Lee unsuccessful in removing Leeao from trademark registration

The Japan Patent Office dismissed a trademark opposition claimed by the second largest manufacturer of jeans in the United States, The H.D. Lee Company, Inc. (LEE) against trademark registration no. 5990967 for the Leeao logo mark in class 25 by finding less likelihood of confusion with “Lee” because of remarkable dissimilarity between the marks.
[Opposition case no. 2017-900381]

 

Leeao

Opposed mark “Leeao” (see below) was filed by a Japanese business entity on April 28, 2017 by designating clothing and clothes for sports in class 25.

Going through substantive examination, the JPO admitted registration on September 29, 2017 and published for registration on November 21, 2017.

LEE’s Opposition

To oppose against registration, LEE filed an opposition on December 20, 2017.
In the opposition brief, LEE asserted the opposed mark shall be cancelled in violation of Article 4(1)(xi) of the Japan Trademark Law given a high reputation and popularity of opponent mark “Lee” in the business field of jeans having longer history than LEVIS and similarity of opposed mark with its owned senior trademark registration no. 1059991 for the “Lee” logo mark (see below) over clothing in class 25 effective since 1974.

LEE argued opposed mark gives rise to a pronunciation of ‘liː’ from the first three letters, allegedly a prominent portion of opposed mark, since remaining elements are rarely perceived as letters of “ao” from its appearance.

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 LEE’s senior registration covers clothing in class 25, similarity of goods is indisputable in the case.

 

Board Decision

The Opposition Board, based on the fact-finding that Lee jeans has been distributed in Japan for five decades and its frequent appearance in media, admitted a high degree of popularity and reputation of “LEE” logo as a source indicator of opponent jeans among general consumers.

In the meantime, the Board completely denied similarity between the marks on the grounds that:

  1. Opposed mark, from appearance, shall not be seen as a combination of “lee” and “ao” unless “ao” does clearly give rise to a descriptive meaning. If so, opposed mark shall constitute one word as a whole and be deemed sufficiently distinctive in concept as well.
  2. In the meantime, relevant consumers of goods in question shall conceive opponent mark as a source indicator of famous “Lee” jeans.
  3. If so, both marks are completely distinguishable from three aspects of appearance, sound, and concept.

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

Is GRAND HOME dissimilar or similar to GRAN HOME?

In a recent appeal trial over trademark dispute, the Appeal Board of Japan Patent Office (JPO) overturned the Examiner’s determination and held that a word mark “GRAND HOME” is dissimilar to, and unlikely to cause confusion with a senior trademark registration for the “GRAN HOME” mark in connection with construction, reform or repair service for residential homes and buildings.

[Appeal case no. 2017-13251, Gazette issue date: November 30, 2018]

GRAND HOME

Kabushiki Kaisha GRAND HOME, a Japanese business entity filed a trademark application for a word mark “GRAND HOME” in standard character covering services of reform, repair, maintenance, cleaning and construction for residential homes and buildings in class 37 on May 17, 2016 [TM application no. 2016-53226].

Going through substantive examination by the JPO examiner, applied mark was completely refused registration based on Article 4(1)(xi) of the Trademark Law due to a conflict with senior trademark registration no. 5534717 for word mark “GRAN HOME” written in Japanese character(katakana) for the same services in class 37.

There are basic rules that the examiner is checking when evaluating the similarity between the marks:

  • visual similarity
  • aural similarity
  • conceptual similarity

and taking into account all these three aspects examiner makes a decision if a mark is similar (at least to some extent) with the earlier mark and if there is a likelihood of confusion for the consumers.

Applicant filed an appeal against the refusal on September 6, 2017 and argued dissimilarity of the marks.

Appeal Board decision

The Board reversed the examiner’s refusal and admitted applied mark to registration by stating that:

  1. From appearance, both marks are distinguishable because of a difference in literal elements. Applied mark consists of alphabetical letters. Meanwhile, the earlier mark consists of Japanese character.
  2. Having compared the sound of applied mark “ɡrænd hoʊm” and earlier mark “ɡræn hoʊm”, there evidently exists a difference in the middle sound. The difference shall not be negligible from overall sound composition as long as the sound “D” in the middle of applied mark is pronounced in a clear and intelligible manner. If so, both marks are aurally distinctive.
  3. Applied mark gives rise to a meaning of ‘large house’. In the meantime, the earlier mark “GRAN HOME” does not give rise to any specific meaning. Hence, both marks are dissimilar from conceptual point of view.
  4. Based on the foregoing, it is unlikely that relevant consumers confuse or misconceive a source of “GRAND HOME” with the earlier mark “GRAN HOME”.

