ElLlE HOTEL Vs Elle: The role of overall appearance

The Japan Patent Office (JPO) has recently rejected the opposition filed by Hachette Filipacchi Presse SA (HFP) against the trademark ELLLE HOTEL (elLle HOTEL) (Registration No 6681746) in Class 43, declaring the lack of risk of confusion between the Japanese Hotel and the French magazine Elle (Opposition No 2023-900123,).

In November 2022 the opposed mark, which is written in a particular form of stylization combined with the word ‘hotel’ and horizontal line, was filed for use in class 43 (hotel and restaurant services) by Yugen Kaisha Yamaguchi Jitsugo, a Japanese company:

The trademark was meant to be use for a newly open so-called fashion hotel, named elLle HOTEL.

The JPO granted the registration of the trademark accordingly and published it for post-grant opposition in March 2023.

On 26 May 2023, right before the expiration of the deadline for filing opposition, HFP - the French company in charge of the publication of famous magazine Elle, filed an opposition against the mark.

The opposer argued in favor of the cancellation of the trademark stating that it was granted in violation of Articles 4(1)(vii), (xi), (xv) and (xix) of the Japan Trademark Law.

As reported in the text of the Article 4(1)(xi), it is prohibited the registration of a later mark that is identical, or similar to, an earlier registered mark, while Article 4(1)(xv) provides that a mark shall not be registered if it is likely to cause confusion with the well-known goods or services of other business entities.

The French company stated that the Japanese trademark was clearly similar to the trademark ELLE and therefore there could have been a clear association between the newly opened hotel and the magazine for the average consumers, leading to confusion about the relationship between the companies and the source of the service.

In conclusion, accordingly to HFP, it was undeniable the high reputation of the brand Elle and the close likeness between the two trademarks.

The JPO Opposition Board recognized that the ELLE mark had become well-known among the Japanese consumers in connection with the magazine, as well as other fashion related items. Nonetheless, the JPO disagreed that the mark ELLE had acquired a certain degree of recognition in relation to the services such as hotel services.

In addition, the Office stated that the word ‘elLle’ as combined was the key element of the trademark and therefore allowed to distinguish the Hotel mark from the French company’s mark. The overall appearance of the opposed trademark had to be considered as distinctive and therefore nothing but dissimilar from the French ELLE.

The same-said overall appearance helped to reduce the confusion among the consumers and based on this assumption, the JPO rejected the opposition.

The decision in object is just another confirmation of the fact that when it comes to word mark, it is diriment to play with different elements, which are often those that lead to the victory of the game.