In a trademark invalidation action disputing similarity between “COSME MUSEUM” and “Cosmetic Museum”, the Japan Patent Office (JPO) found both marks dissimilar and unlikely to cause confusion when used in relation to cosmetics.
[Invalidation case no. 2024-890015, decided on November 6, 2024]
COSME MUSEUM
CEL-ENA Co., Ltd. filed a trademark application for the wordmark “COSME MUSEUM” (Contested mark) with the JPO on February 24, 2023. It designates various services classified in class 35, including retail or wholesale services for cosmetics (TM App no. 2023-18992).
The applicant owns the domain “cosme-museum.com” and uses the contested mark on the domain’s web pages.
The JPO examiner granted registration of the contested mark on August 9, 2023 without issuing a notice of refusal. Upon payment of the statutory registration fee, the mark was registered on October 19, 2023 [TM Reg no. 6746429].
Cosmetic Museum
MOMOTANIJUNTENKAN Co., Ltd. filed a trademark application for the wordmark “Cosmetic Museum” in standard character with the JPO on February 16, 2023 (8 days prior to the contested mark) for use on breath freshening preparations, deodorants for animals, soaps and detergents, dentifrices, bath preparations, not for medical purposes, perfumes and flavor materials, incense, false nails, false eyelashes, and cosmetics in class 3 (TM App no. 2023-16082) in order to secure online use of the mark in connection with cosmetics on its websites under the domain “cosmeticmuseum.jp”.
The JPO registered the earlier mark on July 13, 2023 (3 months prior to the contested mark) [TM Reg no. 6717335].
On March 28, 2024, five months after the registration of the contested mark, MONOTANIJUNTENKAN filed an invalidation petition with the JPO requesting that the contested mark be retroactively annulled based on Article 4(1)(xi) of the Japan Trademark Law.
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.
JPO decision
The JPO Invalidation Board found the contested mark “COSME MUSEUM” is dissimilar to the cited mark “Cosme Museum” by stating that:
Firstly, comparing the appearance of the contested mark and the cited mark, there are visual distinctions in the presence or absence of the term “tic”, and the upper-case letters or lower-case letters consisting of respective mark. Therefore, the Board has a reason to believe that two marks are clearly distinguishable, and unlikely to cause confusion in appearance.
Secondly, the pronunciation of the contested mark and that of the cited mark clearly differ in the presence or absence of a “tic” sound in the middle, and are clearly audible.
Thirdly, both marks do not give rise to any specific meaning at all. In this regard, they are not comparable in conception.
Based on the foregoing, even if the contested mark and the cited mark are conceptually incomparable, they are unlikely to cause confusion due to a low degree of similarity in appearance and pronunciation. Taking a global view of the impression, memory, and association that the relevant consumers will have from the appearance, sound and concept of the marks, the Board has a reason to believe that the contested mark “COSME MUSEUM” should be found dissimilar to the earlier mark “Cosmetic Museum” and unlikely to cause confusion.”
Accordingly, the Board decided to dismiss the invalidation action and declared the contested mark valid.
Masaki MIKAMI, Attorney at IP LAW – Founder of MARKS IP LAW FIRM