The Japan Patent Office dismissed a trademark opposition claimed by the U.S. tech giant, Apple Inc. against trademark registration no. 59923763 for word mark “Apple Assist Center” in class 35, 36, and 43 by finding less likelihood of confusion.
[Opposition case no. 2017-900155]
“Apple Assist Center”
Opposed mark “Apple Assist Center” was filed by a Japanese business entity on July 22, 2016 by designating the services of “secretary services; telephone answering and message handling services; reception services for visitors” in class 35, “rental of business and commercial premises; management of buildings; providing information in the field of buildings for business and commercial use” in class 36, “rental of conference room; rental of exhibition room” in class 43.
As a result of substantive examination, the JPO admitted registration on February 17, 2017 and published for registration on March 21, 2017.
To oppose against registration, Apple Inc. filed an opposition on May 17, 2017.
In the opposition brief, Apple Inc. asserted the opposed mark shall be cancelled in violation of Article 4(1)(xv) of the Japan Trademark Law.
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. Theoretically, Article 4(1)(xv) is applicable to the case where a mark in question designates remotely associated or dissimilar goods or services with that of a well-known brand business.
The Opposition Board admitted a remarkable degree of reputation and population of opponent trademark “Apple” in the field of computers, smart phones, audio devices etc., however, gave a negative view in relation to goods and services remotely associated with Apple products by taking account of arguments and evidences Apple Inc. provided during the trial.
Besides, in the assessment of mark similarity, the Board found “Apple Assist Center” and “Apple” are dissimilar since they are sufficiently distinguishable in visual, phonetic, and conceptual point of view. The Board considered that the word of “Assist Center” does not immediately give rise to a descriptive meaning in relation to the designated service of class 35, 36, and 43. Given that “Assist Center” is deemed a coined word, it is not permissible to separate a element of “Apple” from the opposed mark.
Based on the foregoing, the Board decided that, unless Apple Inc. demonstrates possibility to embark on business related to the designated services and overlapping of consumers between Apple products and the opposed mark, relevant consumers are unlikely to confuse or misconceive a source of the opposed mark with Apple Inc. or any entity systematically or economically connected with the opponent.
It surprises me that the Board considered “Assist Center” does not lack distinctiveness in relation to business support services.
Masaki MIKAMI, Attorney at IP Law – Founder of MARKS IP Law Firm