カテゴリー: Similarity of mark

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.

Volkswagen Unsuccessful in TM Opposition contesting similarity between Touran and TURANO

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The Japan Patent Office (JPO) dismissed an opposition against TM Reg no. 6754807 “TURANO” in class 12 claimed by Volkswagen AG due to dissimilarity to IR no. 782978 “Touran” that has been used on the VW’s compact vans.
[Opposition case no. 2024-900017, decided on August 28, 2024]

TURANO

The opposed mark, consisting of a wordmark “TURANO” in standard character, was filed by DAIDO KOGYO Co., Ltd. for use on drive chains, transmission chains and belts, and other parts and accessories for land vehicles including automobiles in class 12 with the JPO on May 9, 2023.

The JPO examiner granted protection of the mark “TURANO” on October 31, 2023 without issuing any notice of grounds for refusal. The mark was published for a post-grant opposition on November 27, 2023.

Opposition by VW

Volkswagen AG filed an opposition against the mark “TURANO” on January 23, 2024 before the lapse of a statutory period of two months counting from the publication date.

Volkswagen claimed the opposed mark shall be canceled in contravention of 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.

Volkswagen argued that the opposed mark “TURANO” is similar to IR no. 782978 for wordmark “Touran” in standard character. Besides, the goods in question are identical with or similar to “automobiles and parts of the aforementioned goods; coupling and transmission components for land vehicles; engines for land vehicles” that are designated under IR no. 782978.

JPO decision

The JPO Opposition Board denied similarity of the mark “TURANO” and “Touran” by stating that:

  1. Appearance
    • Two marks are relatively short, since each consists of six letters. There are the differences in spelling as well as a type of letter. Namely, the opposed mark consists only of upper-case letters, while the cited mark consists of upper-case and lower-case letters. Therefore, there is no risk of confusion between two marks in terms of appearance.
  2. Sound
    • Aurally, the first sound of the cited mark is pronounced with a long tone. In addition, there is a clear difference between the final sound “no” and “n”. In a relatively short form, these differences have a significant impact on the overall sound to the extent that the relevant consumers are able to easily distinguish two sounds easily. Therefore, there is no likelihood of confusion.
  3. Concept
    • A conceptual comparison is neutral as neither “TURANO” not “Touran” have any clear meaning.
  4. Conclusion
    • Even if the conceptual aspect does not have impact on the assessment of similarity since both marks are meaningless, the Board has a reason to believe that both marks are considered dissimilar because of less likelihood of confusion in appearance and sound.

Based on the foregoing, the Board decided to dismiss the entire opposition by Volkswagen and granted registration of the opposed mark as the status quo.

Trademark dispute: VALENTINO GARAVANI vs GIANNI VALENTINO

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In a trademark opposition claimed by Valentino S.p.A. against TM Reg no. 6550051 for the GIANNI VALENTINO mark, the Japan Patent Office (JPO) decided to cancel the registration due to a conflict with earlier IR no. 975800 for the VALENTINO GARAVANI mark.
[Opposition case no. 2022-900274, decided on August 23, 2024]

GIANNI VALENTINO

YOUNG SANGYO CO., LTD filed a trademark application with the JPO on November 10, 2021 for a mark consisting of a “V” device in a circle and the word “GIANNI VALENTINO” (see below) for use on footwear in class 25 [TM App no. 2021-140169].

The applicant, as one of the official licensees, has been distributing bags and pouches bearing the applied mark in the Japanese market.

https://shop.gianni-valentino.com/

The JPO examiner granted registration of the applied mark on April 19, 2022. The mark was published for a post-grant opposition on May 11, 2022 [TM Reg no. 6550051].

Opposition by Valentino S.p.A.

Valentino S.p.A. filed an opposition on July 6, 2022 and claimed cancellation of the GIANNI VALENTINO mark in contravention of Article 4(1)(xi) of the Japan Trademark Law on the ground that the contested mark is confusingly similar to earlier IR no. 975800 for a mark consisting of an iconic “V” device in a circle and the words “VALENTINO” and “GARAVANI” arranged in two lines (see below), which designates footwear and other goods in class 25.

