The German sportswear producer PUMA faced a challenge to register a trademark for “Puma Tokyo 2021” in the US.
The USPTO refused the application for this mark with the argument that it refers clearly to the Olympic Games and the United States Olympic Committee.
The application was filed on the same day as the announced rescheduling of the Tokyo Olympics. This can mislead consumers to think that there is a connection between Puma and the Olympic Games including the United States Olympic Committee.
Earlier this year other applications filed in the US by the German producer for “Puma Euro 2021” and “Puma Euro 2022” were turned down too.
The French fashion house HERMES INTERNATIONAL won an opposition against a trademark application in Japan for D.KELLY” in class 18 – bags and pouches.
Against this application Hermes invoked its earlier trademark for “KELLY” in class 18 too. In addition a trademark with reputation was claimed.
According to the French company there was a clear similarity between both signs which could create confusion among the consumer in the country. The dominant element in the later mark was “KELLY” whereas the “D” letter had no significant implication for the understanding of the mark.
Hermes submitted evidence for the reputation of its mark which had been in use since 1956. The brand was inspired by the Princess Grace Kelly of Monaco. The annual turnover from sales in Japan under this trademark was about 43 million dollars. Apart from this there were many advertising campaigns.
The Patent Office upheld the opposition concluding there both sign are confusingly similar which was supported by the high level of reputation of the earlier mark in Japan.
Source: Masaki MIKAMI.
The Japan Patent Office has ruled in a case for invalidation of the SB NAGAMOCHI trademark registered for the goods in class 12: non-electric prime movers for land vehicles, not including their parts; AC motors or DC motors for land vehicles, not including their parts; automobiles and their parts and fittings; two-wheeled motor vehicles, bicycles and their parts and fittings; adhesive rubber patches for repairing tubes or tires.
The invalidation request was submitted by Bridgestone based on an earlier trademark with reputation B for tires. According to the company the later mark could create consumer confusion and take advantages of the well-known status of the B mark.
Different pieces of evidence were submitted to prove this status. For example, Bridgestone holds 14.6% market share for automobiles tires in the world, and 55.9% in Japan. The company have been using its mark for a myriad of advertising and promotional campaigns for many years including for sponsorship of Olympic games.
This created a strong reputation among the consumers in the country which can be mislead when seeing the SB NAGAMOCHI mark.
The Patent Office agreed and invalidated the later mark.
Source: Masaki MIKAMI
The Final Fantasy’s producer, the Japanese video game company Square Enix, won two invalidation disputes against trademarks Parasite Eve и Parasite.
Both marks have been registered in the UK by Michael Gleissner, a person notoriously known for cases of bad faith registered trademarks in the EU.
According to the Square Enix, its unregistered trademark Parasite Eve has been in use for video games in the UK since 1998. Because of that, it has built a strong reputation amongst the consumers in the country. In light of this, the above mentioned two trademarks are confusingly similar and can damage the reputation of the earlier mark.
The UKIPO agreed with the Japanese company considering the later two trademarks as confusingly similar and registered in bad faith with the purpose to take advantage of the earlier trademark established reputation.
The world well-known toy manufacturer LEGO lost a trademark dispute against the following trademark application filed in Japan for class 28 – cat toys:
Against this application, LEGO invoked its Lego trademark for class 28 and claimed an acquired reputation amongst Japanese consumers.
The Japan Patent Office agreed that LEGO is a well-known trademark in the country for many years a conclusion supported even by the fact that half of the schools in Japan used Lego toys for educational purposes.
Nevertheless, the Office dismissed the opposition stating that both signs are not confusingly similar. The Lego’s argument that CATTY is descriptive terms as the first part of the later mark, was rejected.
According to the Office, the other reason for lack of confusion was the fact that the goods target different manufacturers, consumer audience and distribution channels.
Source: Masaki MIKAMI.
Volkswagen has recently lost an opposition against a word trademark application for “Car-pollo” for the following goods and services:
class 9 – navigation apparatus (GPS) for vehicles [onboard computers]; car video recorders; batteries for vehicles; battery charging devices for motor vehicles; electric locks for vehicles and others;
class 12 – wheelbarrows; airplanes; vessels; bicycles; electric bicycles;
class 42 – automatic driving cars design;
The mark was filed by the Chinese company Baidu Online Network Technology Beijing Company Limited.
Against this application, the German company evoked its rights over POLO trademark in class 12.
According to Volkswagen, both signs are confusingly similar. The first part of the later mark is CAR which is a descriptive and not distinctive word for the list of goods and services at hand.
Apart from that, POLO trademark acquired a reputation in Japan due to its longstanding market presence in the country.
The Japan Patent Office, however, dismissed the opposition. According to the Office, both trademarks are dissimilar. The word CAR is descriptive whereas the term POLO means a game played on horseback between two teams. What’s more the POLLO part in the later mark has no dominant position.
Although the earlier mark is famous in Japan, the lack of similarity prevails the possibility of consumer confusion.
Source: Masaki MIKAMI.
Jaguar Land Rover lost an opposition in Japan against the following national trademark application in class 12:
Against this application, the UK company invoked a family of its earlier figurative and combined trademarks in class 12:
According to the company, there was a significant similarity between the signs due not only to the Jaguar image but the first part of the words JAG.
The Japan Patent Office, however, disagreed stating that the trademarks at hand are not confusingly similar for the consumers although they are for identical and similar goods.
According to the Office, the stated reputation of the earlier signs in Japan wasn’t proved enough and cannot play a significant role in the assessment.
Source: Masaki MIKAMI