In a recent administrative decision, the Japan Patent Office (JPO) dismissed an opposition filed by German luxury fashion house Hugo Boss against Japanese TM Reg no. 6706891 for stylized word mark “Hugoo” in class 18.
[Opposition case no. 2023-900185, decided on June 11, 2024]
Opposed mark
Opposed mark, filed on May 31, 2022, by GRIT Incorporated, consists of the stylized word “Hugoo” (see below). The goods sought for registration are bags, baby carriers, sling bags for carrying babies and infants in class 18. GRIT sells sling bags for carrying babies and infants via their website.
The JPO granted protection to the mark on May 12, 2023, and published it for post-grant opposition on June 21, 2023.
Opposition by Hugo Boss
HUGO BOSS Trademark Management GmbH & Co KG filed an opposition against the opposed mark on August 21, 2023, and claimed the opposed mark “Hugoo” shall be canceled in contravention of Article 4(1)(xi) of the Japan Trademark Law by citing its owned earlier trademark registration nos. 2301695, 3265268, IR776148, IR1657111, IR1676995 for the mark “HUGO”.
Article 4(1)(xi) is a provision to prohibit registering a junior mark that is identical with, or similar to, any senior registered mark.
HUGO BOSS argued that a mere difference on the 2nd letter “O” in the last is trivial from visual and phonetical points of view. Accordingly, the opposed mark “Hugoo” shall be considered similar to the cited mark “HUGO”. Besides, the goods in question are all similar to designated goods under the cited marks.
JPO Decision
The JPO Opposition Board denied similarity between “HUGO” and “Hugoo” by stating that:
There is a difference in the ending ‘oo’ or ‘O’. The difference has no small effect on the visual impression of the appearance of both marks, which are composed of five and four relatively short characters. Therefore, it is reasonable to assume that both marks are clearly distinguishable in appearance.
From pronunciation, it is reasonable to conclude that both sounds are clearly audible and distinguishable since respective sound of both are clearly different.
Furthermore, both marks do not give rise to a specific meaning. Therefore, it is not possible to compare the conception of them.
Accordingly, both marks are distinguishable in appearance and sound, and incomparable in concept.
By making global assessment of the impression, memory and association of respective mark given to traders and consumers as a whole, the Board has reason to believe that both marks should be considered dissimilar without any possibility of confusion.
In the event that both marks are dissimilar, the opposed mark shall not be cancelled in contravention of Article 4(1)(xi), even though the goods in question are similar to those of the cited marks.
Based on the foregoing, the JPO dismiss the entire allegations of HUGO BOSS and allowed the opposed mark “Hugoo” to survive.
Masaki MIKAMI, Attorney at IP LAW – Founder of MARKS IP LAW FIRM