The Japan Patent Office (JPO) did not side with Hermes International in opposition against TM Reg no. 6552637 for the wordmark “HARDES” in classes 14 and 18 by finding dissimilarity to the famous fashion brand “HERMES”.
[Opposition case no. 2022-900287, decided on May 25, 2023]
RARELEAK Co, Ltd. applied the wordmark “HARDES” in a plain letter (see below) for use on personal ornaments, earrings, bracelets, ankle bracelets, necklaces, rings, watchbands, cuffs, necktie pins, pendants, pins, brooches, watches, key chains in class 18 and leather, bags and pouches, handbags, shoulder bags, suitcases, trunks, wallets, card cases, key cases, and others in class 18 with the JPO on November 5, 2021 (TM App no. 2021-144521).
The JPO examiner granted protection of the mark on April 1, 2022, and published it for post-grant opposition on May 17, 2022.
Opposition by HERMES
Before the lapse of a two-month statutory period counting from the publication date, Hermes International filed an opposition against the opposed mark on July 13, 2022.
Hermes argued the opposed mark shall be canceled in contravention of Article 4(1)(xi) of the Japan Trademark Law in relation to all goods designated by the opposed mark due to a high degree of similarity between “HERDES” and earlier trademark registration nos. 6179160 and 4467434 for the wordmark “HERMES”.
To bolster the argument for similarity, Hermes cited precedent JPO decisions that affirmed similarity between “NEBROS” and “NEGUROSU” (Appeal case no. 2002-22788), “RELARIS” and “ILARIS” (Opposition case no. 2008-900309).
The JPO Opposition Board found both marks are dissimilar by stating:
Visually, there is a difference in the fourth letter, “D” and “M”, between the opposed mark and cited mark “HERMES”. The difference in the fourth letter of marks both consisting of six letters gives the impression that two marks, as a whole, indicate different words. In this respect, both marks are distinguishable in appearance.
Aurally, a difference of the first three sounds would be anything but negligible and cause a substantial impact on the overall pronunciation given a short sound structure (four sounds). Therefore, the Board has a reason to believe relevant consumers can easily distinguish these sounds without confusion.
Conceptually, the opposed mark does not have a specific conception. Meanwhile, the cited mark gives rise to the meaning of “Hermes, and the god of trade, thieves, travelers, and sport”. It is obvious that both marks are unlikely to be confused in terms of conception.
Based on the foregoing, the Board 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