In a recent trademark opposition, the Opposition Board of Japan Patent Office (JPO) dismissed an opposition filed by BACARDI & COMPANY LIMITED, one of the largest wine and spirits groups in the world, famous for Bacardi rum locally produced in the Bahamas, who alleged the opposed mark is confusingly similar to Bacardi’s iconic bat logo. [Opposition case no. 2016-900384]
Bat design dispute
The opposed mark consisting of the bat design colored in pink and two terms of “eros” and “energy liqueur” designates the goods of alcoholic beverages, whisky, wines, spirits, liquors in class 33.
Bacardi alleged visual features of the bat design depicted in the opposed mark is confusingly similar to senior trademark registrations for Bacardi bat logo effectively registered in Japan based on Article 4(1)(xi) of the Trademark Law.
According to the allegation, both depict a bat with wings spread in symmetrical appearance. If so, it gives rise to an impression in the mind of consumers that both marks are remarkably similar and from the same origin regardless of trivial difference in detail depiction since average consumers are unlikely to memorize and distinguish details of figurative elements in selecting his desired goods recently.
The Board concluded in the assessment of trademark similarity that both marks are distinctively different on the grounds that outer end of winds is on a level with bat head in the opposed mark. In the meantime, Bacardi bat logo depicts outer end of winds under the tail. Bacardi bat faces to the right or left contrary to the opposed mark facing to the front. Besides, the opposed mark gives rise to a meaning and pronunciation of pink bat.
Accordingly, it should be decided that both marks are distinctively dissimilar in visual, phonetical and conceptual point of view.
MASAKI MIKAMI, Attorney at IP Law – Founder of MARKS IP LAW FIRM