The Japan Patent Office (JPO) dismissed a trademark opposition claimed by SOCIETE JAS HENNESSY ET COMPAGNIE against trademark registration no. 6167837 for word mark “INESSY” in class 33 by finding dissimilarity to a world-renowned cognac brand “Hennessy”.
[Opposition case no. 2019-900315, Gazette issued date: July 31, 2020]
SOCIETE JAS HENNESSY ET COMPAGNIE has registered its trademark “Hennessy” over alcoholic beverages of class 33 in Japan since 1983.
Needless to mention, Hennessy is the largest Cognac producer in the world, and a highly regarded brand the world over, the range stretches from VS to XO and beyond. With its headquarters in Cognac, France, the company produces about 40% of smooth liquor in the world.
Junior mark, consisting of a word “INESSSY” in standard character, was applied for registration on January 8, 2019 over cookies and confectionery in class 30 and whisky in class 33 [TM application no. 2019-1234].
The JPO admitted registration on August 2, 2019 and published for opposition on August 27, 2019.
Opposition by Hennessy
To contend registration within a statutory period of two months counting from the publication date, SOCIETE JAS HENNESSY ET COMPAGNIE filed an opposition on October 28, 2019.
In the opposition brief, SOCIETE JAS HENNESSY ET COMPAGNIE asserted the opposed mark shall be cancelled in contravention of Article 4(1)(xi) of the Japan Trademark Law on the grounds that “INESSY” and “Hennessy” look closely associated in appearance and pronunciation because of sharing the same suffix (in this case, “NESSY”). According to the allegation, 55 trademarks with the “NESSY” suffix are effectively registered in Japan. Among them, 48 registrations are owned by opponent. As far as class 33 goes, no one owns trademark with the suffix other than opposed mark. If so, relevant consumers at the sight of whisky bearing opposed mark would conceive world-renowned “Hennessy”.
Article 4(1)(xi) is a provision to prohibit registering a junior mark which is identical with, or similar to, any senior registered mark.
There is criterion that the examiner is checking when assessing the similarity between the marks:
- visual similarity
- aural similarity
- conceptual similarity
and taking into account all these three aspects examiner makes a decision if a mark is similar (at least to some extent) with the earlier mark and if there is a likelihood of confusion for the consumers.
In the decision, the Opposition Board held that:
“From appearance, even if both marks share the same suffix “NESSY”, difference in number of letters and prefix “I” and “Hen” would be anything but negligible. Because of it, the marks as a whole give rise to a distinctive visual impression in the minds of relevant consumers. Accordingly, both marks are unlikely to cause confusion from appearance.
Opposed mark “INESSY” is pronounced as “ine-siː”. In the meantime, the opponent mark “Hennessy” shall be “hene-siː”. The difference in the initial sound, “i” and “he”, would be influential in the overall pronunciation given both marks aurally consist of just three sounds. Due to the difference, both sounds can be distinguishable in tone and linguistic feeling when pronounced at a time.
Conceptually, opposed mark is incomparable with the opponent mark since both marks would not give rise to any specific meaning at all.”
Based on the foregoing, the Board concluded that opposed mark “INESSY” would be deemed dissimilar to the opponent mark “Hennessy” from the global appreciation of the visual, aural and conceptual similarity of the marks in question, and based on the overall impression and association given by the marks to relevant traders and consumers with ordinary care“.
Masaki MIKAMI, Attorney at IP LAW – Founder of MARKS IP LAW FIRM