Trademark dispute: MARNI vs. MARNO

The Italian fashion brand “MARNI” lost the trademark opposition against TM Reg no. 6658657 for the wordmark “MARNO” (cl. 14,18,25). The Japan Patent Office (JPO) found both marks dissimilar and less likelihood of confusion because there was insufficient evidence to support a certain degree of recognition of the mark “MARNI” among general consumers.
[Opposition case no. 2023-900065, decided on May 16, 2024]


Godo Kaisha MARNO filed a trademark application for the word mark “MARNO” in standard character for use on goods “precious metals; jewelry; key rings; jewelry boxes; personal ornaments; clocks and watches” in class 14, “bags and pouches; umbrellas; canes; clothing for pets” in class 18, “clothing; belts; footwear; masquerade costumes; sports shoes; sportswear” in class 25 with the JPO on July 29, 2022 (TM App no. 2022-88022).

Apparently, the applicant promotes apparels for lady using the mark on their website.

The JPO examiner did not issue an office action to the application and granted protection on December 13, 2024. Subsequently, the mark was published for post-grant opposition on January 13, 2023.

Opposition by MARNI

Marni Group S.r.l., an Italian luxury fashion house, filed an opposition on March 13, 2023 just before the lapse of a two-month statutory period and claimed the opposed mark “MARNO” shall be cancelled in contravention of Article 4(1)(vii), (xi), (xv) and (xix) of the Japan Trademark Law by citing earlier trademark registrations (TM Reg no. 4842090, 4791866, 4786424, 3200522, 2339221, 6676890, IR1007074, IR1520528, IR1689338, IR698847) for the mark “MARNI”.

Article 4(1)(xi) is a provision that prohibits the registration of a junior mark that is deemed identical with, or similar to, any earlier registered mark.

MARNI contended that the opposed mark “MARNO” is similar to its own trademark “MARNI,” a globally renowned fast-fashion brand given a mere difference in the last letter “O” and “I”. Besides, the goods in question are identical or similar.

Article 4(1)(xv) prohibits the registration of trademarks that are likely to cause confusion with the business of other entities.

MARNI contended that the mark “MARNI” has become renowned among relevant consumers in connection with apparel. Given the high degree of resemblance between “MARNO” and “MARNI” as well as the goods, it is likely that consumers will confuse or misconceive the goods bearing the opposed mark “MARNO” with “MARNI.”

Article 4(1)(xix) proscribes the registration of a trademark that is identical with or similar to another entity’s famous mark if the trademark is intended for the purpose of gaining unfair profits or causing damage to the entity.

MARNI contended that the applicant had filed the opposed mark with the intention of obtaining unfair profits through free-riding on the well-known trademark “MARNI”.

JPO decision

The JPO Opposition Board admitted that the mark “MARNI” has been recognized among consumers who has high interest to fashion to some extent from the produced evidence, however, in view of the facts that the dates of the evidence are after the grant of protection of the opposed mark, the period and evaluation method of the brand ranking is unclear, and no evidence regarding the sales amount and advertisement of the goods bearing the mark MARNI are provided, the Board questioned whether the mark “MARNI” has been widely recognized among general consumers to indicate the source of MARNI’s goods and business.

Next, the Board assessed similarity of mark. In appearance and sound between “MARNO” and “MARNI”, the distinction of “O” and “I” at the end of the word has a significant impact on the overall visual and oral impression of the two marks, which both have only five letters and three sounds. Therefore, the marks are visually and phonetically distinguishable. Since both marks do not give rise to any specific meaning, it is impossible to compare the concept of the two marks. Accordingly, the Board has reason to believe that both marks are significantly dissimilar.

By taking account of insufficient recognition of the mark “MARNI” among relevant consumers and a low degree of similarity between two marks, it is unlikely that the consumer at the sight of the goods in question bearing the opposed mark confuse the source with MARNI.

Besides, the evidence presented to the Board does not provide grounds to believe that the applicant intended to obtain profits through the exploitation of the well-known trademark.

Based on the foregoing, the Board dismissed the opposition entirely.

Masaki MIKAMI, Attorney at IP LAW – Founder of MARKS IP LAW FIRM