In a trademark opposition regarding a likelihood of confusion between the mark “COSTCO” and “MINICOS” in relation to retail or wholesale services, the Japan Patent Office (JPO) found no confusion with the American mega-chain Costco.
[Opposition case no. 2024-900059, decided on November 6, 2024]
MINICOS
The contested mark, consisting of the terms “MINICOS” and “RETAIL SHOP” arranged in two lines with five-star devices (see below), was filed with the JPO on October 31, 2023 for use in retail or wholesale services for food and beverages in Class 35.
The applicant uses the mark in their retail and online shops that resell the food and beverages purchased at Costco Wholesale.
As the applicant requested the JPO to accelerate examination procedure, the examiner granted registration of the MINICOS mark in two months without issuing any office action.
Accordingly, the mark was officially registered on December 27, 2023 (TM Reg no. 6766577) and published for a post-grant opposition on January 11, 2024.
Opposition
MINISO Hong Kong Limited filed an opposition on March 8, 2024 to contest validity of the mark based on Article 4(1)(vii) and (xv) of the Japan Trademark Law by citing the earlier mark “COSTCO”.
The opponent argued that the applicant undoubtedly has knowledge of Costco Wholesale in view of their business and that the relevant consumers are likely to associate the contested mark with Costco because of the concept of “a small-size Costco retail store” and the same color combinations of red and blue.
In light of the relatedness between the Costco Wholesale business and the services in question as well as the high level of recognition of the cited mark among Japanese consumers, it is likely to cause confusion with Costco Wholesale when the contested mark is used in connection with the retail services for food and beverages.
JPO Decision
Astonishingly, the JPO Opposition Board questioned famousness of the cited mark among Japanese consumers because of insufficient evidence to show sales, market share, advertisement and promotional activities by Costco in Japan.
Besides, the Board found that given the cited mark has not acquired a high degree of recognition, the contested mark would not give rise to any specific meaning. If so, there is no reason to find similarity between the contested mark and the cited mark from visual, aural and conceptual points of view.
Even if the Costco Wholesale business is highly related to the contested services, given the low degree of similarity between the marks, the Board has reason to believe that the relevant consumers are unlikely to confuse a source of the services represented by the contested mark with Costco.
A mere fact that the applicant filed the contested mark with a knowledge of Costco in their business to resell the food and beverages purchased at Costco Wholesale is irrelevant to find fraudulent intention to obtain unjustifiable benefit from it.
Based on the foregoing, the JPO decided to dismiss the opposition entirely.
Masaki MIKAMI, Attorney at IP LAW – Founder of MARKS IP LAW FIRM