IP High Court: “VANSNEAKER” is confusingly similar to famous “VANS” sneakers

The IP High Court ruled on August 29, 2018 to uphold the Japan Patent Office (JPO) decision to cancel TM Reg. No. 5916735 for the mark “VANSNEAKER” over shoes in class 25 due to a conflict with TM Reg. No. 5245474 for famous mark “VANS”.
[Case no. Heisei30(Gyo-ke)10026]

VANSNEAKER

Disputed mark “VANSNEAKER” in the standard character format was filed on July 25, 2016 and registered next January by designating shoes in class 25 in the name of VAN Jacket Inc., a Japanese business entity, who succeeded to apparel business of “VAN” brand all the rage in the 60’S.

Opposition by VANS Incorporated

VANS Incorporated, a US business entity, established in California 1966,  famous for “VANS” sneakers, filed an opposition  by citing its own senior registered mark “VANS” in standard character format over shoes in class 25. The JPO decided to cancel disputed mark in breach of Article 4(1)(xi) of the Trademark Law on the ground that it is confusingly similar to famous “VANS” mark from a conceptual point of view. [Opposition case no. 2017-900135]

Article 4(1)(xi) is a provision to refrain from registering a junior mark which is deemed identical with, or similar to, any senior registered mark.

Appeal to the IP High Court

To contend, VAN Jacket appealed to the IP High Court and demanded cancellation of the decision.

VAN Jacket alleged in the court that JPO decision was based on an erroneous assumption of fact because it considered the portion of “VANS” plays a dominant role in source indicator. Given disputed mark “VANSNEAKER” consists of one word in its entirety, it is unlikely that consumers perceive the last letter “S” of “VANS” functions to represent an initial letter of “SNEAKER” as well.

Court decision

The IP High Court, however, dismissed the arguments by VAN Jacket, stating that:

  1. Cited mark ”VANS” has become famous among Japanese general consumers in connection with sneakers and shoes both at the time of filing application and registration of disputer mark.
  2. “NEAKER” does not give rise to any specific meaning. In the meantime, “SNEAKER”, combining “S” with “NEAKER” adjacent to it, is an English word familiar among relevant public to mean a type of the designated goods (shoes).
  3. It becomes usual to prevent successive letter in a coined mark consisting of two words where first word ends with a letter and send word starts with the same letter.
  4. Based on the foregoing, consumers at sight of disputed mark shall pay attention to a distinctive portion of “VANS” and are likely to conceive that the mark consists of two words, “VANS” and “SNEAKER” by omitting first or the last letter “S” of respective words.
  5. Consequently, the Court finds that disputed mark is likely to cause confusion with famous “VANS” sneakers when used on shoes.

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

Trademark battle over slogan : Think different vs Tick different

Swiss watch giant Swatch has failed to stop US tech giant Apple from registering “Think Different” as a trademark, which Swatch argued segues too closely to its own “Tick Different” trademark.

THINK DIFFERENT

Apple’s “THINK DIFFERENT” mark was used in its successful Emmy-award winning advertising campaign which ran for five years from 1997. The mark was also used on the box packaging for its iMac computers next to another trademark “Macintosh”.

Its applications to register “THINK DIFFERENT” were filed in Japan on February 24, 2016 for use in relation to various goods and services belonging to 8 classes like watches, clocks (cl.12) as well as online social networking services (cl.45), among other items. JPO admitted registration on September 12, 2017. Subsequently, the mark was published in the Official Gazette for opposition.

Tick different

By citing its own mark, Swatch filed an opposition against Apple’s “THINK DIFFERENT” mark based on Article 4(1)(xi) of the Japan Trademark Law and asserted a likelihood of confusion with Swatch “Tick different” mark when used in connection with all goods designated in class 14.

Swatch’s “Tick Different” mark was filed to JPO through the Madrid Protocol (IR no. 1279757) with priority date of July 16, 2015 and admitted national registration on July 15, 2016 by designating timepieces and chronometric instruments, namely chronometers, chronographs, clocks, watches, wristwatches, wall clocks, alarm clocks, among other items in class 14.

Swatch, having a worldwide presence and its corporate group owns a stable of Swiss watch brands, including Omega, Tissot and Swatch, has allegedly used the mark on mobile payment smart watches since 2015.

