Daimler AG filed an application for the following trademark in class 12 – parts for vehicles for locomotion by land, air, water or rail:
The Japan Patent Office refuse to register this mark based on a similarity with an earlier trademark for STAR- PARTS in class 35 – retail services or wholesale services for automobiles, parts, and accessories.
The German company appealed and as a result won the dispute. According to the Board of Appeal both marks were not similar. The reason for this was the fact that STARPARTS is not a dominant element in the later trademark. The leading element was the words Mercedes-Benz, a well-know brand for German luxury cars with a long history.
Although this seems like a real success for Daimler AG now, what will be the result in the future taking into account that the earlier mark STAR-PARTS is registered for spare parts for vehicles among others. This is a scenario, for example, where the earlier mark is not so famous but can become such one as a result of the Daimler use of their own combined mark in the market.
INTELLECTUAL PROPERTY PLANET 