We are a boutique IP firm located in Osaka, Japan, specializing in trademark, design, specific unfair competition and copyright matters.

Bottom line: The Board found confusion is likely between design of two pumas and design of one puma.

An individual filed an application for design of two pumas (or the like) with respect to “safety helmets and protective helmets for sports” in Class 9 and the application was granted for registration.

Puma SE filed an opposition citing its earlier registrations for puma design mark used for inter alia training shoes and suits, sports equipment.  The alleged grounds of opposition were likelihood of confusion (Section 4-1-15) and disturbance of trade order (Section 4-1-7).

<Opposed mark>


<Cited mark>


The Board reviewed the evidences submitted by Puma SE and found that Puma SE successfully proved that the cited mark has become well-known for its training shoes and suits, sports equipment, bags, etc. in Japan at the time of filing of the opposed mark and remained well-known at the time of granting its registration.

The Board first compared the marks.  The opposed mark consists of silhouette of two felines in blue, each facing left and right, their tails joined.  The cited mark, on the other hand, consists of silhouette of a feline in black.  The marks are different in its color and the number of feline, but the overall impression of the marks are similar as each jumping feline is presented in silhouette.  Turning to the details, the marks are similar in the outline form as well as each part of body, for example, the angle of jump, position of front and hind legs, direction of head, etc.  Thus the design of feline in each mark is highly similar.

The common elements of the marks give dominant impression and the differences of the marks are minor.  The marks at issue are highly similar when compared in the recollection of consumers due to the common impression.

The Board then turned to the relatedness of the goods.  The Board found “protective helmets for sports” designated in the opposed mark is highly related to “training shoes and suits, sports equipment including rugby helmets” for which the cited mark is used, because these goods have the use, purpose, sales point, consumer, etc. in common.  Further, “safety helmets” in the opposed mark is highly related to “footwear and clothing for motorcycles” for which the cited mark is used, due to their common use, purpose, sales point, consumer, etc.

In view of the above, the Board found that the consumer is likely to associate the opposed mark with the opponent’s well-known mark, and wrongly believe that the goods bearing the opposed mark and the opponent’s goods come from the same or organizationally/economically linked undertaking.  Accordingly, the opposed mark falls under Section 4-1-15 of Trademark Act.

The registrant did not file any counter argument.  And the Board revoked the registration.