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

POLO BCS defeated in trademark battle with POLO RALPH LAUREN

In a ruling on the merits of whether or not an applied mark “POLO HOME / BRITISH COUNTRY SPIRIT” is likely to cause confusion with a world-famous trademark “POLO” by the fashion house Ralph Lauren, the Japan IP High Court sided with the JPO and ruled in favor of Ralph Lauren on December 10, 2018.

[Court case no. H30(Gyo-ke)10067]

 

“POLO HOME / BRITISH COUNTRY SPIRIT”

POLO BCS Co., Ltd., plaintiff of the case, is a Japanese business entity, promoting apparel products bearing trademarks of “POLO BRITISH COUNTRY SPIRIT”, “POLO BCS”, and “POLO HOME”.

 

POLO BCS filed a trademark registration for the mark “POLO HOME / BRITISH COUNTRY SPIRIT” as shown in below on January 5, 2015 by designating clothing and other goods in class 25. [TM application no. 2015-305]

 

In fact, POLO BCS, a registrant of the word mark “POLO” on class 25 in Japan since 1997 (TM registration no. 1434359 and 2721189), granted trademark license to Ralph Lauren in the year of 1987 and since then continuously allows RL to use the mark “POLO” in Japan.

 

JPO decision

The Japan Patent Office (JPO) rejected the applied mark based on Article 4(1)(xv) of the Trademark Law on June 3, 2016. The refusal relies on a prominent portion of the mark “POLO” is likely to cause confusion with RALPH LAUREN when used on apparel products, being that “POLO” becomes remarkably well-known for an abbreviation of POLO RALPH LAUREN among relevant consumers with an ordinary care.

Article 4(1)(xv) is a provision to prohibit any mark from being 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.

POLO BCS filed an appeal against the refusal on August 16, 2016, but its attempt resulted in failure [Appeal case no. 2016-12344].
To contest the JPO decision, POLO BCS appealed to the IP High Court filed immediately.

 

IP High Court decision

The court admitted a high degree of reputation and popularity of Ralph Lauren and “POLO” as an abbreviation of Polo Ralph Lauren in connection with apparel products by taking account of following fact findings.

  1. The first collection for Polo brand was launched in the US by a designer Mr. Ralph Lauren in 1967.
  2. Annual sales of Ralph Lauren exceed 7 billion USD in 2013 around the globe.
  3. In 1976, Ralph Lauren launched Polo brand and shops in Japan.
  4. According to brand perception survey of 900 randomly selected Japanese consumers ages 20 to 69 conducted in 2010, 81.8% of consumers recognize Ralph Lauren.
  5. Annual sales of 26.7 billion JPY in Japan (fiscal year 2008) accounts for 6% of global sales of Ralph Lauren.

Besides, the court found close similarity between applied mark and “POLO” by Ralph Lauren given a tiny font size of “BRITISH COUNTRY SPIRIT” in the configuration of applied mark and less distinctiveness of the word “HOME” in relation to apparel for home use.

Plaintiff argued to consider the fact that RL has used the “POLO” mark in Japan under license from plaintiff. But the court negated the argument stating that such fact would not mean consumers recognize the mark as a source indicator of plaintiff. In addition, plaintiff argued originality and fame of the word “POLO” as a source indicator of Ralph Lauren by citing Polo Game, organizations for the game, e.g. US POLO ASSOCIATION, HURLINGHAM POLO, and a generic name of Polo shirts. Court considered such circumstances would mean less originality of the mark “POLO”, but never deny fame of the mark as a source indicator of Ralph Lauren as long as consumers doubtlessly connect it with Ralph Lauren.

Based on the foregoing, the IP High Court concluded it is obvious that relevant consumers are likely to confuse or misconceive a source of the applied mark with Ralph Lauren or any entity systematically or economically connected with RL when used on clothing in class 25.


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

JPO decision over POWER TECH trademark

In an administrative appeal disputing trademark similarity between TM registration no. 4015750 for word mark “POWERTECH” and a junior application no. 2016-137853 for the “AC POWERTECH” device mark represented as below, the Appeal Board of the Japan Patent Office decided that both marks are deemed dissimilar and reversed examiner’s rejection.
[Appeal case no. 2018-6124, Gazette issued date: October 26, 2018]

 

TM Registration no. 4015750

The cited mark, consisting of a word “POWERTECH” colored in red (see below), was registered on June 20, 1997 by designating various vehicles in class 12.

