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Bottom line: The Board found that “Medical Beauty Labo” is confusingly similar to “BEAUTYLABO and its transliteration in katakana”.

The applicant filed a trademark application for “Medical Beauty Labo” shown below designating cosmetics in Class 3 and beauty salons, medical services in Class 44, which was registered without office action.  A cosmetic company filed an opposition against the registration with respect to cosmetics in Class 3.  The opposition grounds were that “Medical Beauty Labo” is confusingly similar to its own prior marks “BEAUTYLABO and its transliteration in katakana” shown below and that it is likely to cause confusion as to the origin of goods.

<Opposed mark>

<Cited marks>

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

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

Based on the opponent’s evidences, the Board noted that the opponent is a manufacturer of hair coloring and hair care products and has been using “BEAUTYLABO” for hair coloring and hair care products since 1995.  The brand awareness of “BEAUTYLABO” among females between the age of 12 and 69 is 46.1% in the 2005 research, 51.6% in 2007, 53.9% in 2008 and 50.5% in 2009, and the awareness among females of 20’s and 30’s is more than 70% in any of the years.  The Board considered all evidences comprehensively and recognized that the cited marks were well-known to consumers and traders as a brand of hair coloring and hair care products before and on the application date of the opposed mark and is well-known at the present.

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

<Regarding the opposed mark>
- The opposed mark consists of “Medical”, “Beauty” and “Labo”.
- Medical cosmetics is used to refer to cosmetics used only in a medical institution i.e. a hospital and a cosmetic surgery.  Accordingly, “Medical” of the opposed mark will not function as a source identifier at all or not so much when it is used for cosmetics.
- “Beauty Labo” of the opposed mark is identical with “BEAUTYLABO” of the cited marks in spelling.  “Beauty Labo” is the dominant part of the opposed mark because “BEAUTYLABO” is a well-known mark for the hair coloring and hair care products provided by the opponent.
- “Beauty Labo” of the opposed mark can function as a source identifier independently.  Thus, the opposed mark has sound [beauty labo] and refers to the opponent’s brand.

<Regarding the cited marks>
- The cited marks have sound [beauty labo] and refers to the opponent’s brand.

<Comparison>
- The opposed mark and the cited marks are identical in sound and meaning.  And the spelling is common between the marks.  Therefore, the marks are confusingly similar when used for cosmetics.  The opposed mark falls under Section 4-1-11 (confusing similarity).

3.  As for the owner’s argument

The opposed mark consists of “Medical”, “Beauty” and “Labo”, and it is unified as a whole because they are presented in the same font.  “Beauty Labo” is inherently weak in its distinctiveness.  Accordingly, it is not appropriate that “Beauty Labo” is extracted from the opposed mark.

4. The Board’s finding regarding the owner’s argument

In the opposed mark, “Medical” is inherently weak while “Beauty Labo” is a strong mark because it has common spelling with the opponent’s well-known mark for the hair coloring and hair care products.  Thus, “Beauty Labo” will be extracted from the opposed mark and will function as a source identifier independently.

And so the Board revoked the registration.