YSL vs USL: A bitter defeat in a Battle of Monograms

A bitter defeat in Japan for Yves Saint Laurent, the renowned French luxury fashion house.

Not long time ago, the Japan Patent Office (JPO) rejected the opposition filed by Yves Saint Laurent against TM no. 6666672 for the trademark “USL” in class 25. To sum up the decision, the Japan Patent Office declared the lack of similarity and risk of confusion between the well-known monogram “YSL” and the newly applied “USL” [Opposition case no. 2023-900076, decided on January 18, 2024]

Let’s step back.

On August 2022, the company Marusho Hotta Co. Ltd filed an application for a trademark composed by three letters, “USL” surrounded by a circle, which was supposed to be a short version for “UNUSELESS”, a brand engaged in the sale of clothing such as knitted wear, caps and pants which was in the process of launching in the market products bearing the short-version USL.

Few months later, on February 2023, the JPO approved the trademark application and therefore confirmed the publication of the trademark “USL” for opposition, as per standard trademark procedure.

Once aware of the trademark just published, YSL immediately filed opposition to the registration of the third-party monogram, claiming the violation of the of Article 4(1)(xi) and (xv) of the Japan Trademark Law.

Article 4: Notwithstanding the preceding article, no trademark shall be registered if the trademark:

(xi) is identical with, or similar to, another person's registered trademark which has been filed prior to the filing date of an application for registration of the said trademark, if such a trademark is used in connection with the designated goods or designated services relating to the said registered trademark (referring to goods or services designated in accordance with Article 6 (1) (including cases where it is applied mutatis mutandis pursuant to Article 68 (1)); the same shall apply hereinafter), or goods or services similar thereto;

(xv) is likely to cause confusion in connection with the goods or services pertaining to a business Part III Chapter 1: Overall Article 4(1) 59 of another person (except those listed in items (x) to (xiv) inclusive).

The main argument used by the French company was the similarity between the letters of the more notorious “YSL” and the similar pronunciation of the applied version “USL”. According to the opposition documents, the risk of misleading was evident for the consumers, which would have been confused about the source of the goods sold under the acronym “USL”.

Surprisingly for the French company, the Japanese Office did not support the opposition claimed, ruling that the ordinary consumer would not perceive the combination of three letters, “Y”, “S” and “L” at the sight of the monogram of the opposed mark, but “U”, “S” and “L”.

Based on the above reported assumption, the JPO affirmed that the two trademarks are visually different by means of obvious difference in the initial letter, font design and overall configuration. In particular, the different sound between the letter ‘u’ and the letter ‘y’ implicates a significant contrast of the overall impression.

In addition to this, considering that the two trademarks involved in the dispute did not have any meaning at all, it was not possible to compare them in a conceptual way.

In the light of what above, the JPO sustained the application of the Japanese company, confirming the lack of similarity and therefore the lack of confusion between the six letters involved in the case.

In conclusion, said the decision, the opposed mark is not subject to Article 4(1)(xi) and (xv) and therefore the opposition is rejected.

This case once again (as in the ELLe vs ElLle case) demonstrates the importance of considering overall appearance (and sound), as it shows that two marks that share two or three letters can still be defined as different at the level of overall perception.

_{Cover Photo by Sebastian Coman Travel on Unsplash}