 

Opposition decision

Swatch argued that the two marks were highly similar due to the same syllabic structure and number of words. With the same ending and almost the same beginning, they are visually and aurally similar.

However, in decision grounds issued on June 6 2018, the Opposition Board of Japan Patent Office (JPO) found that when compared as wholes, the marks were more dissimilar than similar.

The Board, after considering all the pleadings, evidence and submissions, concluded because of the conceptual, visual and aural dissimilarities of the marks, the Board was persuaded that the average consumer would conceive they are, overall, more dissimilar than similar.

Consequently, JPO ruled that as Swatch’s opposition failed on all grounds, the “THINK DIFFERENT” mark registration from Apple will remain with the status quo.
[Opposition case no. 2017-900376]


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

Trademark Battle: SPEC vs. SPECK

In a trademark opposition filed by Samsonite IP Holdings S.à.r.l., an owner of IR no. 1024440 for the mark “SPECK”, against Japanese TM Reg. no. 5980195 for the mark “SPEC”, the Opposition Board of Japan Patent Office (JPO) dismissed the opposition.
[Opposition case no. 2017-900373, Gazette issue date: July 27, 2018]

“SPEC”

Opposed mark “SPEC” was filed by SPEC CORPORATION, a Japanese business entity on September 3, 2015 by designating the goods of audio speakers; audio amplifiers; audio players; CD players; audio equipment to be connected with internet” in class 9.
The JPO admitted registration on September 15, 2017 and published for registration on October 10, 2017.

 

“SPECK”

Samsonite IP Holdings S.à.r.l., operating as a wholly-owned subsidiary of Samsonite International S.A., a travel luggage company, owns international TM registration no. 1024440 for the mark “SPECK” over the goods of “Protective carrying cases for portable electronic listening devices and music players, namely, MP3 players, and for global positioning systems (GPS devices), mobile and cellular telephones, and portable media players” in class 9 and it has become effective in Japan since 2012.

As a result of acquisition of Speck Products, a leading U.S. designer and distributor of slim protective cases for personal electronic devices, Samsonite extends its brand portfolio beyond its traditional strength in travel luggage products.

 

Opposition – SPEC vs. SPECK

On December 11, 2017, Samsonite IP Holdings S.à.r.l. filed an opposition and cited senior registered mark “SPECK”.
In the opposition brief, Samsonite asserted opposed mark shall be cancelled in violation of Article 4(1)(xi) of the Japan Trademark Law.
Article 4(1)(xi) is a provision to refrain from registering a junior mark which is deemed identical with, or similar to, any senior registered mark.

 

Board decision

The Opposition Board negated similarity of mark between SPEC and SPECK, stating that:

“From appearance, both marks are distinguishable by means of a fact that opposed mark does not contain “K” in the suffix position since such difference shall not be negligible in the configuration consisting of small number of letters, four or five. Conceptually, opposed mark can be perceived as a word to mean specification. Meanwhile, opponent mark does not give rise to any specific meaning. Hence, both marks are dissimilar in concept.
It is doubtless that both marks give rise to the same sound, however, distinctive gap in appearance and concept may cause consumers to recognize them as a different source indicator. If so, both marks are unlikely to cause confusion and thus deemed dissimilar.”

Based on the foregoing, the Board decided opposed mark is not subject to Article 4(1)(xi), and admitted registration as a status quo.


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

Aston Villa lost trademark battle over rampant lion emblem

In a trademark battle over rampant lion emblem, the Japan Patent Office (JPO) dismissed an opposition filed by Aston Villa Football Club Limited, one of the oldest and most successful football clubs in English football, holding that relevant consumers are unlikely to consider the opposed rampant lion device mark (see below) confusingly similar to Aston Villa’s club badge.
[Opposition case no. 2017-900318, Gazette issued date: June 29, 2018]

Rampant lion device mark

Opposed mark, consisting of a rampant lion device facing left, thrusting out its tongue, and extending its tail vertically, was filed on February 7, 2017 by designating clothing, shoes, sportswear and sports shoes in class 25 and other two classes (12 and 35).
JPO admitted trademark registration on July 28, 2017 [TM registration no. 5966695] and published it for opposition on August 22, 2017.

