V&W is unlikely to cause confusion with VW emblem

In a recent trademark opposition involving the circular Volkswagen logo, the Opposition Board of Japan Patent Office (JPO) decided that famous VW emblem is entirely dissimilar to, or unlikely to cause confusion with, the word mark “V&W” in standard character when used on retail services for automobiles [Opposition Case no. 2017-900009].


Trademark opposition

German car giant Volkswagen AG filed an opposition against TM registration no. 5888513 for word mark “V&W” written in standard character (Opposed mark) on the grounds that Opposed mark violates Article 4(1)(xi), 4(1)(xv) and 8(1) of the Trademark Law based on senior trademark registrations for the VW emblems and a word mark “VW”.
The opposed mark designates retail services or wholesale services for automobiles and various other goods in class 35.

Volkswagen argued Opposed mark gives rise to a pronunciation of “vi: dʌb·l·juː” by omitting “&” since the prevalent symbol representing a word of “AND” is just to connect “V” and “W”, and relevant traders and consumers are prone to omit the symbol in pronouncing the entire mark in light of transactional customs at present. If so, Opposed mark is deemed similar to the VW emblem as well as “VW” in visual, phonetical and conceptual point of view.

Besides, the VW emblem has acquired substantial popularity and reputation as a source indicator of famous automobile maker, Volkswagen. Thus, it is highly likely that relevant traders and consumers confuse the source of retail service for automobiles and its parts using Opposed mark “V&W” with opponent or a business entity systematically or economically connected with the opponent.

 


Board decision

The Board admitted the VW emblem has become famous for a source indicator of opponent by taking into consideration of the facts that opponent’s cars with the VW emblem have been continuously imported to Japan since 1978 at the latest and ranked in the top 3 of new imported automobile registrations for the past three years.

In the meantime, the Board denied high awareness of the word mark “VW” as a source indicator of opponent. A mere definition of VW to indicate the opponent in a dictionary is insufficient since the term is often seen in conjunction with corporation name “Volkswagen” in newspaper, magazines and newsarticle on a website.

In the assessment of trademark similarity, the Board concluded that “V&W” is obviously dissimilar to the VW emblem and “VW” in appearance, pronunciation and meaning. Due to substantial distinction between the marks, relevant traders and consumers are less likely to confuse or associate “V&W” with opponent and any business entity systematically or economically connected with opponent.

Based on the foregoing, the Board dismissed opposition and allowed “V&W” to survive.


It is noteworthy that a mark consisting of two alphabetical letters written in a plain font design is considered less distinctive in Japan. In this respect, IR no. 1272004 for the word mark “VW” did not function to broadly protect the VW emblem in favor of Volkswagen.

Masaki MIKAMI, Attorney at IP Law – Founder of MARKS IP LAW FIRM

Nintendo sues go-kart company over copyright infringement and disputes over “MariCar” trademark

 

Copyright infringement lawsuit

On February 24, 2017, Nintendo Co., the Kyoto-based video game giant filed a lawsuit with the Tokyo District Court against a Tokyo-based go-kart service operator, MariCar, for alleged copyright violations.

MariCar rents out go-karts that have been modified to run on public roads.

The go-kart service is exceedingly popular with foreign tourists, with many of the participants donning costumes that look similar to Nintendo game characters such as Super Mario.
http://maricar.com/


In the suit, Nintendo claims MariCar violated copyright by renting unauthorized costumes of Nintendo game characters such as Super Mario to its customers and using pictures of them to promote its business.

Nintendo is seeking ¥10 million in damages from the company and an end to the alleged copyright infringement.


Dispute over the MariCar trademark  

Nintendo also alleged in an opposition over the MariCar trademark registration No. 5860284 covering goods and services in class 12 ,35 and 39 that MariCar is an abbreviation of “Mario Kart,” one of its blockbuster game titles, however, the JPO rules against Nintendo to admit go-kart company keep MariCar trademark in a decision dated Jan. 26, 2017 [Opposition No. 2016-900309].

In the opposition, Nintendo claimed that MariCar was widely interpreted by the public as short for “Mario Kart,” citing other examples of popular video games that go by abbreviated nicknames in Japanese, such as “Pokemon” for “Pocket Monsters,” “Pazudora” for “Puzzle & Dragons” and “Sumabura” for “Super Smash Bros.”
Consequently, the Opposition Board of JPO denied it and held the trademark MariCar was neither widely used nor recognized by game users as an abbreviation of Nintendo’s blockbuster video game title “Mario Kart,” adding that it was “an unassociated trademark.”

 


 

MASAKI MIKAMI, Attorney at IP Law (Japan) – Founder of MARKS IP LAW FIRM

Trademark Abbreviations

A company should be mindful of how the public perceives and uses its trademarks in Japan.

Japanese is prone to abbreviate trademarks. Occasionally, the abbreviation has no resemblance to its original name.

For example, ABERCROMBIE & FITCH is popularly called “ABA-KURO” among general public in Japan. Likewise, DOLCE & GABBANA can be called “DOLU-GABA”. STARBUCKS COFFEE is known as “SUTABA”. TOMMY HILFIGER is called “TOMI-HIRU”.

Where a trademark is composed of five sounds or more, you should mind that general public in Japan gets to call the mark in abbreviation contrary to brand owner’s intention.

BMW is even called as “BI-EMU”.

Most popular name recognized in abbreviation is McDonald without doubt. We seldom call “McDonald” as it is. One of the most popular fast-food chains and one of the top franchises in the world has always been called “MAKUDO” or “MAC”.

A combination mark is an easy target for abbreviation as well.

BOTTEGA VENETA is call “BOTTEGA”. LUIS VUITTON is known as “VUITTON”.

Trademark abbreviations may serve as a barometer for well-recognition of the mark among general public in Japan. In the meantime, abbreviations or nicknames used by the public are not protected under the respective registrations given that they have no resemblance to the original names e.g., “ABA-KURO” and “DOLU-GABA”.

Using abbreviations, nicknames, and acronyms as trademarks may be appealing from a marketing perspective, however, trademark protection for an abbreviation has to be sought independently from the trademark protection that its extensive version might be already enjoying, and vice versa.

A company that seeks trademark protection for an abbreviation should abide by the standard trademark requirements.