タグ: trademark invalidation

Trademark dispute: UNITED vs UNITED GOLD

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In a dispute over the similarity of the marks “UNITED” and “UNITED GOLD” in connection with apparel, the Japan IP High Court upheld the JPO decision and found that both marks were dissimilar.
[Court case no. Reiwa6(Gyo-ke)10066, decided on December 10, 2024]

UNITED GOLD

Nishitomi Shoji Co., Ltd. filed a trademark application with the Japan Patent Office (JPO) on January 17, 2022 for the word mark “UNITED GOLD” in standard character for use on apparel in class 25 and retail services for apparel in class 35.

The applicant promotes men’s suits bearing the applied mark via internet.

https://unitedgold.jp/

In accordance with a request for accelerated examination from the applicant based on the actual use of the mark on any one of the designated goods and services, the JPO carried out a substantive examination and registered the mark on March 25, 2022 [TM Reg No. 6534957].

Invalidation action

On December 15, 2023, Howard Corporation, an owner of earlier TM Reg no. 2053119 “UNITED” in class 25, filed an application for a declaration of invalidity against the mark “UNITED GOLD” with the JPO in contravention of Article 4(1)(xi) of the Japan Trademark Law due to its similarity to earlier trademark “UNITED”.

https://www.haward.co.jp/united.html

However, the JPO Invalidation Board found “UNITED GOLD” to be dissimilar to “UNITED” and therefore dismissed the invalidation action on June 17, 2024 [Invalidation Case No. 2023-890089].

To challenge the JPO decision, Howard filed an appeal with the IP High Court on July 10, 2024, claiming that the JPO erred in finding that the contested mark “UNITED GOLD” should be assessed in its entirety.

In the compliant, Howard argued that the term “GOLD” has a low degree of distinctiveness in relation to the goods and services in question. On the other hand, the term “UNITED” is highly distinctive because of its meaning. If so, the term “UNITED” plays a dominant role in identifying a source of the contested mark

IP High Court ruling

The IP High Court, at the outset, referred to the Supreme Court ruling in 2008 which established the criterion to grasp a composite mark in its entirety in the assessment of similarity of the mark.

“Where a mark in dispute is recognized as a composite mark consisting of two elements or more, it is not permissible to assess the similarity of mark simply by means of taking out an element of the composite mark and then comparing such element with the other mark, unless consumers or traders are likely to perceive the element as a dominant portion indicating its source of origin of goods/service, or remaining elements truly lack inherent distinctiveness as a source indicator in view of sound and concept.”

Based on the criteria, the court found that contested mark shall be assessed in its entirety on the following grounds:

  1. From appearance and meaning, there is no reasonable ground to find “UNITED” and “GOLD” shall be recognized individual and separable.
  2. In conjunction with clothing of class 25, more than 150 trademarks that contain the term “UNITED”, e.g. “UNITED ARROWS”, “UNITED COLORS OF BENETTON”, “UNITED TOKYO”, “UNITED DOORS”, are registered with the JPO in the name of third party. These facts suggest that the term “UNITED” is also lowly distinctive in relation to apparel.
  3. Even if there are actual examples in which the term ‘GOLD’, when combined with another distinctive term, implies a high quality of the goods, it would be anything but convincing to find that the term ‘UNITED’ plays a dominant role in identifying the goods and services bearing the contested mark, given that, as stated above, the term ‘UNITED’ has a low degree of distinctiveness.

Based on the foregoing, the judges concluded that the JPO did neither err in comparing both marks as a whole nor applying Article 4(1)(xi).

Trademark Parody case : Champion vs Nyanpion

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On Novem 20, 2024, the Japan Patent Office (JPO) handed a win to HBI Branded Apparel Enterprises, LLC in trademark invalidation action against TM Reg no. 6368388 for the mark “Nyanpion” with a cat face logo due to similarity to the famous apparel brand “Champion.”
[Invalidation case no. 2022-890045]

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).

COSME MUSEUM vs Cosmetic Museum

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In a trademark invalidation action disputing similarity between “COSME MUSEUM” and “Cosmetic Museum”, the Japan Patent Office (JPO) found both marks dissimilar and unlikely to cause confusion when used in relation to cosmetics.
[Invalidation case no. 2024-890015, decided on November 6, 2024]

COSME MUSEUM

CEL-ENA Co., Ltd. filed a trademark application for the wordmark “COSME MUSEUM” (Contested mark) with the JPO on February 24, 2023. It designates various services classified in class 35, including retail or wholesale services for cosmetics (TM App no. 2023-18992).

