Opposed mark

A Chinese company filed the stylized “HUDABEAUTY” mark (see below) on cosmetics; lotions; facial creams; lips; hand-cleaners; eye-shadows; whitening creams and other goods in class 3 with the JPO on November 22, 2018.

The JPO granted protection of the opposed mark on November 26, 2019, and published for opposition on January 7, 2020. [TM Reg. 6204338]

Opposition by Huda Kattan

On January 10, 2020, three days after the publishment of the opposed mark, Huda Kattan applied the same mark for use on cosmetics, perfumes, and fragrances in class 3 with the JPO and filed an opposition against TM Reg no. 6204338 on February 21, 2020.

The opponent argued the opposed mark shall be canceled in contravention of Article 4(1)(vii), (x), (xv) and (xix) of the Trademark Law because the opposed mark is completely identical with the stylized “HUDABEAUTY” mark that has acquired a substantial reputation and popularity as a source indicator of cosmetics line launched by famous beauty blogger “Huda Kattan” among relevant consumers at the filing date of the opposed mark.

In bolstering the famousness of the opponent mark, the opponent alleged the founder, Kattan, achieved popularity on Instagram, attaining more than 47 million followers as of 2020. Huda is ranked #1 on the “2017 Influencer Instagram Rich List” and was declared one of the “ten most powerful influencers in the world of beauty” and “The Richest Self-Made Women and one of the Top Three Beauty Influencers ” by Forbes magazine. She was chosen as one of “The 25 Most Influential People on the Internet” by Time magazine in 2017.

Internet search does not reveal any goods of the opposed party. Meanwhile, the opponent’s “HUDABEAUTY” cosmetics are available at Amazon Japan and other online platforms for domestic consumers.

JPO decision

Astonishingly, the JPO Opposition Board did not admit the famousness of the “HUDABEAUTY” mark as a source indicator of Huda Kattan by stating that:

1. It is unclear if the merchants promoting “HUDABEAUTY” cosmetics at Amazon Japan and other online platforms are licensed distributor.
2. Produced invoices to demonstrate the actual sale of opponent’s goods to Japanese consumers are irrelevant because these are issued on a date after the registration of the opposed mark.
3. Even though the opponent and Huda Kattan make good use of SNS and have a very high number of followers and been awarded as a beauty influencer, the Board can’t find reasonable grounds to believe from these facts the opponent mark has acquired a certain degree of reputation and popularity among relevant consumers in Japan.
4. The opponent did not produce any evidence to demonstrate sales amount, publication, and advertisement in Japan.

Since it is one of the requisites in applying Article 4(1)(vii), (x), (xv), and (xix) to have a certain degree of reputation and popularity among relevant consumers before the filing date of the opposed mark, regardless of the close duplication, the Board decided to dismiss the opposition entirely and allowed registration of the opposed mark as it is.

This case teaches us how significant to be a “first-filer” in registering and protecting trademarks in Japan.