Masaki Mikami has published another interesting trademark dispute from Japan this time focusing our attention on the question – To be an apple or not to be.
In the case at hand, we have the following already registered figurative trademark in class 9 – protection covers and cases for smartphones, protection covers and cases for tablets, cases for laptops:
Apple Inc, filed an application for invalidation of the mark based on its following earlier figurative mark in class 9, for which an acquired reputation was claimed:
The Japan Patent Office acknowledged that Apple’s mark has a strong reputation amongst Japanese consumers.
Nevertheless, the Office dismissed the invalidation request finding both signs not confusingly similar.
From a visual point of view, the marks were not similar enough even if the later sign was rotated 90 degrees to the left. According to the Office, the sign does not create the same impression due to some details and overall appearance.
The phonetical comparison was not possible because both signs had no particular sound.
Conceptually, the earlier sign relates to Apple as a company and technology products and services whereas the latter mark has no specific meaning.
Based on this the Office concluded that there is no similarity and from that perspective any reason for invalidation.