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 “Gumserum” is likely to cause confusion with “G・u・m” logos.

*Please refer to No. 160 case as well, in which the outcome is opposite.

The applicant filed a trademark application for “Gumserum” in standard character designating dentifrices in Class 3, which was registered without office action.  Sunstar Group filed an opposition against the registration.  The opposition grounds were that “Gumserum” is confusingly similar to its own prior marks “G・u・m” logos shown below and that it is likely to cause confusion as to the origin of goods.

<Prior marks (Cited marks)>

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

1.  The evidences submitted by the opponent

The opponent has been selling oral care products (i.e. dentifrices, toothbrushes, dental rinses, etc.) bearing the cited marks since 1989, and advertising the products in the media of papers, magazines, TVs, etc.  The sales have been increasing since 1989 and the recent sales amount is over 20 billion yen.  The opponent holds the top share in Japan in dental rinse market and the second in toothbrush market.  Based on the above, the Board recognized that the cited marks were well-known to Japanese consumers and traders at the time when the opposed mark was applied for and registered.

2.  The likelihood of confusion between the opposed mark and the cited marks

The first half of the opposed mark “Gum” spells the same as “G・u・m” of the cited marks.  Dentifrices designated in the opposed mark is a kind of oral care products, and the cited marks “G・u・m” are well-known in the oral care products industry.  “Serum” of the opposed mark is a dictionary word meaning a component of blood, and is also used as a name of cosmetic recently.  For example, there are advertisements on dentifrices having cosmetic effect to whiten teeth.  Therefore, consumers and traders will find the opposed mark as a combined mark of “Gum” and “serum”, and will misunderstand that the goods bearing the opposed mark are relevant to the opponent.  The opposed mark is likely to cause confusion regarding the origin of goods and falls under section 4-1-15.

3.  The holder’s argument

The trademark holder argued that the applied-for mark is unified as a whole because “Gum” is a dictionary word meaning tissue around teeth and will not be extracted from the whole mark.  The Board however recognized that consumers and traders pay attention to “Gum” because it is well-known as the mark of the opponent’s dentifrices and “serum” is weak.

And so the Board revoked the registration.