In the latest defeat for a well-known trademark holder looking to overturn a registration in Japan, the Opposition Board for the Japanese Patent Office (“JPO”) has handed Hermès a loss. On the heels on the JPO approving registration for a third-party’s “HERDES” work mark for use on jewelry (in Class 14) and leather goods, including handbags, (in Class 18) for registration in April 2022 and subsequently publishing it for post-grant opposition on May 17, 2022, counsel for Hermès sought to get the registration cancelled on the basis that the “HERDES” trademark – and the goods at issue – are confusingly similar to its own mark/goods and its existing trademark registrations.
The basis for Hermès’ opposition: The “HERDES” mark runs afoul of Article 4(1)(x), which prohibits the registration of trademarks that are identical with, or similar to, another party’s well-known mark for closely-related goods or services,” Hermès argued. As reported by Osaka-based trademark attorney Masaki Mikami, the Birkin bag-maker relied on earlier JPO decisions – including its finding that the “NEBROS” and “NEGUROSU” work marks were confusingly similar, as were the “RELARIS” and “ILARIS” marks – in furtherance of its opposition.
Note: As distinct from the system in the U.S., where the opposition period precedes to registration of a trademark with the trademark office, the JPO process operates a bit differently. “After registration is established, the registration will be published for opposition. Anyone can file an opposition within two months from the date of publication,” per ONDA TECHNO Intl. Patent Attys. “Within two months from the date of publication of trademark registration, anyone can file an opposition. If the opposition board decides to cancel the registration, the opposition board issues a Notice of Reasons for Cancellation to the registrant. Then, the registrant can file an argument within three months from the mailing date of the notice.”
Siding with RARELEAK Co, Ltd., which filed the application for registration for “HERDES,” the JPO Board determined in a May 25 decision that “visually, there is a difference in the fourth letter, ‘D’ and ‘M,’ between the opposed trademark and cited mark ‘HERMÈS.’” The difference in the fourth letter gives “the impression that two marks, as a whole, [are] different words” and thus, that the two marks are “distinguishable [from one another] in appearance.”
In terms of phonetic similarity, the JPO Board held that the marks also differ in this respect and that the difference in sound is “anything but negligible and causes a substantial impact on the overall pronunciation given a short sound structure” of the two words. As a result, Board asserted that it “has reason to believe relevant consumers can easily distinguish the sounds [of the respective marks] without confusion.”
Finally, from a “conceptual” similarity standpoint, the Board found that the word “HERDES” does not have “a specific conception” (or meaning), whereas the word “HERMÈS” “gives rise to the meaning of ‘Hermès, and the Greek god of trade, thieves, travelers, and sport,” making it “obvious that both marks are unlikely to be confused in terms of conception.”
With the foregoing in mind, the Board dismissed Hermès’ opposition and held that RARELEAK’s registration for the “HERDES” is still valid.
THE BIGGER PICTURE: Hardly the only well-known brand to be faced with an unfavorable outcome before the JPO as of late, Hermès’ loss follows closely from a refusal for Moncler, which sought to invalidate a registration for a logo that mimics the bell outline that the outerwear maker uses across its wares. In that case, the JPO Board held, among other things, that bell-shaped outline in CONOMi’s mark, on its own, is not likely to play a source-indicating role in the minds of consumers, and “regardless of the resemblance between the outline and the [Moncler] mark, the Board [said that it] has a reason to believe that the two marks are dissimilar from visual, aural, and conceptual points of view” when considered in their entirety.
And in a matter that garnered a fair amount of headlines last year, the JPO refused to block the registration of “CUGGL” for use on clothing and footwear despite Gucci’s arguments that the unaffiliated filing party’s use of a pink line across a portion of the word “CUGGL” – which forms part of the mark – makes the goods upon which the mark is used appear as though they originate from or are otherwise affiliated with Gucci. (More about that matter here.)
These matters and others – including recent failed opposition attempts by Champion, Jimmy Choo, Furla, and Apple – highlight the difficulty that brands appear to routinely have in successfully blocking the registration of what they argue are confusingly similar marks. While the JPO and its Board commonly acknowledge the well-known nature/recognition of the Western marks at issue, including those of Apple, Moncler, etc., in the Japanese market, the trademark bodies consistently reject opposition-centric arguments over the similarity of marks and the corresponding goods/services.
Such dismissal success rates by brands are clearly reflected in the statistics, with Mikami finding that the average rate of success for a post-grant trademark opposition before the JPO Board being a mere 12 percent from 2015 and 2020.
Not without recourse, companies have had far greater success in waging invalidations, proceedings in which a trademark holder may request a trial with the JPO (on similar grounds to those posed in oppositions) after a mark has been registered. The success rate for invalidations between 2015 and 2020 came in at a much higher 38.6 percent.