Italian heritage label Furla lost a trademark opposition in Japan against TM Reg no. 6501195 for the wordmark “FURNA” in class 25 as a result of the JPO’s decision finding no likelihood of confusion with “FURLA”.
[Opposition case no. 2022-900128, decided on April 6, 2023]
The opposed mark, consisting of the wordmark “FURNA” in standard character, was filed for use on clothing, dresses, footwear, garters, waistbands, belts [clothing] and other goods in class 25 with the JPO by URBAN TEX Co., Ltd., a Japanese company on November 1, 2021.
The company opens an online shop for wedding dresses under the trade name “FURNA” on Rakuten online shopping platform.
In accordance with a request for accelerated examination from the company based on the actual use of the mark on any one of the designated goods, the JPO carried out a substantive examination and granted protection on January 14, 2022. Subsequently, the mark was published for post-grant opposition on January 27, 2022.
Opposition by FURLA
Italian luxury retailer FURLA S.P.A. filed an opposition on May 28, 2022, and claimed the opposed mark shall be canceled in contravention of Article 4(1)(xi), (xv), and (xix) of the Japan Trademark Law.
FURLA argued a mere difference of “N” and “L” in the fourth letter of the respective word would be trivial and thus inadequate to find a low degree of similarity in appearance and sound. Given a close association between the goods in question and the opponent goods covered by earlier registrations for the FURLA marks that have acquired a high level of recognition among relevant consumers in Japan, the consumers are likely to confuse a source of the goods bearing the opposed mark with Furla or mistakenly consider it from an entity systematically or economically connected with FURLA S.P.A.
The JPO Opposition Board admitted a high level of recognition of the mark “FURLA” in connection with bags among relevant consumers as a source indicator of the opponent.
In the meantime, the Board questioned if both marks are deemed similar in visual, aural, and conceptual points of view by stating:
Comparing the opposed mark and the opponent mark, “FURNA” and “FURLA” differ in appearance in the fourth letter of “N” and “L” but the difference in these letters in the short five-character composition has a substantial effect on the overall composition, and they are sufficiently distinguishable in appearance.
Pronunciation arising from “FURNA” and “FURLA” are different even when they are called in succession, and there is no risk of mishearing each other.
The opposed mark is conceptually distinguishable because it does not give rise to any specific meaning, whereas the opponent mark has been known as “Furla’s brand”.
Even if the “FURLA” mark is widely recognized among Japanese consumers as an indication of the opponent’s business, given the low degree of similarity between “FURNA” and “FURLA”, the Board has no reason to believe that the consumers having a glimpse of the opposed mark used on the goods in question would associate or recall the opponent mark.
Based on the foregoing, the JPO dismissed the opposition entirely and decided that the opposed mark “FURNA” shall remain valid as the status quo.
Masaki MIKAMI, Attorney at IP LAW – Founder of MARKS IP LAW FIRM