Yves Saint Laurent has suffered a defeat in its quest to block the Japanese registration of what it claimed is a “confusingly similar” trademark. In a decision early this year, the Japan Patent Office (“JPO”)’s Opposition Board rejected the opposition filed by the Kering-owned luxury brand, in which it sought to stand in the way of the registration of a trademark consisting of a stylization of the letters “USL” for use on clothing (Class 25), with the Board finding that there is a lack of similarity and therefore, little risk of confusion between the two trademarks at issue: Yves Saint Laurent’s well-known “YSL” monogram and an unaffiliated party’s “USL” mark.
For some background, Marusho Hotta Co. Ltd. – which does business under the brand name UN-USELESS – filed an application with the JPO in August 2022 to register a logo trademark consisting of the letters “USL” surrounded by a circle for use on apparel. Fast forward to February 2023 and the JPO approved Marusho Hotta Co.’s application and confirmed the publication of the “USL” trademark for opposition, which prompted Saint Laurent to file an opposition to block the registration of Marusho Hotta Co.’s monogram.
The basis for Saint Laurent’s opposition: The “USL” mark violates Article 4(1)(xi) and (xv) of the Japan Trademark Law, which states that “no trademark shall be registered if the trademark … (xi) is identical with, or similar to, another person’s registered trademark which has been filed prior to the filing date of an application for registration of the said trademark, if such a trademark is used in connection with the designated goods or designated services relating to the said registered trademark, or goods or services similar thereto; or (xv) is likely to cause confusion in connection with the goods or services pertaining to a business of another person.”
In particular, Yves Saint Laurent argued that “USL” mark should not be registered due to the similarity between its “YSL” mark and the similar pronunciation of “USL.” More than that, the luxury brand argued in furtherance of its opposition that due to the similarity of the two monograms, consumers were likely to be confused about the source of goods sold under the acronym “USL,” and thus, the mark should not be approved for registration by the JPO.
Surprisingly for Saint Laurent, the JPO’s Board rejected the opposition, ruling that the ordinary consumer would not perceive the combination of three letters, “Y”, “S”, and “L” in the monogram of Marusho Hotta Co.’s mark – and instead, would view the monogram as consisting of the letters “U”, “S”, and “L”. The JPO Board also determined that the two trademarks are visually distinct as a result of the obvious difference in the initial letter, font design, and overall configuration. Specifically, the different sound between the letter “u” and the letter “y” creared a significant contrast of the overall impression of the two marks. And still yet, the Opposition Board held that since the two trademarks do not have any meaning at all (on their own), it is not possible to compare them in a conceptual way.
With the foregoing in mind, the JPO’s Board sustained Marusho Hotta Co.’s application for registrant of the “USL” mark, confirming the lack of similarity between its mark and Saint Laurent’s monogram, and therefore, the lack of confusion between the six letters involved in the case. In conclusion, the JPO held that the opposed mark is not subject to Article 4(1)(xi) and (xv), and therefore, the opposition was rejected.
THE BIGGER PICTURE: This case again demonstrates the importance of considering the overall appearance (and sound) of the marks at play, regardless of the market, as it shows that two marks that share the same two or three letters can still be defined as different at the level of overall perception. Not the first decision from the JPO’s Opposition Board on this matter. The Board recently rejected an opposition filed by magazine publisher Hachette Filipacchi Presse SA (“HFP”) over the ELLLE HOTEL (stylized as elLle HOTEL) trademark for use on hospitality services (in Class 43).
According to the JPO’s Board, thanks to the stylization of the word “elLle,” which created an overall appearance that is different than – and distinctive from – HFP’s ELLE magazine’s mark, there was little likelihood of confusion between the mark meant to indicate the Japanese hotel brand and one for the fashion magazine, Elle. In short: The difference in the overall appearance of the two marks helped to reduce the potential for confusion among the consumers, and based on this determination, the JPO’s Board rejected HFP’s opposition.
Silvia Capraro is counsel at HFG Law & IP Practice.