Tech giant Apple fails with an opposition against the registration of a Japanese trademark named “Apple Assist Center”. A Japanese company is allowed to offer its telephone and rental services under this word mark. The decision was made by the Opposition Board of the JPO because of the lack of similarity between the offered services by the japanese company and the Apple products.
Apple Assist Center: Word mark for secretarial and rental services
In July 2016, a Japanese company applied for the registration of the Apple Assist Center trademark with the Japanese Patent Office (JPO). About half a year later, the JPO granted the entry on February 17, 2017, for the following Nice classes:
- 35 (secretary services; telephone answering and message handling services; reception services for visitors)
- 36 (rental of business and commercial premises; management of buildings; providing information in the field of buildings for business and commercial use)
- 45 (rental of conference room; rental of exhibition room)
Shortly thereafter Apple became aware of the Japanese trade mark and filed opposition to the registration. The Californians invoked in their opposition brief on Article 4 (1) (xv) of the Japanese Trademark Law. It states that a trade mark may not be registered if the trade mark proprietor benefits from the confusion of his trade mark with known products or services from another company.
No similarity of products and services: Opposition unsuccessful
Now it was necessary to examine if Article 4 (1) (xv) applies to the relevant Apple Assist Center trade mark case. The JPO Opposition Board can not deny that Apple products enjoy a good reputation and a high profile. It points out, however, that the products of the tech giant are fundamentally different than the types of products and services of the Nice classes 35, 36 and 45 for which the “Apple Assist Center” trademark is registered for.
In addition, the Opposition Board comes to the conclusion that the terms “Apple” and “Apple Assist Center” differ significantly from a phonetic and a visual point of view.
However, an important part of the reasoning of the JPO Opposition Authority is that the part ‘Assist Center’ is not clearly descriptive of the services in Classes 35, 36 and 43. Thus, one can not split the word mark “Apple Assist Center” into the parts “Apple” and “Assist Center”, but must always consider the word mark as a whole.
Finally, the Board of Appeal came to the conclusion that there was no risk that the Apple Assist Center brand could be linked to Apple Inc. products. Thus, Apple’s opposition based on Article 4 (1) (xv) can not be upheld.
If, however, Apple should prove that they should be active in the same fields of business in the future as Apple Assist Center (which is currently not expected), the Americans would have good chances in a fresh start to block the trade mark.
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Text: Masaki Mikami