The Opposition Board of JPO decided two figurative marks depicting Pegasus are deemed dissimilar from phonetic, conceptual and visual point of view and dismissed an opposition filed by ETRO S.P.A. [Opposition no. 2014-900325].
Opposition by ETRO
ETRO disputed the opposed mark should be cancelled based on Article 4(1)xi of the Trademark Law due to similarity to ETRO’s famous Pegasus emblem (Opponent mark).
In an opposition brief, ETRO alleged both marks are considered confusingly similar in appearance on the grounds that both marks depict an image of Pegasus getting up on hind legs in silhouette. Besides, they are confusing in concept as well since both marks give rise to a meaning of Pegasus in the mind of consumers. Consequently, the opposed mark is deemed similar to famous Pegasus emblem.
In the meantime, the Opposition Board concluded both marks are dissimilar contrary to ETRO’s allegation.
With respect to concept, it becomes usual to depict Pegasus in different posture and style. A mere fact that both marks share same image of Pegasus is insufficient to determine visual aspect of respective mark by taking into consideration of circumstance that Pegasus is legendary creatures as well. Thus, it is not permissible to admit both marks simply give rise to a meaning of Pegasus. Rather, they should respectively be considered a mark having no specific meaning at all.
Regarding appearance, obviously there exists difference in depicting Pegasus. Pegasus in the opposed mark gets up on hind legs. Meanwhile, the opponent mark apparently is galloping. Such difference produces distinctive impression in the mind of consumers. Difference in direction and detail depicting of Pegasus should not be neglected.
As a conclusion, the opposed mark is deemed dissimilar to famous Pegasus emblem of ETRO.
MASAKI MIKAMI, Attorney at IP Law (JAPAN) – MARKS IP LAW FIRM