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Bottom line: The Board found that “GILLETTE” for “electric accumulators, electric batteries etc.” in Class 9 is likely to cause confusion with the well-known trademark “Gillette” for “razors and razor blades”.

Shest banok, a Russian company filed an international application for “GILLETTE” with respect to “electric accumulators, electric batteries, etc.” in Class 9 designating Japan, and the applied-for mark was granted for registration.

The Gillette Company, the world well-known brand owner of “Gillette” as to “razors and razor blades”, filed an opposition against Shest banok’s registration on the ground that the opposed mark falls under Section 4-1-8, 4-1-15, and/or 4-1-19 of Trademark Act.  The Gillette Company cited the following marks to support its opposition:

<Cited marks>
・transliteration of Gillette in katakana
・
・

The Board reviewed the evidences submitted by The Gillette Company and found that:

-　The Gillette Company is the world largest company in the grooming products industry.  The company established an affiliate company “Gillette Japan Inc.” in 1944 and started its business in earnest from 1968.
-　The Gillette Company uses the cited marks on its products, the packages and in the advertisements.
-　“Gillette” is listed in some dictionaries as a trademark for safety razors and razor blades produced by The Gillette Company.  Also, there are many newspaper articles about The Gillette Company, Gillette Japan Inc. and their products.
-　The Gillette Company also conducts a battery business under “Duracell” brand, which is one of the most famous brands.

Based on the above findings, the Board recognized that:

-　Both the opposed mark and the cited marks bear meaning of “a trademark of the Gillette Company”, because Japanese consumers recognize the cited marks well-known in Japan.
-　The opposed mark is identical with the cited marks in sound and meaning, and shares the same spelling with two of the cited marks.  Therefore, the opposed mark is similar to the cited marks.
-　The affiliates of The Gillette Company carry business in the field of daily articles such as batteries, stationery and toiletries, etc.  In view of the business deployment and diversion of The Gillette Company and its affiliates, the designated goods of the opposed mark are not only directly relevant to the business of The Gillette Company, but also in the potential business field they may enter in the future.
-　In conclusion, the Board found that the opposed mark “GILLETTE” is likely to cause confusion with the cited marks when used for “electric accumulators, electric batteries, etc.” in Class 9, and recognized that the opposed mark falls under Section 4-1-15 of Trademark Act.

Shest banok did not file a counter argument.  Finally, the Board revoked the registration.

 

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