perspective, however, trademark protection for an abbreviation has to be sought independently from the trademark protection that its extensive version might be already enjoying, and vice versa.

It came to my notice that ABERCROMBIE & FITCH, known for its shortened name “ABA-KURO”, sought Japanese trademark registration of “ABACRO” in English and its Japanese transliteration, but ended in vain due to a conflict with a senior trademark registration “ABERCRO”. A&F was unsuccessfully challenging the senior trademark registration based on non-use grounds.

Google’s Trademark Battle over Street View

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The Opposition Board of the Japan Patent Office (JPO) sided with Google LLC and decided to cancel trademark registration no. 6086044 for word mark “STREET VIEW MODEL (SVM)” due to a likelihood of confusion with Google’s “STREET VIEW”.
[Opposition case no. 2018-900391, Gazette issued on September 25, 2020]

Opposed mark

A Japanese individual filed a trademark application for word mark “STREET VIEW MODEL (SVM)” written in Japanese Katakana character (see below) by designating the service of ‘providing online non-downloadable videos and photographs’ in class 41 with the JPO on December 27, 2017.

The opposed mark was registered and published for opposition on October 30, 2018.

Google “Street View”

On December 28, 2018, Google LLC filed an opposition against “STREET VIEW MODEL (SVM)” and argued that the opposed mark shall be canceled in contravention of Article 4(1)(xv) and (xix) of the Trademark Law based on its owned senior registration for the STREET VIEW mark (IR no. 12138361) in class 9 and 42 because both marks resemble and relevant consumers would confuse or associate the opposed mark, containing “STREET VIEW” famous for the service featured on Google map enabling to provide panoramic 360-degree views from the designated street, with the opponent when used on the designated service in question.

IR no. 12138361

Article 4(1)(xv) prohibits registering a trademark which is likely to cause confusion with the business of other entities.

Board Decision

The Board did not question the famousness of the STREET VIEW mark as a source indicator of Google’s service for providing digital images on a map at the time of both initial filing and registration of the opposed mark.

In the assessment of similarity between the marks, the Board found that the average consumers would likely pay considerable attention to the term “STREET VIEW” of the opposed mark because of its fame. If so, a high degree of similarity exists between the opposed mark and “STREET VIEW”.

It is true that the “STREET VIEW” mark is anything but a fancy or invented word since it consists of two common English words that the relevant consumers are familiar with, however, given the designated service in question and Google “STREET VIEW” are related to providing digital images via the internet, these are supposedly purchased or consumed by the same consumers. If so, the Board considers the opponent business, and the service in question are closely associated.

Based on the foregoing, the Board concluded that relevant traders and consumers are likely to confuse or misconceive a source of the opposed mark when used in relation to the service (class 41) with Google or any entity systematically or economically connected with the opponent and thus decided cancellation in contravention of Article 4(1)(xv).

PGA

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In a recent administrative decision, the Appeal Board of Japan Patent Office (JPO) disaffirmed the examiner’s refusal and held a composite mark, consisting of words “PERFECT GEAR AGENCY” and a monogram “PGA”, is dissimilar to the senior registered word mark “PGA” owned by Professional Golf Association.
[Appeal case no. 2019-10638, Gazette issued date: September 25, 2020]

“PGA/ PERFECT GEAR AGENCY”

Disputed mark, see below, was applied for registration in relation to retail or wholesale services for various goods, e.g. foods and beverages, footwear, bags, automobiles in class 35 on January 24, 2018.

The disputed mark consists of the “PGA” monogram and the words “PERFECT GEAR AGENCY” on the right. The initial letter of the respective term is colored in red. Apparently, the monogram comes from an initial letter of each word “PERFECT”, “GEAR” and “AGENCY”.

JPO Examiner rejected the disputed mark by citing several senior trademark registrations for a wordmark “PGA” in various classes owned by Professional Golf Association.

In Japan, retail or wholesale service in respect of specific goods is deemed similar to the goods or its equivalent. For example, retail service in respect of sporting goods (class 35) and sporting goods (class 28) is deemed similar.

That being the case, the applicant filed an appeal against the refusal and contended dissimilarity of the mark.