The applicant owns the domain “cosme-museum.com” and uses the contested mark on the domain’s web pages.

https://cosme-museum.com/

The JPO examiner granted registration of the contested mark on August 9, 2023 without issuing a notice of refusal. Upon payment of the statutory registration fee, the mark was registered on October 19, 2023 [TM Reg no. 6746429].

Cosmetic Museum

MOMOTANIJUNTENKAN Co., Ltd. filed a trademark application for the wordmark “Cosmetic Museum” in standard character with the JPO on February 16, 2023 (8 days prior to the contested mark) for use on breath freshening preparations, deodorants for animals, soaps and detergents, dentifrices, bath preparations, not for medical purposes, perfumes and flavor materials, incense, false nails, false eyelashes, and cosmetics in class 3 (TM App no. 2023-16082) in order to secure online use of the mark in connection with cosmetics on its websites under the domain “cosmeticmuseum.jp”.

https://cosmeticmuseum.jp/shop

The JPO registered the earlier mark on July 13, 2023 (3 months prior to the contested mark) [TM Reg no. 6717335].

On March 28, 2024, five months after the registration of the contested mark, MONOTANIJUNTENKAN filed an invalidation petition with the JPO requesting that the contested mark be retroactively annulled based on 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.

JPO decision

The JPO Invalidation Board found the contested mark “COSME MUSEUM” is dissimilar to the cited mark “Cosme Museum” by stating that:

Firstly, comparing the appearance of the contested mark and the cited mark, there are visual distinctions in the presence or absence of the term “tic”, and the upper-case letters or lower-case letters consisting of respective mark. Therefore, the Board has a reason to believe that two marks are clearly distinguishable, and unlikely to cause confusion in appearance.

Secondly, the pronunciation of the contested mark and that of the cited mark clearly differ in the presence or absence of a “tic” sound in the middle, and are clearly audible.

Thirdly, both marks do not give rise to any specific meaning at all. In this regard, they are not comparable in conception.

Based on the foregoing, even if the contested mark and the cited mark are conceptually incomparable, they are unlikely to cause confusion due to a low degree of similarity in appearance and pronunciation. Taking a global view of the impression, memory, and association that the relevant consumers will have from the appearance, sound and concept of the marks, the Board has a reason to believe that the contested mark “COSME MUSEUM” should be found dissimilar to the earlier mark “Cosmetic Museum” and unlikely to cause confusion.”

Accordingly, the Board decided to dismiss the invalidation action and declared the contested mark valid.

TRILITH STUDIOS vs TRILITH

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The Japan Patent Office (JPO) declared the invalidation of TM Reg no. 6371496 “TRILITH” due to similarity with earlier IR no. 1534597 “TRILITH STUDIOS” owned by Trilith IP Holdings, LLC.
[Invalidation case no. 2022-890066, decide on July 8, 2024]

TRILITH

On January 5, 2021, GAIAMOND Inc., a Japanese company, filed an application for registration of wordmark “TRILITH” (‘the contested mark’) with the JPO (TM app no. 2021-745), designating, inter alia, “game trading cards; toys” in Class 28.

Immediately after the filing, the applicant requested an accelerated examination based on the fact the company uses the contested mark in relation to display frame for game trading cards.

https://ginzo-shop.com/items/62a42b262bf901166cb94227

Accordingly, the JPO examiner granted protection of the contested mark in two months on March 15, 2021 (TM Reg no. 6371496).

TRILITH STUDIOS

Trilith IP Holdings, LLC, a holder of IR no. 1534597 for word mark “TRILITH STUDIOS” that is known as one of the largest purpose-built movie studios in North America and home to blockbuster films and independent shows like Avengers: Endgame, Zombieland: Double Tap, and Moon and Me, filed a notice of opposition to registration of the contested mark in respect of game trading cards and toys with the JPO on June 18, 2021. The ground relied on in support of the opposition was that set out in Article 8(1) of the Trademark Law.

Article 8(1) is a provision to prohibit registration of a junior mark that is identical with, or similar to any earlier applied mark which is pending before the substantive examination at the time of registration of the junior mark in accordance with the “first-to-file” principle.

The opposition applicant argued that the contested mark “TRILITH” is not eligible for registration under Article 8(1) because of similarity to earlier IR no. 1534597 “TRILITH STUDIOS”, and the goods in question is deemed similar to “downloadable video game software; recorded video game software” in Class 9 designated under the cited mark.

