SISLEY, French luxury beauty brand, failed in a trademark opposition against the mark “SISLOY”

In a recent decision, the Opposition Board of the Japan Patent Office dismissed an opposition filed by CFUB Sisley, a French producer of cosmetics and fragrances, founded in 1976 against the word mark “SISLOY” written in a standard character.
[Opposition case no. 2016-900379]

Opposed mark

Mark in dispute, consisting of a word “SISLOY” written in a standard character, TM Registration no. 5878006, was applied for registration in March 11, 2016 in the name of U STYLE Co., Ltd., a Japanese legal entity, by designating goods of cosmetics, perfumes, creams, soaps etc. in class 3. Based on the results of substantive examination by the JPO, the mark was granted for protection without any refusal or oppositions on August 4, 2016 and subsequently published for opposition on October 4, 2016.


Trademark opposition claim by Sisley

Sisley filed an opposition and demanded the JPO to cancel the oppose mark in violation of Article 4(1)(xv) of the Trademark Law.

Article 4(1)(xv) is a provision to prohibit any trademark which is likely to cause confusion with a third party or its business from being registered for protection.

Sisley cited a registered “SISLEY” trademark (TM Registration no. 1873095) which consists of alphabetical letters and Japanese katakana letters to pronounce Sisley, as well as a non-registered “sisley” trademark solely written in lower-case alphabetical letters (herein after collectively referred to as “SISLEY trademarks”).

Sisley alleged that SISLEY trademarks has acquired a high degree of popularity and reputation among relevant traders and consumers of cosmetics worldwide.

According to the evidence, annual sales in Japan amounts to about 2 billion yen continuously. Sisley occupies 1% market share in Japan

To bolster the argument, Sisley referred to the past favorable decision in an opposition against a word mark of “SYSLEY” in which the JPO admitted famousness of “SISLEY” as a source indicator of skin care cosmetics.

Based on SISLEY trademarks known for French luxury beauty brand, Sisley argued that relevant traders and consumers are likely to conceive Sisley at the sight of goods with opposed mark, or confuse the goods comes from any business entity economically or systematically associated with Sisley in error by taking into consideration of close similarity between “SISLEY” and “SISLOY”.


Board decision

The Opposition Board considered the evidence is insufficient and less objective to convince the Board of the fame of SISLEY trademarks in the marketplace of Japan.

Due to the lack of objective evidence, the Board denied a high degree of popularity and reputation of SISLEY trademarks as a source indicator of skin care cosmetics in view of a trivial market share.

Regarding the past opposition decision to admit famousness of the mark “SISLEY”, the Board held the decision was irrelevant on the case because it never made things clear whether SISLEY trademarks still maintained such famousness at the time of application filing of the opposed mark, given eight years already passed since then.

Besides, the Board concluded that finding the difference of “O” and “E” at fifth letter is not negligible, the oppose mark and SISLEY trademarks are distinctively dissimilar in the aspect of appearance, pronunciation and meaning.

Based on the foregoing, it should decide that the relevant traders and consumers are unlikely to confuse or misconceive the opposed mark with SISLEY trademarks even when used on cosmetics and other designated goods


Masaki MIKAMI, Attorney at IP LAW – Founder of MARKS IP LAW FIRM

Who shall be a legitimate owner of smiley face mark?

In a lawsuit disputing adequacy of decision by the JPO Appeal Board (Appeal case no. 2016-15097) to refuse the applied mark composed of a name of the earliest known designer of the smiley, “Harvey Ball”, and the Smiley Face (TM2015-74154, class 25) due to a conflict with cited senior registrations no.1 to 3, the IP High Court sustained the decision being appealed.[Case no. Heisei 29 (Gyo-ke) 10034, Court decision date: August 8, 2017]

The applicant, a Japanese legal entity authorized to manage intellectual property of The Harvey Ball World Smile Foundation, argued dissimilarity of the smiley design and alleged that the design becomes less distinctive as a source indicator, but just a stylized representation of a smiling humanoid face on the grounds that similar designs have been used for many years and 7,000 marks containing the design are/were registered.
Besides, taking account of a high degree of popularity as the earliest known designer, the word element of “Harvey Ball” shall function dominantly as a source indicator in applied mark. If so, applied mark shall be dissimilar to cited registrations.

But the Court denied them entirely based on following reasons.

  • Court found the smiley design representing a smiling human face in a simple and symbolic manner is sufficiently distinctive. No adverse evidence is produced.
  • Given the word element of “Harvey Ball” depicted slightly over the Smiley Face is written in a common font design and a small font size, most impressive portion of the applied mark shall be the Smiley Face from appearance.
  • In view of visual impression, both the Smiley Face of applied mark and cited registrations can be easily seen to depict a smiling human face in a simple and symbolic manner. Accordingly, both marks are deemed similar.
  • Even if cited registrations happened to be associated with the Smiley Face created by Harvey Ball, it would not affect the decision. Likewise, the word element of “Harvey Ball” in applied mark has less influence to the decision as well.

The Court decision gives us a lesson that high popularity of the Smiley Face designer will not guarantee the position of a trademark owner to the design if it becomes a generic symbol as a result of widespread, common use in the marketplace.

Masaki MIKAMI, Attorney at IP Law – Founder of MARKS IP LAW FIRM

JPO cancelled “UMBROID” due to a likelihood of confusion with an English sporting goods brand “Umbro”

The Opposition Board of Japan Patent Office (JPO) decided to cancel trademark registration no. 5861532 for a word mark “UNBROID” written in standard characters covering various goods of class 18 based on a high degree of popularity of “Umbro”, similarity of marks, and close association between goods.