Valentino argued that the literal element “VALENTINO” was dominant in the cited mark because of a high degree of recognition as a source indicator of the opponent’s business as a result of substantial and continuous use in relation to fashion industries. Therefore, relevant consumers with an ordinary care are likely to consider the term “VALENTINO” as a prominent portion of the contested mark when used on the goods in question. If so, the contested mark shall be deemed similar to the cited mark from visual, aural and conceptual points of view.

JPO decision

The JPO Opposition Board found that the mark “VALENTINO” is famous among relevant consumers and traders in Japan for apparel.

The Board noted the contested mark can be dissected into individual parts on account of its appearance and famousness of the term “VALENTINO”. Given the mark “GIANNE VALENTINO” as a whole has not been recognized among relevant consumers as a source indicator of the applicant, it is reasonable to consider the literal element “VALENTINO” as a dominant part of the contested mark, which plays a role in identifying the source of the goods in question.

Similarly, the literal element “VALENTINO” of the cited mark can be considered as a dominant part because of its famousness to indicate the opponent’s business.

It is obvious that the dominant part of both marks has the same appearance, sound and meaning. If this is the case, the Board has a reason to believe that the contested mark, even as a whole, is confusingly similar to the cited mark from a visual, aural and conceptual point of view.

Based on the above findings, the JPO sided with Valentino S.p.A. and decided to cancel the contested mark in its entirety in contravention of Article 4(1)(xi).

JPO found “Arounds” dissimilar to “AROUND” as trademark

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The Japan Patent Office (JPO) reversed examiner’s rejection to TM App no. 2023-100274 “Arounds” in classes 9, 35, 41 and 42 by finding dissimilarity of mark to earlier IR no. 873694 “AROUND” in class 9.
[Appeal case no. 2024-7308, decided on August 13, 2024]

Arounds

Funny Side Up, Inc. filed a trademark application for wordmark “Arounds” in standard character for use on goods in class 9 and services in classes 35, 41, and 42 with the JPO on September 7, 2023.

The applicant uses the mark to indicate an online platform for a lifestyle exchange community.

AROUND

On February 14, 2024, the JPO examiner rejected the mark “Arounds” in contravention of Article 4(1)(xi) of the Japan Trademark Law due to a conflict with earlier IR no. 873694 for wordmark “AROUND” in class 9.

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.

The applicant filed an appeal against the rejection with the JPO on April 30, 2024 and argued dissimilarity of mark between “Arounds” and “AROUND”.

JPO decision

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

  • Assessment of the applied mark

The term “Arounds” is neither present in dictionaries nor immediately recognizable as a specific word. Therefore, the mark “Arounds” just has a sound of “Arounds”, but not any specific meaning from its component letters.

  • Assessment of the earlier mark

It is obvious that the average consumers will recognize the cited mark, comprised of the English word “AROUND”, has a sound of “AROUND” and a meaning of ‘positioned or moving in or near a place’ from its constituent letters.

  • Comparison of two marks

From appearance, two marks share the same term “Around” at the beginning. However, the term “AROUND”, a commonly known English word among consumers, has been rarely represented or used in the plural form. If so, the Board has a reason to believe that, on account of the presence of a letter “s” at the end of the applied mark, relevant consumers will consider two marks represent different words and thus it is possible for the consumers to visually distinguish them.

Because of aural difference in the bottom sound of “z” or “d”, it causes a discernible distinction in the overall tone and nuance so that the consumers can distinguish the sound of two marks.

Regarding conceptual comparison, the cited mark gives rise to a clear meaning, whereas the applied mark does not have any specific meaning. Therefore, there is no risk of confusion from a conceptual point of view.

Given relevant consumers can distinguish both marks from appearance and sound, and there is no likelihood of confusion in concept, the Board has a reason to believe that the applied mark “Arounds” is dissimilar to the cited mark “AROUNDS” even if when used on the same or similar goods in class 9.