Junior Application no. 2016-137853

Applied junior mark consists of the following “AC POWERTECH” device mark (see below).

It was applied for registration on December 7, 2016 by designating vehicles in class 12.

The JPO examiner refused the applied mark due to a conflict with senior TM registration no. 4015750 based on Article 4(1)(xi) 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.

 

Subsequently, the applicant filed an appeal against the rejection and disputed dissimilarity of both marks.

 

Board decision

In the decision, the Appeal Board held that:

Applied mark is a composite mark mainly consisting of two words of “AC” and “POWERTECH” written in two lines and a black hexagon.

Even if the term “AC” is likely to be used as an indication of type and mode of vehicles in commerce, from appearance of applied mark as a whole, the Board opines that relevant consumers would not conceive the term as indication of type or model. If so, it is questionable whether consumers ignore “AC” in the applied mark and pay considerable attention to the term “POWERTECH”. Thus, it is reasonable to conclude that applied mark shall give rise to a pronunciation nothing but “AC POWERTECH” and no specific meaning.

Based on the foregoing, in the assessment of trademark similarity, the Board decided that:

Obviously, both marks are distinguishable in appearance. Given applied mark does give rise to a pronunciation of “AC POWERTECH” and no meaning, the Board finds no ground to affirm examiner’s rejection from visual, phonetic, and conceptual point of view.


Astonishingly, JPO viewed the applied mark “AC POWERTECH” in its entirety irrespective of significant difference in font size between “AC” and “POWERTECH”.

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

“Teddy Bear” versus “Rose Teddy Bear”

The Appeal Board of Japan Patent Office (JPO) ruled that senior trademark registrations for the mark “Teddy Bear” in standard character over goods of trees, flowers, dried flowers, plants, seedlings, saplings in class 21 is unlikely to cause confusion with a junior mark “Rose Teddy Bear” in plain letters even if the mark is used on rose and rose bushes in class 21. [Appeal case no. 2017-18006, Gazette issue date: October 26, 2018]

Senior registrations for the “Teddy Bear” mark

“TEDDY BEAR”, a children’s toy, made from soft or furry material, which looks like a friendly bear, has its origin after Teddy, nickname for Theodore Roosevelt who was well known as a hunter of bears.

In Japan, name of the toy bear has been registered in the name of Nisshin OilliO Group. Ltd. on various goods in class 29, 30, 31 and 32 since 1986.

Junior application for “Rose Teddy Bear”

Junior mark for “Rose Teddy Bear” was applied for registration by a French company on August 10, 2016 over goods of rose, rose trees and other items relating to rose in class 31.

JPO examiner rejected junior mark due to a conflict with the “Teddy Bear” mark based on Article 4(1)(xi) of the Trademark Law on September 5. 2017.

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.

To seek for registration, applicant filed an appeal against the refusal on December 5, 2017.

Appeal Board decision

The Appeal Board set aside a refusal on the grounds that:

(1) From appearance and pronunciation, the term of “Rose Teddy Bear” shall be recognized as one mark in its entirety.
(2) Relevant consumers and traders are likely to conceive the term as a coined word since it does not give rise to any specific meaning as a whole.
(3) Therefore, the refusal based on the assumption that literal portions of “Teddy Bear” in junior mark plays a dominant role made a factual mistake and shall be cancelled consequently.

It seems that the Board decision is not consistent with the Trademark Examination Guidelines (TEG) criteria.

[Chapter III, Part 10 of TEG]
A composite trademark having characters representing an adjective (characters indicating the quality, raw materials, etc. of goods or characters indicating the quality of services, the location of its provision, quality, etc.) is judged as similar to a trademark without the adjective as a general rule.

In this respect, as long as the junior mark designates rose in class 21 and the term “Rose” in the mark further impresses the concept of rose in mind of consumers, the portion of “Rose” should be considered descriptive in relation to designated goods. Otherwise, any combined mark composed of registered mark and a generic term pertinent to the designated goods is deemed dissimilar to the registered mark.


I suppose the Board signaled a narrower scope of right where trademark has evidently its origin from other entity or meaning unrelated to senior registrant.

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

Trademark dispute for XXXX

In a recent trademark appeal trial to seek dismissal of examiner’s refusal, the Appeal Board of Japan Patent Office (JPO) set aside the refusal and allowed registration of TM Application no. 2017-21396 for the XXXX mark because of dissimilarity to a senior registration for “XXXX” mark.
[Appeal case no. 2018-5881, Gazette issue date: October 26, 2018]

 

Applied mark

The mark in dispute (see below left) was applied for registration in the name of Mitsukoshi Isetan, Japan’s largest department store group, on February 22, 2017 by designating goods of clothing; belts in class 25 and retail or wholesale services for clothing, bags and pouches, handkerchief and hair ornaments in class 35.

