Mattel fais in Japanese trademark opposition to block ‘Salon BARBIES’

By Masaki Mikami
November 24, 2017

In a recent trademark opposition, the Opposition Board of the Japan Patent Office (JPO) dismissed an opposition by Mattel, Inc. – maker of the world-famous Barbie doll – who claimed “Salon BARBIES” is likely to cause confusion or association with the famous Barbie doll when used on restaurant and fan club services. [Opposition case no. 2016-900395]

Opposed mark

Opposed mark, TM Registration no. 5881203, was filed on March 10, 2016 by designating various services in class 35 and 43 including restaurant, accommodation club services, business management analysis and others.

Via a substantive examination, the JPO granted registration to the opposed mark because the examiner, after  considering the mark, had no grounds for a proper refusal. The mark published for registration on October 11, 2016.

Opposition

On December 12, 2016, Mattel, Inc., an American multinational toy manufacturing company, opposed an application to register the mark Salon BARBIES (see above).

In the opposition, Mattel cited two senior trademark registrations.

TM Registration no. 5383631 for word mark “BARBIE” in standard character (classes 9, 14, 18, 24, 25, 28, 35)

TM Registration no. 589632 for the BARBIE logo mark (see below) (classes 9, 15, 20, 21, 25, 28)

Article 4(1)(xv)

Mattel argued that the Opposed mark is subject to cancellation in violation of Article 4(1)(xv) of the Trademark Law on the grounds that its BARBIE mark had acquired such fame that, upon seeing the opposed mark used on restaurant and fan club service, the average consumer would be led to infer the existence of a connection to the owner of the famous brand.

Article 4(1)(xv) explains that a mark shall not be registered where it is likely to cause confusion in connection with the goods or services pertaining to a business of another person.

In our common practice, the article is applicable to the case where a mark in question designates dissimilar goods or services with a well-known registered or unregistered mark. Since the Opposed mark designated services less related to, or dissimilar to goods and services covered by the cited trademark registrations. Nevertheless, Mattel relied on the article.

Provided that senior registrations cover similar goods or services to the Opposed mark, Mattel would raise the objection based on Article 4(1)(xi). Article 4(1)(xi) prohibits identical and similar junior trademarks from registering regardless of insufficient reputation to the senior mark.

Article 4(1)(xix)

Mattel also argued that the Opposed mark is objectionable in violation of Article 4(1)(xix) as well because it would presumably aim to dilute or do harm to the remarkable prestige bestowed to the BARBIE mark.

Article 4(1)(xix) explains that a mark shall not be registered where it is identical with, or similar to, a trademark well known among consumers in Japan or foreign country as that indicating goods or services pertaining to a business of another person, if such trademark is used for unfair purposes (referring to the purpose of gaining unfair profits, the purpose of causing damage to the other person, or any other unfair purposes).

In contrast to 4(1)(xv), Article 4(1)(xix) conditions a junior mark to be identical with, or similar to senior well-known mark. In other words, the article does not block a junior mark deemed dissimilar even if the senior mark acquired substantial reputation in relation to goods or services in question.

Board decision

By reviewing enormous evidentiary materials, including several articles, dictionary, newspaper, and magazines revealing the brand value of BARBIE mark to exceed 476 million USD and accumulated sale (more than one billion dolls and costumes) worldwide, the Opposition Board admitted the BARBIE mark has acquired a high degree of popularity and reputation as a source indicator of dolls among relevant traders and consumers in Japan at the time of both the application and the grant of registration of Opposed mark.

Notwithstanding, the Board denied the similarity of both marks from visual, phonetical and conceptual points of view. From appearance, the Opposed mark consists of figurative element and the words of “Salon BARBIES”. Visual difference between the marks gives rise to a distinguishable impression in the mind of consumers. In sound, difference in syllable and tone of both marks is not too negligible to find confusion. As to concept, the Board found that the Opposed mark does not give rise to any specific meaning, which means it has no connection with BARBIE mark in concept as well.

Relying on distinctive dissimilarity of the marks, the Board concluded relevant traders and consumers are unlikely to confuse or associate the services using the Opposed mark with the opponent or any business entity economically or systematically connected with Mattel.

Based on the foregoing, the Opposed mark was not cancelled due to Article 4(1)(xv) of the Trademark Law.

The Board also denied opponent’s allegation under Article 4(1)(xix).

Based on the totality of the circumstances, as long as Board found no fact and evidence to show or infer that the Opposed mark was filed with malicious or fraudulent intent on the part of registrant to hinder the business of opponent, the Opposed mark must remain valid in light of Article 4(1)(xix) as well.

The Author

Masaki Mikami

Masaki Mikami is the founder of MARKS IP Law Firm, a Japanese law firm providing big-firm level of service with the nimbleness and individualized attention and responsiveness that boutique firms are known for. He is a seasoned IP attorney with extensive experience in trademark law practice, and provides trademark legal services to individuals and businesses. Mr. Masaki is a qualified IP attorney in Japan, and is registered to practice as IP litigator since 2004.

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