The Japan Patent Office (JPO) dismissed a trademark opposition claimed by the U.S. tech giant, Apple Inc. against trademark registration no. 6060316 for word mark “SAIPHONE” in class 9 and 18 by finding less likelihood of confusion with Apple “iPhone”.
[Opposition case no. 2018-900255]
Opposed mark, a word mark “SAIPHONE” in standard character, was filed by a Japanese business entity, STYLE Corporation, on September 28, 2017 by designating ‘mobile phones, smart phones, and its accessories, namely cases, covers and hands-free holders’ in class 9, and ‘purses and wallets, commutation-ticket holders, business card cases, bags and pouches, umbrellas, industrial packaging containers of leather’ in class 25.
STYLE Corporation promotes the “SAIPHONE” leather cases for iPhone (see below).
The JPO admitted registration on June 22, 2018 and published for registration on July 6, 2018.
To oppose against registration within a statutory period of two months counting from the publication date, Apple Inc. with AIPHONE Co., Ltd., as a joint claimant, filed an opposition on September 7, 2018.
In the opposition brief, Apple Inc. asserted the opposed mark shall be cancelled in violation of Article 4(1)(xi) and (xv) of the Japan Trademark Law given a remarkable reputation of opponent mark “iPhone” in the business field of smart phones and similarity to a senior trademark registration no. 5147866 for the word mark “iPhone” in standard character over mobile phones in class 9 effective since 2008.
Interestingly, “iPhone” is indeed a registered trademark owned by AIPHONE Co., Ltd. in Japan. Apple Inc. is an exclusive licensee of the mark.
Apple Inc. argued opposed mark “SAIPHONE” gives rise to a confusingly similar pronunciation and appearance to “iPhone”, since opposed mark contains a famous mark “iPhone” entirely and a mere difference on prefix “SA” is insufficient for relevant consumers anything but to conceive “iPhone” from opposed mark.
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) 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 consumers.
The Opposition Board admitted a remarkable degree of reputation and popularity of opponent trademark “Apple” in connection with smart phones based on the produced evidences showing a more than 40% share of the market in Japan.
In the meantime, the Board found “SAIPHONE” and “iPhone” are totally dissimilar since they are sufficiently distinguishable in visual, phonetic, and conceptual point of view.
A fact that opposed mark contains “iPhone” is not persuasive on the case since relevant consumers with an ordinary case would see opposed mark in its entirety.
If so, it is likely that the consumers confuse or misconceive a source of the opposed mark with Apple Inc. or any entity systematically or economically connected with the opponent.
Based on the foregoing, the Board decided the opposed mark shall not be cancelled on the grounds of Article 4(1)(xi) as well as (xv).
Masaki MIKAMI, Attorney at IP Law – Founder of MARKS IP LAW FIRM