JPO decision

The Appeal Board found that the “PGA” monogram and words “PERFECT GEAR AGENCY” can be separably seen from a visual point of view. Besides, the “PGA” monogram per se does not give rise to any specific meaning. It is unknown whether relevant Japanese consumers have been familiar with the words “PERFECT GEAR AGENCY” as a whole. If so, the words do not give rise to a specific meaning as well.

By taking account of the above, the Board pointed out the disputed mark shall be pronounced as “PERFECT GEAR AGENCY”, but has no meaning.

Based on the foregoing, the Board concluded the refusal shall be disaffirmed since the examiner erroneously found that the disputed mark gives rise to a pronunciation of “PGA” from the “PGA” monogram.

Coffee Trademark Battle

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Colombian Coffee Federation (FNC) failed a fight for invalidation of Japanese TM Registration no. 5901554 for word mark “EMERALD” in class 30 owned by The Coca-Cola Company, one of the world’s largest beverage company in the US.
[Invalidation case no. 2018-890017, Gazette issued date: August 28, 2020]

EMERALD MOUNTAIN

Emerald Mountain is a top brand name of Colombian coffee approved by FNC (NGO organization, the union of coffee producer established in 1927 joining over 560,000 members for enhancing quality, production, and export) guaranteed hand-picked and hand-screened beans of which quantity is only 3 –1% of the total production of Colombia coffee beans.

The FNC owns several trademark registrations for “EMERALD MOUNTAIN” in Japan.

In the early 90s, Emerald Mountain began to be sold by Coca-Cola as canned liquid coffee under the Georgia brand in thousands of vending machines across Japan. Since 1997 it has become the most sold coffee in Japanese history as well as the #1 beverage sold by Coca-Cola in Japan. Every can of Georgia Emerald Mountain coffee has an explanation of the Colombian origin of the coffee as well as the high-quality certification of the FNCS. With annual sales of more than 630 million cans, Georgia Emerald Mountain Blend is undoubtedly Emerald Mountain’s leading product within the Japanese market.

EMERALD

Irrespective of a long-standing relationship, The Coca Cola Company, in 2011, sought registration for a wordmark “EMERALD” over artificial coffee, coffee-based beverages, prepared coffee and cocoa, tea, ice in class 30 which confronted with a severe objection from FNC.

FNC was successful in removing the registration by means of a non-use cancellation in 2017. However, The Coca Cola Company deliberately filed a new trademark application for the same mark in 2015 immediately when the registered mark was vulnerable for cancellation on grounds of non-use. The JPO allowed registration of the new application in December 2016.

To contend, FNC filed an invalidation action against the EMERALD mark in March 2018.

Invalidation petition by FNC

FNC argued the EMERALD mark shall be invalidated in contravention of Article 4(1)(vii), (x), (xi), (xv), and (xix) of the Trademark Law by stating that “EMERALD MOUNTAIN” has acquired substantial reputation and popularity as an indicator of high-quality Columbian coffee as a result of continuous sales promotion in Japan since 1970. In the coffee industry, coffee beans grown in highland are often named with the term “MOUNTAIN”, e.g. “BLUE MOUNTAIN”, “CRYSTAL MOUNTAIN”, “CARRIBERAN MOUNTAIN”, “CORAL MOUNTAIN”. In this respect, “EMERALD” shall play a prominent role in “EMERALD MOUNTAIN”. If so, both marks are deemed similar and it is likely that relevant consumers confuse or associate artificial coffee, coffee-based beverages, prepared coffee and cocoa, tea, ice bearing the EMERALD mark with “EMERALD MOUNTAIN”.

Besides, The Coca Cola Company has been using “EMERALD MOUNTAIN” on canned-liquid coffee under license from FNC. Presumably, the disputed mark was filed in anticipation of non-use cancellation claimed by FNC. In the cancellation proceeding, The Coca-Cola Company did neither answer nor respond. These facts clearly show the disputed mark was filed just to avoid cancellation even if The Coca-Cola Company had no intention to use it. It is really annoyance and free-riding on the famous marks with a fraudulent intention.

