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
Adidas won an interesting opposition against a trademark application for “ADIDOG”, applied for clothing for dogs in Japan.
According to the German manufacturer, which invoked several of its earlier Adidas trademarks, the trademarks in the case at hand were very similar, which in turn could create a consumer cofusion. Another reason that could lead to this conclusion were the fact that Adidas has a significant and longstanding reputation in Japan and that the signs were used for similar goods although the target market is different.
The Japanese Patent Office confirmed this position refusing the ADIDOG” application. This was a second win for Adidas which successfully stopped the following application for combined “ADIDOG” mark some time ago:
Source: The Fashion Law and Masaki Mikami
The Japanese Patent Office refused to register as a trademark the phrase GRAND CANYON for class 25 – clothes, shoes etc.
The reason behind this decision was the fact that according to the law in Japan and many other countries, signs that indicate a geographical origin in regard with the relevant goods and services are not allowed for registration as trademarks.
In the case at hand, GRAND CANYON is a well-known US national park, recognized by UNESCO as a World Heritage Site.
What’s more, GRAND CANYON is famous with all sorts of merchandising products known and purchased by consumers around the world, including those in Japan.
From that perspective, it is highly likely consumers to perceive it in connection with the US national park than as a trademark sign.
Source: Masaki MIKAMI, Marks IP Law Firm.
Adidas won an opposition against the following application for a figurative trademark, applied for Class 25 by a Chinese company:
Against this sign, Addidas opposed its following earlier national trademark in Japan in Class 25 too:
According to the German producer, both signs are confusingly similar because their visual elements create a similar impression in consumers. What’s more, Adidas’s mark has a reputation which increases, even more, the risk of confusion.
The Opposition Board coalesce with Adidas concluding that there is a possibility for consumer confusion because both signs are visually similar for identical goods and all of that is supported by the earlier trademark’s reputation.
Source: Masaki Mikami, MARKS IP LAW FIRM (JAPAN)
The UK restaurant chain for Japanese cuisine Wagamama won a trademark dispute against an application for a new trademark Wakayama applied for prepared meals, instant meals” and other food products “all consisting principally of noodles.
According to the restaurant chain, this trademark was confusingly similar to their one, what’s more, it could take advantage from Wagamama reputation on the market.
According to the applicant, there was no conflict between both signs because their trademark covers different letters.
The UK IPO has issued a decision stating that the later mark can create a consumer confusion due to the high level of visual and aural similarities in the presence of identical and similar goods. The different letters in the applied for trademark cannot overcome this negative outcome.