The Opposition Board of the Japan Patent Office (JPO) decided in favor of Google LLC to retroactively cancel trademark registration no. 6008625 for word mark “ANDROID HOSPITAL” due to a likelihood of confusion with Google’s famous trademark “ANDROID”.
[Opposition case no. 2018-900065, Gazette issued on November 29, 2019]
SMAHOSPOTAL Co., Ltd., a Japanese business entity running smartphone repair shops, filed a trademark application for word mark “ANDROID HOSPITAL” written in Japanese Katakana character (see below) on smartphone repair or maintenance service in class 37 to the JPO on May 10, 2017.
Opposed mark was published for registration on January 30, 2018 without confronting with office action from the JPO examiner.
Opposition by Google LLC
On March 14, 2018, Google LLC filed an opposition against “ANDROID HOSPITAL”.
Google argued that opposed mark shall be cancelled in violation of Article 4(1)(xv) of the Trademark Law on the grounds that relevant consumers would confuse or associate opposed mark, containing Google’s trademark “ANDROID” famous for Google’s Linux-based open source operating system for mobile devices, with opponent when used on the designated service in question.
Article 4(1)(xv) prohibits to register a trademark which is likely to cause confusion with a business of other entity.
The Board admitted that ANDROID has acquired a high degree of popularity and reputation as a source indicator of Google’s operating system for mobile devices at the time of both initial filing and registration of opposed mark.
In the assessment of similarity, the Board found it is likely that the average consumers would pay a considerable attention to the term “ANDROID” of opposed mark from its configuration because the initial portion of a mark is better remembered and generally considered to be the dominant portion of the mark. If so, a certain degree of similarity exists between two marks.
Even though “ANDROID” is a dictionary word having a meaning of ‘a robot with a human appearance’, it would anything but mean to negate novelty of the term in relation to OS for mobile devices. Besides, the designated service in question and OS for mobile devices are both related to smartphone. Given ‘smartphone repair or maintenance service’ includes ‘repair and maintenance service for Android smartphones’ as a matter of course and these are purchased or consumed by the same consumers (the general public), the Board considers opponent business and the service in question are closely associated.
Based on the foregoing, the Board concluded that, from totality of circumstances and evidences, relevant traders and consumers are likely to confuse or misconceive a source of opposed mark used in relation to the service (class 37) with Google or any entity systematically or economically connected with the opponent and declared cancellation based on Article 4(1)(xv).
Masaki MIKAMI, Attorney at IP LAW – Founder of MARKS IP LAW FIRM