Japan Patent Office (JPO) decided that VW’s famous car model “Polo” is dissimilar to, and unlikely to cause confusion with, the word mark “Car-pollo” when used for car navigation.
Volkswagen AG filed an opposition against registration the word mark “Car-pollo” written in standard character filed by Baidu Online Network Technology Beijing Company Limited on the grounds that Opposed mark shall be objectionable based on senior trademark registration for the word mark “POLO”.
The opposed mark is designated for;
Navigation system (GPS) for vehicles; car video recorders; batteries for vehicles; battery charging devices for motor vehicles; electric locks for vehicles in class 9.
Wheelbarrows; airplanes; vessels; bicycles; electric bicycles in class 12.
Automatic driving cars design in class 42.
Article 4(1)(xi) is a provision to prohibit from registering a junior mark that is deemed identical with, or similar to, any senior registered mark.
Article 4(1)(xv) provides that 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.
According to the above articles, the Opposition Board decided that “POLO” and “Car-pollo” are totally dissimilar from visual, sound and conceptual points of view. Regarding the opponent’s allegation, the Board stated the term “Car” isn’t a usual word to indicate ‘wheelbarrows; airplanes; vessels; bicycles; electric bicycles’ of class 12. From the produced evidence, there does not exist any circumstance to admit the term “pollo” shall be conceived as a dominant portion of the opposed mark in fact. If so, it looks rather appropriate to consider relevant consumers would grasp opposed mark in its entirety.
Board also negated a likelihood of confusion between “POLO” and “Car-pollo” even if an opposed mark is used for car video recorders; batteries for vehicles; battery charging devices for motor vehicles; electric locks for vehicles, and car-related services.
Based on the foregoing, the Board dismissed opposition and accepted “Car-pollo” registration.
In our opinion, the two trademarks as similar and we believe that the customers will mentally make a connection between the trademark and Volkswagen AG.