 

Cited TM registration for “XXXX”

The JPO examiner refused the applied mark due to a conflict with senior TM registration no. 4147840 for the mark “XXXX” (see above right) based on Article 4(1)(xi) 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.

Cited mark has been registered since 1998 over goods of clothing, garters, sock suspenders, suspenders [braces], waistbands, belts for clothing, footwear, clothes for sports, special footwear for sports in class 25.

Applicant filed an appeal against the decision on April 27, 2018 and disputed dissimilarity of the marks.

 

Appeal Board decision

The Appeal Board sided with the applicant and negated similarity of both marks by stating that:

Applied mark shall be seen to represent a certain geometric figure. It appears that cited mark represents four alphabetical letters of “X” in line. It means there finds distinguishable gap between geometric figure and alphabetical letters from appearance.
Applied mark does not give rise to any specific pronunciation. In the meantime, cited mark shall have pronunciations of “eks eks eks eks” and “four eks”. Likewise, both marks are sufficiently distinguishable in pronunciation.
Besides, as long as both marks do not give rise to any specific meaning, it is not feasible to compare them in concept.
In view of above aspects, it unlikely happens confusion between the marks and thus deemed dissimilar.

Based on the foregoing, the Board decided applied mark is not subject to Article 4(1)(xi), and admitted registration.


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

Trademark Dispute over Pendant Lamp Shade

In a decision to the invalidation trial claimed by LUIS POULSEN A/S, a Danish company, the Trial Board of Japan Patent Office (JPO) upheld the petition and invalidated TM registration no. 5643726 for a combination mark containing the pendant lamp shade design (see below) in violation of Article 4(1)(xix) of the Trademark Law.
[Invalidation case no. 2017-890003, Gazette issue date: September 28, 2018]

 

Disputed mark

Disputed mark, consisting of a literal element “R&M Interior Store”, “R&M” logo in the shape of shield and the pendant lamp shade design (see below), was filed on June 14, 2013 by a Japanese business entity, designating wholesale or retail services for lighting apparatus and others in class 35.

Going through substantive examination, the JPO admitted registration on January 17, 2014. Three years after the registration, LUIS POULSEN A/S filed an invalidation action against disputed mark on January 4, 2017.

 

Invalidation trial

During the invalidation trial, LUIS POULSEN A/S argued disputed mark shall be invalidation based on Article 4(1)(xix) since the applicant filed the mark, confusingly similar to trademark registration no. 5825191 for 3D mark in the shape of unique pendant lamp shade (see below) well-known for “PH5” created by a Danish designer Poul Henningsen, with a malicious intention to damage claimant.

According to supporting evidence produced to the trial, “PH5” lamp was originally designed in 1958. It has been promoted for sale in the marketplace of Japan since 1976. More than 500,000 lamps have been produced and sold around the globe. To bolster its reputation, LUIS POULSEN submitted a written declaration by Danish Ambassador to Japan. Besides, 3D shape of “PH5” lamp shade is successfully registered by finding acquired distinctiveness as a result of substantial use and uniqueness finally to serve as a source indicator (TM Registration no. 5825191).


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 Board found that:

  1. 3D shape of “PH5” lamp has become famous as a source indicator of LUIS POULSEN among relevant domestic consumers well before the filing date of disputed mark as a result of continuous marketing activities in Japan since 1976.
  2. In the assessment of trademark similarity, it is unquestionable that the pendant lamp shade design depicted in disputed mark closely resembles “PH5”. From overall appearance, relevant consumers and traders will conceive the portion of the pendant lamp shade design plays a dominant role in disputed mark.
  3. The fact that applicant promoted similar lamp shade as “reproduct” or “generic product” of “PH5” convinces us that applicant has been aware of prospective controversy and causing damage to business interest of LUIS POULSEN.

Based on the above findings, the Board concluded that applicant filed a similar mark to “PH5” well-known for a pendant lamp shade of LUIS POULSEN with a malicious intention to gain unfair profits or cause damage to claimant. Thus, disputed mark shall be invalidated in violation of Article 4(1)(xix) of the Trademark Law.