  • Conclusion

Based on the foregoing, the Board decided to overturn the examiner’s rejection and granted registration of the applied mark.

Trademark dispute: “Ⓗ REWARDS” vs “REWARDS”

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In a recent decision, the Japan Patent Office (JPO) found that a junior mark consisting of Circled “H” and a word “REWARDS” is dissimilar to earlier trademark “REWARDS” and decided to overturn the examiner’s refusal.
[Appeal case no. 2024-1366, decided on August 6, 2024]

Applied mark

H WORLD HOLDINGS SINGAPORE PTE. LTD. filed a trademark application with the JPO on August 2, 2022. for a mark consisting of a circled “H” device and the word “REWARDS” (see below) in connection with various services of Classes 35 and 43.

Cited mark

On December 5, 2023, the JPO examiner decided to reject the applied mark due to a conflict with earlier TM Reg no. 5017950 for wordmark “REWARDS” in standard character for use on various services in classes 35 and 39 based on Article 4(1)(xi) of the Japan Trademark Law.

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

The applicant filed an appeal against the rejection with the JPO on January 25, 2024.

JPO decision

Astonishingly, the JPO Appeal Board found the applied mark is dissimilar to the cited mark by stating that:

The applied mark is composed of the alphabet “H” in circle and a word “REWARDS”. Despite the slight separation between “H” and “REWARDS”, as these letters are represented in the same typeface and alphabets in a horizontal line, it rather gives a coherent impression in appearance.

 Although the word “REWARDS” is an English word denoting the plural form of “REWARD,” in a coherent composition like the applied mark, the applied mark will be simply recognized as representing a coined word consisting of the words “H REWARDS.”

If so, the applied mark would give rise to a sound of ‘H REWARDS’, but no specific meaning as a whole.

Comparing the applied mark with the cited mark, regardless of the fact that both marks share the word “REWARDS,” two marks are visually distinguishable by virtue of the presence or absence of the circled letter “H”.

Likewise, both marks are distinguishable in sound because of the presence or absence of the initial component sound that remarkably alters the overall tone and nuance.

From a conceptual point of view, the applied mark does not give rise to a specific meaning, whereas the cited mark has a meaning of “ something given in exchange for good behavior or good work, etc.” There is no room to find conceptual similarity between the marks.

Based on the above findings, the Board noted that the applied mark is sufficiently distinguishable from the cited mark and unlikely to cause confusion with the cited mark when used in relation to the services in question.

Therefore, even though the services sought for registration by the applied mark are deemed similar to the service designated under the cited mark, given the applied mark is dissimilar to the cited mark, it is inappropriate to apply Article 4(1)(xi) of the Trademark Law.

Accordingly, the Board decided to overturn the examiner’s rejection and granted protection of the applied mark.

JPO decision: “PENINSULA HILLS” unlikely to cause confusion with “The Peninsula”

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The Japan Patent Office (JPO) reversed the examiner’s refusal and granted registration of the word mark “PENINSULA HILLS” written in Japanese Katakana characters in Classes 36 and 43, finding no likelihood of confusion with a world-renowned hotel “The Peninsula”.
[Appeal case no. 2023-4720, decided on July 25, 2024]

PENINSULA HILLS

CF-1 Co., Ltd. filed a trademark application with the JPO on January 7, 2022 for the word mark “PENINSULA HILLS” written in Japanese Katakana characters (see below) for use in, among other things, real estate services in Class 36 and hotel and restaurant services in Class 43 (TM App No. 2022-1353).

The Peninsula

The JPO examiner decided to reject the applied mark “PENINSULA HILLS” by finding a likelihood of confusion with a world-renowned hotel “The Peninsula” because the mark contains the term “PENINSULA”, which is highly recognized by consumers as an abbreviation of the luxury hotel, based on Article 4(1)(xv) of the Japan Trademark Law on December 6, 2022.

To contest the rejection, the applicant filed an appeal against the rejection with the JPO on March 3, 2023.

