The Opposition Board of JPO declared cancellation of trademark registration No. 5778852 for the mark composed of a prancing horse design and term “Cavallino Lampanti” (Opposed mark) covering the goods in class 18 and 25 on the grounds that Opposed mark was registered with malicious intent to resemble a renowned horse emblem of opponent, Ferrari S.p.A., known for “cavallino rampante”, and free ride remarkable reputation bestowed on the opponent marks. [Opposition Case No. 2015-900335]

In the opposition decision, the Board did not clearly admit similarity of the horse design depicted in both marks regardless of conceptual similarity, however, concluded the term “Cavallino Lampanti” of Opposed mark and a name “cavallino rampante” of Opponent mark are highly similar in both appearance and sound.

Besides, admittedly Opponent marks have been well known among general public in Italy even prior to an application date of Opposed mark. Opponent has promoted several goods belonging to class 18 and 25 e.g. bags, necktie, T-shirts, wallets, shoes to Japanese customers as well.

Based on the above facts, presumably an applicant of Opposed mark must have been acquainted with such circumstances and Opponent’s business. If so, it is not deniable to conclude that Opposed mark was filed with malicious intent to harm Opponent business and free ride valuable reputation bestowed on famous brand.

As a conclusion, the Board cancelled Opposed mark based on Article 4 (1) (xix) of the Trademark Law.

 

Article 4(1)(xix)

“No trademark shall be registered if the trademark is identical with, or similar to, a trademark which is well known among consumers in Japan or abroad as that indicating goods or services pertaining to a business of another person, if such trademark is used for unfair purposes (referring to the purpose of gaining unfair profits, the purpose of causing damage to the other person, or any other unfair purposes, the same shall apply hereinafter).”

 

Article 4(1)(xix) aims to prevent unauthorized entities from registering a well-known mark in foreign country even if the mark itself has not yet acquired high recognition in Japan to the extent relevant domestic consumers become aware of such situation in foreign country. The article plays a significant role in attacking a fraudulent trademark registration where it designates goods or services remotely associated with business of a famous brand owner.

Masaki MIKAMI – Attorney at IP Law (Japan)

MARKS IP LAW FIRM http://www.marks-iplaw.jp/