The Japan Patent Office (JPO) dismissed a trademark opposition claimed by the U.S. tech giant, Apple Inc. against trademark registration no. 6099794 for word mark “EYE PHONE” in class 9 by finding less likelihood of confusion with Apple “iPhone”.
[Opposition case no. 2019-900030, Gazette issue date: September 27, 2019]
Opposed mark, a word mark “EYE PHONE” in standard character, was filed by a Japanese business entity, NOVELTY EYE-WEAR Inc., on February 26, 2018 by designating ‘spectacles [eyeglasses and goggles]’ in class 9.
The JPO admitted registration on November 22, 2018 and published for registration on December 18, 2018.
To oppose against registration within a statutory period of two months counting from the publication date, Apple Inc. filed an opposition on January 28, 2019.
In the opposition brief, Apple Inc. asserted the opposed mark shall be cancelled in violation of Article 4(1)(vii), (xv) and (xix) of the Japan Trademark Law given a remarkable reputation of opponent mark “iPhone” to indicate opponent’s smart phones currently holding a 44.1% market share in Japan and close resemblance between “iPhone” and “EYE PHONE”.
Apple Inc. argued opposed mark “EYE PHONE” has the same pronunciation with “iPhone” and gives a similar impression in appearance. If so, both marks shall be confusingly similar. Besides, the goods in question are closely related to smart phones since smartphone users get to wear specific glasses for smartphone to block blue light. Recently, smart glasses, wearable device that brings with suitable technology a computer screen/display in front of a person’s eye, have become a hot topic.
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 consumers.
The Opposition Board admitted a remarkable degree of reputation and popularity of opponent trademark “iPhone” in connection with smart phones based on the produced evidences boasting the top market share consecutively for the past seven years in Japan.
Meanwhile, the Board found a low degree of originality of “iPhone” given a combination of alphabetical letter “i” and descriptive term “Phone” in relation to smartphones.
In the assessment of mark, the Board held “EYE PHONE” and “iPhone” are dissimilar even if both marks have the same pronunciation since they are sufficiently distinguishable from visual and conceptual point of view. Also, the Board negated close relation between glasses and smartphones in view of its nature, purpose, usage, distribution channel and consumers.
If so, it is unlikely that the consumers confuse or misconceive a source of opposed mark with Apple Inc. or any entity systematically or economically connected with opponent.
Based on the foregoing, the Board decided opposed mark shall not be cancelled on the grounds of Article 4(1)(vii), (xv) and (xix).
Masaki MIKAMI, Attorney at IP LAW – Founder of MARKS IP LAW FIRM