LEGO eventually scored a win over PETSWEET CO., Ltd., a Taiwanese company, in a trademark dispute against ‘CATTYLEGO’ thanks to the JPO’s finding a likelihood of confusion with “LEGO” famous for toy brick.
[Invalidation case no. 2018-890084, Gazette issued date: September 25, 2020]
PETSWEEY Co. (派斯威特國際有限公司), Ltd., a Taiwanese company, applied for trademark registration in Japan for the mark consisting of a word “CATTYLEGO” and rectangle device (see below) on June 15, 2016, over toy boxes and chests, dog kennels, fodder racks, pet cushions, pet house in class 20 and toys for pets in class 28.
The Japan Patent Office (JPO) registered the mark on December 2, 2016 (TM Registration no. 5902786) and published for opposition on January 10, 2017.
LEGO Juris A/S, the world’s largest Danish toy manufacturer, filed an opposition against the mark ‘CATTYLEGO’ on the final day of a two-month duration for the opposition, and argued it shall be canceled in contravention of Article 4(1)(viii), (xi), (xv) and (xix) of the Japan Trademark Law, but in vain. Click here to read more about the opposition.
Subsequently, LEGO lodged a trademark invalidation trial with the JPO on October 31, 2018, based on the same grounds.
The Invalidation Board did not question a high degree of reputation and popularity of the LEGO trademark as a source indicator of toy brick by finding consecutive promotion of LEGO bricks in Japan for more than five decades, annual sales amounting to over 8 billion yen (Approx. USD 74 million ), its remarkable share in the sector of kids toys, and almost half of preschools in Japan have adopted the bricks for educational purpose.
Given the remarkable reputation of the LEGO mark, the Board held relevant consumers/traders at the sight of the ‘CATTYLEGO’ mark would inevitably conceive the term “LEGO” as a dominant portion. If so, both marks may give rise to a similar sound and concept pertinent to “LEGO”.
The Board also affirmed toy brick and the goods in question are closely associated in view of suppliers, commercial channels, usage, consumers.
Consequently, by taking into consideration the totality of the circumstances, the Board found relevant consumers with an ordinary care would confuse or associate the goods in question bearing the ‘CATTYLEGO’ mark with LEGO or any entity systematically or economically connected with LEGO, and thus the mark shall be invalidated based on Article 4(1)(xv) of the trademark law.
Masaki MIKAMI, Attorney at IP LAW – Founder of MARKS IP LAW FIRM