The Japan Patent Office has issued an interesting decision relating to trademark similarity which might be viewed as debatable in some countries.
The case at hand concerns the registered trademark GRAN CLUB by a Japanese company for classes 43 and 44 – restaurants, hotels and temporary accommodations, retirement homes, beauty salons, and so on.
Against this mark, an invalidation procedure was initiated by the well-known multinational hospitality company Hyatt International Corporation on the grounds of their earlier mark for GRAND CLUB being protected and used for the same services.
The Patent Office found both marks dissimilar due to the fact that the first word in the later mark has no specific meaning and the presence of the letter D in the earlier sign. The Office considered this as enough reason for consumers not to be confused.
Hyatt argued that their mark was being pronounced ɡræn-klʌb where D was a silent letter but the Office considered there was no evidence that consumers in Japan pronounce the word in that way.
In a contrast, such a dispute in Europe most likely will end with a conclusion for similarity. The reason is that one letter difference at the end of a word is not enough to overcome the similarity thread in most cases especially when the other words are identical and the goods and services are similar.
However, this case not only shows that trademark practice varies in different countries but that language perception and understanding can play a decisive role in some situations.
2 thoughts on “Hyatt lost a trademark dispute in Japan”
This was an absurd result because the words are English and the pronunciation should be as is pronounced in English rather than Japanese. Hopefully, it will be appealed and reversed.
Yes but bear in mind that for some speakers in many countries, English is difficult to pronounce, and some letters and sounds do not exist. That’s why in such cases it could be a problem for the trademark owner to prove such pronunciation. Of course, this can be overcome with stronger evidence for well-known status and reputation as a whole.