However, the JPO Opposition Board dismissed the opposition on the ground that there is no similarity between the mark “TRILITH STUDIOS” and “TRILITH” on April 7, 2022 (Opposition case no. 2021-900241).

On August 10, 2022, MARKS IP LAW FIRM, on behalf of Trilith IP Holdings, LLC, filed an application for a declaration of invalidity to the contested mark with the JPO based on the same ground.

To bolster the arguments, the invalidity applicant presented evidence to show a low degree of distinctiveness of the word “STUDIOS” in connection with the goods in question. Bearing in mind that the term “TRILITH” is a coined word unfamiliar to the relevant consumers in Japan, it is obvious that the term “TRILITH” is dominant in the cited mark. If so, the contested mark should be invalidated in contravention of Article 8(1).

JPO decision

Noticeably, the Invalidation Board found that the literal element “TRILITH” to be dominant in the cited mark by stating that:

 A space separates the terms “TRILITH” and “STUDIOS.” The word “STUDIOS” is commonly known as a term to indicate ” a film or video production facility.” or “workshop for painters or cameramen, recording room for radio or television, recording studio for music.” Therefore, the cited mark is easily recognizable as a combination of the terms “TRILITH” and “STUDIOS.

In light of the fact that the term “GAME STUDIOS” has been generally used to indicate workplaces where games are created in the relevant industry, the word “STUDIOS” would be less distinctive in connection with the cited goods.

Meanwhile, the term “TRILITH” is a coined and highly distinctive word with no specific meaning. Accordingly, the Board has a reason to believe that the term to be dominant in the cited mark.

Based on the above finding, the Board compared the dominant portion of the cited mark with the contested mark and found that both marks are similar from visual and aural points of view in spite that a conceptual comparison is neutral as neither the contested mark nor the cited mark have any clear meaning.

Given that the goods in question is similar to “downloadable video game software; recorded video game software” in Class 9 designated under the cited mark, the invalidation applicant is successful in proving the requirements of Article 8(1).

Consequently, in light of the foregoing, the Board decided to invalidate the contested mark in relation to “game trading cards; toys” in Class 28.

Trademark battle: FORTNITE vs FORTNIGHT

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In an invalidation trial against TM Reg no. 6389929 for word mark “FORTNIGHT” in classes 9, 16, 28, 35, 41 and 43, the Japan Patent Office (JPO) did not rule in favor of Epic Games, Inc. due to an unlikelihood of confusion with “FORTNITE”.
[Invalidation case no. 2023-890068, decided on May 9, 2024]

FORTNIGHT

A Japanese company sought registration of word mark “FORTNIGHT” in standard character for use on various goods and services in classes 9, 16, 28, 35, 41 and 43 (including games) with the JPO on June 4, 2018 (TM App no. 2028-79647).

The JPO examiner rejected the mark due to a likelihood of confusion with famous game software and distribution platform “FORTNITE” managed by Epic Games, Inc.

However, the JPO Appeal Board disaffirmed the rejection by stating that there is no reason to find “FORTNITE” has been widely recognized among relevant consumers to indicate Epic business and the applicant deleted games from designation. If so, it is unlikely that relevant consumers would not confuse the source of goods and service bearing “FORTNIGHT” with Epic’s “FORTNITE”.

The mark “FORTNIGHT” was registered on June 8, 2021.

Invalidation action by Epic Games, Inc.

Epic Games, Inc. is an American video game development and distribution company, widely known for the success of “Fortnite”, a free multiplayer online video game first released in 2017, and its game marketplace. On August 10, 2021, Epic filed a post-grant opposition against TM Reg no. 6389929 “FORTNIGHT” on August 10, 2021, but the opposition was unsuccessful (Opposition case no. 2021-900304).

On August 22, 2023, Epic filed an invalidation action and claimed that the mark “FORTNIGHT” should be invalidated in contravention of Article 4(1)(xv) and (xix) of the Japan Trademark Law.

Epic repeatedly argued “FORTNIGHT” has a high degree of similarity to “FORTNITE” from visual, phonetical and conceptual points of view. Taking account of famous online game “FORTNITE” among game users and close relation between online games and the goods and services in question, relevant consumers are likely to confuse “FORTNIGHT” with “FORTNITE”.

Given that the initial filing designated the game in question, it is presumed that the company had knowledge of the well-known online game software “FORTNITE” and aimed to benefit from its reputation.

