HP and HP Maker - No likelihood of confusion in Japan

The Japanese website hoster HP Maker won the trademark dispute against HP before the Japanese Patent Office. There was no likelihood of confusion between the two marks in the area of website creation and computer programming.

Today at the EU-Japan Meeting, the long negotiated treaty Jefta was to be signed in Brussels, the largest free trade pact the EU has ever concluded. However, due to the heavy storms and landslides in Japan, the signing of the contract was provisionally postponed to 17 July. The EU-Japan trade agreement is designed to remove tariffs and trade barriers and counterbalance President Trump’s policy. This makes it all the more interesting to look at a recent decision in IP law in Japan.

Brand dispute about HP in class 42

The proceedings focused on the opposition trademark HP MAKER, which was registered by the Japanese Patent Office in Class 42 in 2017 for the “creation and maintenance of websites for third parties; computer programming”. Hewlett-Packard, the trademark owner of the HP brand and a world-renowned multinational information technology company, filed an appeal. Hewlett-Packard claimed that there was a likelihood of confusion and also pointed out that the HP brand was also known to the general public in Japan as an abbreviation for the American company. The controversial HP MAKER brand is particularly spicy, since MAKER is a manufacturer – and “HP manufacturer” would immediately trigger the association with Hewlett-Packard.

Brand must be a source indicator

Nevertheless, the JPO did not recognise the contradiction. The similarity of two brands is judged by their appearance, but also by the concept and the overall pronunciation of the sound. If two marks are similar in one of the points but differ in another, it is usually decided that there is no likelihood of confusion. A phonetic similarity would not be recognised as an argument between HP and HP Maker, since from a Japanese perspective a word mark is always to be considered as a whole.

The JPO also confirmed the fame of Hewlett-Packard – but only in connection with computer-related goods as a source indicator. However, computer-related services, in particular website creation mentioned in Class 42, were not generally perceived to be associated with Hewlett-Packard and its HP brand. In addition, trademarks and listed trademarks are often considered dissimilar by the JPO as they are unlikely to be confused in terms of appearance, name and ideas – because the JPO believes that a completely different idea is generated. Finally the JPO denied any likelihood of confusion – HP lost this case.

Conclusion

The larger the better-known company in a trademark dispute, the more the suspicion arises that the other trademark applicant could be a free rider. Apple also suspected the same in a recently decided case about a word mark. In this case, too, the JPO decided in favor of the Japanese smartphone manufacturer against the famous one (Info Blog: “Apple Assist Center” – Apple fails with opposition to Japanese trademark). In both cases, the famous trademark owners could not prove that they had a source indication for the disputed trademark registration. This in turn is treated in the same way in European trademark judgements: trademark protection does generally apply in relation to the exact product and to the details for which goods or services the trademark is registered or restricted.