In a major blow to cosmetics giant L’Oréal, the Japan Patent Office dismissed the French company’s opposition against the registration of NOREAL in Class 3 due to dissimilarity to the L’OREAL mark and unlikelihood of causing confusion with L’Oréal.
On 20th May, 2021, a Japanese individual had submitted the opposing mark with the JPO. It consisted of the wordmark “NOREAL” in standard character and is intended for use on cosmetics, soaps, shampoos, perfumes, and other items in class 3.
The JPO examiner, without raising any objection, granted protection to the opposed mark on January 7, 2022. Subsequently, the mark was published for post-grant opposition on March 9, 2022.
Following this, on 10 May, 2022, the Global cosmetic giant L’Oréal filed an opposition and claimed the opposed mark must be cancelled as it violated of Article 4(1)(xi) and (xv) of the Japan Trademark Law.
In the opposition brief, L’Oréal by noting the close resemblance in appearance and sound between the world-famous mark “L’OREAL” and the opposed mark “NOREAL”, contended that there is a high degree of similarity between the marks and thus relevant consumers of goods in question were likely to confuse a source of cosmetics bearing the opposed mark with L’Oréal or any entity economically or systematically connected with the opponent.
However, the JPO Opposition Board found it unobvious from the produced evidence that the L’OREAL mark has been highly recognized as a source indicator of the opponent among a wide range of consumers.
On the analysis of the similarity of marks, the Opposition Board considered the difference between “N” and “L’” at the beginning of respective marks that played a significant role in distinguishing the appearance and sound of wordmark and have a substantial influence on the visual and aural impression of two marks, which consist of relatively few letters, as a whole.
Therefore, the Board was of the view that both marks were sufficiently distinguishable in appearance and sound.
Since both marks did not gave rise to any specific meaning, the Board was unable to assess the conceptual similarity of the two marks. Based on the above findings, the Board found both marks were dissimilar from visual, aural, and conceptual points of view.
Due to insufficient brand recognition of the L’OREAL mark and the low degree of similarity between the two marks, “NOREAL” and “L’OREAL,” the Board proceeded to believe that the relevant consumers would be unlikely to confuse the source of cosmetics bearing the NOREAL mark with L’Oréal regardless of overlapping goods and consumers.
Based on the above observations, the JPO dismissed L’Oréal’s objection and granted the validity of the opposed mark as the status quo.