The IP High Court ruled on August 29, 2018 to uphold the Japan Patent Office (JPO) decision to cancel TM Reg. No. 5916735 for the mark “VANSNEAKER” over shoes in class 25 due to a conflict with TM Reg. No. 5245474 for famous mark “VANS”.
[Case no. Heisei30(Gyo-ke)10026]
Disputed mark “VANSNEAKER” in the standard character format was filed on July 25, 2016 and registered next January by designating shoes in class 25 in the name of VAN Jacket Inc., a Japanese business entity, who succeeded to apparel business of “VAN” brand all the rage in the 60’S.
Opposition by VANS Incorporated
VANS Incorporated, a US business entity, established in California 1966, famous for “VANS” sneakers, filed an opposition by citing its own senior registered mark “VANS” in standard character format over shoes in class 25. The JPO decided to cancel disputed mark in breach of Article 4(1)(xi) of the Trademark Law on the ground that it is confusingly similar to famous “VANS” mark from a conceptual point of view. [Opposition case no. 2017-900135]
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.
Appeal to the IP High Court
To contend, VAN Jacket appealed to the IP High Court and demanded cancellation of the decision.
VAN Jacket alleged in the court that JPO decision was based on an erroneous assumption of fact because it considered the portion of “VANS” plays a dominant role in source indicator. Given disputed mark “VANSNEAKER” consists of one word in its entirety, it is unlikely that consumers perceive the last letter “S” of “VANS” functions to represent an initial letter of “SNEAKER” as well.
The IP High Court, however, dismissed the arguments by VAN Jacket, stating that:
- Cited mark ”VANS” has become famous among Japanese general consumers in connection with sneakers and shoes both at the time of filing application and registration of disputer mark.
- “NEAKER” does not give rise to any specific meaning. In the meantime, “SNEAKER”, combining “S” with “NEAKER” adjacent to it, is an English word familiar among relevant public to mean a type of the designated goods (shoes).
- It becomes usual to prevent successive letter in a coined mark consisting of two words where first word ends with a letter and send word starts with the same letter.
- Based on the foregoing, consumers at sight of disputed mark shall pay attention to a distinctive portion of “VANS” and are likely to conceive that the mark consists of two words, “VANS” and “SNEAKER” by omitting first or the last letter “S” of respective words.
- Consequently, the Court finds that disputed mark is likely to cause confusion with famous “VANS” sneakers when used on shoes.
Masaki MIKAMI, Attorney at IP Law – Founder of MARKS IP LAW FIRM