JPO Appeal Board decision

To my surprise, the JPO Appeal Board questioned a high degree of recognition of the hotel “The Peninsula” by stating that:

“The Peninsula Tokyo” is the only hotel commercially operated by The Hongkong Shanghai Hotels, Limited in Japan. If so, the number of users is quite limited. Even if there are hotels with the name “The Peninsula” operated by the company in foreign countries and then Japanese travelers may stay the hotels, it is insufficient to find a high recognition of the hotel to average consumers since there is no objective data regarding the number of users, its sales, and the ratio of Japanese users and sales.

Therefore, the Board has no reason to believe that the term “PENINSULA” is widely recognized by consumers in Japan as an abbreviation for the hotels managed by the company.

In a global assessment of the likelihood of confusion, the Board found the applied mark is dissimilar to the cited mark “The Peninsula”.

The applied mark and the cited mark differ significantly in appearance due to the difference in the number of letters and the presence of the word “HILLS”. Furthermore, the difference in the number of syllables and the presence of the sound “HILLS” make the pronunciations easily distinguishable. Therefore, the relevant consumers and traders will be able to distinguish between the two marks are will consider them to be dissimilar because of the clear difference in the overall impression.

Given no high recognition of the hotel “The Peninsula” and low degree of similarity to the applied mark, the Board finds no reason to believe the applied mark may cause confusion with the cited mark when used in relation to the services in question.

In view of the foregoing, the Board held that the examiner had errored in applying Article 4(1)(xv), and decided to grant protection to the applied mark.

TRILITH STUDIOS vs TRILITH

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The Japan Patent Office (JPO) declared the invalidation of TM Reg no. 6371496 “TRILITH” due to similarity with earlier IR no. 1534597 “TRILITH STUDIOS” owned by Trilith IP Holdings, LLC.
[Invalidation case no. 2022-890066, decide on July 8, 2024]

TRILITH

On January 5, 2021, GAIAMOND Inc., a Japanese company, filed an application for registration of wordmark “TRILITH” (‘the contested mark’) with the JPO (TM app no. 2021-745), designating, inter alia, “game trading cards; toys” in Class 28.

Immediately after the filing, the applicant requested an accelerated examination based on the fact the company uses the contested mark in relation to display frame for game trading cards.

https://ginzo-shop.com/items/62a42b262bf901166cb94227

Accordingly, the JPO examiner granted protection of the contested mark in two months on March 15, 2021 (TM Reg no. 6371496).

TRILITH STUDIOS

Trilith IP Holdings, LLC, a holder of IR no. 1534597 for word mark “TRILITH STUDIOS” that is known as one of the largest purpose-built movie studios in North America and home to blockbuster films and independent shows like Avengers: Endgame, Zombieland: Double Tap, and Moon and Me, filed a notice of opposition to registration of the contested mark in respect of game trading cards and toys with the JPO on June 18, 2021. The ground relied on in support of the opposition was that set out in Article 8(1) of the Trademark Law.

Article 8(1) is a provision to prohibit registration of a junior mark that is identical with, or similar to any earlier applied mark which is pending before the substantive examination at the time of registration of the junior mark in accordance with the “first-to-file” principle.

The opposition applicant argued that the contested mark “TRILITH” is not eligible for registration under Article 8(1) because of similarity to earlier IR no. 1534597 “TRILITH STUDIOS”, and the goods in question is deemed similar to “downloadable video game software; recorded video game software” in Class 9 designated under the cited mark.

However, the JPO Opposition Board dismissed the opposition on the ground that there is no similarity between the mark “TRILITH STUDIOS” and “TRILITH” on April 7, 2022 (Opposition case no. 2021-900241).

On August 10, 2022, MARKS IP LAW FIRM, on behalf of Trilith IP Holdings, LLC, filed an application for a declaration of invalidity to the contested mark with the JPO based on the same ground.

To bolster the arguments, the invalidity applicant presented evidence to show a low degree of distinctiveness of the word “STUDIOS” in connection with the goods in question. Bearing in mind that the term “TRILITH” is a coined word unfamiliar to the relevant consumers in Japan, it is obvious that the term “TRILITH” is dominant in the cited mark. If so, the contested mark should be invalidated in contravention of Article 8(1).