JPO decision

The JPO Invalidation Board found that “FORTNITE” has been widely recognized to indicate video games of Epic among consumers and traders in video game industry. However, given that the launch of the video games in Japan precedes the application date of the mark “FORTNIGHT” by three months, such recognition would be limited to the industry.

With regard to the similarity of the marks, the Board stated, “Although “FORTNIGHT” and “FORTNITE” share the same sound, they are distinguishable in appearance, and the concepts are not comparable. In assessing the overall impression, the Board has a reason to find a low degree of similarity between the marks.”

In light of the aforementioned findings, the Board determined that relevant consumers are unlikely to confuse the source of the goods and services in question bearing the mark “FORTNIGHT” with “FORTNITE.”

Furthermore, there is no evidence to suggest that the applicant had any malicious intention of free-riding on or damaging Epic’s online video games “FORTNITE.”

Consequently, the Board dismissed the invalidation action and declared the validity of TM Reg. No. 6389929.

Trademark Dispute: Chateau Mouton Rothschild vs MOUTON

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The Japan Patent Office (JPO) declared invalidation of TM Reg no. 6090508 for wordmark “MOUTON” in classes 35 and 43 due to a likelihood of confusion with famous mark “Mouton” as a source indicator of Chateau Mouton Rothschild, one of the most famous wine estates in the world.
[Invalidation case no. 2022-890079, decided on January 22, 2024]

TM Reg no. 6090508 “MOUTON”

WALTZ Co., Ltd. filed a trademark application for wordmark “MOUTON” in relation to retail or wholesale services of various foods and drinks (not including wine) of class 35 and restaurant services of class 43 with the JPO on November 17, 2017. The applicant operates a bar and restaurant named “MOUTON” in Shinjuku, Tokyo.

A screen capture from https://www.pub-mouton.com/

The mark was granted protection on September 5, 2018, published for a post-grant opposition on November 13, 2018.

Unsuccessful Opposition

Baron Philippe de Rothschild S.A. filed an opposition against TM Reg no. 6090508 “MOUTON” on January 15, 2019 and claimed cancellation of the mark in contravention of Article 4(1)(vii) and (xv) of the Trademark Law. However, the JPO Opposition Board decided to dismiss the opposition on September 6, 2019 (Opposition case no. 2019-900012).

Subsequently, to challenge the validity of the trademark registration for the MOUTON mark, Baron Philippe de Rothschild S.A. filed an invalidation with the JPO on October 7, 2022, a month before the five-year statute of limitations from the registration date was set to lapse. The claimant argued the disputed mark is identical with a well-known abbreviation of the world-famous wine “Chateau Mouton Rothschild”. Besides, in view of close association between wine and the services in question, relevant consumers and traders would confuse a source of the services bearing the mark “MOUTON” with the claimant. If so, the disputed mark shall be invalidated in contravention of Article 4(1)(xv) of the Trademark Law.

WALTZ did not respond to the arguments during the invalidation trial procedure.

JPO Invalidation decision

On January 22, 2024, the JPO Trial Board decided to annul TM Reg no. 6090508 “MOUTON” in relation to all of the retail or wholesale services designated in class 35 and restaurant services in class 43 by stating that:

From the facts revealed by the produced evidence, the Board has a reason to believe that the term “Mouton” has acquired a substantial degree of reputation and popularity among relevant consumers and traders to indicate the world-famous wine and its abbreviation.

Undoubtedly, the disputed mark “MOUTON” shall be similar to the mark “Chateau Mouton Rothschild” from phonetical and conceptual points of view even if there is a distinction in appearance between the marks.

There is a close association between wine and retail or wholesale services of various foods and drinks as well as restaurant services.

If so, relevant consumers are likely to confuse a source of the services bearing the disputed mark with the claimant or other business entity systematically or economically connected with them.

Based on the foregoing, the Trial Board found the disputed mark shall be invalidated in contravention of Article 4(1)(xv) of the Trademark Law.

JPO Annual Report 2023

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The Japan Patent Office (JPO) released its 2023 Annual Report (in Japanese only) on July 28, 2023, which contains informative figures and statistics relating to IP applications in Japan and all other activities of the JPO.

Trademark applications filed in 2022

In the aftermath of the COVID-19 pandemic, the number of trademark applications in Japan decreased to 170,275 by 7.8 % in 2022. TM applications via Madrid Protocol also decreased to 19,769 by 1.6% compared to the previous year. Direct applications decreased to 150,506 by 8.5 %.

