April 2016, Issue no. 21

Transcription

1 Similarity between marks and likelihood of confusion (Article 4(1)11 or 4(1)15 of Japan Trademark Act) (Hereinafter, = means similar and means dissimilar ) Appeal No. Trademark in question Decision Prior Trademark(s) Goods/Services (Classes) Reason Appeal THE STRETCH = STRETCH Apparatuses and instruments for recording, reproducing, amplifying, processing and transmitting of sound and images, including speakers, headphones and remote controls in Class 9 Confusingly similar since the definite article THE has poor distinctiveness, and the viewed from its sole distinctive portion of STRETCH, and both marks are therefore confusingly similar in terms of sound, meaning and appearance Key rings, Clocks and watches and their parts and accessories in Class 14, etc. Dissimilar since the prior mark is visually recognized as being inseparable, namely, as meaning LOGOS GALLERY and therefore both marks are dissimilar in terms of = ("renai" in Computer software, sensors in Class 9; Medical and surgical apparatuses and instruments, sensors for medical applications in Class 10 Confusingly similar since, although both marks are dissimilar in terms of appearance and meaning, the pronunciation arising from each of the marks is the same. The term RENE, even if it refers to a boys name in French, is not familiar to general consumers in Japan, and will therefore be considered a coined word with no specific PULSE パルス Electronic apparatus, components, devices and equipment, etc. in Class 9; Design for others in the field of electronic apparatus, components, devices and equipment in Class 42 Dissimilar since, although Pulse and Electronics are depicted in a different logo, font and size, the trademark in question will always be observed as one inseparable mark due to the highly unified appearance of the mark = Technological research and development; computer software design, etc. in Class 42 Confusingly similar since the VERIFIED portion has poor distinctiveness, and thus the viewed from its sole distinctive portion of EPD, which is identical with the cited mark. 14

2 SMART TABLET SMART Pharmaceutical preparations in Class 5 Dissimilar since the inseparable, and thus the marks are dissimilar in terms of トバル TOBAL ( tobal in Clothing, footwear, sports- wear, footwear for sports in Class 25 Dissimilar since the pronunciations arising from both marks are distinguishable due to the existence or nonexistence of the prolonged sound in the initial part, i.e., TOR and TO SOLBEE ソルビー ( solbee in Clothing, etc. in Class 25 Dissimilar since one of the pronunciations arising from the trademark in question, i.e., sold + been, is identical with the prior trademark, while the other pronunciation arising the trademark in question, i.e., sold + buy is considered dissimilar ( Betty in Clothing, etc. in Class 25 pronunciations rising from the two marks are the same, the meaning and appearance are dissimilar radiant powder foundation RADIANT Powder foundation in Class 3 Dissimilar since the inseparable, and thus the marks are dissimilar in terms of Fortune Diamond (standard characters) FORTUNE FORTUNE フォーチュン ( fortune in Precious metals, precious stones, etc. in Class 14; Retail or wholesale services of precious metals, precious stones, etc. in Class 35; Planning of wedding parties, etc. in Class 45 Dissimilar in terms of meaning since the trademark in question is inseparable. Although the word Diamond is non-distinctive in relation to the designated goods and services, it is not appropriate to solely extract the Fortune portion of the trademark in question and compare it to the prior trademark = Confectionery, bread and buns, etc. in Class 30; Restaurant services in Class 43 Confusingly similar in terms of appearance, sound and meaning since the prior trademark is viewed from its sole distinctive portion of FAVORI. 15

