World Economic Forum, the International Organization for Public-Private Cooperation committed to improving the state of the world, failed in their attempt to cancel trademark registration no. 6137205 for wordmark “Junior Economic Forum” at the Japan Patent Office (JPO).
[Opposition case no. 2019-900192, Gazette issued date: July 31, 2020]
Junior Economic Forum
Opposed mark (TM Registration no. 6137205), consisting of three words “Junior Economic Forum” in standard character, was applied for registration on June 4, 2018, for ‘educational and instruction services relating to arts, crafts, sports or general knowledge; arranging, conducting and organization of seminars; production of videotape film in the field of education, culture, entertainment or sports; organization of entertainment events’ in class 41 by a Japanese individual and published for opposition on May 14, 2019.
Opposition by WORLD ECONOMIC FORUM
On July 12, 2019, before the lapse of a two-months opposition period, World Economic Forum (WEF), an independent international organization hosting an annual opportunity for leaders across business and government to come together to discuss solutions to the world’s most pressing economic and social challenges in Davos, filed an opposition to the opposed mark.
WEF claimed that the opposed mark “Junior Economic Forum” shall be partially canceled in contravention of Article 4(1)(xi) of the Japan Trademark Law in relation to the service of “arranging, conducting and organization of seminars” of class 41 by citing an owned senior international registration no. 1309337 for word mark “WORLD ECONOMIC FORUM” over the services of ‘Organization, arranging and conducting of colloquiums, conferences, congresses, seminars, symposiums; organization of congresses and conferences for cultural and educational purposes with the purpose to promote discussions on industrial, regional and global changes and issues’ in class 41 and others, which has been effectively registered in Japan since July 21, 2017.
Article 4(1)(xi) is a provision to refrain from registering a junior mark that is deemed identical with, or similar to, any senior registered mark.
WEF argued that since both marks consist of three words and two of them, “Economic Forum” are the same, the opposed mark “Junior Economic Forum” as a whole is deemed similar to “WORLD ECONOMIC FORUM” from visual, phonetic and conceptual points of view.
Besides, the service in question ‘arranging, conducting, and organization of seminars’ is unquestionably similar to the designated services of the citation.
The Opposition Board decided both marks are distinctively dissimilar by stating that:
- From appearance, the difference in the prefix, “Junior” and “WORLD”, would give rise to a distinctive impression between the mark as a whole since the prefix is considered as the dominant element in visual assessment.
- Likewise, both marks shall be sufficiently distinguishable in sound as a whole due to the difference in prefix.
- It would not happen confusion in concept since both marks are unlikely to give rise to any specific meaning.
- From the totality of the circumstances, relevant consumers would neither associate nor connect “Junior Economic Forum” with “WORLD ECONOMIC FORUM”
Consequently, the opposed mark is not subject to Article 4(1) (xi) and remains valid as a status quo.
Masaki MIKAMI, Attorney at IP LAW – Founder of MARKS IP LAW FIRM