Trademark Opposition

Aston Villa Football Club Limited opposed registration based on Article 4(1)(xi) of the Trademark Law, asserting that opposed mark is confusingly similar to Aston Villa’s senior IR registration no. 1296488 effective in Japan for the mark of opponent’s club badge (see below).

Article 4(1)(xi) is a provision to refrain from registering a junior mark which is deemed identical with, or similar to, any senior registered mark.

Where opposed mark is considered similar to opponent mark and designated goods of opposed mark is identical with or similar to that of opponent mark, opposed mark shall be retroactively cancelled in violation of Article 4(1)(xi). In this regard, since IR no. 1296488 covers clothing, footwear, replica shirts, football boots, polo shirts, shoes for sports etc. in class 25, similarity of goods is undisputable in the case.

Board decision

The Opposition Board denied similarity between the marks on the grounds that:

  1. Regardless of similarity in basic configuration of a rampant lion facing left, there exist some distinctive features in depiction of head, tongue, ear, and tail as well as length of the legs.
  2. Rampant lion has been frequently used in heraldry. Therefore, relatively the lion design will not be a material factor in the assessment of mark similarity.
  3. Opponent mark can be perceived as a crest combining “AVFC” and rampant lion design.
  4. In the meantime, opposed mark shall not give rise to a meaning of crest, and relevant consumers with an ordinary care can easily discriminate both marks from appearance due to such distinctive features and overall impression.

Accordingly, JPO sided with opposed mark and decided it shall not be cancelled based on Article 4(1)(xi) in relation to opponent mark.


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

Toyota vs. Renault: Battle of the Brands

In a trademark opposition between Toyota Motor Corporation (JAPAN) and Renault SAS (FRANCE), the Opposition Board of Japan Patent Office (JPO) dismissed the opposition against trademark registration no. 5932825 for word mark “WIGO”.

WIGO vs. TWINGO

Renault opposed to register the word mark “WIGO” designating automobiles in class 12 by Toyota based on Article 4(1)(xi), (xv) of the Trademark Law by citing his senior trademark registration no. 2710075 for Renault’s car brand “TWINGO”.

TOYOTA WIGO is mini hatchback from Toyota.

RENAULT TWINGO is small city car from Renault.

Assessment of trademark similarity

Article 4(1)(xi) is a provision to refrain from registering a junior mark which is deemed identical with, or similar to, any senior registered mark.

In assessing trademark similarity under Article 4(1)(xi), the Board considered opposed mark “WIGO” is deemed a coined word since it does not give rise to any specific meaning as well as “TWINGO”. Besides, both marks are evidently distinguishable in appearance and pronunciation. If so, the Board found that it is groundless to conclude “WIGO” is similar to “TWINGO” from visual, phonetic and conceptual aspect.

Likelihood of confusion

Article 4(1)(xv) provides that a mark shall not be registered where it is likely to cause confusion with other business entity’s well-known goods or services, to the benefit of brand owner and users’ benefits.
Theoretically, Article 4(1)(xv) is applicable to the case where a mark in question is deemed dissimilar to well-known brand, but is still likely to cause confusion because of a high degree of popularity and reputation of the brand.

The Board concluded it remains unclear whether Renault TWINGO has become famous in automobiles from totality of the circumstances and evidence.
Provided that TWINGO does not obtain remarkable reputation in relation to automobiles as a source indicator of Renault car, WIGO is unlikely to cause confusion with Renault TWINGO because both marks are considerably dissimilar.
[Opposition case no. 2017-900193]


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

Trademark Dispute ROOT vs ROOTS

The Japan Patent Office (JPO) decided in a trademark opposition that ROOT is dissimilar to ROOTS in appearance, pronunciation and meaning.
[Opposition case no. 2017-900326, Gazette issue date: June 29, 2018]

Opposed mark

Opposed mark consists of the square root design and a word “ROOT” (see below). It was applied for registration on February 9, 2017 by designating bags in class 18 and retail or whole sale services in relation to bags and clothing in class 35.
JPO granted registration in August 4, 2017 (TM registration no. 5969604).

Opposition

Opponent, Roots Corporation, a Canadian business entity, filed an opposition against opposed mark based on a self-owned senior trademark registration no. 5947860 for the work mark “ROOTS” (see above) in class 35 for on-line retail or wholesale services in relation to bags and clothing.

