Recently, the Opposition Board of Japan Patent Office (JPO) has declined a Trademark Opposition filed by an American multinational financial services corporation, Visa International Service Association (VISA) against the word mark “V-ISA” having the Trademark Registration no. 6077944, due to the unlikelihood of confusion with VISA’s widely-known service mark “VISA.”
Opposed Mark: V-ISA
The opposed mark filed in the name of Machine Vision Lighting Inc., a Japan-based company engaged in the field of lighting apparatus, consists of a word mark “V-ISA” in standard character. On November 3, 2017, the Trademark Application for the proposed mark was filed to JPO. After going through the examination process, JPO registered the proposed mark over the goods of “lighting apparatus” in class 11 and published it on October 2, 2018, for the opposition period.
Opposition Filed by VISA
On December 3, 2018, Visa International Service Association had filed an opposition to oppose the mark “V-ISA.” The company argued by saying that it has been using the mark “VISA” since 1976 as the trade name of credit card company and irrefutably it has turned out to be well known in Japan as a source indicator of opponent business. Additionally, the opposed mark “V-ISA” and ‘VISA’ have the same pronunciation (‘viː.zə’), due to which they are extremely indistinguishable or identical in phonetic and visual perspective. In the present era of global E-commerce, customers usually purchase many products and services using credit cards. In this situation, the opponent business gets all the more connected with a wide assortment of products or services traded through E-commerce. Provided that this is true, relevant traders and customers of lighting apparatus are probably going to mistake the opposed mark “V-ISA” with the service mark “VISA.”
In like manner, VISA claimed that the opposed mark must be retroactively dismissed in violation of Article 4(1)(xv) (a mark shall not be registered where it is likely to cause confusion with other business entity’s well-known goods or services, to the benefit of brand owner and users’ benefits) of the Japan Trademark Law.
Opposition Board Decision
The Opposition Board didn’t question the exceptional level of prominence and reputation of the service mark “VISA” corresponding to credit card payment as a source indicator of the opponent business. However, the Board emphasized the fact that the term “VISA” is not a new word or expression, as its original meaning is an official mark used in passports for entering or leaving a particular country. Furthermore, the Board considered the marks to be distinctively dissimilar by saying that:
- Although the opposed mark “V-ISA” and the opponent mark “VISA” have the same literal elements, they are still distinguishable from the appearance point of view because of the hyphen (-).
- Since the opposed mark has no specific meaning, they both are incomparable in concept.
- The opposed mark has the pronunciation of either “Vui-isa” or “Vui-ai-esu” both of which are dissimilar from the pronunciation of the opponent mark.
As the “lighting apparatus” in class 11 is dissimilar to and less connected with the opponent business, the Board concluded by saying that traders or customers are very much unlikely to confuse the opposed mark with VISA or any other business entity connected with the opponent. Therefore, the opposed mark shall not be dismissed based on Article 4(1)(xv)