The Japan Patent Office (JPO) dismissed an invalidation action claimed by Starbucks Incorporation against TM Reg no. 6595964 for wordmark “STARBOSS” in class 32 due to dissimilarity to and unlikelihood of confusion with the world’s largest coffee chain “STARBUCKS”.
[Invalidation case no. 2023-890037, decided on December 17, 2024]
“STARBOSS”
Kenkoman Co., Ltd. filed a trademark application for wordmark “STARBOSS” in standard character for use on beer, carbonated drinks [refreshing beverages], fruit juices, vegetable juices [beverages], extracts of hops for making beer, whey beverages in class 32 with the JPO on January 25, 2022 (TM App no. 2022-13707).
The JPO examiner granted registration of the applied mark on June 24, 2022 without issuing any office action (TM Reg no. 6595964).
The applicant promotes energy drinks bearing the applied mark.
Invalidation action by Starbucks
Starbucks Incorporation filed an application for a declaration of invalidity against the applied mark with the JPO in contravention of Article 4(1)(xi) and (xv) of the Trademark Law on April 28, 2023.
Starbucks argued that the mark “STARBOSS” is confusingly similar to earlier mark “STARBUCKS” that has been consecutively registered in class 32 since 1989 because the difference of the letter, “OS” and “UCK” in the middle of respective mark would not overwhelm the entire similarity in appearance and concept.
Besides, consumers of the goods in question mostly overlap with coffee shop. Taking into consideration a remarkable degree of popularity and reputation of the mark “STARBUCKS” among general public in Japan, relevant consumers at the sight of beverages bearing the contested mark would pay much attention to the prefix portion starring with “STARB” and associate it with STARBUCKS, and thus consider the goods originating from a business entity economically or systematically connected with Starbucks.
JPO decision
The JPO Invalidation Board did not question a high degree of recognition of the mark “STARBUCKS” to indicate a source of coffee chain provided by Starbucks.
In the meantime, the Board found evidence insufficient to establish a certain degree of recognition of the mark “STARBUCKS” in relation to coffee beverages, juices and any other drinks.
The Board found both marks dissimilar by stating that:
“Comparing with appearance, both marks start with “STARB” and end with “S”. But there is a difference between the letters “OS” and “UCK” in the middle of respective mark. This difference would have a material effect on the visual impression of two marks that consist of eight or nine alphabets. Thus, both marks are clearly distinguishable in appearance.
Aurally, relevant consumers can distinguish “STARBOSS” with “STURBUCKS” because the enunciation of “BO” and “BUCK” in the middle of respective mark are pronounced in a strong tone and accordingly have a material impact on the overall sound.
A conceptual comparison is neutral as neither “STARBOSS” nor “STARBUCKS” have any clear meaning.
Based on the above findings, the Board has a reason to believe that the contested mark “STARBOSS” is dissimilar to the mark “STARBUCKS” by considering the impression, memory and association conveyed to the consumers overall.”
Given the low degree of similarity between “STARBOSS” and “STARBUCKS”, relevant consumers with an ordinary care are unlikely to confuse a source of goods in question bearing the contested mark with Starbucks or any business entity economically or systematically connected with the claimant.
Consequently, the Invalidation Board declared validity of the contested mark and dismissed the invalidation action by Starbucks.
Masaki MIKAMI, Attorney at IP LAW – Founder of MARKS IP LAW FIRM