Opponent argued opposed mark shall be canceled in violation of Article 4(1)(xi) of the Trademark Law because “ROOT” and “ROOTS” are confusingly similar.

Article 4(1)(xi) is a provision to refrain from registering a junior mark which is deemed identical with, or similar to, any senior registered mark.

Board decision

The Opposition Board of JPO negated similarity between the ROOT mark and ROOTS, stating that:

“From appearance, both marks are distinguishable since opponent mark does not contain the square root device and “S” in the suffix position. Besides there exist differences in font design and case sensitivity. 
Regarding pronunciation of the marks, opposed mark gives rise to a sound of “ruːt”. In the meantime, opponent mark sounds “ruːts”. Given the short sound of three syllables, a different pronunciation in the suffix position is not in any way ignorable. If so, both marks can be phonetically distinctive. 
Conceptually, opposed mark gives rise to a meaning of the square root. Meanwhile, opponent mark can be perceived as a word to mean the parts of plant that grow under the ground or ancestor. Hence, both marks are distinctive in concept as well.”

Based on the foregoing, the Board concluded that it is unlikely to consider relevant consumers at the sight of opposed mark would connect a word “Root” adjacent to the square root device with opponent mark. Therefore, the Board dismissed opposition and allowed opposed mark to survive.


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

Straight Wings Emblem Trademark Battle

In a recent trademark decision regarding straight wings emblem on automobiles, the Opposition Board of Japan Patent Office (JPO) dismissed an opposition filed by BENTLEY MOTORS LIMITED and ASTON MARTIN LAGONDA LIMITED against trademark registration no. 5962270 for a combined mark consisting of “M78 86” and straight wings device due to unlikelihood of confusion.
[Opposition case no. 2017-900293, Gazette issued date: May 17, 2018]

TM registration no. 5962270

Disputed mark (see below) was applied for registration on December 8, 2016 by designating automobiles and other goods in class 12.

Tsubuyara Productions CO., Ltd, a Japanese company, famous for the creator of Ultraman (Japanese Superhero) is a co-applicant of disputed mark.

A month after the filing, during the Press Conference held at Tokyo Auto Salon 2017, Toyota’s new M78 x 86 concept car was unveiled. Toyota, as a car supplier collaborating with Ultraman, aimed to make people “feel like Ultraman”.

“86” is a name for Toyota sports coupe. “M78” comes from Nebula M78, a home world of Ultraman, thirteen million light years away from the earth.

Disputed mark was created to represent the collaboration between Toyota and Tsuburaya.

Opposition

JPO granted registration of the mark on July 7, 2017.

To oppose the mark, Bentley, the most sought after luxury car brand in the world, and Aston Martin, iconic luxury British sports car manufacturer, filed an opposition on the grounds that disputed mark is likely to cause confusion with opponents’ business due to close resemblance and famousness of opponent mark based on Article 4(1)(x), (xi), (xv), (xix) of the Trademark Law.

Article 4(1)(x) prohibits to register a trademark which is identical with, or similar to, other entity’s well-known mark over goods or services closely related with the entity’s business.
Article 4(1)(xi) is a provision to refrain from registering a junior mark which is deemed identical with, or similar to, any senior registered mark.
Article 4(1)(xv) prohibits to register a trademark which is likely to cause confusion with a business of other entity.
Article 4(1)(xix) prohibits to register a trademark which is identical with, or similar to, other entity’s famous mark, if such trademark is aimed for unfair purposes, e.g. gaining unfair profits, or causing damage to the entity.

Board decision

The Opposition Board admitted a certain degree of popularity and reputation of Opponent emblem as a source indicator of opponent’s business among relevant consumers in the fields of automobiles, however, totally negated similarity of both marks from the perspective of appearance, pronunciation, and concept. Besides, finding that relevant consumers with an ordinary care would pay particular attention to the mark in procuring expensive goods, such as cars, the Board held that a mere graphical resemblance of straight wings is insufficient to find a likelihood of confusion since even opponents are co-existing in peace regardless of the similar straight wings.
Based on the foregoing, the Board concluded that there is no likelihood of confusion between the marks and allowed the “M78 86” straight wings mark valid.


