In a recent administrative decision, the Japan Patent Office (JPO) found TM Reg no. 6246792 shall not be invalidated in contravention of Article 4(1)(xi) of the Japan Trademark Law because of dissimilarity to earlier TM Reg no. 6139339 for mark “ZOO”.[Invalidation case no. 2021-890029, decision date: November 1, 2022]
TM Reg no. 6246792
The disputed mark consists of literal elements, “SERIES” and “70th Anniversary Premium Brand”, and figurative element that looks like “ZOO” or “700” (see below).
The mark was filed for use on flour and other foods in class 30 in the name of ODAZO SEIFUN Co., Ltd. on March 15, 2019.
According to the applicant’s website, the company uses the mark on a series of high-quality wheat flour and clearly calls it “ZOO”.
The JPO granted registration of the mark on April 20, 2020.
TM Reg no. 6139339
The opponent has owned earlier TM Reg no. 6139339 for the mark “ZOO” in three colors (see below) in classes 29, 30, and 41 since April 19, 2019.
On June 28, 2021, the opponent filed an invalidation action and argued that the disputed mark shall be invalidation due to its close resemblance to the earlier trademark “ZOO” in contravention of Article 4(1)(xi) of the Japan Trademark Law.
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.
The opponent alleged that the disputed mark obviously gives rise to the same pronunciation and sound as the earlier mark from its configuration. If so, both marks shall be considered confusingly similar when used on goods in class 30.
Astonishingly, the JPO Invalidation Board found both marks are dissimilar from visual, phonetical, and conceptual points of view by stating;
In assessing the similarity between the disputed mark and the cited mark, both marks are clearly distinguishable from overall appearance, as there is a clear difference between the three tiers/one tier, literal elements and color, even if some components are colored in red.
In addition, the figurative element of the disputed mark is recognizable as a geometric figure. Meanwhile, the cited mark consists of the word “ZOO”. Therefore, the disputed mark does not give rise to a sound of “ZOO”, but “Series Seventies Anniversary Premium Brand,” “Series,” and “Seventies Anniversary Premium Brand”. It is obvious that both marks are unlikely to cause confusion in sound.
Assuming that the figurative elements of the disputed mark does not give rise to any specific meaning, there is no reason to find similarity in concept between the disputed mark and the cited mark in its entirety.
Therefore, the disputed mark is considered dissimilar to the cited mark in terms of the impressions, memories, associations that they give to traders and consumers through appearance, sound and concept.
Based on the foregoing, the Board held the disputed mark shall not be invalidated under Article 4(1)(xi) of the Japan Trademark Law even if the goods in question are identical or similar to the designated goods of the cited mark, and dismissed the entire allegations.
Masaki MIKAMI, Attorney at IP LAW – Founder of MARKS IP LAW FIRM