Contested mark

A Japanese individual applied a composite mark consisting of a stylized word “Nyanpion” and a cat face logo (see below) for use on apparel, headgear, footwear, sports shoes, and sportswear in class 25 with the JPO on August 25, 2020. “Nyan” is the sound cats make in Japan. Because of it, “Nyanpion” easily reminds us of a combination of cat sounds and “Champion”.

T-shirts, sweats, hoodies, and tote bags bearing the Nyanpion mark have been promoted for sale with a catchword of “Champion” parody.

As the JPO published the Nyanpion mark for a post-grant opposition on April 13, 2021, HBI Branded Apparel Enterprises, LLC filed an opposition against the opposed mark on June 14 of that year. However, the JPO Opposition Board dismissed the entire opposition by finding dissimilarity to and unlikelihood of confusion with famous “Champion” mark on March 16, 2022. [Opposition case no. 2021-900230]

Invalidation action by Champion

On June 17, 2022, HBI Branded Apparel Enterprises, LLC filed an invalidation action against the Nyanpion mark with the JPO.

HBI repeatedly argued the opposed mark shall be canceled in contravention of Article 4(1)(vii), (x), (xi), (xv), and (xix) of the Japan Trademark Law because of the remarkable reputation and popularity of the Champion brand in relation to apparels and a high degree of similarity between the contested mark and its owned trademark registrations (see below) to the extent that relevant consumers are likely to confuse a source of the goods in question bearing the contested mark with “Champion”.

JPO Decision

The JPO Invalidation Board acknowledged that the “Champion” mark has acquired a high degree of reputation as a result of substantial use in Japan for more than four decades and has become remarkably famous as a source indicator of the opponent.

In assessing similarity, the Board found that:

The design portion of two marks have in common that the inside of the horizontal oval, which is drawn with a thick blue line and has an opening, is divided vertically into three parts, the middle colored in blue, the side with the opening colored in white and the side without the opening colored in red.

Differences in the presence of a face motif and two triangles placed at the top of the horizontal oval, in the direction of the opening of the horizontal oval and in the position of the red color within the horizontal oval would be less impressive given the resemblance in the overall configuration and the high degree of reputation and popularity of the cited marks.

Besides, the Board found no evidence to suggest that relevant consumers would consider the literal element “Nyanpion” to be a relatively as a prominent part of the contested mark. If so, the contested mark is confusingly similar to the cited mark as a whole, even if the cited mark does not contain the term “Nyanpion.”

Therefore, notwithstanding the fact that both marks have a distinctive sound, taking into account the visual and conceptual similarities, as well as the notable reputation of the cited mark, the Board has reason to believe that the contested mark, when used on the goods in question, will cause confusion with the cited mark

Based on the foregoing, the JPO declared invalidation of the contested mark in contravention of Article 4(1)(xi) and (xv).

Opposed mark

A Japanese individual applied a composite mark consisting of a stylized word “Nyanpion” and a cat device (see below) for use on apparel, headgear, footwear, sports shoes, and sportswear in class 25 with the JPO on August 25, 2020.

The JPO examiner granted protection of the opposed mark on January 29, 2021, and published for opposition on April 13, 2021.

T-shirts, sweats, hoodies, and tote bags bearing the Nyanpion mark have been promoted for sale with a catchword of “Champion” parody.

I should note that “Nyan” is the sound cats make in Japan. Because of it, “Nyanpion” easily reminds us of a combination of cat sounds and “Champion”.

Opposition by Champion

To oppose registration within a statutory period of two months counting from the publication date, HBI Branded Apparel Enterprises, LLC filed an opposition against the opposed mark on June 14, 2021.

HBI argued the opposed mark shall be canceled in contravention of Article 4(1)(vii), (x), (xi), (xv), and (xix) of the Japan Trademark Law because of the remarkable reputation and popularity of the Champion brand in relation to apparels and a high degree of similarity between the opposed mark and its owned trademark registrations (see below) to the extent that relevant consumers are likely to confuse a source of the goods in question bearing the opposed mark with “Champion”.

JPO Decision

The JPO Opposition Board admitted that the “Champion” mark has acquired a high degree of reputation as a result of substantial use in Japan for more than four decades and become famous as a source indicator of the opponent.

In the meantime, the Board negated the similarity between the marks by stating that:

From the appearance, the difference in the prefix of literal elements, “Nyanpion” and “Champion” would suffice for relevant consumers to distinguish them. The figurative element of the opposed mark represents a cat’s face. The opponent device mark gives rise to an impression of a letter “C”. If so, both marks are sufficiently distinguishable in appearance.

Phonetically, “Nyanpion” is easily distinguishable from “Champion” because of the difference in the first sound given both marks just consist of five sounds respectively.

Conceptually, the opposed mark does not give rise to any specific meaning. Meanwhile, the opponent mark has a meaning of someone or something, especially a person or animal, that has beaten all other competitors in competition and ‘famous apparel brand.’ If so, both marks are dissimilar in concept.

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

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