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

Tissot Loses Trademark Opposition over the POWERMATIC mark

In a recent decision, the Opposition Board of Japan Patent Office (JPO) dismissed an opposition filed by TISSOT S.A., a member of Swatch Group, who contended that trademark registration no. 5950175 for a word mark “PowerMatrix” designating, inter alia, watches in class 14 shall be cancelled in violation of Article 4(1)(xi) and (xv) of the Japan Trademark Law due to a conflict with senior domestic trademark registration and international trademark registration for the “POWERMATIC” mark in class 14.
[Opposition case no. 2017-900258]

PowerMatrix

Opposed mark, consisting of a term “PowerMatrix” written in a plain alphabetical letter, was applied for registration on October 24, 2016 in the name of Kyland Technology Co. Ltd., a Chinese corporation, by covering various goods and services in classes 7,9,11,12,38 and 42 as well as watches in class 14. As a result of substantive examination, JPO granted registration (TM Reg no. 5950175) on May 26, 2017.

Opposition

The Japan Trademark Law provides that anyone is entitled to file an opposition against new trademark registration within two months from the publication date of gazette under Article of 43bis.

Tissot S.A. filed an opposition against opposed mark “PowerMatrix” by citing senior registrations for the word mark “POWERMATIC”, and alleged that opposed mark shall be cancelled based on Article 4(1)(xi) and 4(1)(xv) of the Trademark Law.

  • Article 4(1)(xi) is a provision to refrain from registering a junior mark which is deemed identical with, or similar to, any senior registered mark.
  • Article 4(1)(xv) prohibits to register a mark which is likely to cause confusion in connection with the goods or services pertaining to a business of another person.

POWERMATIC

Tissot argued POWERMATIC has been used on luxury Tissot watches in Japan as an indication of high-end automatic movement for the watches since 2013.

By taking account of increasing sales amount of approx. 1 million CHF in 2015 and substantial advertisement through newspapers, magazines and web-media, the POWERMATIC mark has acquired a certain degree of popularity and reputation among relevant public in Japan as well as its house mark, Tissot.

In appearance and sound, “PowerMatrix” and “POWERMATIC” are confusingly similar because of coincidence of initial eight alphabetical letters among ten in total. If so, opposed mark is likely to cause confusion with the Tissot luxury watch installing “POWERMATIC” automatic movement when used on watched in class 14.

BOARD DECISION

The Board negated a certain degree of popularity and reputation of the “POWERMATIC” mark, stating that produced materials are insufficient and non-objective to demonstrate famousness of the cited mark. Given that the Tissot POWERMATIC watch was firstly distributed in Japan since 2013, a three-year-duration before the filing of opposed mark seems too short to become popular among relevant consumers in fact.

Besides, the Board concluded that difference in appearance and sound is not negligible in view of overall configuration of both marks. If so, it is unlikely that relevant consumers and traders confuse or misconceive watches using the opposed mark with a product from Tissot and the entity systematically or economically connected with Tissot.

LEGO lost a trademark battle in Japan over the mark CATTYLEGO

LEGO has lost a trademark battle it lodged against PETSWEET Co., Ltd., a Taiwanese company, over its registration of the mark “CATTYLEGO” in Japan.
[Opposition case no. 2017-900077, Gazette issued date: Feb 23, 2018]

 

OPPOSED MARK “CATTYLEGO”

PETSWEEY Co., Ltd., a Taiwanese company, applied for trademark registration in Japan for the mark consisting of a word “CATTYLEGO” and rectangle device (see below in right) on June 15, 2016 by designating toys for pets in class 28. Apparently, PETSWEET Co., Ltd. promotes various categories of cat toys, e.g. Cat Tree, Cart Playground as you can review by accessing their website.

The Japan Patent Office (JPO) admitted registration of the mark on November 15, 2016 and published the gazette under trademark registration no. 5902786 on January 10, 2017.

 

LEGO Trademark

LEGO Juris A/S, the world’s largest Danish toy manufacturer, filed an opposition against the mark CATTYLEGO on the final day of a two-month duration for opposition.

LEGO argued that the mark CATTYLEGO shall be cancelled due to a conflict with the famous LEGO trademark (see above in left) based on Article 4(1)(viii), (xi), (xv) and (xix) of the Trademark Law.

