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 “GOLD PARTNER” logo is not confusingly similar to “PIRELLI” logo and that confusion is not likely between the marks.

Qingdao Free Trade Zone Hongtyre Industrial & Commercial Co., Ltd. filed a trademark application for “GOLD PARTNER” logo below designating tires for vehicles in Class 12, which was registered without office action.  PIRELLI & C.S.P.A. filed an opposition against the registration on the ground that “GOLD PARTNER” logo is confusingly similar to its own prior mark “PIRELLI” logo below covering the identical goods in Class 12 and that it is likely to cause confusion as to the origin of goods.

<Opposed mark>


<Cited mark>

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

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

Based on the opponent’s evidences, the Board confirmed that the opponent is a tire manufacturer founded in Milan, Italy in 1872 and is the fifth largest in the world, and that the “PIRELLI” logo with distinguishing P was established by 1946 at the latest.  The Board recognized that “PIRELLI” logo became well-known for automobile tires among Japanese consumers and traders before the application date of the opposed mark and remains so to date.

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

<Regarding the opposed mark>
- The opposed mark consists of “GOLD” with G stylized and “Partner” with P stylized.  The upper part of “G” and that of “P” are laterally extended to the last letter of each word.  “GOLD” and “Partner” are stylized in a same manner and the opposed mark is unified as a whole.
- The opposed mark has sound [gold partner].  The mark is not a dictionary word and has no particular meaning.

<Regarding the cited mark>
- The cited mark consists of “PIRELLI” with P stylized.  The upper part of “P” are laterally extended to the last letter of the word.
- The opposed mark has sound [pi-re-ri] and indicates the well-known tire brand.

<Comparison>
- The opposed mark and the cited marks are fully distinguishable in sound.
- The marks are not regarded similar in connotation as the opposed mark has no particular meaning.
- The marks are fully distinguishable in appearance.  Also, there is no particular circumstance to focus on the stylized “P” of the opposed mark and that of the cited mark.
- Therefore, the marks are not similar.  The opposed mark does not fall under Section 4-1-11 of Trademark Act.

3.  As for likelihood of confusion

Although the cited mark is well-known in Japan for automobile tires, Japanese consumers and traders will not immediately recall the cited mark from the opposed mark. Thus, there will be no likelihood of confusion as to the origin of goods.  Therefore, the opposed mark does not fall under Section 4-1-15 of Trademark Act.

And so the Board dismissed the opposition.