In a recent ruling, the Opposition Board of Japan Patent Office (JPO) decided in favor of Adidas AG to retroactively cancel the mark “adidog” on the grounds of the impugned mark being similar in appearance and sound to the mark “Adidas”.
Adidas AG, the German sportswear giant in the year 2018 had initiated an opposition action in Japan against the mark “adidog”. Opposed mark “adidog”, a word mark in standard character, was filed on October 17, 2016 by an individual, designating clothing for pets in class 18 and published for registration on November 21, 2017 without confronting with office action from the JPO examiner.
[Opposition case no. 2018-900019, Gazette issued on August 30, 2019]
On January 16, 2018, before the lapse of a two-months opposition period, Adidas AG filed an opposition to opposed mark.
Adidas AG relied on Article 4(1)(xv) of the Japan Trademark Law, which prohibits the registration of a trademark that is likely to cause confusion amongst consumers as to the source of products bearing the mark.
Adidas elucidated that the use of the mark “adidog” would confuse the consumers and there is a close relatedness/ proximity of goods in question.
The JPO Trade Mark Office sided with Adidas AG and dismissed the application for the mark “adidog” and considered the following grounds to arise to the said conclusion:
Adidas”, coined after the name of opponent’s founder ‘Adi Dassler’, is an invented word with no dictionary and other known meaning. Besides, the Board could not find any words starting with ‘adid’ in language dictionaries of English, French, German and Italian as well as registered trademarks with the prefix ‘adid’ in Japan other than opponent mark.
It is unquestionable that trade name “Adidas” has acquired a remarkable degree of reputation well before the filing date of opposed mark as a result of continuous use on sportswear and marketing activities in Japan since 1971.
Clothing for pets is one of fashion items consumed by general public. Sportswear is also consumed by general public not only for exercise use but also fashion items. It becomes apparent that distributors of sports gears, apparels, bags, and shoes also deal with clothing for pets nowadays. If so, both goods shall be closely related.
Opposed mark, consisting of six alphabets, starts with ‘adid’. In the meantime, stylized 5th letter ‘a’ of opponent mark looks like a device combining a short vertical bar with ‘o’. The final letter ‘s’ gives rise to a similar impression with ‘g’ since both letters have the same way of writing with a digit – ‘8’. Thus, opposed mark shall be deemed similar to “adidas” from appearance and sound.