In a recent Japan trademark opposition decision, the Opposition Board of JPO ruled that a word mark “METALICA” (Opposed mark) is unlikely to confuse with “METALLICA” well known for an American heavy metal band in connection with goods of class 9 and 14. [Opposition case no. 2016-900260]
Opposed mark, solely consisting of a word “METALICA” written in a plain alphabetical letter, was filed on June 25, 2015 in the name of LG Electronics Incorporated, a Korean corporation, by designating various electronics, such as, smart phone, cell phones, personal digital appliance (PDA), audio stereo, music players of class 9 and watch, personal ornaments of class 14. JPO granted to register the mark on May 20, 2016 under TM registration no. 5851357.
The Japan Trademark Law provides that anyone is entitled to file an opposition against new trademark registration within two months from the publication date of gazette under article of 43bis.
METALLICA filed an opposition against the mark “METALICA” by citing IR no. 858989 for a word mark of “METALLICA” covering goods of class 3, 6, 9, 14, 16, 25, and asserted to cancel Opposed mark based on article 4(1)(viii) and 4(1)(xv) of the Trademark Law.
Article 4(1)(viii) prohibits to register a mark containing the portrait of another person, or the name, famous pseudonym, professional name or pen name of another person, or famous abbreviation thereof (except those the registration of which has been approved by the person concerned). The article aims to protect personal right of living person or legal entity.
Opponent, METALLICA, a partnership corporation established by members of the band, alleged that Opposed mark “METALICA” can be conceived of the opponent or US famous heavy metal band due to identical appearance and pronunciation with “METALLICA”.
The Board dismissed the allegation of Article 4(1)(viii) by stating that “METALICA” does not contain “METALLICA” in a precise and strict sense.
Article 4(1)(xv) prohibits to register a mark which is likely to cause confusion in connection with the goods or services pertaining to a business of another person.
Opponent alleged relevant consumers are likely to confuse or misconceive goods with Opposed mark “METALICA” as goods from opponent in view of similarity of both marks and substantial reputation acquired among rock music fanatics.
The Board admits widespread reputation of “METALLICA” among traders and consumers relating to goods and service of rock music, such as music CD and music live performance. In the meantime, famousness of the mark “METALLICA” on any goods and service unrelated to music was denied.
In the assessment of similarity, the Board admitted both marks are deemed similar in appearance, sound, concept. However, the goods designated under Opposed mark are remotely associated with T-shirts, caps, posters, badges, music videos and goods or service related to American rock music of METALLICA’s interest.
Based on the forgoing, the Board concluded that “METALICA” is unlikely to confuse or misconceive with “METALLICA” in connection with goods of class 9 and 14.
Masaki MIKAMI, Attorney at IP Law – Founder of MARKS IP LAW FIRM