31st July 2017
Which party has a right to the trademark egistration of SAKURA? Will the registration of SAKURA for goods in class 7 bar a subsequent trademark application of SAKURA for goods in class 7?
In its Decision dated 20 June 2017, the IPO Bureau of Legal Affairs dismissed the Opposition filed by KENSONIC, INC. (“Opposer”) against the trademark application filed by E-FENG MACHINERY ENGINEERING CO., LTD. (“Respondent-applicant”) for the mark “SAKURA” for goods in class 07.
The IPO Bureau of Legal Affairs further stated that although the Opposer’s and Respondent-Applicant’s mark are similar as they both use the word SAKURA, the similarity in the appearance of the applied mark to another mark does not automatically bar its registration by another. “A similar mark may be registered when the goods upon which the applied mark will be used is different or non-competing to the goods of another such that it cannot be said that the goods of the latter is manufactured or sourced from another or that there is a connection between them”.
The IPO Bureau of Legal Affairs pointed out that the Opposer’s mark SAKURA is used on “amplifiers, DVD player, VCD player, tape deck, tuner, equalizer, mixer, digital voice recorder, video disc recorder” under Class 9. On the other hand, Respondent-Applicant’s mark SAKURA is being applied for use on “elevator; conveyer, fuzzy elevator; escalator; oil traction machine; traction machine; moving walk; agricultural lift; lift; lift (skiing excluded); loading platform (part of machine); pneumatic tunnel carrier; auto loading machine; tube conveyors; pneumatic escalator; parking lift” under Class 07. As such, the goods not related or non-competing
As a final note, the IPO Bureau of Legal Affairs noted that the mark SAKURA has not been exclusively appropriated by Opposer. “SAKURA is commonly known as the “cherry tree” which is famous in Japan. As shown in the IPOPHL’s Trademark Database, the mark SAKURA has been registered in various classes by different entities. As such it is considered a weak mark that has no capacity to identify strongly a single original or source of goods or services. In this case, when we hear the word SAKURA it does not exclusively suggest that it comes from Opposer or it refers only to its products alone”.
The Opposer appealed the aforesaid decision to the Office of the Director of the Bureau of Legal Affairs.