3 Retail services or wholesale services for clothing, etc. in Class 35 pronunciation is the same, both marks are dissimilar in term of appearance AXES ACCESS No.3 Computer application software in Class 9 Dissimilar since, both marks are sufficiently distinguishable in terms of pronunciation, meaning and appearance M O A Deodorization equipment by ozone generating systems for domestic use, and other household electrothermic appliances in Class 11 pronunciations rising from the two marks are the same, the meanings and appearances of such marks are dissimilar No. 1 WINDSEL No. 2 (Freedom in Style) Clothing, footwear, headgear in Class 25 pronunciations rising from the two marks are the same, the meanings and appearances of such marks are dissimilar SIMMS = SIMS Clothing, footwear, etc. used for fishing in Class 25 since, although both marks are dissimilar in terms of meaning, the difference in appearance is only the existence or nonexistence of the letter M in the middle portion and the pronunciation arising from each of the marks is the same = ACB Electric or electronic power supply apparatuses, in Class 9 Confusingly similar since the wording TECHNOLOGY has poor distinctiveness in the field of the designated goods. Therefore, the distinctive portion of the trademark in question is ACB ISLAND SANDALS ISLAND SLIPPER No. 2 Bags, pouches, etc. in Class 18; Clothings, Sandal shoes in Class 25 Dissimilar since, the inseparable and thus the marks are dissimilar in terms of 16

4 AEROPOSTALE NYC AEROPOSTALE Clothing, etc. in Class 25 Dissimilar since, although NYC is considered to indicate the place of sale, namely, New York City, the trademark in question is visually recognized as being inseparable, and thus the marks are dissimilar in terms of appearance, pronunciation and ( Beibia in BABYA ベビア ( Bebia in Cosmetics, etc. in Class 3 Dissimilar since the difference in pronunciation between the marks [ i.e. beibia and bebia] has a great influence in marks with such short pronunciations DNZ DMZ GOLCIMA = CORSIMA Pharmaceuticals in Class 5 Human pharmaceuticals in Class 5 Dissimilar since each of the 3 alphabetic letters comprising the two marks are clearly pronounced, and the marks are therefore sufficiently distinguishable in terms of pronunciation. between the beginnings of the marks, namely GO and CO JULES Jours ジュール ("jours" in No. 3 JOUR Perfumery and beauty products, etc. in Class 3 pronunciation arising from each of the marks is the same, the marks are sufficiently distinguishable in terms of meaning and appearance. The term JULES, even if it refers to a boy s name, is not familiar to general consumers in Japan, and will therefore be considered a coined word with no specific Automobiles, parts and accessories, etc. in Class 12 Dissimilar since, although the pronunciation arising from each of the marks is the same, they are sufficiently distinguishable due to the existence of the device element of the trademark in question and the difference in the second alphabetic letter E, I and i is notable in marks of such short compositions F R E E Toys and dolls, Sporting articles in Class 28 The recognized as the title of a TV animation program. The marks were found to be dissimilar since, although the pronunciation arising from each of the marks is the same, they are sufficiently distinguishable in terms of appearance and 17

5 Dvr-GALUDA GALUDA Drive recorder for automobiles, drive recorders, measuring or testing machines and instruments, electrical communication machines and instruments in Class 9 Dissimilar since, the inseparable and the marks are therefore dissimilar in terms of mystic MYSTIQUE Clothing, etc. in Class 25 marks are similar in terms of pronunciation, they are notably dissimilar in terms of appearance and Golf equipment in Class 28 Dissimilar since both marks are sufficiently distinguishable in terms of appearance due to the notable difference of the device elements contained therein. The word tour is commonly used in the field of the designated goods, and thus the word element included in each of the marks is not recognized as being the dominant portion thereof HELEOS = Photometers in Class 9 Confusingly similar in terms of appearance and pronunciation since five out of the six alphabetic letters are the same and there is only a small difference existing in the middle part, i.e., E and i LIPRIDIA = REPLIDEA Pharmaceuticals in Class 5 since the difference of four of the eight alphabetic letters in similar fonts does not have a great influence visually and there is only a small difference in pronunciation between LI and RE FHM FHN Masks used for vacuum deposition or thin-film generation, masks for manufacturing organic EL displays, touch panels and semiconductors in Class 7 Dissimilar since each of the three alphabetic letters comprising the two marks are clearly pronounced, and the marks are therefore sufficiently distinguishable in terms of pronunciation. 18

