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Dec 7, 2022Legal
Warner Defeated in a Trademark Opposition over Tweety Bird, Japan Patent Office (JPO) Dismisses the Action

Until 1997, Japan followed the examples of major industrialized countries regarding trademark law. They offered a pre-registration trademark opposition system, which allowed for filing opposition before any examination took place. This system, however, offered several disadvantages related to the average examination period, which exceeded that of many other countries, while it was estimated that only one percent of the trademarks were reversed due to trademark opposition filings. All pending applications didn’t undergo the examination for several months, and in 1996, Japan changed to a post-registration system when it came to trademark oppositions which would ultimately accelerate the examination process. Based on these changes, trademark oppositions may be filed within two months of the publication of the trademark registration.

On December 16, 2020, a Chinese company filed an application for a trademark consisting of the word TWETYBIRD and a logo featuring a circle and the letters T and B merged. The decision to register the trademark was taken on August 25, 2021, and it was published on October 26, 2021, awaiting opposition. On the day of the two-month deadline, December 27, 2021, Warner Brothers Inc filed its opposition based on Article 4 - Violation of reason of unregistrability, citing their trademark registered earlier in Japan featuring the word Tweety and the image of the beloved yellow bird. Warned maintained that the words Tweety and TWETYBIRD were likely to cause confusion among consumers, so they asked for the TWETYBIRD trademark to be canceled.

The Japan Patent Office Trademark Opposition Board decided to dismiss the Warner opposition on October 26, 2022. They acknowledged the degree of popularity of the Twety trademark; however, it was argued that the word TWETYBIRD would be assessed as a whole by the consumers, and it was unlikely to cause confusion.

What do you think about this decision? The TWETYBIRD trademark will be used in a number of goods and services; however, the JPO didn't provide arguments if both companies had goods and services overlapping each other. Instead, the decision to dismiss the trademark opposition was based only on the similarity between the trademarks.

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