Toyota vs. Renault: Battle of the Brands

In a trademark opposition between Toyota Motor Corporation (JAPAN) and Renault SAS (FRANCE), the Opposition Board of Japan Patent Office (JPO) dismissed the opposition against trademark registration no. 5932825 for word mark “WIGO”.

WIGO vs. TWINGO

Renault opposed to register the word mark “WIGO” designating automobiles in class 12 by Toyota based on Article 4(1)(xi), (xv) of the Trademark Law by citing his senior trademark registration no. 2710075 for Renault’s car brand “TWINGO”.

TOYOTA WIGO is mini hatchback from Toyota.

RENAULT TWINGO is small city car from Renault.

Assessment of trademark similarity

Article 4(1)(xi) is a provision to refrain from registering a junior mark which is deemed identical with, or similar to, any senior registered mark.

In assessing trademark similarity under Article 4(1)(xi), the Board considered opposed mark “WIGO” is deemed a coined word since it does not give rise to any specific meaning as well as “TWINGO”. Besides, both marks are evidently distinguishable in appearance and pronunciation. If so, the Board found that it is groundless to conclude “WIGO” is similar to “TWINGO” from visual, phonetic and conceptual aspect.

Likelihood of confusion

Article 4(1)(xv) provides that a mark shall not be registered where it is likely to cause confusion with other business entity’s well-known goods or services, to the benefit of brand owner and users’ benefits.
Theoretically, Article 4(1)(xv) is applicable to the case where a mark in question is deemed dissimilar to well-known brand, but is still likely to cause confusion because of a high degree of popularity and reputation of the brand.

The Board concluded it remains unclear whether Renault TWINGO has become famous in automobiles from totality of the circumstances and evidence.
Provided that TWINGO does not obtain remarkable reputation in relation to automobiles as a source indicator of Renault car, WIGO is unlikely to cause confusion with Renault TWINGO because both marks are considerably dissimilar.
[Opposition case no. 2017-900193]


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

Trademark Dispute ROOT vs ROOTS

The Japan Patent Office (JPO) decided in a trademark opposition that ROOT is dissimilar to ROOTS in appearance, pronunciation and meaning.
[Opposition case no. 2017-900326, Gazette issue date: June 29, 2018]

Opposed mark

Opposed mark consists of the square root design and a word “ROOT” (see below). It was applied for registration on February 9, 2017 by designating bags in class 18 and retail or whole sale services in relation to bags and clothing in class 35.
JPO granted registration in August 4, 2017 (TM registration no. 5969604).

Opposition

Opponent, Roots Corporation, a Canadian business entity, filed an opposition against opposed mark based on a self-owned senior trademark registration no. 5947860 for the work mark “ROOTS” (see above) in class 35 for on-line retail or wholesale services in relation to bags and clothing.

Opponent argued opposed mark shall be canceled in violation of Article 4(1)(xi) of the Trademark Law because “ROOT” and “ROOTS” are confusingly similar.

Article 4(1)(xi) is a provision to refrain from registering a junior mark which is deemed identical with, or similar to, any senior registered mark.

Board decision

The Opposition Board of JPO negated similarity between the ROOT mark and ROOTS, stating that:

“From appearance, both marks are distinguishable since opponent mark does not contain the square root device and “S” in the suffix position. Besides there exist differences in font design and case sensitivity. 
Regarding pronunciation of the marks, opposed mark gives rise to a sound of “ruːt”. In the meantime, opponent mark sounds “ruːts”. Given the short sound of three syllables, a different pronunciation in the suffix position is not in any way ignorable. If so, both marks can be phonetically distinctive. 
Conceptually, opposed mark gives rise to a meaning of the square root. Meanwhile, opponent mark can be perceived as a word to mean the parts of plant that grow under the ground or ancestor. Hence, both marks are distinctive in concept as well.”

Based on the foregoing, the Board concluded that it is unlikely to consider relevant consumers at the sight of opposed mark would connect a word “Root” adjacent to the square root device with opponent mark. Therefore, the Board dismissed opposition and allowed opposed mark to survive.


