Superman tried but lost a battle in Japan

One interesting dispute from Japan shows how language perceptions and differences can be crucial for trademark similarity.

In the case at hand, the well-known Japanese inventor Dr. Nakamatsu filed an application for the following trademark in classes 5,9,10,25,28, 35, and 45:

The mark was used for face shields which prevent from Covid-19 spreading.

Against this application, an opposition was filed by Warner Bros. Entertainment Inc. based on early registered word and combined marks for SUPERMAN in classes 25 and 28. According to the company, there was a similarity between both signs from a visual, phonetic, and conceptual point of view which can make consumers to associate the latter mark with the superhero character Superman.

The Patent Office, however, disagreed and dismissed the opposition in its entirety. According to the Office, considering the way how the mark applied is represented, including in katakana characters, there was no conceptual and visual similarity. The Office didn’t find specific meaning in the later mark to associate with the superhero character.

That’s an interesting decision which of course is based on national language specifics and perceptions. If this was a case in Europe or the US, most likely the opposition would be successful because the word M.E.N can be interpreted as MEN which is a plural form of MAN, so there is a solid conceptual and phonetic similarity.

Source: Masaki MIKAMI – Marks IP Law Firm.


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