タグ: Volkswagen

Volkswagen Lost in Trademark Opposition over VW emblem

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The Japan Patent Office (JPO) dismissed an opposition claimed by Volkswagen AG against TM Reg no. 6776072 for a device mark in class 25 due to dissimilarity to and unlikelihood of confusion with famous VW emblem.
[Opposition case no. 2024-900086, decided on October 9, 2024]

Contested mark

SAKAIYA PLANNING INC. filed a trademark application for a device mark (see below) in connection with clothing, footwear, garters, sock suspenders, suspenders for clothing, waistbands, belts [clothing] of class 25 with the JPO on June 6, 2023.

According to the applicant’s website, the applied mark is used in conjunction with “ANNA MALIA”.

The JPO examiner did not issue any office actions and granted protection of the mark on January 30, 2024. Accordingly, it was published for a post-grant opposition on February 14, 2024.

Opposition by Volkswagen

On April 12, 2024, German car giant Volkswagen AG filed an opposition and claimed cancellation of the contested mark in contravention of Article 4(1)(xi), (xv) and 8(1) of the Japan Trademark Law by citing earlier IR no. 1555245 for their iconic VW emblem (see below) covering clothing, footwear and other goods in class 25.

Volkswagen argued that the contested mark consists of monogrammed letters, “V” and “W” represented in a circle. Therefore, where the mark is observed upside down, it looks closely similar to the VM emblem. Customers have been accustomed to observing clothing and other goods in question from various angles. In this respect, even though conceptual and phonetical comparisons are neutral as neither the contested mark nor the VM emblem have any clear sound and meaning, both marks should be considered similar because of a high degree of visual similarity.

Besides, the VW emblem has acquired substantial popularity and reputation as a source indicator of famous automobile maker, Volkswagen. Thus, it is highly likely that relevant traders and consumers confuse the source of the goods in question bearing the contested mark with Volkswagen or a business entity systematically or economically connected with the opponent.

JPO decision

The Opposition Board found that the VW emblem has become famous for a source indicator of opponent by taking into consideration of the facts that opponent’s cars with the VW emblem have been continuously imported to Japan since 1953 and ranked in the top 3 of new imported automobile registrations for the past three years.

In the meantime, the Board denied visual similarity between the contested mark and the VM emblem by stating that:

The mountainous lines in the circle of the contested mark are too stylized to be recognized as the representation of characters from its overall composition. Therefore, it can be seen to represent a geometric figure as a whole.

Meantime, the V-shaped line and the W-shaped line of the cited mark do not overlap, and both ends of the V-shaped line and the W-shaped line neatly overlap with the circle.

These differences give rise to a distinctive visual impression from their overall appearance, which can be sufficiently distinguishable when observed at a distance.

Given a low degree of similarity between the marks, the Board has a reason to believe that relevant consumers are unlikely to confuse a source of goods in question bearing the contested mark with Volkswagen.

Based on the foregoing, the Board found the opposition groundless and decided not to cancel the contested mark.

Volkswagen Unsuccessful in TM Opposition contesting similarity between Touran and TURANO

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The Japan Patent Office (JPO) dismissed an opposition against TM Reg no. 6754807 “TURANO” in class 12 claimed by Volkswagen AG due to dissimilarity to IR no. 782978 “Touran” that has been used on the VW’s compact vans.
[Opposition case no. 2024-900017, decided on August 28, 2024]

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.

Failed Trademark Opposition over VW TYPE-2

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The Japan Patent Office (JPO) did not side with Volkswagen AG in an opposition against TM Reg no. 6365340 for device mark containing a depiction of a van-type red car by finding unlikelihood of confusion with Volkswagen Type-2.

[Opposition case no. 2021-900210, decided on September 14, 2023]

Opposed mark

Sur Andino SA, a Chilean wine grower and producer, filed a trademark application for device mark containing a depiction of a van-type red car (see below) to be used on wines in class 33 with the JPO on February 5, 2020.

The JPO granted protection of the opposed mark on March 9, 2021 and published is for a post-grant opposition on April 6, 2021.

