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.