In a recent appeal decision over trademark dispute, the Appeal Board of Japan Patent Office (JPO) overturned the Examiner’s refusal and held the stylized TESLA mark is dissimilarly pronounced to a senior trademark registration for the “Tesla” word mark.
[Appeal case no. 2017-650037, Gazette issue date: February 22, 2019]
Stylized TESLA mark
U.S. electric automaker Tesla, Inc. (formerly Tesla Motors, Inc.) filed an application with the Japan Patent Office to register stylized TESLA mark as a trademark for “Articles of clothing, namely, t-shirts, shirts, jackets, hats; headgear, namely, sports hats, caps, sun visors.” in class 25 and “Providing financial services relating to automobiles, namely, automobile financing and lease-purchase financing; financing services for the purchase and leasing of motor vehicles; lease-purchase financing; credit services, namely, providing financing for motor vehicles; providing financial advice in the field of motor vehicles.” in class 36.
Senior TM registration for “Tesla”
Going through substantive examination by the JPO examiner, applied mark was completely refused registration based on Article 4(1)(xi) of the Trademark Law due to a conflict with a senior trademark registration no. 5533558 for word mark “Tesla” in standard character for clothing, caps and foot wears in class 25 owned by a Korean individual.
There is criterion that the examiner is checking when assessing the similarity between the marks:
- visual similarity
- aural similarity
- conceptual similarity
and taking into account all these three aspects examiner makes a decision if a mark is similar (at least to some extent) with the earlier mark and if there is a likelihood of confusion for the consumers.
Applicant filed an appeal against the refusal on June 30, 2017 and argued dissimilarity of the marks.
Appeal Board decision
The Board reversed the examiner’s refusal and admitted applied mark to registration by stating that:
From appearance, both marks are sufficiently distinguishable because the 2nd and last letter of applied mark are too indecipherable to be perceived as a specific term in its entirety.
As long as applied mark does not give rise to any specific sound and meaning as a whole, applied mark is incomparable with cited mark “Tesla” in the aspects of pronunciation and connotation.
Based on the foregoing and criterion to assess similarity of mark, the Board is of a view that the stylized TESLA mark shall be dissimilar to senior registration for the word mark “Tesla” even if the designated goods are deemed identical or similar in class 25.
Masaki MIKAMI, Attorney at IP Law – Founder of MARKS IP LAW FIRM