HERMÈS vs HAIRMES: risk of confusion for cats and dogs
With the recent decision issued on 26 July 2023 the Japan Patent Office (JPO) ruled in favor of Hermès International SA in an invalidation action against the word mark HAIRMES (Registration No 6275593), stating the willingness of the trademark owner to take advances from the famous fashion brand Hermès.
The case started long time ago, on October 2019, when Dog Diggin Designs LLC applied with the JPO for registration of the word mark HAIRMES for goods “beds for household pets; pillows for pets; pet cushions” in Class 20, and “toys for pets” in Class 28. The company is manufacturing and selling dog toys and dog beds, in addition to other pet supplies.
On 15 October 2020 Hermès filed a post-grant opposition against the disputed mark with the Japanese Patent Office (JPO), arguing that the mark should be cancelled for being in contravention of Articles 4(1)(x), (xi), (xv), and (xix) of the Trademark Law.
Article 4(1) […] no trademark may be registered if the trademark:
(x) is identical with, or similar to, another person's trademark which is well known among consumers as that indicating goods or services in connection with the person's business, if the trademark is used in connection with the goods or services or goods or services similar thereto;
(xv) is likely to cause confusion in connection with the goods or services pertaining to a business of another person (except those listed in items (x) through (xiv) inclusive);
(xix) is identical with, or similar to, a trademark which is well known among consumers in Japan or abroad as that indicating goods or services pertaining to a business of another person, if the trademark is used for unfair purposes (referring to gaining unfair profits, causing damage to the other persons, or any other unfair purpose, the same applies hereinafter) (except those provided for in each of the preceding items).
In particular, Hermès argued that, considering the remarkable reputation and popularity of the Hermès brand in the fashion industry and the obvious likeness between the marks HAIRMES and HERMÈS, there was a high risk of confusion among the relevant consumers in Japan.
In the first place, the JPO Opposition Board rejected the opposition, arguing that in the case in object the little similarity of the opposed trademark with the prior one was not sufficient to affirm that a risk of confusion was existing.
However Hermès clearly disagreed with the issued decision and therefore, on October 2022, filed an invalidation action with the JPO based on the same grounds, affirming once again that Dog Diggin was in a clear bad faith, willing to imitate the brand and therefore high reputation of the notorious brand Hermès.
According to the French brand, the counterparty used a trade dress similar to the Hermès packaging, in addition to using the similar HAIRMES mark.
The decision
Recently, the Japanese Office ruled that HERMÈS was widely recognized as a luxury fashion trademark and as a source origin of Hermès.
When considering the similarity of the two trademarks, the Office confirmed first that the marks were dissimilar in sound and concept.
Nevertheless, the trademarks should have been considered as having the same visual impression, as they both have the ‘H’ as first letter and the ‘RMES’ part at the end of the respective words, which caught the attention of consumers.
Therefore, the board recognized there was a certain degree of similarity between the trademarks.
The JPO also considered that Dog Diggin sponsored pet beds and toys bearing colors and decorations similar to the well-known Hermès packaging.
Based on these elements, the board thought that Dog Diggin intended to take advantages from the high reputation of the HERMÈS trademark.
Based on what reported, the Japanese Patent Office affirmed that the average consumers were likely to mislead by the trademark in object about the source of the pet beds and toys bearing the disputed mark, and the color used on the trademark was just a confirmation of all the assumption.
The JPO therefore fully invalidated the Japanese trademark supporting the French company affirmations.