The Opposition Board of Japan Patent Office (JPO) decided to cancel a trademark registration for word mark “F1 HEATER” in favor of an opponent, Formula One Licensing BV.
[Opposition case no. 2016-900251]
Opposed mark “F1 HEATER” was filed on December 4, 2015 by designating electric heaters in class 11 and granted for registration on March 24, 2016.
Upon a payment of statutory registration fee, the opposed mark was published in gazette on June 14, 2016.
Opposition by Formula One
Formula One Licensing BV, managing the trade marks for the FIA Formula One World Championship, filed an opposition based on Article 4(1)(xv) of the Trademark Law by complaining that relevant public is likely to confuse or misconceive electric heaters using the opposed mark with goods derived from opponent group or any entity economically or systematically connected with opponent.
Likelihood of confusion
The Opposition Board admitted “F1” has become famous as an indicator of car races and automotive for race managed by the opponent among relevant consumers in Japan.
In the assessment of trademark similarity, the Board considered a word “HEATER” is less distinctive in relation to electric heaters. If so, consumers and traders are likely to conceive that the opposed mark contains the term “F1” from appearance and confuse a source of electric heaters with FIA, opponent or any entity economically or systematically connected with opponent. Accordingly, the opposed mark should be cancelled in violation of Article 4(1)(xv) retroactively.
Opposed mark owner voluntarily waived trademark registration during the opposition trial prior to a decision.
MASAKI MIKAMI, Attorney at IP Law – Founder of MARKS IP LAW FIRM