ETRO was defeated with a trademark opposition over famous Pegasus emblem

The Opposition Board of JPO decided two figurative marks depicting Pegasus are deemed dissimilar from phonetic, conceptual and visual point of view and dismissed an opposition filed by ETRO S.P.A. [Opposition no. 2014-900325].

etro

Opposition by ETRO

ETRO disputed the opposed mark should be cancelled based on Article 4(1)xi of the Trademark Law due to similarity to ETRO’s famous Pegasus emblem (Opponent mark).

In an opposition brief, ETRO alleged both marks are considered confusingly similar in appearance on the grounds that both marks depict an image of Pegasus getting up on hind legs in silhouette. Besides, they are confusing in concept as well since both marks give rise to a meaning of Pegasus in the mind of consumers. Consequently, the opposed mark is deemed similar to famous Pegasus emblem.

Board decision

In the meantime, the Opposition Board concluded both marks are dissimilar contrary to ETRO’s allegation.

With respect to concept, it becomes usual to depict Pegasus in different posture and style. A mere fact that both marks share same image of Pegasus is insufficient to determine visual aspect of respective mark by taking into consideration of circumstance that Pegasus is legendary creatures as well. Thus, it is not permissible to admit both marks simply give rise to a meaning of Pegasus. Rather, they should respectively be considered a mark having no specific meaning at all.

Regarding appearance, obviously there exists difference in depicting Pegasus. Pegasus in the opposed mark gets up on hind legs. Meanwhile, the opponent mark apparently is galloping. Such difference produces distinctive impression in the mind of consumers. Difference in direction and detail depicting of Pegasus should not be neglected.

As a conclusion, the opposed mark is deemed dissimilar to famous Pegasus emblem of ETRO.

1187hirai%e4%bf%ae%e6%ad%a3003_2MASAKI MIKAMI, Attorney at IP Law (JAPAN) – 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/