In a recent trademark decision, the Opposition Board of Japan Patent Office (JPO) dismissed an opposition against TM Reg. no. 6104642 for word mark ‘AGUA MIGUEL’ filed by Philippines-based San Miguel Brewing International Ltd. who argued a likelihood of confusion with its famous beer brand ‘San Miguel’.
[Opposition case no. 2019-900077, Gazette issued on December 27, 2019]
Opposed mark – AGUA MIGUEL
Opposed mark ‘AGUA MIGUEL’ written in standard character was filed in the name of NIPPON BEER CO., LTD., a Japanese importer and wholesaler of beers and beverage from abroad.
The mark was filed to JPO on March 29, 2018 and, without confronting with office action from the JPO examiner, published for registration on January 8, 2019 over the goods of “mineral water” in class 32.
Opposition by San Miguel
On March 8, 2019, before the lapse of a two-months opposition period, San Miguel Brewing International Ltd. filed an opposition. In the opposition, San Miguel contended opposed mark shall be cancelled based on Article 4(1)(xv) of the Trademark Law.
Article 4(1)(xv) prohibits to register a trademark which is likely to cause confusion with a business of other entity.
Likelihood of confusion is a key criteria when assessing the similarity of trademarks. To establish whether there is likelihood of confusion, the visual, phonetic and conceptual similarity will be assessed as well as the goods and/or services involved. This assessment is based on the overall impression given by those marks, account being taken, in particular, of their distinctive and dominant components. A low degree of similarity between the goods or services may be offset by a high degree of similarity between the marks, and vice versa.
San Miguel argued opposed mark is likely to cause confusion with opponent’s beer brand ‘San Miguel’, which occupies 90% of the market share in Philippines and its reputation has been widely known in Asian countries including Japan. Opposed mark consists of terms ‘AGUA’ and ‘MIGUEL’. ‘AGUA’ is less distinctive in relation to mineral water since it means water in Spanish. If so, it is apparent that the portion of ‘MIGUEL’ relatively plays a dominant role of source indicator of opposed mark. Likewise, presumably relevant consumers would pay more attention to the term ‘Miguel’ from famous beer brand. In view of close association between mineral water and beers and resemblance between the marks, it is undeniable that relevant consumers are likely to confuse or misconceive opposed mark with San Miguel or any business entity systematically or economically connected with opponent.
The Opposition Board found a low degree of similarity between ‘San Miguel’ and ‘AGUA MIGUEL’ from visual, phonetic and conceptual points of view. Even if the term ‘AGUA’ means water in Spanish, relevant consumers with an ordinary care at the sight of opposed mark would be unlikely to see the portion of ‘MIGUEL’ as a dominant part, but rather gasp opposed mark in its entirety.
The Board found a certain degree of popularity and reputation of beer brand ‘San Miguel’ among traders and beer drinkers, but, to my surprise, the Board questioned if the beer has been widely known among general consumers regardless of continuous domestic use of the mark in commerce since 1972, by stating that produced materials have no reference to actual sales performance in Japan. A mare fact of continuous use for the last 47 years is insufficient and non-objective to demonstrate famousness of the San Miguel beer brand in Japan.
Provided that opponent failed to demonstrate ‘San Miguel’ has been well-known for opponent’s beer among relevant consumers, the Board held that opposed mark is unlikely to cause confuse with opponent or any business entity systematically or economically connected with San Miguel in view of a remote resemblance between both marks. Thus, opposed mark shall not be revocable to Article 4(1)(xv) of the Trademark Law and dismissed the opposition entirely.
Masaki MIKAMI, Attorney at IP LAW – Founder of MARKS IP LAW FIRM