SISLEY lose trademark opposition over SOIR DE LUNE

In a recent trademark opposition, the Opposition Board of the Japan Patent Office (JPO) held a junior trademark registration no. 6041076 for word mark “LunaSoir” is dissimilar to a senior IR registration no. 845029 for word mark “SOIR DE LUNE”, one of fragrance brands by SISLEY, a French producer of cosmetics and fragrances, even when used on fragrance in class 3
[Opposition case no. 2018-900194, Gazette issue date: July 26, 2019]


Opposed mark (see below) was applied for registration on July 31, 2017 by designating soaps, perfumery, cosmetics and others in class, and published for registration on June 5, 2018 without any office action from the JPO examiner.


Opponent, SISLEY, a French producer of cosmetics and fragrances, claimed that the opposed mark “LunaSoir” shall be cancelled under Article 4(1)(xi) of the Japan Trademark Law by citing a senior trademark registration for word mark “SOIR DE LUNE”covering soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices in class 3.

Article 4(1)(xi) is a provision to prohibit from registering a junior mark which is deemed identical with, or similar to, any senior registered mark.

SISLEY argued both marks give rise to a same meaning of “moon night” given “Luna” and “LUNE mean “moon” in Latin and French respectively, “SOIR” means “night” in French, and “DE” corresponds to “of” in English. If so, both marks are likely to cause confusion from a conceptual point of view.

Board Decision

In the decision, the Board decided that “LunaSoir” and “SOIR DE LUNA” are both dissimilar in appearance, pronunciation as well as concept.

The Board assessed, by taking into consideration a relatively low level of knowledge to Latin and French language among relevant consumers with an ordinary care, opposed mark consisting of “Luna” and “Soir” would not give rise to any specific meaning at all.
Based on the fact finding, the Board concluded that opposed mark “LunaSoir” is obviously dissimilar to SISLEY’s fragrance brand “SOIR DE LUNE” from concept, needless to say appearance and pronunciation.

It is noteworthy to a brand owner from non-English speaking nations that conceptual similarity would not play a defensive role to prevent free-riding and enjoy a broader scope of protection against use by others where the brand contains a non-English term unfamiliar to Japanese.

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

SISLEY, French luxury beauty brand, failed in a trademark opposition against the mark “SISLOY”

In a recent decision, the Opposition Board of the Japan Patent Office dismissed an opposition filed by CFUB Sisley, a French producer of cosmetics and fragrances, founded in 1976 against the word mark “SISLOY” written in a standard character.
[Opposition case no. 2016-900379]

Opposed mark

Mark in dispute, consisting of a word “SISLOY” written in a standard character, TM Registration no. 5878006, was applied for registration in March 11, 2016 in the name of U STYLE Co., Ltd., a Japanese legal entity, by designating goods of cosmetics, perfumes, creams, soaps etc. in class 3. Based on the results of substantive examination by the JPO, the mark was granted for protection without any refusal or oppositions on August 4, 2016 and subsequently published for opposition on October 4, 2016.


Trademark opposition claim by Sisley

Sisley filed an opposition and demanded the JPO to cancel the oppose mark in violation of Article 4(1)(xv) of the Trademark Law.

Article 4(1)(xv) is a provision to prohibit any trademark which is likely to cause confusion with a third party or its business from being registered for protection.

Sisley cited a registered “SISLEY” trademark (TM Registration no. 1873095) which consists of alphabetical letters and Japanese katakana letters to pronounce Sisley, as well as a non-registered “sisley” trademark solely written in lower-case alphabetical letters (herein after collectively referred to as “SISLEY trademarks”).

Sisley alleged that SISLEY trademarks has acquired a high degree of popularity and reputation among relevant traders and consumers of cosmetics worldwide.

According to the evidence, annual sales in Japan amounts to about 2 billion yen continuously. Sisley occupies 1% market share in Japan

To bolster the argument, Sisley referred to the past favorable decision in an opposition against a word mark of “SYSLEY” in which the JPO admitted famousness of “SISLEY” as a source indicator of skin care cosmetics.

Based on SISLEY trademarks known for French luxury beauty brand, Sisley argued that relevant traders and consumers are likely to conceive Sisley at the sight of goods with opposed mark, or confuse the goods comes from any business entity economically or systematically associated with Sisley in error by taking into consideration of close similarity between “SISLEY” and “SISLOY”.


Board decision

The Opposition Board considered the evidence is insufficient and less objective to convince the Board of the fame of SISLEY trademarks in the marketplace of Japan.

Due to the lack of objective evidence, the Board denied a high degree of popularity and reputation of SISLEY trademarks as a source indicator of skin care cosmetics in view of a trivial market share.

Regarding the past opposition decision to admit famousness of the mark “SISLEY”, the Board held the decision was irrelevant on the case because it never made things clear whether SISLEY trademarks still maintained such famousness at the time of application filing of the opposed mark, given eight years already passed since then.

Besides, the Board concluded that finding the difference of “O” and “E” at fifth letter is not negligible, the oppose mark and SISLEY trademarks are distinctively dissimilar in the aspect of appearance, pronunciation and meaning.

Based on the foregoing, it should decide that the relevant traders and consumers are unlikely to confuse or misconceive the opposed mark with SISLEY trademarks even when used on cosmetics and other designated goods


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