In a recent administrative decision to trademark opposition filed by Facebook Incorporated., the Opposition Board of Japan Patent Office (JPO) declared cancellation of trademark registration no. 5927001 due to a likelihood of confusion with well-known Facebook “F” logo mark.
[Opposition case no. 2017-900174, Gazette issue date: June 29, 2018]
Opposed mark – fresh bank
Opposed mark (trademark registration no. 5927001) just consists of a term “fresh bank” provided that the initial “f” letter is neither depicted inside the blue rounded square, nor colored in white (see below).
The mark was filed on August 5, 2016 by designating goods and services in class nos. 6, 11, 12, 39 and 42. Inter alia, class 42 covers services relating to computer software.
Opposition by Facebook
During a two-months opposition period after registration, Facebook Incorporated, the world’s largest online social networking service company, filed an opposition, stating that relevant consumers are likely to confuse or misconceive opposed mark with Facebook or any business entity systematically or economically connected with Facebook due to high similarity between Facebook “F” logo (see below) and the initial “f” device of opposed mark.
Facebook Inc. sought to retroactively cancel opposed mark in relation to computer software services in class 42 based on Article 4(1)(xv) of the Trademark Law.
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.
The Opposition Board admitted a high degree of popularity and reputation of Facebook “F” logo as a source indicator of opponent among general consumers.
Besides, the Board pointed out that the initial “f” device would be eye-catching from overall configuration of opposed mark. Since the “f” letter is depicted in blue round square and colored in white as well as Facebook “F” logo, opposed mark shall be considered closely similar as a whole by taking account of high reputation of Facebook.
Based on the foregoing, the Board held that relevant consumers of computer software services are likely to pay attention to the initial “f” letter at the sight of opposed mark and associate it with opponent or any business entity systematically or economically connected with Facebook. Thus, opposed mark shall be cancelled in violation of Article 4(1)(xv) of the Trademark Law.
Masaki MIKAMI, Attorney at IP Law – Founder of MARKS IP LAW FIRM