Opposition by Volkswagen

On June 7, 2021, just before the lapse of a two-month statutory period counting from the publication date, Volkswagen AG filed an opposition and claimed the opposed mark shall be cancelled in contravention of Article 4(1)(vii), (xv) and (xix) of the Japan Trademark Law.

Volkswagen argued a van-type red car depicted in the opposed mark resembles the VW Type 2 vehicles, aka Transporter, Bulli, Kombi, VW Bus that have been distributed worldwide for past six decades and a unique shape of the vehicles has played a significant role in identifying the origin of car. Because of it, the applicant must have had a bad faith to free-ride or dilute fame and prestige of the VW Type 2. Relevant consumers are likely to confuse a source of wines bearing the opposed mark with VW.

JPO decision

The JPO Opposition Board questioned whether the shape of the VW Type 2 per se has played a role in indicating the source from the produced evidence.

Given there is insufficient evidence to connect a van-type red car in the opposed mark with the VW Type 2, the Board found no reason to believe the applicant had a bad faith to free-ride or dilute prestige of the VW Type 2 by using the opposed mark on wines. If so, it is unlikely that relevant consumers confuse a source of wines bearing the opposed mark with Volkswagen.

Based on the foregoing, the Board decided the opposed mark shall not be canceled based on Article 4(1)(vii), (xv) and (xix), and thus dismissed entire allegations by Volkswagen.

JPO Decision: the Volkswagen Beetle 3D shape Lacks Distinctiveness

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The JPO Appeal Board affirmed the examiner’s rejection and decided to refuse IR no. 1379178 for the 3D shape of the Volkswagen Beetle due to a lack of inherent and acquired distinctiveness in relation to goods of classes 9, 28, and 30.

[Appeal case no. 2020-650030, Gazette issued date: January 27, 2023]

VW Beetle

German car giant Volkswagen AG filed a 3D mark representing the iconic VW Beetle car (see below) in relation to various goods including navigation apparatus for vehicles [onboard computers], toy automobiles, scale model automobiles of classes 9, 28, and 30 with the JPO via the Madrid Protocol on December 7, 2017.

The JPO examiner rejected the mark in contravention of Article 3(1)(iii) and 4(1)(xvi) of the Japan Trademark Law on March 19, 2020, by stating that the mark merely represents a common shape of goods when used on toy automobiles, scale model automobiles of class 28 and chocolate and desserts, ice creams, frozen yogurts and sorbets of class 30, and consumers will misunderstand the quality of goods when used on other designated goods.

Appeal by Volkswagen

Volkswagen filed an appeal against the rejection on July 2, 2020, and argued the inherent and acquired distinctiveness of the 3D mark as a result of substantial use on VW’s automobiles (cl. 12) for more than six decades and around 21.5 million units cumulatively.

JPO Decision

The Appeal Board at its discretion found plenty of goods in the shape of cars promoted for sale in relation to toy automobiles, scale model automobiles (cl. 28), and chocolate and desserts, frozen yogurts, and sorbets (cl. 30).

Bearing this fact in mind, the Board has a reason to believe the applied mark is adopted for a purpose of enhancing function or the aesthetic appeal of the goods in question. If so, the shape still remains within the scope of the descriptive shape of goods and shall be unregistrable due to a lack of inherent distinctiveness in relation to these goods.

Furthermore, the Board pointed out that Volkswagen stopped manufacturing cars in the shape of the applied mark in 2003. There is reasonable doubt that the 3D mark has been famous as a source indicator of VW cars after a lapse of twenty years. Besides, the applicant has not produced any evidence to demonstrate the actual use of the 3D shape on goods in classes 9, 28, and 30 and its sales.

Based on the foregoing, the Board found the 3D mark lacks inherent and acquired distinctiveness in relation to the goods in question and dismissed the appeal entirely.

Failed trademark opposition by Volkswagen: POLO vs. QOLO

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On December 28, 2022, the JPO Opposition Board dismissed the opposition claimed by German car giant Volkswagen AG against TM Reg no. 6512258 for the wordmark “Qolo” by finding dissimilarity to, and the unlikelihood of confusion with VW’s famous car model name “Polo” even when used in relation to automobiles.