Pendency time for trademark prosecution

Since 2020, the first office action pendency, the average number of months from the date of application filing to the JPO examiner’s first office action, has been drastically getting shorter in a row. The first Action Pendency was 5.4 months in 2022.

Total pendency, the average number of months from the date of filing to registration in 2022 was 6.9 months, four months shorter than in 2020 (11.2 months).

The average number of months for trial is also getting shorter in 2022.

TM Appeal trial: 8.6 months / TM Opposition trial: 8.9 months / TM Invalidation trial: 10.0 months / TM Cancellation trial: 6.4months

TM applications to JPO by Foreign Companies/ Non-resident

44,911 trademark applications, which account for 26.4 % of the total, were filed by foreign companies or non-residents in 2022. The number of applications was decreased by 13 % since last year.

The statistic shows China was continuously leading the ranking with about 15,100 trademark applications in 2022, decreased by 25 % from the previous year.

Chrysler Wins Japan Trademark Invalidation Trial over “Jeeper”

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In a recent invalidation decision by the Japan Patent Office (JPO), Chrysler could finally achieve victory in a trademark dispute against “Jeeper”, regardless of their failed opposition in 2022.

[Invalidation case no. 2022-890064, decided on July 5, 2023]

Disputed mark

The wordmark “Jeeper” was filed by a Japanese individual for use on various hand tools in class 8 with the JPO on January 27, 2020 (TM App no. 2020-8907).

Since the JPO admitted registration of the mark on November 17, 2020, and published it for a post-grant opposition on December 8, 2020, Fiat Chrysler Automobiles (FCA US) LLC filed an opposition on Jan 26, 2021.

In the opposition, FCA argued the mark shall be canceled in contravention of Article 4(1)(xi) and (xv) of the Trademark Law due to the remarkable reputation and popularity of “JEEP” as a source indicator of Chrysler vehicles and a high degree of similarity between the mark “Jeeper” and Chrysler “JEEP.”

Article 4(1)(xi) is a provision to refrain from registering a junior mark that is deemed identical with, or similar to, an earlier registered mark.

Article 4(1)(xv) provides that a mark shall not be registered where it is likely to cause confusion with other business entities’ well-known goods or services.

However, on April 6, 2022, the JPO Opposition Board dismissed the opposition by questioning the famousness of the “JEEP” mark among relevant consumers of hand tools and finding a low degree of similarity between the two marks (Opposition case no. 2021-900035).

Invalidation action by FCA US LLC

To contest the Opposition Board decision, FCA US LLC filed an invalidation action with the JPO on July 28, 2022, and repeatedly argued the mark “Jeeper” shall be invalid due to its similarity to and the likelihood of confusion with “JEEP” when used on the hand tools in class 8.

The applicant did neither file an answer nor respond to the invalidation claims at all.

JPO Decision

The JPO Trial Board admitted a high degree of reputation and recognition of the claimant’s trademark “JEEP” in connection with small 4WD cars. Besides, based on the facts that the JEEP mark has been used on T-shirts, backpacks, bags, mugs, lunch boxes, carabiners, key chains, spray bottles, containers, and cooler boxes, the Board found the JEEP mark has even become famous among consumers of goods other than automobiles.

Based on the above findings, the Board held that, by taking account of the famousness of the JEEP mark as a source indicator of the claimant’s small 4WD cars, the literal portion of “Jeep” shall play a prominent role in indicating the source of the disputed mark. If so, the disputed mark gives rise to the sound of “Jeep” and the meaning of “the claimant’s famous small 4WD cars” accordingly.

Bearing this in mind, the Board compared the prominent portion “Jeep” of the disputed mark with the claimant’s mark “JEEP” and found a close resemblance of both marks as a whole.

In assessing the likelihood of confusion, the Board held small 4WD cars are remotely associated with hand tools in class 8, however, the Board paid attention to the fact that camp items bearing the JEEP mark e.g., backpacks, mugs, carabiners, cooler boxes, etc., are closely associated with the goods in question.

Based on the foregoing, the Board found relevant consumers are likely to confuse a source of the goods in question bearing the disputed mark with the claimant and decided to invalidate the disputed mark based on Article 4(1)(xi) and (xv).

HYATT lost a trademark dispute in Japan: GRAND CLUB vs GRAN CLUB

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The Japan Patent Office (JPO) did not side with HYATT and dismissed an invalidation petition against TM Reg no. 6186629 for the wordmark “GRAN CLUB” by finding dissimilarity to HYATT’s earlier mark “GRAND CLUB”.

