The Japan Patent Office (JPO) dismissed a trademark opposition filed by Chanel against TM Reg no. 6351256 for a composite mark containing a device made of two inverted and interlocked “C” by finding dissimilarity to and the unlikelihood of confusion with Chanel’s monogram.[Opposition case no. 2021-900169, Decision date: September 30, 2022]
The opposed mark consists of the words “MUSIC BAR” and “CHAYA”, and a device made of two inverted and interlocked “C” (see below).
HIC Co., Ltd. filed the opposed mark for use on restaurant service in class 43 on August 27, 2020, with the JPO. The examiner granted protection on January 19, 2022, and published for opposition on February 10, 2021.
Opposition by Chanel
Chanel filed an opposition on April 30 and argued the opposed mark shall be canceled in contravention of Article 4(1)(xi), (xv), and (xix) of the Japan Trademark Law by citing earlier trademark registrations for Chanel’s monogram on the ground that:
- The figurative element of the opposed mark is similar to the prestigious Chanel’s monogram made of two inverted “c” displayed as an ellipse in its central point (see below).
- Given the remarkable degree of popularity and reputation of Chanel’s monogram, relevant consumers with ordinary care are likely to confuse a source of the service in question bearing the opposed mark with CHANEL.
- Applicant must have applied the opposed mark, confusingly similar to Chanel’s monogram with an unfair intention to take advantage of the reputation and goodwill associated with Chanel’s famous trademark.
The JPO Opposition Board admitted that Chanel’s monogram has acquired a high degree of reputation among relevant consumers of the service in question. Allegedly, CHANEL spent more than 5 billion JP-Yen on advertising in Japan each year since 2014. Annual sales revenue exceeds 50 billion JP-Yen. Jewelry accounts for 3 billion JP-Yen of the revenue.
In the meantime, the JPO denied visual similarity between the figurative element of the opposed mark and the monogram by stating:
“They share a similarity in that they are both figures with two “C”-shaped curves placed back-to-back on the left and right sides so that parts of the curves overlap. However, in addition to differences in the way the “C”-shaped curves are represented (whether the thickness varies or is uniform and whether the opening is wide or narrow), there are also differences in the way the entire composition is represented, such as asymmetrical and symmetrical figures, vertical figures with two deeply overlapping curves and horizontal figures with two shallowly overlapping curves. Furthermore, the overall impression of the composition is clearly different in terms of asymmetrical and symmetrical figures, vertical figures with two curves deeply superimposed and horizontal figures with two curves shallowly superimposed. Therefore, there is no likelihood of confusion in terms of appearance.”
Obviously, there is no likelihood of confusion in terms of appearance and conception. Therefore, taking account of the impression, memory, and association given to traders and consumers by means of the appearance, concept, and pronunciation of two marks as a whole, the Board has a reason to believe that two marks are dissimilar and there is no likelihood of confusion.
Based on the foregoing, the Board dismissed the entire allegations of Chanel and allowed the opposed mark to register as the status quo.
Masaki MIKAMI, Attorney at IP LAW – Founder of MARKS IP LAW FIRM