カテゴリー: similarity of service

OMEGA unsuccessful in cancelling OMEGA mark

The Japan Patent Office dismissed a trademark opposition claimed by a Swiss luxury watchmaker, OMEGA SA against trademark registration no. 5916814 for the OMEGA mark in class 41 by finding less likelihood of confusion due to remote association between watches and services in class 41.
[Opposition case no. 2017-900136]

Opposed OMEGA mark

Opposed mark (see below) was filed by a Japanese business entity on April 28, 2016 by designating the services of “fortune-telling; educational and instruction services relating to arts, crafts, sports or general knowledge; providing electronic publications; Art exhibition services; Reference libraries of literature and documentary records; production of videotape film in the field of education, culture, entertainment or sports; photography etc.” in class 41.


As a result of substantive examination, the JPO admitted registration on January 27, 2017 and published for registration on February 28, 2017.

OMEGA’s Opposition

To oppose against registration, OMEGA SA filed an opposition on April 28, 2017.

In the opposition brief, OMEGA SA asserted the opposed mark shall be cancelled in violation of Article 4(1)(xv) of the Japan Trademark Law by citing the owned luxury watch brand of OMEGA (see below).

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 not applicable to the case where a mark in question is objectionable under Article 4(1)(xi), which prohibit a junior mark from registering if it is deemed identical with or similar to any senior registration. Article 4(1)(xv) plays a key role where a junior mark designates remotely associated or dissimilar goods or services with that of a well-known brand business.

Board Decision

The Opposition Board admitted similarity of both marks and a remarkable degree of reputation and population of opponent OMEGA mark in relation to watches, however, questioned whether such reputation has prevailed even among relevant consumers of designated services in class 41 as long as opponent failed to produce sufficient evidences regarding the issue.

Based on remote association between watched and services designated under the opposed mark, the Board decided that, by addressing less creativity of the OMEGA mark originating from a familiar Greek alphabet even to Japanese with an ordinary care, relevant consumers of designated services in class 41 are unlikely to confuse or misconceive a source of the opposed mark with OMEGA SA or any entity systematically or economically connected with the opponent.

Similarity of Goods and/or Services

Article 4(1)(xi) of the Japanese Trademark Law stipulates that trademark is not registrable if it is identical with, or similar to, another entity’s senior registration provided that the applied trademark is used in connection with the same designated goods or designated services related to the senior registration.

In evaluating dissimilarity of goods or services between the applied mark and senior registration, JPO relies on “Examination Guidelines for Similar Goods and Services (EGSGS).”

EGSGS, in compliance with the Nice Classification, categorize goods having commonality in terms of the production sector, the sales sector, raw materials, qualities, etc.; or services having commonality in terms of how they are being offered, the purposes for which they are being offered, the places they are being offered, etc.

It aims to determine which goods or services belong to which group in light of above commonality, and therefore, in principle, goods/services in each group is deemed similar respectively.

Each group is numbered with a five-digit, common, alphanumeric code, which is called “Similar Group Code (SGC)”.

Similar Group Code (SGC)

As an established examination practice, JPO has considered any goods and services assigned to the same SGC to be in principle similar to each other.

[Example of SGC for goods]

–       Cl.16 Books (26A01)

–       Cl.24 Towels (17B01)

[Example of SGC for services]

–       Cl.41 Educational services for art, sports, or knowledge (41A01)

–       Cl.44 Medical practices (42V02)

 

Same code can be numbered even if each goods/services is classified in different class based on the Nice Classification, vice versa.

[Example of same SGC in different class]

–       Cl.14 Jewelry case (20A01) similar to Cl.20 Furniture (20A01)

[Example of different SGC in same class]

–       Cl.16 Books (26A01) dissimilar to Cl.16 Pencils (25B01)

 

As trademark practitioner, SGC provides us useful information in assessing registrability of a junior mark and possibility of trademark infringement.

In the meantime, occasionally it becomes an unexpected obstacle in view of less likelihood of confusion in the course of actual trade.

Similar code system is introduced in neighboring Asian countries, such as Korea and China.

 

If you want to find more information on SGC, please visit at a website of the JPO for your reference.

https://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/goods_services_10-2016.htm