6 Earphones, headphones in Class 9 Dissimilar since, the trademark in question is visually recognized as being inseparable due to its distinguishing font design, and thus the marks were found to be dissimilar in terms of appearance, pronunciation and No. 1 No. 2 IMPACT Strings for rackets in Class 28 Dissimilar since, the inseparable, and thus the marks were found to be dissimilar in terms of pronunciation and Klee Computer programs, downloadable game programs, etc. in Class 9; Online games, etc. in Class 41 Dissimilar in terms of meaning since the handwritten portion of the prior trademark is not recognized as a word element Klee but as a device element due to its highly stylized depiction, even though the cited mark may remind consumers of the German painter s name Paul Klee BUCANERO = Alcohol beverages, excluding beer in Class 33 since the Spanish word BUCANERO included in each of the marks is not familiar to general consumers in Japan, and it is therefore considered to be the distinctive portion of each of the marks Track 3000 = TRAK Apparatuses and instruments for conducting, switching, transforming, accumulating, regulating and controlling electricity in Classes 9 & 12 since the trademark in question is viewed from its sole distinctive portion of Track as a result of the numeral part of 3000 being omitted due to being non-distinctive セラゴールド CERAGOLD ("Ceragold" in Mildly acidic water with sodium hypochlorite and acid aqueous solution in Class 1 Dissimilar in terms of appearance, pronunciation and meaning since the cited mark is visually recognized as inseparable and the CERA portion is not observed in isolation. 19

7 Opposition No. Opposition Trademark in question Decision Prior Trademark(s) Goods/Services (Classes) Reason VOICE TWITTER = TWITTER ついったー ("Twitter" in Classes 38 & 45 Confusingly similar since the easily recognized as a combination of the word VOICE and the opponent s famous trademark TWITTER. The prior trademarks TWITTER and ついったー are well known among Japanese consumers as indicating the real-time short message services provided by the opponent, and people s attention would be focused on the TWITTER portion of the trademark in question, and therefore, the trademark in question is likely to cause confusion with the prior trademarks in connection with the designated services SilkAsh シルクアッシュ ( Silk Ash in シルキーアッシュ ( Silky Ash in Cosmetics, etc. in Class 3 Dissimilar since the pronunciations arising from both marks are distinguishable due to the difference in pronunciation between [ si lk ] and [ silki:] Qross CROSS Boats & ships, Aircraft, Railway rolling stock, Automobiles, etc. in Class 12 One of the pronunciations of the trademark in question, [ k yu:ros ] is considered dissimilar to [ kros ] BUGGARRI ブルガリ ( BVLGARI in BVLGARI No.3 BVLGARI No.4 BULGARI No.5 BVLGARI No.6 BVLGARI Clothing, etc. in Class 25 Dissimilar since, although BVLGARI is a well-known trademark which has acquired a reputation, the pronunciations arising from the trademark in question and the prior marks are distinguishable. ~ No.7 ~ 11 Classes 3, 9, 14, 18, 24, 25 & 28 Dissimilar since the marks are visually distinguishable. The trademark in question is considered to comprise a geometric design mark, and not a monogram of G. 20

8 & No No.3 & No. 4 Footwear, boots for sports in Class 25 Dissimilar since the marks are visually distinguishable. No.6 Appeal No. Trademark in question Decision Prior Trademark(s) Goods/Services (Classes) Reason Invalidation Trial Nos.1 & 2 ジェンヌ ("Jenne" in No.3 JENNE No.4 jenne Cosmetics in Class 3 Dissimilar since the trademark in question should always be observed as one inseparable unit due to it being a highly unified mark in the same font and same size of lettering and with no space between jenne ( ジェンヌ ) and cosme ( コスメ ). The prior trademarks are not recognized as being well-known since, taking the submitted evidence of use into consideration, the demandant has always been using the prior trademarks together with other distinctive brand names (trademarks) such as SOFINA and ソフィーナ ACME MADE = No. 1 ACME No. 2 Bags, pouches, etc. in Class 18; Bags adapted for computers and other electronic machines, etc. in Class 9 Confusingly similar since the word made is easily recognized as conveying the meaning of made by ~, and the mark therefore has poor distinctiveness in the field of bags and pouches. Thus, the distinctive portion of the ACME. 21