Mark in question

Opposed mark “UMBROID” was filed on January 6, 2016 by designating the goods of “industrial packaging containers of leather; bags and the like; pouches and the like; vanity cases; umbrellas and their parts; handbag frames; purse frames; horseshoes; walking sticks; canes; metal parts of canes and walking-sticks; handles for canes and walking sticks; clothing for domestic pets” in class 18 under the name of YOUM COMPANY CO., Ltd. As a result of substantive examination by the JPO examiner, the mark was registered smoothly without any objections on June 24, 2016 and published for opposition on July 26.

DESCENTE LTD., a Japanese sporting goods trading company, as an assignee of Japanese trademark rights pertinent to “UMBRO” from Umbro International Limited, filed an opposition in violation of Article 4(1)(xv) of the Trademark Law.

Article 4(1)(xv)

No trademark shall be registered if the trademark is likely to cause confusion in connection with the goods or services pertaining to a business of another person.

Board decision

The Board admitted a high degree of popularity and reputation of “Umbro” as a source indicator of sportswear, sports shoes and sports bags distributed by the opponent among soccer fans and apparel consumers.

In assessing similarity of marks, the Board considered the opposed mark consists of a combination of two words, “UMBRO” and “ID”. Given “ID” is a commonly used term to mean any means of identification, it is less likely to function as a source indicator nowadays when used in commerce. If so, relevant traders and consumers at the sight of opposed mark would impressively pay attention to a portion of “UMBRO” and associate the mark with a famous sports brand. Therefore, both marks are deemed substantially similar, Board concluded.

Besides, the goods in question are mainly purchased by fashion conscious consumers. Consumers of sportswear, sports shoes and sports bags are also of strong interest to sports and fashion in general. Given both goods are substantially consumed by same entities, it should be considered that they are closely associated.

Based on the foregoing, the Board found a likelihood of confusion between “UMBROID” and “Umbro” when used on the goods in question, and thus the opposed mark was registered in error in violation of Article 4(1)(xv). [Opposition case no. 2016-900307]


Masaki MIKAMI, Attorney at IP Law – Founder of MARKS IP LAW FIRM





“AI inside” is unlikely to be associated with INTEL

In a recent decision, the Opposition Board of Japan Patent Office (JPO) decided to dismiss the trademark opposition filed by Intel Corporation to mark “AI inside”.

“AI inside”

The mark in dispute, consisting of a word mark “AI inside” in standard characters, was filed on March 28, 2016 in the name of AI inside Kabushiki Kaisha, a Japanese corporation, by designating computer programs and electronic devices in class 9, and providing computer programs on data networks, software as a service [SaaS] in class 42. JPO granted to protect the mark without announcing any refusal ground as a result of substantive examination and published for registration on October 18, 2016.

Intel opposes to trademark registration

Intel Corporation, famous for the world’s largest semiconductor company, filed an opposition to the mark “AI inside” and requested the Board to cancel its registration due to violation of Article 4(1)(xi), (xv) and (xix) of the Japan Trademark Law retroactively.

“Intel inside”

In the opposition, Intel cited following senior trademark registrations containing a term of “inside”.

Series of “INSIDE” marks

Intel claimed the mark “AI inside” should be deemed confusingly similar to “Intel INSIDE” and other “INSIDE” marks cited by opponent since opposed mark allocates the term “inside” subsequent to other word as well. Given the cited marks respectively become famous for source indicator of opponent or its products, relevant traders and consumers are likely to confuse or misconceive both marks are from the same business entity. Besides, presumably applicant must have applied the opposed mark by knowing of Intel Corporation and cited marks in advance. If so, it is undeniable that applicant maliciously aimed to tarnish or free-ride on the reputation and goodwill of the opponent by adopting a similar mark.

Board decision

The Opposition Board admitted that both terms of “Intel” and “intel inside” have become famous to indicate opponent or his products among relevant traders and consumers, however, denied a certain degree of recognition to other cited marks relating to “INSIDE” owned by opponent based on the facts that opponent failed to produce evidences to demonstrate actual use of mark allocating “INSIDE” subsequent to a term other than “intel” and that the term “inside” is a generic term used to mean an inner side.

In the assessment of trademark similarity, the Board concluded opposed mark is evidently dissimilar to the citations from visual, phonetic and conceptual aspect, partly because the term of “AI” is known for an abbreviation of Artificial Intelligence. It is quite unlikely, the Board found, that famous mark “Intel inside” gives rise to a sound of “inside” in the mind of relevant traders and consumers by neglecting prominent mark “Intel”. If so, the same configuration allocating “INSIDE” subsequent to other term is insufficient to take sides with opponent’s allegation that relevant consumers conceive the opposed mark as a series of opponent mark. Given dissimilarity of both marks and unlikelihood of confusion due to a low degree of recognition to the cited “INSIDE” marks other than “Intel inside”, applicant should not be blamed for malicious intention in registering the opposed mark accordingly.

Based on the foregoing, the Board dismissed the opposition entirely and granted trademark registration no. 5881845 for the mark “AI inside” in class 9 and 42.
[Opposition case no. 2016-900399]

MASAKI MIKAMI, Attorney  at IP Law – Founder of MARKS IP LAW FIRM