タグ: Article 4(1)(xi)

Volkswagen Lost in Trademark Opposition over VW emblem

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The Japan Patent Office (JPO) dismissed an opposition claimed by Volkswagen AG against TM Reg no. 6776072 for a device mark in class 25 due to dissimilarity to and unlikelihood of confusion with famous VW emblem.
[Opposition case no. 2024-900086, decided on October 9, 2024]

Contested mark

SAKAIYA PLANNING INC. filed a trademark application for a device mark (see below) in connection with clothing, footwear, garters, sock suspenders, suspenders for clothing, waistbands, belts [clothing] of class 25 with the JPO on June 6, 2023.

According to the applicant’s website, the applied mark is used in conjunction with “ANNA MALIA”.

The JPO examiner did not issue any office actions and granted protection of the mark on January 30, 2024. Accordingly, it was published for a post-grant opposition on February 14, 2024.

Opposition by Volkswagen

On April 12, 2024, German car giant Volkswagen AG filed an opposition and claimed cancellation of the contested mark in contravention of Article 4(1)(xi), (xv) and 8(1) of the Japan Trademark Law by citing earlier IR no. 1555245 for their iconic VW emblem (see below) covering clothing, footwear and other goods in class 25.

Volkswagen argued that the contested mark consists of monogrammed letters, “V” and “W” represented in a circle. Therefore, where the mark is observed upside down, it looks closely similar to the VM emblem. Customers have been accustomed to observing clothing and other goods in question from various angles. In this respect, even though conceptual and phonetical comparisons are neutral as neither the contested mark nor the VM emblem have any clear sound and meaning, both marks should be considered similar because of a high degree of visual similarity.

Besides, the VW emblem has acquired substantial popularity and reputation as a source indicator of famous automobile maker, Volkswagen. Thus, it is highly likely that relevant traders and consumers confuse the source of the goods in question bearing the contested mark with Volkswagen or a business entity systematically or economically connected with the opponent.

JPO decision

The Opposition Board found that the VW emblem has become famous for a source indicator of opponent by taking into consideration of the facts that opponent’s cars with the VW emblem have been continuously imported to Japan since 1953 and ranked in the top 3 of new imported automobile registrations for the past three years.

In the meantime, the Board denied visual similarity between the contested mark and the VM emblem by stating that:

The mountainous lines in the circle of the contested mark are too stylized to be recognized as the representation of characters from its overall composition. Therefore, it can be seen to represent a geometric figure as a whole.

Meantime, the V-shaped line and the W-shaped line of the cited mark do not overlap, and both ends of the V-shaped line and the W-shaped line neatly overlap with the circle.

These differences give rise to a distinctive visual impression from their overall appearance, which can be sufficiently distinguishable when observed at a distance.

Given a low degree of similarity between the marks, the Board has a reason to believe that relevant consumers are unlikely to confuse a source of goods in question bearing the contested mark with Volkswagen.

Based on the foregoing, the Board found the opposition groundless and decided not to cancel the contested mark.

BULLDOG vs GREEN BULLLDOG

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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.

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.

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.

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”.

Trademark Opposition: FITBIT vs Fitbeing

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The Japan Patent Office (JPO) did not side with Google LLC in an opposition against TM Reg no. 6715471 for wordmark “Fitbeing” in class 14 by finding dissimilarity to and unlikelihood of confusion with “Fitbit” wearable devices.
[Opposition case no. 2023-900195, decided on June 28, 2024]

“Fitbeing”

Wordmark “Fiteing” was applied for registration in relation to “clocks and watches; watch bands and straps; stopwatches; watch cases [parts of watches]; clocks and watches, electric; chronometric instruments; presentation boxes for watches” in class 14 by a Chinese company with the JPO on January 4, 2023 (TM App no. 2023-172).

The JPO examiner did not issue an office action to the mark and granted protection on June 28, 2023. Subsequently, the mark was published for post-grant opposition on July 18, 2023.

Opposition by Google LLC

To oppose registration within a statutory period of two months counting from the publication date, Google LLC filed an opposition against the opposed mark on August 31, 2023.

Google argued the opposed mark shall be canceled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law by citing earlier trademark registrations for the wordmark “FITBIT” that has allegedly become famous as a source indication of Google’s wearable devices.

Google argued that due to the same spelling that starts with “FITB”, relevant consumers with an ordinary care would consider the opposed mark “Fitbeing” confusingly similar to the cited mark “FITBIT” from visual, aural and conceptual points of view.

By taking int consideration the high degree of reputation and popularity of the mark “FITBIT”, it is likely that the consumers would confuse a source of goods in question bearing the opposed mark with Google or their devices.

JPO decision

The JPO Opposition Board found that, considering the evidence submitted, the mark “FITBIT” has not been widely recognized among the consumers to indicate Google’s wearable devices even if some of them may have known.

Secondly, the Board assessed the similarity of marks and states:

  • Comparing the marks “Fitbeing” and “FITBIT” visually, although they have the same initial letter “Fitb (FITB)”, there is a clear difference in the endings “ing” and “IT” and the number of letters is different from 8 to 6. Therefore, the two marks are visually different.
  • As regards pronunciation, although both marks have the same initial sound ‘fitbi’, they differ in the ending ‘-ing’ and ‘it’ and the number of sounds is not as long (8 and 6 sounds). This difference would make a meaningful difference in the overall pronunciation.
  • The conceptual comparison is not possible because both marks have no meaning.
  • Accordingly, the Board has reason to believe that both marks are dissimilar and unlikely to cause confusion, taking into account the overall consideration as well as the impressions, memories, associations of the consumers.

In light of the foregoing, the Board dismissed the entire opposition and granted status quo protection to the mark “Fitbeing” in class 14.