[Invalidation case no. 2022-890018, Decision date: December 14, 2022]

GRAN CLUB

The disputed mark, consisting of the word mark “GRAN CLUB” in standard character was filed by Memolead Wellness Co., Ltd., a Japanese company for use in restaurants, hotels and temporary accommodations, retirement homes, beauty salons, and other services in class 43 and 44 on September 13, 2018, with the JPO. The JPO examiner granted protection on September 10, 2019.

Apparently, the applicant uses the mark on their facility to provide a sports club, fitness gym, spa, beauty salon, sauna, café, and social club in Takasaki City, Gunma Prefecture (Japan).

GRAND CLUB

Hyatt International Corporation has effectively owned earlier TM Reg no. 4604602 for the wordmark “GRAND CLUB” in standard character on hotels, restaurants, beauty salons, and other services in Japan.

Hyatt filed an invalidation petition against “GRAN CLUB” with the JPO on March 18, 2022, and argued the disputed mark shall be invalidated in contravention of Article 4(1)(xi) of the Trademark Law due to a close resemblance between “GRAND CLUB” and “GRAND CLUB” to be used on identical or similar services.

JPO Decision

The JPO Invalidation Board found the disputed mark “GRAN CLUB” does not give rise to any specific meaning as well as the cited mark “GRAND CLUB”.

From the appearance, the Board found both marks are distinguishable by virtue of the presence or absence of the letter “D” in the middle of the marks.

Besides, the Board had a view that it is unlikely relevant consumers audibly confuse “ɡræn-klʌb” with “ɡrænd-klʌb” in view of short phonetic compositions of six or seven sounds.

Hyatt argued “GRAND CLUB” can be called “ɡræn-klʌb” among Japanese consumers based on a lot of hotels and facilities with a mark containing the term “GRAN” that is ordinary called “ɡræn”. However, the Board held the examples are neither direct nor relevant to find “GRAND CLUB” is pronounced as  “ɡræn-klʌb” by relevant consumers.

Given both marks are incomparable to the concept, the Board has a reason to believe both marks give rise to a different impression in the mind of consumers from visual, phonetical, and conceptual points of view.

Based on the foregoing, the Board concluded “GRAN CLUB” and “GRAND CLUB” are dissimilar and declared the validity of the disputed mark.

Trademark dispute: “Swan Angel” vs “ANGEL SWAN”

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In a recent decision, the Japan Patent Office (JPO) declared invalidation of TM Reg no. 5947687 for the word mark “Swan Angel” in class 41 due to a similarity to “ANGEL SWAN”.

[Invalidation case no. 2022-890031, Decision date: December 1, 2022]

Swan Angel

Disputed mark, consisting of the wordmark “Swan Angel” in standard character, was filed for use on various services including ballet school in class 41 with the JPO by a Japanese individual on October 5, 2016, and registered on May 19, 2017 (TM Reg no. 5947687).

Invalidation petition

On May 10, 2022, just before the lapse of a five-year statute of limitations, an owner of earlier TM Reg no. 5509646 for wordmark “ANGEL SWAN” in standard character filed a petition for invalidation against the disputed mark.

The owner argued disputed mark shall be invalidated in contravention of Article 4(1)(xi) of the Japan Trademark Law by stating “Swan Angel” is confusingly similar to “ANGEL SWAN” and ballet school and other services pertinent to ballet is deemed similar to the service in class 41 designated under the earlier mark since it also relates to ballet.

JPO decision

In an assessment of the similarity of marks, the JPO Invalidation Board stated:

Both the disputed mark and the cited mark consist of the two English words, “Swan” and “Angel”, commonly known among general consumers in Japan and it is reasonable to assume that relevant traders and consumers at the sight of both marks will see the words being placed in reverse order.

Even if there is a difference in the order of two words between the marks, the Board has no reason to believe the difference gives rise to any distinct meaning as a whole.

If so, relevant traders and consumers are likely to recognize the respective marks as a combination of “swan” and “angel” in sound and concept irrespective of the reversed order.

In this respect, both marks look similar in appearance because of the same words, font, and alphabet.

Based on the foregoing, the Board found the disputed mark “Swan Angel” is confusingly similar to the cited mark “ANGEL SWAN” from visual, phonetical, and conceptual points of view.

Taking account of another factor that respective services pertinent to ballet are deemed identical or similar as well, the Board concluded the disputed mark shall be retroactively invalidated in contravention of Article 4(1)(xi).