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 that “möbus” is not confusingly similar to “MOEBIUS” and that “möbus” is not likely to cause confusion with “MOEBIUS” as to the origin of goods.

Möbus GbR filed a trademark application for “möbus” designating clocks and watches, ornaments, precious stones, etc. in Class 14, which was registered without examiner’s refusal.  The Swatch Group filed an opposition against the registration on the ground that the opposed mark “möbus” is confusingly similar to its own prior mark “MOEBIUS” covering instrument oil for clocks and watches, etc. in Class 4 and that the opposed mark is likely to cause confusion with the cited mark as to the origin of goods.

The Board reviewed the evidences submitted by the opponent and found as follows:

1. As for the well-knownness of the cited mark

The opponent submitted evidences on use of the cited mark for instrument oil for clocks and watches, but none shows the first use date of the cited mark, the sales volume and sales amount of the goods, advertisement, etc.  Therefore, the Board did not find that the cited mark was well-known to Japanese consumers at the filing date of the mark.

2.  As for the similarity between the opposed mark and the cited mark

<Regarding the opposed mark>
-　The opposed mark “möbus” is a fancy word having no particular meaning.
-　The opposed mark will be pronounced as [mo:-bu-su] in so-called Romanized style or [mo:-ba-su] in English-wise.  The mark will also be pronounced as [me:-bu-su] in German-wise in view of the umlaut.

<Regarding the cited mark>
-　The cited mark “MOEBIUS” is a fancy word having no particular meaning.
-　The cited mark will be pronounced as [mo-e-bi-u-su] in so-called Romanized style, or [mo-e-bi-a-su] or [mo:-bi-a-su] in English-wise.

<Comparison>
-　The opposed mark and the cited mark are fully distinguishable in appearance.
-　As for the comparison of sound, i.e. [mo:-bu-su], [mo:-ba-su] or [me:-bu-su] v. [mo-e-bi-u-su], [mo-e-bi-a-su] or [mo:-bi-a-su], both marks are fully distinguishable, because the number of sound of the opposed mark is different from that of the cited mark, i.e. 4 sounds v. 5 sounds, and both marks are different from each other in tone.
-　Besides, the evidences submitted by the opponent shows that some distributors in Japan uses the sound [me:-bi-su] or [me-i-bi-su] for the cited mark “MOEBIUS”, which is fully distinguishable from the sounds of the opposed mark as both marks have short sounds, i.e. 4 sounds, and the sounds of both marks differ from each other.
-　Both marks are not comparable in connotation as they have no particular meaning.
-　Therefore, the opposed mark is not similar to the cited mark, and the opposed mark does not fall under Section 4-1-11 of Trademark Act.
-　Besides, the registrant’s goods “clocks and watches” are not similar to the opponent’s goods “instrument oil for clocks and watches” as the consumers and traders, uses, quality, raw materials, etc. of the goods are different.

3. Whether or not the opposed mark falls under Section 4-1-10 or 4-1-15 of Trademark Act.

The cited mark is not well-known to Japanese consumers for its instrument oil for clocks and watches.  Thus, the mark does not fall under Section 4-1-10 of Trademark Act.

The opposed mark is not similar to the cited mark, and confusion is not likely between the marks.  Thus, the opposed mark does not fall under Section 4-1-15 of Trademark Act.

And so the Board dismissed the opposition.