JPO decision

From the totality of evidence and circumstances, the JPO admitted a high degree of reputation and popularity of EMERALD MOUNTAIN as a source indicator of FNC’s high-quality Columbian coffee beans. In the meantime, the JPO questioned if relevant consumers connect the term “EMERALD” with FNC when used on coffee since the evidence did not disclose EMERALD MOUNTAIN is actually abbreviated to “EMERALD” in commerce. Likewise, it is suspicious whether “BLUE MOUNTAIN”, “CRYSTAL MOUNTAIN”, “CARRIBERAN MOUNTAIN”, “CORAL MOUNTAIN” are recognized with its short name, namely, “BLUE”, “CRYSTAL”, “CARRIBEAN”, “CORAL”.

In assessing the similarity of the mark, the JPO found “EMERALD MOUNTAIN” and “EMERALD” are dissimilar from visual, phonetic, and conceptual points of view. Given both marks are distinctively dissimilar, it is unlikely to find a likelihood of confusion in connection with the goods in dispute.

Even if The Coca-Cola Company filed the disputed mark with an intention to avoid the non-use cancellation, it would be anything but punishable in view of dissimilarity between marks. Besides, from the produced evidence, the JPO was unable to find fraudulent intention by Coca Cola to be blamed for invalidation.

Based on the foregoing, the JPO decided to dismiss the invalidation action.

Starbucks defeated in trademark battle to defend the logo

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On September 16, 2020, the Japan IP High Court dismissed an appeal by the American multinational coffee house chain, Starbucks Corporation, challenging the unfavorable decision made by the Japan Patent Office (JPO) that did not find a likelihood of confusion with the previous Starbucks logo. [Court case no. Reiwa1(Gyo-ke)10170]

BULL PULU TAPIOCA LOGO

Starbucks has been eagerly struggling to invalidate trademark registration for BULL PULU TAPIOKA logo (see below) because it contains a green circular frame with white lettering inside.

Disputed mark was applied for registration over tapioca-based milk products in class 29, tapioca-flavored coffee, cocoa, confectionery; tapioca powder for foods in class 30, and restaurant service in class 43 on March 9, 2016, by a Japanese Company who operates tapioca drink parlors bearing the disputed mark in Japan. JPO registered the mark on December 9, 2016.

Invalidation action to JPO

On September 15, 2017, Starbucks Corporation filed a petition for invalidation and alleged among others the disputed mark shall be invalidated in contravention of Article 4(1)(xi) and (xv) of the Trademark Law due to similarity to, or a likelihood of confusion with senior trademark registration no. 4806987 for the previous Starbucks logo.

The third version of the Starbucks logo design, used from 1992 to 2010, consists of a black and white two-tailed siren wearing a starred crown and framed around a green circle in which the words “Starbucks Coffee” are written.

The JPO Invalidation Board questioned given five years have already passed since Starbucks redesigned its iconic emblem to the new logo whether the previous logo has continuously retained a substantial degree of reputation and popularity in Japan at the time of filing the disputed mark. Besides, the Board did see both marks are totally dissimilar and the configuration of a green circular frame with white lettering inside per se would never be known for a source indicator of Starbucks. If so, the Board found that relevant consumers are unlikely to confuse the source of goods and services in question bearing the disputed mark with Starbucks and decided to dismiss the invalidation action on August 21, 2019. [Invalidation case no. 2017-890065]

On December 19, 2019, Starbucks brought the case to the IP High Court and demanded the cancellation of the JPO decision.

IP High Court ruling

Starbucks argued the JPO erred in finding a likelihood of confusion based on the interview report which indicated more than 70% of the interviewees (total of 552 people ranging in age from 20 to 69) associated the following image of a green circular frame with white lettering inside with Starbucks.

The IP High Court held the previous logo has become remarkably famous as a source indicator of Starbucks in 2011 when it was replaced with the new logo. The Court also found the portion of a green circular frame with white lettering inside shall be impressive to consumers at the sight of the previous Starbucks logo. However, the court raised the same question if relevant consumers conceive Starbucks even when different words other than “STARBUCKS” and “COFFEE” appear inside the frame. If so, there is no reasonable ground to believe a mere image of a green circular frame with white lettering inside has played a significant role in the source indicator of Starbucks by taking account of the fact that the disputed mark was filed four years after the redesign to the new logo.