JPO decision

Noticeably, the Invalidation Board found that the literal element “TRILITH” to be dominant in the cited mark by stating that:

 A space separates the terms “TRILITH” and “STUDIOS.” The word “STUDIOS” is commonly known as a term to indicate ” a film or video production facility.” or “workshop for painters or cameramen, recording room for radio or television, recording studio for music.” Therefore, the cited mark is easily recognizable as a combination of the terms “TRILITH” and “STUDIOS.

In light of the fact that the term “GAME STUDIOS” has been generally used to indicate workplaces where games are created in the relevant industry, the word “STUDIOS” would be less distinctive in connection with the cited goods.

Meanwhile, the term “TRILITH” is a coined and highly distinctive word with no specific meaning. Accordingly, the Board has a reason to believe that the term to be dominant in the cited mark.

Based on the above finding, the Board compared the dominant portion of the cited mark with the contested mark and found that both marks are similar from visual and aural points of view in spite that a conceptual comparison is neutral as neither the contested mark nor the cited mark have any clear meaning.

Given that the goods in question is similar to “downloadable video game software; recorded video game software” in Class 9 designated under the cited mark, the invalidation applicant is successful in proving the requirements of Article 8(1).

Consequently, in light of the foregoing, the Board decided to invalidate the contested mark in relation to “game trading cards; toys” in Class 28.

Cobra Golf Scores Win in an Attempt to Register Mark “MIM”

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In a recent decision, the Japan Patent Office (JPO) Appeal Board sided with Cobra Golf Incorporated, represented by MARKS IP LAW FIRM, and disaffirmed the examiner’s rejection by finding dissimilarity between TM Reg no. 6208087 and Cobra’s mark “MIM” for use on golf clubs.
[Appeal case nos. 2023-16540, decided on July 9, 2024]

Cobra Golf “MIM”

Cobra Golf Incorporated, one of the leasing US golf club and golf equipment manufacturer, applied for registration of wordmark “MIM” in standard character with the JPO on December 7, 2020 for use on golf clubs in class 28 (TM App no. 2020-151063).

Cobra Golf uses the mark on their golf irons produced with a new innovative “MIM” technology which stands for ‘Metal Injection Molding’.

The JPO examiner rejected the mark in contravention of Article 4(1)(xi) of the Trademark Law due to a conflict with an earlier trademark registration no. 6208087 for a composite mark consisting of the word “MIZKAN MUSEUM” with a device that can be seen as the word “MIM” (see below) in class 21 on June 30, 2023.

Marks IP Law Firm, on behalf of Cobra Golf, filed an appeal with the JPO on September 29, 2023, arguing that the cited mark is dissimilar to the word mark “MIM” because the figurative element of the cited mark would not be considered as a word “MIM” due to its stylization, but rather as a design consisting of a vertical line in between two “M” letters representing an initial letter of “MIZKAN” and “MUSEUM” respectively.

JPO decision

The JPO Appeal Board found that the cited mark would not give rise to a pronunciation of “MIM” from the figurative element by stating that:

There is a slight possibility that the building-like figures on the left and right sides of the upper part of the cited mark will be perceived as the letter “M” from appearance. However, the Board considers that the relevant consumers are unlikely to find so because of the considerable stylization. The vertical line between the letters, combined with the fact that it is of a shorter length than the letters, will also not be identified as the letter “I.”

It is therefore reasonable to conclude that the upper part of the cited mark would never be immediately recognized as representing the word “MIM” as a whole. Rather, the relevant consumers would recognize it only as a representation of a design with no specific meaning in its entirety.

Given the upper part of the cited mark has neither sound nor meaning, both marks, when considered globally, are easily distinguishable from visual, phonetical and conceptual points of view and unlikely to cause confusion when used on goods in class 28.

Based on the foregoing, the Board held that the examiner errored in applying Article 4(1)(xi) and decided to grant registration of Cobra’s mark “MIM”.