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

Straight Wings Emblem Trademark Battle

In a recent trademark decision regarding straight wings emblem on automobiles, the Opposition Board of Japan Patent Office (JPO) dismissed an opposition filed by BENTLEY MOTORS LIMITED and ASTON MARTIN LAGONDA LIMITED against trademark registration no. 5962270 for a combined mark consisting of “M78 86” and straight wings device due to unlikelihood of confusion.
[Opposition case no. 2017-900293, Gazette issued date: May 17, 2018]

TM registration no. 5962270

Disputed mark (see below) was applied for registration on December 8, 2016 by designating automobiles and other goods in class 12.

Tsubuyara Productions CO., Ltd, a Japanese company, famous for the creator of Ultraman (Japanese Superhero) is a co-applicant of disputed mark.

A month after the filing, during the Press Conference held at Tokyo Auto Salon 2017, Toyota’s new M78 x 86 concept car was unveiled. Toyota, as a car supplier collaborating with Ultraman, aimed to make people “feel like Ultraman”.

“86” is a name for Toyota sports coupe. “M78” comes from Nebula M78, a home world of Ultraman, thirteen million light years away from the earth.

Disputed mark was created to represent the collaboration between Toyota and Tsuburaya.

Opposition

JPO granted registration of the mark on July 7, 2017.

To oppose the mark, Bentley, the most sought after luxury car brand in the world, and Aston Martin, iconic luxury British sports car manufacturer, filed an opposition on the grounds that disputed mark is likely to cause confusion with opponents’ business due to close resemblance and famousness of opponent mark based on Article 4(1)(x), (xi), (xv), (xix) of the Trademark Law.

Article 4(1)(x) prohibits to register a trademark which is identical with, or similar to, other entity’s well-known mark over goods or services closely related with the entity’s business.
Article 4(1)(xi) is a provision to refrain from registering a junior mark which is deemed identical with, or similar to, any senior registered mark.
Article 4(1)(xv) prohibits to register a trademark which is likely to cause confusion with a business of other entity.
Article 4(1)(xix) prohibits to register a trademark which is identical with, or similar to, other entity’s famous mark, if such trademark is aimed for unfair purposes, e.g. gaining unfair profits, or causing damage to the entity.

Board decision

The Opposition Board admitted a certain degree of popularity and reputation of Opponent emblem as a source indicator of opponent’s business among relevant consumers in the fields of automobiles, however, totally negated similarity of both marks from the perspective of appearance, pronunciation, and concept. Besides, finding that relevant consumers with an ordinary care would pay particular attention to the mark in procuring expensive goods, such as cars, the Board held that a mere graphical resemblance of straight wings is insufficient to find a likelihood of confusion since even opponents are co-existing in peace regardless of the similar straight wings.
Based on the foregoing, the Board concluded that there is no likelihood of confusion between the marks and allowed the “M78 86” straight wings mark valid.


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

First National Trademark Registration in Japan

According to “Annual Report 2018” released by the Japan Patent Office (JPO) on June 28, 2018, total number of trademark application filed to JPO in 2017 was 190,939, increased by 18 % compared to the previous year.

It is currently possible to register a trademark in two routes: designating Japan under the Madrid Protocol (international trademark registration); or, directly filing Japanese trademark application to JPO.

In 2017, the Madrid route increased to 17,328 by 25.2 % compared to the previous year. Direct route increased to 173,611 by 17.3 % as well.

Due to the increase, the period from the filing date to the date of issuing the first notice of examination result, i.e., the first action (FA) pendency, was accordingly getting longer. FA pendency for the previous three years was less than five months (4.1 months in 2014, 4.3 months in 2015, 4.9 months in 2016). In the meantime, the period in 2017 exceeded six months.

Annual Report has reference to first national trademark registration with an aim to look back on long history of the Intellectual Property System in Japan,

First Trademark Act was executed in October 1, 1884, which was 17 years after the Samurai era ended and Japan has driven toward modernization. First national trademark registration (see below) was registered in 1885. The mark was filed in the name of Yuuki Hirai (individual in Kyoto) by designating medicines.


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