The Japan Patent Office (JPO) dismissed a trademark opposition claimed by General Motors LLC against TM Reg no. 6387036 for “HEAVYDUTY HUMMER” with “HH” device by finding dissimilarity to and the unlikelihood of confusion with the automotive brand “HUMMER.[Opposition case no. 2021-900295, Gazette issued date: September 30, 2022]
HEAVY DUTY HUMMER
The opposed mark, consisting of a word “HEAVYDUTY HUMMER” and “HH” device (see below), was filed with the JPO on February 18, 2021, for use on bicycles in class 12 and tent in class 22.
By virtue of the accelerated examination procedure, the mark was granted protection in two months (April 21, 2021) and published for opposition on June 1, 2021.
Opposition by General Motors
On August 2, 2021, before the lapse of a two-month opposition period, General Motors LLC filed an opposition by citing earlier TM Reg no. 2682898 for the wordmark “HUMMER” in classes 6,9,12,13,22.
In the opposition, GM contended that the opposed mark shall be canceled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law.
Article 4(1)(xi) is a provision to refrain from registering a junior mark that is identical with, or similar to, any senior registered mark.
Article 4(1)(xv) provides that a mark shall not be registered where it is likely to cause confusion with other business entities’ well-known goods or services, to the benefit of the brand owner and users.
GM argued that the opposed mark is similar to earlier registration for the mark “HUMMER” and relevant consumers are likely to confuse or misconceive the opposed mark with GM or any business entity systematically or economically connected with the opponent due to the high popularity of the opponent’s automotive brand “HUMMER” and the close resemblance between the opposed mark and “HUMMER”.
The Board negated a certain degree of reputation and popularity of the HUMMER mark among relevant consumers and traders as a source indicator of GM by stating:
“From the produced evidence, the opponent allegedly has used the cited mark as a brand name for four-wheel drive vehicles since 1999 that have been imported and sold in Japan since at least 2002. However, GM terminated its production in May 2010. Besides, being that there is no clear evidence to demonstrate the timing, sales volume, sales amount, market share, the scale of marketing, and advertising in relation to “automobiles” and “bicycles” in Japan, the Board has no reason to find the cited mark has been widely recognized by the relevant public as a source indicator of the opponent business.”
In assessing the similarity of the mark, the Board found that the literal portion “HEAVYDUTY HUMMER”, represented in the same font and the same size, gives a coherent and unified impression from appearance. The sound is not particularly redundant and can be pronounced in a series without difficulty. The term “HEAVYDUTY” is anything but an English word that is commonly used in Japan. If so, it is not permissible to separate and extract the term “HUMMER” from the opposed mark and compare it with the cited mark.
Based on the above findings, the Board compared the opposed mark with the cited mark in its entirety.
“In the presence or absence of the HH device and the term HEAVYDUTY, both marks are clearly distinguishable and there is no risk of confusion in appearance and sound. Since both marks do not give rise to any specific meaning, both marks are not comparable in concept.”
Consequently, the Board concluded that relevant traders or consumers would not confuse or misconceive a source of the opposed mark with GM or any entity systematically or economically connected with the opponent when used on any goods in question and allowed the opposed mark to survive.
Masaki MIKAMI, Attorney at IP Law – Founder of MARKS IP LAW FIRM