Japan Patent Office (JPO) dismissed an opposition by Calvin Klein Trademark Trust, a well-known name in fashion, who claimed “CK” device mark is likely to cause confusion with Calvin Klein when used on various designated goods in class 16 and 21. [Opposition case no. 2019-900068]
Opposed mark, TM Registration no. 6102531, was filed in the name of Crecia Kasuga Co., Ltd., having its head office in Fuji city located at the southern base of Mt. Fuji, on February 22, 2018.
Opposed mark, consisting of two alphabetical letters “CK” and a device looking like Mt. Fuji or paper roll (see below), designates toilet paper, tissue paper, kitchen paper and other paper products for home use in class 16 and cleaning tools and washing utensils in class 21.
JPO granted to register opposed mark and published for registration on December 25, 2018.
On February 22, 2019, Calvin Klein Trademark Trust filed an opposition against the CK device mark.
Calvin Klein argued that opposed mark is subject to cancellation in violation of Article 4(1)(xv) of the Trademark Law on the grounds that “CK” and “ck” have acquired such fame as a source indicator of famous fashion brand “Calvin Klein” that, upon seeing the opposed mark used on goods in class 16 and 21, the average consumer would be led to infer the existence of a connection to the owner of the famous brand.
The Opposition Board pointed out that, from the produced evidences, “CK” has been ordinarily used in conjunction with or adjacent to ‘Calvin Klein’ as well as “ck” and thus questioned whether “CK” and “ck” have become famous in itself as a source indicator of Calvin Klein among relevant traders and consumers at the time of both the application and the grant of registration of Opposed mark.
Besides, two alphabetical letters are deemed descriptive and unregistrable under the Japan Trademark Law. If so, unless opponent is successful in demonstrating acquired distinctiveness of “CK” or “ck”, a mere coincidence of two alphabetical letters is insufficient to find similarity between opposed mark and opponent’s marks.
Based on the foregoing, the Board concluded relevant traders and consumers are unlikely to confuse or associate the goods using opposed mark with opponent or any business entity economically or systematically connected with Calvin Klein. Therefore, opposed mark shall not be cancelled due to Article 4(1)(xv) of the Trademark Law.
Masaki MIKAMI, Attorney at IP LAW – Founder of MARKS IP LAW FIRM