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.
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.
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
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