Apple Inc. Defeated in Trademark case over the name ‘MAC’ in Japan

The Opposition Board of Japan Patent Office (JPO) dismissed an opposition filed by the U.S. tech giant, Apple Inc. against trademark registration no. 5986073 for a word mark “Face2Mac” due to unlikelihood of confusion with Apple’s famous trademark “Mac”.
[Opposition case no. 2018-900002, Gazette issued date: May 31, 2019]

Opposed mark

Opposed mark, consisting of a word mark “Face2MAC” in standard character, was filed in the name of Allied Telesis Holdings K.K., a Japanese company deploying in business field of network devices and cyber securities.

The mark was filed to JPO on January 31, 2017 and admitted registration on October 6, 2017 over the goods of “computer software; telecommunication machines and apparatus; electronic machines and apparatus; network cameras” in class 9, and other services in class 37, 42 and 45.

Opposition by Apple Inc.

During a two-months opposition period after registration, Apple Inc. filed an opposition.

Apple argued that opposed mark “Face2Mac” shall be retroactively cancelled in violation of Article 4(1)(xv) of the Trademark Law since opposed mark contains (i) a famous trademark “Mac” of Apple Inc. and (ii) a term “Face” which reminds consumers of Apple’s well-known mark “FaceID” and “FACETIME”. If so, relevant consumers and traders are likely to confuse or misconceive opposed mark with Apple or any business entity systematically or economically connected with opponent.

Article 4(1)(xv)

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.

Board decision

The Opposition Board did not question a remarkable degree of popularity and reputation of trademark “Mac” as an abbreviated source indicator of opponent’s personal computers ‘Macintosh’.

In the meantime, the Board considered both marks distinctively give rise to a different impression in the minds of relevant consumers from visual, phonetical and conceptual points of view. Besides, the Board emphasized the term “MAC” is commonly used as an abbreviation to indicate ‘Media Access Control’ in business field of computers and telecommunications. According to produced evidences by opponent, Apple Inc. has continuously used the mark “Mac” with a big ‘M’ and small letters ‘ac’, but not in a configuration of “MAC” at all. Therefore, it is rather presumed that relevant consumers at the sight of opposed mark shall conceive of media access control from “Face2MAC”, than Apple’s famous trademark.

Based on the foregoing, the Board concluded that relevant consumers of goods in question are unlikely to confuse opposed mark with Apple Inc. or any business entity systematically or economically connected with opponent.

Thus, opposed mark is not subject to Article 4(1)(x), and valid as a status quo.


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

JPO sided with Apple Inc. over trademark battle between Mac and MacEdge

Apple Inc. has won a trademark opposition it lodged against GIGAZONE INTERNATIONAL CO., LTD., a Taiwanese company, over Japanese trademark registration no. 5877027 for word mark “MacEdge”.
[Opposition case no. 2016-900375, Gazette issued date: April 27, 2018]

OPPOSED MARK “MacEdge”

Opposed mark “MacEdge” (see below) was applied for trademark registration in Japan on March 10, 2016 by designating several accessories of computers in class 9.

The Japan Patent Office (JPO) admitted registration of the mark on August 8, 2016 and published the gazette under trademark registration no. 5877027 on September 27, 2016.

Apple “Mac” Computer and Operating system

In an opposition, Apple Inc. argued opposed mark violates Article 4(1)(xi) of the Japan Trademark Law based on famous Apple “Mac” computer and operating system which have been continuously distributed under various trademarks, e.g. MacBook, MacBook Air, MacBook Pro, iMac, Mac Pro, Mac mini, mac OS, Mac OS X, since 1984.

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.

Apple Inc. pointed that MacEdge website operated by the opposed party (see below) is likely to cause confusion with opponent since the front page looks similar to that of Apple’s website and it refers to opponent products.

 

Board decision

The Opposition Board admitted a high degree of reputation and popularity of opponent trademark “Mac” in the field of personal computers. In the assessment of mark similarity, the Board found “MacEdge” could be perceived as a combination of “Mac” and “Edge” because of two capital letters of “M” and “E”. As long as the “Mac” trademark becomes famous as a source indicator of Apple Inc. in the field of personal computers, relevant consumers are likely to connect opposed mark with opponent since the term “Mac” in opposed mark is almost identical with Apple “Mac” trademark. In the meantime, the term “Edge”, a common English word, is less distinctive and does not give rise to any specific meaning in combination with “Mac”.

Based on the foregoing, the Board decided that relevant consumers who purchase accessories of computers 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