[Opposition Case no. 2022-900157]

Opposed mark

Qolo Inc., a Japanese start-up company, filed a trademark application for the wordmark “Qolo” for various goods and services in classes 9, 10, 12, 20, 37, 42, and 44 including automobiles and repair, maintenance, and rental of cars on September 7, 2021.

The JPO granted protection of the opposed mark on February 10, 2022, and published it for registration on February 21, 2022.

Opposition by VW

Volkswagen AG filed an opposition against the opposed mark on April 19, 2022, before the lapse of a two-month statutory period counting from the publication date and claimed the opposed mark shall be canceled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law by citing VW’s earlier TM Reg no. 600030-2 for wordmark “POLO” on automobiles in class 12.

VW argued the opposed mark “Qolo” is deemed similar to “POLO” from visual and phonetical points of view. The opposed mark designates “electric vehicles; automobiles” in class 12, “repair and maintenance of automobiles; vehicle battery charging” in class 37, and “rental of automobiles, vehicles” in class 39 that are deemed identical or similar to automobiles.

In view of the remarkable reputation of VW POLO cars and the close resemblance between “Qolo” and “POLO”, it is highly likely that relevant consumers confuse a source of goods and services of the opposed mark when used on automobiles and its related services.

JPO decision

The Board admitted the famousness of the “POLO” mark as a source indicator of VW cars based on the facts that the Volkswagen Polo has been continuously imported to Japan since 1996 and ranked in the top 7 of imported automobiles for the past two decades.

However, the Board found “POLO” and “Qolo” are dissimilar in appearance and sound.

The difference in the first letter consisting of four letters in total would be anything but visually negligible. Likewise, the different pronunciation in the 1st sound consisting of two sounds in total gives rise to a distinctive impression.

By taking into consideration a lower degree of similarity between the marks and lack of originality for the term “POLO”, which means a game played on horseback between two teams, each of four players, the Board negated a likelihood of confusion between “POLO” and “Qolo” even when the opposed mark is used on goods and services in question.

Based on the foregoing, the Board dismissed the opposition entirely and decided that the opposed mark “Qolo” shall remain valid as the status quo.

Volkswagen Unsuccessful in Trademark Opposition to Baidu’s “Car-pollo” mark

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In a trademark opposition involving the Volkswagen Polo, the Opposition Board of Japan Patent Office (JPO) decided that VW’s famous car model name “Polo” is dissimilar to, and unlikely to cause confusion with, the word mark “Car-pollo” even when used in relation to car navigation.
[Opposition Case no. 2019-900054, Gazette issued date: October 25, 2019]

Trademark opposition

German car giant Volkswagen AG filed an opposition against TM registration no. 615016 for word mark “Car-pollo” written in standard character (Opposed mark) sought for registration by Baidu Online Network Technology Beijing Company Limited, a Chinese language internet search company, on the grounds that Opposed mark shall be objectionable under Article 4(1)(xi) and 4(1)(xv) of the Japan Trademark Law based on senior trademark registrations for word mark “POLO”.

The opposed mark designates navigation apparatus (GPS) for vehicles [on-board computers]; car video recorders; batteries for vehicles; battery charging devices for motor vehicles; electric locks for vehicles and others in class 9, wheel barrows; airplanes; vessels; bicycles; electric bicycles in class 12, and automatic driving cars design in class 42.

Article 4(1)(xi) is a provision to prohibit from registering a junior mark which is deemed identical with, or similar to, any senior registered mark.

Volkswagen argued opposed mark is a compound word consisting of “Car”, which would be unregistrable alone in relation to the designated goods and service, and “pollo” formed with hyphen. If so, the term “pollo” would constitute the dominant portion of opposed mark. Since the term is an unfamiliar Italian and Spanish word in Japan, relevant consumers would not conceive its meaning of ‘chicken’ at all. The term “pollo” gives rise to a same sound with “POLO” and resembles with “POLO” from appearance. Also, the designated goods in class 12 of both marks are identical or similar. Therefore, opposed mark shall be objectionable under Article 4(1)(xi).

Article 4(1)(xv) provides that a mark shall not be registered where it is likely to cause confusion with other business entity’s well-known goods or services, to the benefit of brand owner and users’ benefits.

