Famous sportswear brand “PUMA” unsuccessful in setting aside registration of “KUMA” mark

In a recent Japan trademark opposition decision, the Opposition Board ruled that famous PUMA logo for sportswear was dissimilar to the “KUMA” mark with bear design for goods in class 25, so as to cause confusion.

In the case, Opposition case no. 2016-900308, the Board was faced with considering whether the KUMA device mark of Applicant for “clothing; headgears; T-shirts; sportswear; sports shoes” in class 25 was confusingly similar to Opponent’s famous PUMA logo for “sportswear”.

In concluding that confusion was unlikely, the Board stated that two “key considerations” in making such a determination were famousness of Opponent’s mark and the similarity between the trademarks. With regard to the former factor, the Board admitted remarkable reputation and famousness of the PUMA logo among relevant public in Japan. The Board nonetheless reached its conclusion of dissimilarity – most likely on the fact that difference in the first letter generates distinctive impression in the mind of consumers since “KUMA” means bears (wild animals) in Japanese.

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