The Japan Patent Office (JPO) did not side with Tommy Hilfiger Licensing B.V. in an opposition against TM Reg no. 6604265 “TOMTOMMY” due to dissimilarity and unlikelihood of confusion with “TOMMY” and “TOMMY HILFIGER”.
[Opposition case no. 2022-900456, gazette issued on December 27, 2024]
TOMTOMMY
The contested mark, consisting of the word “TOMTOMMY” in standard characters, was filed with the JPO by a Chinese individual on January 20, 2022 for use on shoulder bags, tote bags, sports bags, wallets, umbrellas and other goods in Class 18, and underwear, belts, shoes, caps, coats, socks and other goods in Class 25 on January 30, 2022 (TM App no. 2022-10028).
The JPO examiner made an administrative decision to grant registration of the mark on August 3, 2022. Subsequently, the mark was published in Trademark Gazette for post-grant opposition on August 31, 2022.
Opposition by Tommy Hilfiger
Tommy Hilfiger Licensing B.V. filed an opposition with the JPO on October 31, 2022 by citing its own earlier trademark registrations for the wordmark “TOMMY” or “TOMMY HILFIGER”.
Tommy Hilfiger claimed that the contested mark should be cancelled in contravention of Article 4(1)(xi) and (xv) 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.
Article 4(1)(xv) prohibits the registration of trademarks that are likely to cause confusion with the business of other entities.
Tommy Hilfiger contends that the contested mark is composed of two distinctive words, “TOM” and “TOMMY”. Since “TOMMY” has been widely recognized by the relevant consumers to indicate the world-famous fashion brand “TOMMY HILFIGER”, the average consumers, uppon seeing the goods in question bearing the contested mark, will consider the term “TOMMY” as a prominent part of the contested mark in order to identify its origin. If so, the contested mark is similar to the cited marks a high degree.
Moreover, Tommy Hilfiger has used not only the mark “TOMMY”, but also various marks containing “TOMMY”, such as “TOMY JEANS”, “TOMMY NOW”, “TOMMY SPORT”, “TEAM TOMMY”, “TOMMY FACTORY”. In those circumstances, the consumers are likely to mistakenly believe that the goods in question bearing the contested mark “TOMTOMMY” come from the same undertaking or from economically-linked undertaking.
JPO decision
To my surprise, the JPO Opposition Board questioned the high degree of recognition of fashion brands, “TOMMY” and “TOMMY HILFIGER”, because the claimant did not provide sufficient evidence to prove the substantial and extensive use of the cited marks in Japan.
Furthermore, the Board denied similarity even between “TOMTOMMY” and “TOMMY” by stating:
- The contested mark is considered to be a coined word, and therefore has no specific meaning.
- Visually, both marks are distinguishable due to the difference in the number of letters that constitutes respective mark (8 letters vs 5 letters).
- Aurally, both sounds are dissimilar because the prefix sound “TOM” has a significant impact on the overcall pronunciation.
- A conceptual comparison is neutral because neither “TOMTOMMY” nor “TOMMY” has any clear meaning.
Because Tommy Hilfiger failed to demonstrate a high degree of popularity of the cited marks, the Board found that there was no reason to believe that the relevant consumer would confuse the source of the goods at issue bearing the contested mark with Tommy Hilfiger or an economically-linked undertaking due to a low degree of similarity between the marks.
Based on the foregoing, the Board decided the contested mark shall not be canceled and dismissed the oppositions entirely.
Masaki MIKAMI, Attorney at IP LAW – Founder of MARKS IP LAW FIRM