Mattel failed in a trademark opposition to block “Salon BARBIES”

JPO dismissed an opposition by Mattel, Inc. – maker of the world-famous Barbie doll – who claimed “Salon BARBIES” is likely to cause confusion or association with famous Barbie doll when used on restaurant and fan club services. [Opposition case no. 2016-900395]


Opposed mark

Opposed mark, TM Registration no. 5881203, was filed on March 10, 2016 by designating various services in class 35 and 43 including restaurant, accommodation club services, business management analysis and others.

JPO granted to register opposed mark with no finding of refusal grounds and published for registration on October 11, 2016.


Opposition

On December 12, 2016, Mattel, Inc., an American multinational toy manufacturing company, opposed an application to register the mark Salon BARBIES (see above).

In the opposition, Mattel cited two senior trademark registrations.

  • TM Registration no. 5383631 for word mark “BARBIE” in standard character (classes 9, 14, 18, 24, 25, 28, 35)
  • TM Registration no. 589632 for the BARBIE logo (classes 9, 15, 20, 21, 25, 28)

Mattel argued that Opposed mark is subject to cancellation in violation of Article 4(1)(xv) of the Trademark Law on the grounds that its BARBIE mark had acquired such fame that, upon seeing the opposed mark used on restaurant and fan club service, the average consumer would be led to infer the existence of a connection to the owner of the famous brand.

Besides, Opposed mark is objectionable in violation of Article 4(1)(xix) as well since it would presumably aim to dilute or do harm to remarkable prestige bestowed to BARBIE mark.


Board decision

The Opposition Board admitted BARBIE mark has acquired a high degree of popularity and reputation as a source indicator of dolls among relevant traders and consumers at the time of both the application and the grant of registration of Opposed mark.
In the meantime, the Board denied similarity of both marks in visual, phonetical and conceptual points of view.
Based on dissimilarity of the marks, the Board concluded relevant traders and consumers are unlikely to confuse or associate the services using Opposed mark with opponent or any business entity economically or systematically connected with Mattel.
Therefore, Opposed mark shall not be cancelled due to Article 4(1)(xv) of the Trademark Law.

Article 4(1)(xix) is applicable only where both marks are identical or similar.
Besides, from the totality of the circumstances, the Board found no fact and evidence to show or infer that Opposed mark was filed with malicious or fraudulent intent on the part of registrant to hinder the business of opponent. Thus, Opposed mark shall remain valid in light of Article 4(1)(xix) as well.

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

Cancellation of Trademark Registration Filed with Malicious Intent

The Opposition Board of JPO declared cancellation of trademark registration No. 5778852 for the mark composed of a prancing horse design and term “Cavallino Lampanti” (Opposed mark) covering the goods in class 18 and 25 on the grounds that Opposed mark was registered with malicious intent to resemble a renowned horse emblem of opponent, Ferrari S.p.A., known for “cavallino rampante”, and free ride remarkable reputation bestowed on the opponent marks. [Opposition Case No. 2015-900335]

ferrari-opposition

In the opposition decision, the Board did not clearly admit similarity of the horse design depicted in both marks regardless of conceptual similarity, however, concluded the term “Cavallino Lampanti” of Opposed mark and a name “cavallino rampante” of Opponent mark are highly similar in both appearance and sound.

Besides, admittedly Opponent marks have been well known among general public in Italy even prior to an application date of Opposed mark. Opponent has promoted several goods belonging to class 18 and 25 e.g. bags, necktie, T-shirts, wallets, shoes to Japanese customers as well.

Based on the above facts, presumably an applicant of Opposed mark must have been acquainted with such circumstances and Opponent’s business. If so, it is not deniable to conclude that Opposed mark was filed with malicious intent to harm Opponent business and free ride valuable reputation bestowed on famous brand.

As a conclusion, the Board cancelled Opposed mark based on Article 4 (1) (xix) of the Trademark Law.

 

Article 4(1)(xix)

“No trademark shall be registered if the trademark is identical with, or similar to, a trademark which is well known among consumers in Japan or abroad as that indicating goods or services pertaining to a business of another person, if such trademark is used for unfair purposes (referring to the purpose of gaining unfair profits, the purpose of causing damage to the other person, or any other unfair purposes, the same shall apply hereinafter).”

 

Article 4(1)(xix) aims to prevent unauthorized entities from registering a well-known mark in foreign country even if the mark itself has not yet acquired high recognition in Japan to the extent relevant domestic consumers become aware of such situation in foreign country. The article plays a significant role in attacking a fraudulent trademark registration where it designates goods or services remotely associated with business of a famous brand owner.

1187hirai%e4%bf%ae%e6%ad%a3003_2Masaki MIKAMI – Attorney at IP Law (Japan)

MARKS IP LAW FIRM http://www.marks-iplaw.jp/