Appeal decision report (BULUPULUTAPIOKA)
June 4, 2021
|Appeal number||Invalidation 2017-890065（JP. Reg. No. 5903256）|
|Case summary||The trademark consisting of the following composition would not be associated with or reminded of the “STARBUCKS COFFEE” brand logo, and that there would be no risk of confusion about the source of the product or service.|
|Date of decision||August 21, 2019|
|Defendant / Registrant||
K.K. Bull Pulu
Defendant’s trademark currently used
Transition of Starbucks logo
|Designated goods and Class(es)||
Dairy products with tapioca in Class 29
Coffee with tapioca, cocoa with tapioca, sweets with tapioca, tapioca, edible tapioca powder in Class 30
1 Regarding the famousness of the demandant trademark and the green ring graphic composition in the demandant’s trademark
The demandant has been a famous coffee chain store in Japan and the demandant’s trademark was used as its house mark from 1996 to April 2011. However, it cannot be said that the trademark was well known as of the registration filing date about 5 years after the change of its house mark. Furthermore, no situation can be found in which the green ring graphic composition in the demandant’s trademark is used alone.
The demandant’s trademark and the green ring graphic composition indicate the goods and services related to the claimant’s business at the time of application for registration of the Trademark. Thus, it should not be recognized that it was widely recognized during the period.
2 The similarity between the subject trademark and the cited trademark
Although the subject trademark and the cited trademark are common in that they both have a green double annulus figure, the figure portion is merely represented in a format or layout. It should not be seen and grasped with a strong visual impression, and the graphic part independently functions as a source indicator. Whereas, the titles of “Burupur Tapioka” or “Burupur” from the subject trademark and the titles of “Starbucks Coffee” or “Starbucks” from the cited trademark significantly different. Thus, there is no risk of confusion between the trademarks.
3 Applicability of Article 4, Paragraph 1, Item 15 of the Trademark Law
As described in 1 above, the cited trademark and the green ring graphic composition in the demandant’s trademark are not widely recognized among the related consumers at the time of applying for the subject trademark. Further, as described in 2 above, the subject trademark and the Demandant’s trademark are dissimilar to each other. Then, even if the subject trademark is used for the designated services, the consumer who comes into contact with the subject trademark will not be associated with or recalled the demandant’s trademark and there is no risk of confusion about the source of the services. Therefore, the Trademark does not fall under Article 4, Paragraph 1, Item 15 of the Trademark Law.
In the trial decision, since the house mark of the demandant has been changed (it seems that the word “COFFEE” has been removed due to business expansion), the decision concluded that it has not been recognized at the time of the filing of the subject trademark. Still, since the demandant’s trademark was extremely well-known, the impression was that it was imitated because the well-known trademark remained among consumers even five years after the change. Even so, all they have in common is the layout and color of the green double-circle figure, which cannot be said to be similar overall.
After this, the demandee changed the green double annulus shape to a Laurel-like annulus device, enlarged the dog figure in the center, and changed the color to a lighter green in their logo. It can be said that the effect of the opposition was sufficient.