Sony won a trademark dispute against SONICODE in Japan

Sony Corporation hadn’t given up and won a trademark dispute in Japan. The case concerns a trademark SONICODE filed by Field System Inc. for classes 9, 38 and 41.

Against this mark an opposition was filed by Sony based on early registered trademarks SONY for the similar goods and services.

The Japan Patent Office dismissed the opposition finding both marks as dissimilar. Three years later Sony filed a request for invalidation. This is possible according to the law in Japan.

The ground was that because of the serious reputation trademarks SONY have consumers would discover easily the SONI part in the later mark as similar to SONY. What’s more this was particularly possible in the light of the fact that the second part CODE is not so distinctive.

To support their arguments SONY gave an example with voice assistants offered by Google, Apple, Microsoft and Amazon. When someone ask for SONICODE the first information those assistants provide is for SONY.

This time, the Patent Office upheld the Sony’s position and invalidate the SONICODE mark. According to the office, consumers can spot easily the SONI part in the later mark and connect it with the earlier SONY trademarks from visual and phonetic point of view. One of the reason for this, apart from the high reputation that SONY has, is the fact that consumers can perceive the later mark as consisting of two words SONI and CODE.

Source: Masaki MIKAMI (Marks IP Law Firm)

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