The Opposition Board of the Japan Patent Office (JPO) dismissed an opposition filed by Under Armour Incorporated, an American sporting goods manufacturer which supplies athletic and casual apparel, as well as footwear, against trademark registration no. 5924494 for the “H” device mark designating apparels, footwear, headgear, gloves, cycling wears in class 25.
[Opposition case no. 2017-900163, Gazette issue date: February 23, 2018]
Under Armour logo
In an opposition, Under Armour claimed trademark registration no. 5924494 violates Article 4(1)(x), (xi), (xv) and (xix) of the Japan Trademark Law by citing a senior trademark registration no. 4701254 for the Under Armour logo (see below in left). Cited registration has been effectively registered since 2003 by designating clothing, footwear, sportswear, sports shoes in class 25.
Opposed mark
Opposed mark was applied for trademark registration on August 26, 2016 in the name of AGEAS INC. (USA) covering various goods in class 25 (see above in right).
Without any refusal notice from the JPO, opposed mark was granted for registration on January 16, 2017, and published in gazette for opposition on March 21, 2017.
Subsequently, Under Armour filed an opposition in May.
Opposition grounds
Article 4(1)(x) prohibits to register a trademark which is identical with, or similar to, other entity’s well-known mark over goods or services closely related with the entity’s business.
Article 4(1)(xi) is a provision to refrain from registering a junior mark which is deemed identical with, or similar to, any senior registered mark.
Article 4(1)(xv) prohibits to register a trademark which is likely to cause confusion with a business of other entity.
Article 4(1)(xix) prohibits to register a trademark which is identical with, or similar to, other entity’s famous mark, if such trademark is aimed for unfair purposes, e.g. gaining unfair profits, or causing damage to the entity.
To sum up, Under Armour wins if the Under Armour logo is considered confusingly similar to opposed mark. Meanwhile, even if the Under Amour logo obtains a high degree of popularity and reputation among relevant public in Japan, the opposition is overruled as long as both marks are dissimilar and unlikely to cause confusion.
Board decision
The Opposition Board admitted a high degree of popularity and reputation of the Under Armour logo as a source indicator of opponent among relevant consumers in the fields of sports.
In the assessment of mark appearance, the Board concluded:
“It is apparent that respective mark gives rise to a diverse visual impression in the mind of consumers because of different configuration. Opposed mark can be perceived as a device deriving from ‘H’. In the meantime, the cited mark as a device consisting of ‘U’ and upside-down ’U’. Besides, from phonetical and conceptual points of view, there exists no element to find similarity of the marks. Based on the foregoing, both marks shall be less likely to cause confusion due to a remarkable degree of visual difference.”
As a conclusion, the Board decided opposed mark is not subject to Article 4(1)(x), (xi), (xv) and (xix) of the Trademark Law, and admitted to continue a status quo.
Masaki MIKAMI, Attorney at IP Law – Founder of MARKS IP LAW FIRM