As for the interview report, the court strictly viewed that the image was not precisely identical to the previous Starbucks logo. It just focused on extracting the generic concept of the frame with lettering. In addition, interviewees were notified in advance that the image originally contained a design in the center and words to represent a company inside the frame. Such information shall be misleading and biased. If so, the report would be anything but appropriate and relevant to assess the high recognition of the frame as well as a likelihood of confusion on the case.

Based on the foregoing, the IP High Court upheld the JPO decision.

Failed Opposition by ESPRIT against trademark registration “ESPRIT SELECTION”

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The Japan Patent Office (JPO) dismissed a trademark opposition claimed by fashion company Esprit against trademark registration no. 6155147 for a work mark consisting of “ESPRIT” and “SELECTION” over retail service in class 35 by finding dissimilarity and less likelihood of confusion with “ESPRIT”.
[Opposition case no. 2019-900260, Gazette issued date: July 31, 2020]

“ESPRIT SELECTION”

Opposed mark, a wordmark consisting of “ESPRIT” with larger font size and “SELECTION” with smaller font size in two lines (see below), was filed by a Japanese business entity, Harmonick Co., Ltd., on November 19, 2018, by designating ‘retail services or wholesale services for a variety of goods in each field of clothing, foods and beverages, and living ware, carrying all goods together’ in class 35.

Applicant commercially provides gift catalogs bearing the opposed mark so that shoppers can find a great selection of products from the catalogs.

The JPO admitted registration on June 21, 2019, and published for opposition on July 16, 2019.

Opposition by ESPRIT

To oppose registration within a statutory period of two months counting from the publication date, Esprit International filed an opposition on September 11, 2019.

In the opposition, Esprit asserted the opposed mark shall be canceled in contravention of Article 4(1)(xv) and (xix) of the Japan Trademark Law because of a high degree of popularity and reputation of owned senior trademark registrations nos. 2097119 and 2187153 for the “ESPRIT” logo (see below) as an international fashion brand and close resemblance with the opposed mark “ESPRIT SELECTION”.

Article 4(1)(xv) provides that a mark shall not be registered where it is likely to cause confusion with other business entities ’ well-known goods or services, to the benefit of brand owners and consumers.

Article 4(1)(xix) prohibits registering a trademark that is identical with, or similar to, other entity’s famous mark, if such trademark is aimed for unfair purposes, e.g. gaining unfair profits, or causing damage to the entity.

Esprit argued the term “SELECTION” is descriptive in relation to the retail service in question since it is commonly used to indicate ‘the things chosen or selected’ or ‘an assortment of things from which a choice can be made’. If so, relevant consumers would conceive the term “ESPRIT” as a prominent portion of the opposed mark and thus both marks shall be unquestionably deemed similar as a whole.

Besides, the service in question is closely related to the opponent business since Esprit offers affordable fashion and lifestyle with a huge selection of ladies’, men’s, and kids’ clothing as well as accessories.

Board Decision

The Opposition Board of JPO denied a high degree of popularity and reputation of “ESPRIT”, stating that the opponent failed to produce evidence to demonstrate actual and substantial use of the opponent mark, advertisement, sales record, and market share in Japan. A mere fact that opponent is a global company doing business in more than 40 countries and operates more than 440 “ESPRIT” shops in European and neighboring Asian countries are insufficient and irrelevant to find whether the opponent mark becomes famous among relevant consumers and traders in Japan.

Besides, the term “SELECTION” shall not be taken to explicitly indicate the quality of the service in question. Even if it is depicted with smaller font size than “ESPRIT”, the Board would not find a reasonable ground to believe the term “ESPRIT” solely plays a role of source indicator in the configuration of the opposed mark. If so, the opposed mark shall be assessed in its entirety.

Based on the foregoing, the Board concluded “ESPRIT SELECTION” and “ESPRIT” are dissimilar as a whole from visual, phonetical, and conceptual points of view. Provided that the opponent mark has not acquired a certain degree of reputation and popularity among relevant consumers in Japan, it unlikely happens that the consumers confuse or misconceive a source of the opposed mark with Esprit or any entity systematically or economically connected with the opponent. Thus, the opposed mark shall not be canceled on the grounds of Article 4(1)(xv) and (xix).