The Japan Patent Office (JPO) dismissed an opposition claimed by Volkswagen AG against TM Reg no. 6776072 for a device mark in class 25 due to dissimilarity to and unlikelihood of confusion with famous VW emblem.
[Opposition case no. 2024-900086, decided on October 9, 2024]
Contested mark
SAKAIYA PLANNING INC. filed a trademark application for a device mark (see below) in connection with clothing, footwear, garters, sock suspenders, suspenders for clothing, waistbands, belts [clothing] of class 25 with the JPO on June 6, 2023.
According to the applicant’s website, the applied mark is used in conjunction with “ANNA MALIA”.
The JPO examiner did not issue any office actions and granted protection of the mark on January 30, 2024. Accordingly, it was published for a post-grant opposition on February 14, 2024.
Opposition by Volkswagen
On April 12, 2024, German car giant Volkswagen AG filed an opposition and claimed cancellation of the contested mark in contravention of Article 4(1)(xi), (xv) and 8(1) of the Japan Trademark Law by citing earlier IR no. 1555245 for their iconic VW emblem (see below) covering clothing, footwear and other goods in class 25.
Volkswagen argued that the contested mark consists of monogrammed letters, “V” and “W” represented in a circle. Therefore, where the mark is observed upside down, it looks closely similar to the VM emblem. Customers have been accustomed to observing clothing and other goods in question from various angles. In this respect, even though conceptual and phonetical comparisons are neutral as neither the contested mark nor the VM emblem have any clear sound and meaning, both marks should be considered similar because of a high degree of visual similarity.
Besides, the VW emblem has acquired substantial popularity and reputation as a source indicator of famous automobile maker, Volkswagen. Thus, it is highly likely that relevant traders and consumers confuse the source of the goods in question bearing the contested mark with Volkswagen or a business entity systematically or economically connected with the opponent.
JPO decision
The Opposition Board found that the VW emblem has become famous for a source indicator of opponent by taking into consideration of the facts that opponent’s cars with the VW emblem have been continuously imported to Japan since 1953 and ranked in the top 3 of new imported automobile registrations for the past three years.
In the meantime, the Board denied visual similarity between the contested mark and the VM emblem by stating that:
The mountainous lines in the circle of the contested mark are too stylized to be recognized as the representation of characters from its overall composition. Therefore, it can be seen to represent a geometric figure as a whole.
Meantime, the V-shaped line and the W-shaped line of the cited mark do not overlap, and both ends of the V-shaped line and the W-shaped line neatly overlap with the circle.
These differences give rise to a distinctive visual impression from their overall appearance, which can be sufficiently distinguishable when observed at a distance.
Given a low degree of similarity between the marks, the Board has a reason to believe that relevant consumers are unlikely to confuse a source of goods in question bearing the contested mark with Volkswagen.
Based on the foregoing, the Board found the opposition groundless and decided not to cancel the contested mark.
Masaki MIKAMI, Attorney at IP LAW – Founder of MARKS IP LAW FIRM