 

 

BOARD DECISION

The Opposition Board admitted a high degree of reputation and population of the LEGO trademark as a source indicator of opponent in relation to brick toys by taking account of consecutive promotion of LEGO bricks in Japan for more than five decades, annual sales amount over 8 billion yens (Approx. USD 74 million ), its remarkable share in the sector of kids toys, and almost half of preschools in Japan have adopted the bricks for educational purpose.

In the meantime, the Board negated similarity between the CATTYLEGO mark and the LEGO trademark, stating that it is unconvincing to consider “CATTY” descriptive from overall appearance of the opposed mark. If so, opposed mark is unlikely to giver rise to any meaning and pronunciation in association with LEGO bricks or opponent.

Based on the foregoing, the Board concluded opposed mark shall not subject to Article 4(1)(xi) so long as both marks are dissimilar.

Board also found less likelihood of confusions due to a remote association between toys for pets and brick toys (for kids) in view of different manufacturers, consumers, usage, commercial channel for these goods as well as dissimilarity of the marks.

Article 4(1)(viii) is a provision to prohibit registration of trademarks which contain the representation or name of any person, famous pseudonym, professional name or pen name of another person, or famous abbreviation thereof. A term of “Person” is construed to include a legal entity as well as individual. It is obvious that opposed mark contains “LEGO” which corresponds to an abbreviated name of opponent. However, it is noteworthy that the Board, in adopting the article, dismissed opponent’s allegation by stating that opponent failed to demonstrate the use of the LEGO trademark in a manner that relevant consumers would conceive it as an abbreviation of opponent’s name.

Under Armour Lost Trademark Battle Against AGEAS in Japan

The Opposition Board of the Japan Patent Office (JPO) dismissed an opposition filed by Under Armour Incorporated, an American sporting goods manufacturer which supplies athletic and casual apparel, as well as footwear, against trademark registration no. 5924494 for the “H” device mark designating apparels, footwear, headgear, gloves, cycling wears in class 25.
[Opposition case no. 2017-900163, Gazette issue date:  February 23, 2018]

Under Armour logo

In an opposition, Under Armour claimed trademark registration no. 5924494 violates Article 4(1)(x), (xi), (xv) and (xix) of the Japan Trademark Law by citing a senior trademark registration no. 4701254 for the Under Armour logo (see below in left). Cited registration has been effectively registered since 2003 by designating clothing, footwear, sportswear, sports shoes in class 25.

Opposed mark

Opposed mark was applied for trademark registration on August 26, 2016 in the name of AGEAS INC. (USA) covering various goods in class 25 (see above in right).

Without any refusal notice from the JPO, opposed mark was granted for registration on January 16, 2017, and published in gazette for opposition on March 21, 2017.

Subsequently, Under Armour filed an opposition in May.

 

Opposition grounds

Article 4(1)(x) prohibits to register a trademark which is identical with, or similar to, other entity’s well-known mark over goods or services closely related with the entity’s business.
Article 4(1)(xi) is a provision to refrain from registering a junior mark which is deemed identical with, or similar to, any senior registered mark.
Article 4(1)(xv) prohibits to register a trademark which is likely to cause confusion with a business of other entity.
Article 4(1)(xix) prohibits to register a trademark which is identical with, or similar to, other entity’s famous mark, if such trademark is aimed for unfair purposes, e.g. gaining unfair profits, or causing damage to the entity.

To sum up, Under Armour wins if the Under Armour logo is considered confusingly similar to opposed mark. Meanwhile, even if the Under Amour logo obtains a high degree of popularity and reputation among relevant public in Japan, the opposition is overruled as long as both marks are dissimilar and unlikely to cause confusion.

 

Board decision

The Opposition Board admitted a high degree of popularity and reputation of the Under Armour logo as a source indicator of opponent among relevant consumers in the fields of sports.

In the assessment of mark appearance, the Board concluded:

“It is apparent that respective mark gives rise to a diverse visual impression in the mind of consumers because of different configuration. Opposed mark can be perceived as a device deriving from ‘H’. In the meantime, the cited mark as a device consisting of ‘U’ and upside-down ’U’. Besides, from phonetical and conceptual points of view, there exists no element to find similarity of the marks. Based on the foregoing, both marks shall be less likely to cause confusion due to a remarkable degree of visual difference.”

 

As a conclusion, the Board decided opposed mark is not subject to Article 4(1)(x), (xi), (xv) and (xix) of the Trademark Law, and admitted to continue a status quo.


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