On March 16, 2022, the Japan Patent Office (JPO) dismissed an opposition filed by HBI Branded Apparel Enterprises, LLC against TM Reg no. 6368388 for the mark “Nyanpion” with a device due to dissimilarity to and the unlikelihood of confusion with the famous apparel brand “Champion.”[Opposition case no. 2021-900230]
A Japanese individual applied a composite mark consisting of a stylized word “Nyanpion” and a cat device (see below) for use on apparel, headgear, footwear, sports shoes, and sportswear in class 25 with the JPO on August 25, 2020.
The JPO examiner granted protection of the opposed mark on January 29, 2021, and published for opposition on April 13, 2021.
T-shirts, sweats, hoodies, and tote bags bearing the Nyanpion mark have been promoted for sale with a catchword of “Champion” parody.
I should note that “Nyan” is the sound cats make in Japan. Because of it, “Nyanpion” easily reminds us of a combination of cat sounds and “Champion”.
Opposition by Champion
To oppose registration within a statutory period of two months counting from the publication date, HBI Branded Apparel Enterprises, LLC filed an opposition against the opposed mark on June 14, 2021.
HBI argued the opposed mark shall be canceled in contravention of Article 4(1)(vii), (x), (xi), (xv), and (xix) of the Japan Trademark Law because of the remarkable reputation and popularity of the Champion brand in relation to apparels and a high degree of similarity between the opposed mark and its owned trademark registrations (see below) to the extent that relevant consumers are likely to confuse a source of the goods in question bearing the opposed mark with “Champion”.
The JPO Opposition Board admitted that the “Champion” mark has acquired a high degree of reputation as a result of substantial use in Japan for more than four decades and become famous as a source indicator of the opponent.
In the meantime, the Board negated the similarity between the marks by stating that:
From the appearance, the difference in the prefix of literal elements, “Nyanpion” and “Champion” would suffice for relevant consumers to distinguish them. The figurative element of the opposed mark represents a cat’s face. The opponent device mark gives rise to an impression of a letter “C”. If so, both marks are sufficiently distinguishable in appearance.
Phonetically, “Nyanpion” is easily distinguishable from “Champion” because of the difference in the first sound given both marks just consist of five sounds respectively.
Conceptually, the opposed mark does not give rise to any specific meaning. Meanwhile, the opponent mark has a meaning of someone or something, especially a person or animal, that has beaten all other competitors in competition and ‘famous apparel brand.’ If so, both marks are dissimilar in concept.
By virtue of a low degree of similarity, the Board found relevant consumers are unlikely to confuse or associate the source of the goods bearing the “Nyanpion” mark with “Champion” and any entity systematically or economically connected with the opponent.
Based on the foregoing, the JPO dismissed the entire allegations and decided the opposed mark shall remain valid as the status quo.
Masaki MIKAMI, Attorney at IP LAW – Founder of MARKS IP LAW FIRM