26 November 2019TrademarksSaman Javed

Japan Tobacco loses ‘House of Silk’ TM opposition at UKIPO

Japan Tobacco has been unsuccessful in its bid to stop an Indonesian competitor registering a trademark at the UK Intellectual Property Office ( IPO) which it said would infringe on of its own.

In its decision, published on Thursday, November 21, the IPO said there were significant aural, visual and conceptual differences between Sumatra Tobacco Trading Company’s applied-for mark, ‘House of Silk’, and Japan Tobacco’s earlier trademark.

In November 2018, Sumatra Tobacco applied to register the mark in class 34 for goods such as cigars, cigarettes, cigarette filters, cigarette papers, lights, matches, smokers’ articles and tobacco.

Japan Tobacco opposed the mark, with the IPO basing the opposition hearing on the Japanese company’s earlier trademark, ‘Silk Cut’. Silk Cut is also registered in class 34, for tobacco, smoking substances, snuff, smokers’ articles, cigarette papers, cigarette tubes and matches.

Japan Tobacco claimed that there is a likelihood of confusion between its earlier trademark and the applied-for mark because the goods are identical or similar.

The IPO said Japan Tobacco’s evidence only showed use of its trademark in relation to cigarettes.

It said that while it recognises that these would be covered by the term “smoking substances” in Japan Tobacco’s specification, this term would also cover a number of other goods, for which the Japan Tobacco has not demonstrated use.

The IPO said both the applied-for mark and earlier trademark overlap visually in that they both contain the word ‘Silk’, the addition of the words ‘House of’ and ‘Cut’ in both marks will be a point of difference.

Additionally, it found that there was a low degree of conceptual similarity between the trademarks.

“Conceptually, the word ‘Silk’ in Japan Tobacco’s mark will be viewed as qualifying the word ‘Cut’, ie it is describing a particular cut that has similar qualities to the material silk. The word ‘Silk’ in Sumatra Tobacco’s mark will also be seen as a reference to the material silk and the use of the words House of’ will be viewed as a reference to a business which specialises in ‘silk’ goods,” the IPO said.

“Although both marks clearly refer to ‘Silk’, their meanings when taken as a whole are quite different,” it ruled.

Taking these differences into account, it said it was unlikely that a consumer would mistake the applied-for mark as that belonging to Japan Tobacco.

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