Ferrari lost a trademark dispute in Japan regarding its famous prancing horse

Masaki MIKAMI ( Marks IP Law Firm) reports about an interesting trademark dispute in Japan that includes a black horse and the mythological Pegasus.

The Japanese company CLOVER HOLDING Co. Ltd filed an application for the following trademark in class 12 – automobiles and its structural parts and accessories:

Against this application an opposition was filed by the well-known sport cars manufacturer Ferrari based on the following earlier figurative trademark in class 12:

According to the Italian company both signs were confusingly similar taking into account the long history of the Ferrari’s famous logo and its high level of recognition amongst consumers.

The Patent Office agreed that Ferrari’s trademark has a strong reputation in the market. Despite that fact, however, the Office dismissed the opposition in its entirety.

The reason was that both sign were not similar from visual, phonetic and conceptual point of view. In the later mark there is a white image of flying Pegasus whereas the earlier sign includes a black horse. What’s more the word parts in the mark applied for create additional difference.

From that perspective it was highly unlikely consumers to be confused between both trademarks even though they were for one and the same class of goods.