Volkswagen argued “POLO” has acquired substantial popularity and reputation as a source indicator of VW’s famous car model name. Thus, it is highly likely that relevant traders and consumers confuse or misconceive the source of goods and services using opposed mark “Car-pollo” with opponent or a business entity systematically or economically connected with VW. If so, opposed mark shall be objectionable under Article 4(1)(xv).

Board decision

The Board admitted “POLO” has become remarkably famous for a car mode name of Volkswagen by taking into consideration of the facts that the Volkswagen Polo has been continuously imported to Japan since 1982 and ranked in the top 5 of new imported automobile registrations for the past decade.

In the meantime, the Board found “POLO” and “Car-pollo” are totally dissimilar from visual, sound and conceptual points of view. Regarding opponent’s allegation the Board stated the term “Car” isn’t a usual word to indicate ‘wheel barrows; airplanes; vessels; bicycles; electric bicycles’ of class 12. From the produced evidence, there does not exist any circumstance to admit the term “pollo” shall be conceived as a dominant portion of opposed mark in fact. If so, it looks rather appropriate to consider relevant consumers would grasp opposed mark in its entirety.

Given a lower degree of similarity between both marks and lack of originality for the term “POLO”, which means a game played on horseback between two teams, each of four players, the Board also negated a likelihood of confusion between “POLO” and “Car-pollo” even when opposed mark is used on car video recorders; batteries for vehicles; battery charging devices for motor vehicles; electric locks for vehicles, and car-related services.

Based on the foregoing, the Board dismissed opposition and allowed “Car-pollo” to survive.

V&W is unlikely to cause confusion with VW emblem

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In a recent trademark opposition involving the circular Volkswagen logo, the Opposition Board of Japan Patent Office (JPO) decided that famous VW emblem is entirely dissimilar to, or unlikely to cause confusion with, the word mark “V&W” in standard character when used on retail services for automobiles [Opposition Case no. 2017-900009].

Trademark opposition

German car giant Volkswagen AG filed an opposition against TM registration no. 5888513 for word mark “V&W” written in standard character (Opposed mark) on the grounds that Opposed mark violates Article 4(1)(xi), 4(1)(xv) and 8(1) of the Trademark Law based on senior trademark registrations for the VW emblems and a word mark “VW”.
The opposed mark designates retail services or wholesale services for automobiles and various other goods in class 35.

Volkswagen argued Opposed mark gives rise to a pronunciation of “vi: dʌb·l·juː” by omitting “&” since the prevalent symbol representing a word of “AND” is just to connect “V” and “W”, and relevant traders and consumers are prone to omit the symbol in pronouncing the entire mark in light of transactional customs at present. If so, Opposed mark is deemed similar to the VW emblem as well as “VW” in visual, phonetical and conceptual point of view.

Besides, the VW emblem has acquired substantial popularity and reputation as a source indicator of famous automobile maker, Volkswagen. Thus, it is highly likely that relevant traders and consumers confuse the source of retail service for automobiles and its parts using Opposed mark “V&W” with opponent or a business entity systematically or economically connected with the opponent.

 

Board decision

The Board admitted the VW emblem has become famous for a source indicator of opponent by taking into consideration of the facts that opponent’s cars with the VW emblem have been continuously imported to Japan since 1978 at the latest and ranked in the top 3 of new imported automobile registrations for the past three years.

In the meantime, the Board denied high awareness of the word mark “VW” as a source indicator of opponent. A mere definition of VW to indicate the opponent in a dictionary is insufficient since the term is often seen in conjunction with corporation name “Volkswagen” in newspaper, magazines and newsarticle on a website.

In the assessment of trademark similarity, the Board concluded that “V&W” is obviously dissimilar to the VW emblem and “VW” in appearance, pronunciation and meaning. Due to substantial distinction between the marks, relevant traders and consumers are less likely to confuse or associate “V&W” with opponent and any business entity systematically or economically connected with opponent.

Based on the foregoing, the Board dismissed opposition and allowed “V&W” to survive.

It is noteworthy that a mark consisting of two alphabetical letters written in a plain font design is considered less distinctive in Japan. In this respect, IR no. 1272004 for the word mark “VW” did not function to broadly protect the VW emblem in favor of Volkswagen.