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.

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“

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.