• Skip to main content
  • Skip to primary sidebar
  • Skip to footer
+49 (0) 69 / 606 278 – 0
[email protected]
Contact form
Patent- & Rechtsanwaltskanzlei

Patent- & Rechtsanwaltskanzlei

  • Deutsch

+49 (0) 69 / 606 278 – 0

  • Facebook
  • Twitter
  • Instagram
  • LinkedIn
  • xing
  • Email
MENUMENU
  • Services
    • Advice On Protective IP Rights
    • Patent Application /TM Registration
    • Enforcement Of IP Rights
    • Defence Against IP Rights Enforcement
    • Costs
  • Company
    • Fields of Law
      • Patent Law
      • Utility Model Law
      • Employees‘ Inventions
      • Trademark Law
      • Design Law
      • Trademark and Product Piracy
      • Expert Opinions
    • Our Law Firm
      • Dr. Karl-Hermann Meyer-Dulheuer
      • Dr. Tim Meyer-Dulheuer
      • Dr. Klaus Zimmermann
      • Zhichao Ying
      • Dr. Christoph Hölscher
    • Commitment
  • Contact
    • Where To Find Us
    • Write us!
    • Request call back
  • Blog

HP and HP Maker – No likelihood of confusion in Japan

11. July 2018

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.

Are you interested in national or international brand or trademark protection?

Please take your chance and contact us. Our lawyers are experienced in trademark and patent law, national and international law.

 

 

 

Sources:

S Shinketsu Japan

Picture:

1588877 /pixabay.com / CCO License  

  • share  
  • share 
  • share 
  • tweet 
  • share 

Category iconInternational Intellectual Property,  Trademark Law Tag iconJPO,  Trademark,  HP,  Hewlett Packard,  Japan,  source indicator,  HP MAKER,  JEFTA

Reader Interactions

Leave a Reply Cancel reply

Your email address will not be published. Required fields are marked *

Primary Sidebar

More articles about: International Intellectual Property

All articles

Blog Menu

  • Design Law
  • Healthcare & Lifesciences
  • International Intellectual Property
  • Licenses
  • News from our law firm
  • Overall
  • Patent Law
  • Product- and Trademark piracy
  • Trademark Law

Recent Posts

  • BPatG: Patent claim of cancer drug on active substance as salt 7. March 2022
  • Grant for European IP Protection: SME Fund 2022 4. March 2022
  • CODE-X vs. Cody’s: Likelihood of confusion in drinks? 25. February 2022
  • EOS lip balm no 3D trademark – appeal before ECJ not admissible 24. February 2022

Fields of Law

  • Patent Law
  • Utility Model Law
  • Employees’ Inventions
  • Trademark Law
  • Design Law
  • Trademark and Product Piracy
  • Expert Opinions
  • Costs

Das könnte Sie auch interessieren:

4. March 2022
Grant for European IP Protection: SME Fund 2022

Grant for European IP Protection: SME Fund 2022

25. February 2022
CODE-X vs. Cody’s: Likelihood of confusion in drinks?

CODE-X vs. Cody’s: Likelihood of confusion in drinks?

24. February 2022
EOS lip balm no 3D trademark – appeal before ECJ not admissible

EOS lip balm no 3D trademark – appeal before ECJ not admissible

21. February 2022
CFI: Pumpkin seed oil + PGI symbol

CFI: Pumpkin seed oil + PGI symbol

15. February 2022
SPOTIFY v POTIFY – a ‘pot’ app

SPOTIFY v POTIFY – a ‘pot’ app

10. February 2022
CFI: Shoes MADE IN ITALY

CFI: Shoes MADE IN ITALY

Contact us or request a call back

+49 (0) 69 / 606 278 – 0
[email protected]
Request a call back

Footer

Contact

Torhaus Westhafen
Speicherstrasse 59
D – 60327 Frankfurt am Main
Deutschland
+49 (0) 69 / 606 278 – 0
+49 (0) 69 / 606 278 – 199
[email protected]

Office Hours
Moday – Friday:   08:00-18:00

Fields of Law

  • Patent Law
  • Utility Model Law
  • Employees’ Inventions
  • Trademark Law
  • Design Law
  • Trademark and Product Piracy
  • Expert Opinions
  • Costs

Law Firm

  • Request non-binding call back
  • Company
  • Our Law Firm
  • ISO Certificate
  • Privacy Policy
  • Data handling for clients
  • Imprint

Follow Us

  • Facebook
  • Twitter
  • LinkedIn
  • xing
  • Email

Newsletter Signup

© Patent- & Rechtsanwaltskanzlei Meyer-Dulheuer MD Legal Patentanwälte PartG mbB

Contact Form

 

Give us a call, send us an email or fill out the contact form.

+49 (0) 69 / 606 278 – 0
[email protected]

Kontaktformular

 

Rufen Sie uns an, schicken Sie uns eine Mail oder füllen Sie das Kontaktformular aus.

+49 (0) 69 / 606 278 – 0
[email protected]