The Appeal Board of Japan Patent Office (JPO) held “SNOOPY COUNSELOR” is unlikely to cause confusion with “SNOOPY”, one of the most iconic and beloved comic-strip character by Charles M. Schulz, the pet beagle of the hapless Peanuts character Charlie Brown when used in connection with psychological counseling services.
[Appeal case no. 2019-8241, Gazette issued date: November 29, 2019]
Veriteworks Inc., a Japanese company, filed a trademark application for work mark “SNOOPY COUNSELOR” written in Japanese Katakana character (see below) by designating ‘psychological counseling instruction; arranging, conducting and organization of counseling seminars’ (class 41) and ‘psychological counseling’ (class 44) to the JPO on August 14, 2018.
Refusal by JPO examiner
The JPO examiner refused the mark under Article 4(1)(xv) of the Japan Trademark Law by stating that the mark contains a term “SNOOPY” which has been famous as a fictional character, the pet beagle of Charlie Brown in the comic strip Peanuts by Charles M. Schulz. The character has long been licensed for use on merchandise by Peanuts Worldwide LLC and considerable licensed goods other than comics have been distributed in Japan by its licensee, Sony Creative Products Inc. so far.
If so, relevant consumers and traders are likely to connect and associate the mark with services from Peanuts Worldwide LLC or its licensee and thus confuse its source of origin.
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.
To contend, applicant filed an appeal against the refusal on June 20, 2019.
Appeal Board’s decision
The Appeal Board reversed the examiner’s refusal and admitted applied mark “SNOOPY COUNSELOR” to registration by finding that:
- It is unquestionable that “SNOOPY” has been well-known for a character, the pet beagle of Charlie Brown in the comic strip Peanuts by Charles M. Schulz. However, the Board has an opinion that it is unclear from the produced materials and information whether relevant consumers connect or associate the licensed goods and services pertinent to “SNOOPY” with any specific business entity.
- From appearance, the term “SNOOPY” of applied mark can be perceived as a dominant portion given “COUNSELOR” lacks distinctiveness in relation to the designated services in class 41 and 44. If so, both marks remarkably resemble from visual and phonetic aspects.
- Since it is also unknown whether Peanuts Worldwide LLC is likely to engage in its licensing business on psychological counseling, the Board considers relatedness with the services in question is incomparable and relatively low.
- Provided that relevant consumers are unlikely to perceive the “SNOOPY” as a source indicator of Peanuts Worldwide LLC or its licensees, even if both marks resemble, the Board finds applied mark “SNOOPY COUNSELOR” would not cause confusion with goods or services from Peanuts Worldwide LLC or its licensees.
It is noteworthy that the JPO denied a likelihood of confusion between “SNOOPY COUNSELOR” and “SNOOPY” regardless of finding famousness of “SNOOPY” as an iconic and beloved comic-strip character.
Masaki MIKAMI, Attorney at IP LAW – Founder of MARKS IP LAW FIRM