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

Apple successful in a trademark opposition to block “PriPhone”

Apple Inc. achieved a victory over trademark battle involving famous “iPhone”.
In a recent trademark opposition, case no. 2017-900319, the Opposition Board of Japan Patent Office (JPO) decided in favor of Apple Inc. to cancel trademark registration no. 5967983 for word mark “PriPhone” due to a likelihood of confusion with Apple’s famous “iPhone”.

“PriPhone”

Opposed mark “PriPhone” was filed by a Japanese business entity on December 26, 2016 by designating the goods of “mobile phones; smart phones; downloadable image and music files; telecommunication machines and apparatus; electronics machines, apparatus and their parts” in class 9.
The JPO admitted registration on July 28, 2017 and published for registration on August 22, 2017.

Apple’s Opposition

To oppose the registration, Apple Inc. filed an opposition against “PriPhone” on October 20, 2017.

In the opposition brief, Apple Inc. asserted the opposed mark shall be cancelled in violation of Article 4(1)(xv) of the Japan Trademark Law given a remarkable reputation of opponent mark “iPhone” since nearly a quarter of Japanese have favorably used iPhone as a personal device to connect with internet.
Apple argued the opposed registrant knowingly included famous “iPhone” trademark on the ground that the company promotes protective cases, covers for iPhone.

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 consumers. Theoretically, Article 4(1)(xv) is applicable to the case where both marks are dissimilar, but likely to cause confusion among relevant consumers because of a related impression attributable to reputation of the well-known mark.

Board Decision

The Opposition Board admitted a remarkable degree of reputation and popularity of opponent trademark “iPhone” among general consumers which occupies the highest share (54.1% in 2012) of the smart phone market for past five years consecutively.

In the assessment of mark similarity, the Board found “PriPhone” would be perceived containing “iPhone” in the mark, provided that “iPhone”, as a coined word, is deemed a unique and famous trademark. Besides, in view of close connection between smart phones and the goods in question, similarity with respect to consumers, it is undeniable that relevant consumers with an ordinary care are likely to conceive “iPhone” from opposed mark when used on goods in question.

Based on the foregoing, the Board decided that relevant consumers are likely to confuse or misconceive a source of the opposed mark with Apple Inc. or any entity systematically or economically connected with the opponent.
If so, opposed mark shall be cancelled in violation Article 4(1)(xv) of the trademark law.


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

Japan IP High Court: Cancellation of trademark right due to inappropriate use by licensee

The IP High Court ruled on September 26, 2018 to totally cancel TM Reg. No. 1809362 for the mark “TOP-SIDER” on the ground that use of the registered mark by licensee is likely to cause confusion with goods from a business entity other than trademark owner.
[Case no. Heisei30(Gyo-ke)10053]

TM Registration – “TOP-SIDER”

Registered mark in question, consisting of the word “TOP-SIDER” written in plain Gothic font (see below), was registered in 1985 over the goods of clothing, coats, shirts and others in class 25 and  has been validly renewed over three decades .

Licensee’s Use

Mizujin  Co., Ltd, a  non-exclusive licensee of the registered mark in question, used “TOP-SIDER” logo on T-shirts (see below).

Sperry Top-Sider

Sperry Top-Sider LLC, a US business entity, famous for “Sperry Top-Sider” deck shoes, filed a cancellation trial against the registration based on Article 53 of the Japan Trademark Law and argued that above use by Mizujin shall be inappropriate since it is likely to cause confusion with “Sperry Top-Sider”.

Cancellation trial based on Article 53

JPO sided with Sperry and decided to entirely cancel the registration. To contend, trademark owner appealed to the IP High Court and alleged cancellation of the decision.

Article 53 of the Trademark Law provides that trademark right is subject to cancellation if use of the mark by licensee causes confusion with respect to another’s business and trademark owner is liable for failure to supervise with an ordinary care.

IP High Court decision

The IP High Court upheld the JPO decision, stating that:

  1. Apparently from totality of the circumstances, trademark owner must have noticed above use by Mizujin.
  2. ”TOP-SIDER” logo contains figurative elements to be seen as cloud and yacht, and looks quite similar to the Sperry mark.
  3. “Sperry Top-Sider” logo has become well-known for Sperry’s deck shoes among traders and general consumers.
  4. Since T-shirts and shoes are offered for sale to wear at same apparel shops, they are closely related with each other in view of sales channel as well as consumers.
  5. Thus, the Court finds that above use by licensee is likely to cause confusion with respect to Sperry business on deck shoes.

It is noteworthy that trademark owner is entitled to grant a licensee the right to use registered mark, however, by doing so , it enhances a risk to lose trademark right if he is careless to supervise the licensee’s inappropriate use and cause confusion.

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

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