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 the red mug and blue sky logo is not likely to cause confusion with two red mug logos.

Rohto Pharmaceutical Co., Ltd. filed an application for a red mug and blue sky logo shown first below designating tea, coffee, cocoa, confectionery, bread, seasonings (other than spices), cereal preparations, instant confectionery mixes and flour in Class 30 and goods in Classes 5 and 32.  The application was registered without an office action.  Société des Produit Nestlé S.A. (hereinafter called Nestlé S.A.) filed an opposition against the Rohto’s registration with respect to the goods in Class 30, citing two red mug logos of its own also shown second and third below and claimed that it falls under Section 4-1-15 (likelihood of confusion).

<Opposed Mark>


<Cited mark 1>


<Cited mark 2>

The Board observed the marks and found as follows:

<As for the opposed mark>
The opposed mark consists of top perspective view of a red mug against the blue sky with two clouds and the brown ground.  The red mug is placed on the lower part of the square back ground, and is filled with swirling brown drink.  The lower half of the red mug is cut off at the bottom of the frame.  The opposed mark as a whole will evoke the connotation of “blue sky, clouds, ground and a red mug filled with brown drink”.

<As for the cited marks>
- The cited mark 1 is a design of a red mug viewed slightly obliquely from above, and evokes the connotation of “a red mug”.
- The cited mark 2 is a design of a red mug viewed obliquely from above.  The red mug is filled with dark brown drink.  The mark evokes the connotation of “a red mug filled with coffee”.

<Comparison of the opposed mark and the cited marks>
- The opposed mark is unified as a whole.  There is no circumstance that consumers and traders pay attention to the red mug only.
- The red mug of the opposed mark is not depicted any more significant than the other elements.  Also, the red color of the mug is as vivid as the blue and white color of the sky and clouds.  Accordingly, the red mug is not dominant.
- The opposed mark and the cited marks are identical with respect that the outer side of the mug is red and the inner side is white.  However, the marks differ in the following points:

- The entire mug is not shown in the opposed mark, while it is shown in the cited mark.
- The mug of the opposed mark is filled with swirling brown drink, whereas the mug of the cited mark 1 is empty and the mug of the cited mark 2 is filled with brown and black drink.  The surface area of the drink in the opposed mark is larger than that in the cited mark 2.

- The opposed mark and the cited marks differ in the whole composition and the mug’s appearance.  The marks are distinguishable visually.
- The opposed mark and the cited marks are distinguishable semantically.
- In conclusion, the opposed mark is not similar to the cited marks.

<As for wellknowness of the cited marks>
Nestlé S.A. is well-known to Japanese as an instant coffee manufacturer.  The cited marks have been used on the packages of Nestlé’s instant coffee since before the filing date of the opposed mark.   Consumers will regard each cited mark as a mug with coffee or a coffee mug and not as a trademark.  Also, the cited marks are used for instant coffee with “NESCAFE” and/or the other device marks.  Accordingly, the cited marks have not become well-known as a source identifier.

<Conclusion>
When the opposed mark is used for the designated goods, consumers will not recall the cited mark and will not confuse the opposed mark with the cited marks.  Thus, the opposed mark will not fall under Section 4-1-15.

And so the Board dismissed the opposition.