The Japan Patent Office (JPO) dismissed trademark opposition filed by Marc Jacobs Trademarks, L.L.C. against TM Reg no. 6462764 for an oval device mark due to dissimilarity to earlier registration for the J Marc logo.[Opposition case no. 2022-900007, decided on August 24, 2022]
ORPHE Inc., a Japanese business entity, applied trademark registration for an oval device mark (see below) to be used on goods and services in classes 9, 25, and 42, including computer software, PDAs, and footwear with the JPO on July 14, 2021.
The JPO examiner did not raise any objection in the course of the substantive examination and granted protection on October 19, 2021.
The mark was registered on October 27 and published for opposition on November 16, 2021.
Opposition by Marc Jacobs
On January 12, 2022, Marc Jacobs Trademarks, L.L.C. filed an opposition and alleged the opposed mark shall be cancelled in relation to the designated goods of classes 9 and 25 in contravention of Article 4(1)(xi) of the Japan Trademark Law by citing IR no. 1282779 for the J Marc logo (see below), effectively registered on classes 3, 9, 14, 18 and 25 in Japan since 2017.
Article 4(1)(xi) is a provision to prohibit the registration of a junior mark that is identical with, or similar to, any senior registered mark.
Marc Jacobs argued both marks share the overall appearance consisting of two letters, “J” and “J”, combined in a way that constitutes an oval. A mere difference of direction (vertical or horizontal) would be anything but significant in assessing the similarity of marks because consumers would not consider the horizontal direction of the J Marc logo as a material factor to indicate the source. By taking into account of close resemblance in appearance and the same sound of “JJ”, the opposed mark shall be deemed similar to the J Marc.
The JPO Appeal Board stated both marks are sufficiently distinguishable for three reasons.
- The opposed mark has an impression of a rounded oval because of smoothly curved portions and shorter straight portions. On the other hand, the cited mark gives rise to an impression of a thin oval because of steeply curved portions and longer straight portions.
- Encircled blank of the cited mark also looks narrow due to an equal width with the surrounding oval line. In the meantime, encircled blank of the opposed mark looks wider by virtue of the narrower width of an oval line.
- The cutout portion of the opposed mark gives the impression that the entire oval line is cut diagonally. The cited mark would never give such an impression to relevant consumers.
Taking into consideration the above findings, the Board had a reason to believe that relevant consumers are unlikely to consider, contrary to the opponent’s allegations, that both marks consist of two letters “J” and “J”. A mere coincidence of oval configuration is insufficient to find both marks similar in view of the remarkable distinctions of respective marks mentioned above.
Based on the foregoing, the Board concluded the opposed mark shall not be deemed similar to the J Marc logo and decided to dismiss the opposition entirely.
Masaki MIKAMI, Attorney at IP LAW – Founder of MARKS IP LAW FIRM