If you think you think you are safe because the Trademark Office Registered your Trademark, then think again.
Here is yet another reason why you should seek the counsel of an experienced Trademark Attorney before trading with a brand. The Trademark Office accepted and registered a Trademark. The decision was appealed at Court level, who removed the Registration.
Picture this
A courtroom showdown where “GUZZILLA” clashes with the iconic “GODZILLA” in a battle of trademarks.
The Japanese Intellectual Property High Court (IPHC) stepped into the ring on 19 July 2023, and the verdict was a knockout – “GUZZILLA” (Japanese Trademark Registration No. 6143667) by Taguchi Industrial Co. Ltd. was held to be confusing with “GODZILLA,” the legendary Japanese monster movie distributed by Toho Co. Ltd.
Let’s rewind a bit
Taguchi had been rocking the “GUZZILLA” brand since 2011, slapping it on wrecking cutters and securing the trademark in 2012. Toho, the film bigshot, wasn’t having it and threw a legal jab at the Japanese Patent Office (JPO) in 2017. The JPO initially shrugged it off, saying, “No confusion here!” But Toho wasn’t one to back down. They took it to the IPHC, and guess what?
The IPHC threw a curveball, flipping the JPO’s decision in 2019, giving a TKO to “GUZZILLA.”
Now, here comes the plot twist
Before the final JPO decision landed, Taguchi thought, “Let’s give it another shot!” They filed a new application in 2018, got it registered in 2019 (Registration No. 6143667), and – you guessed it – Toho, not one to miss a sequel, launched another opposition at the Trademark Office, claiming confusion in 2022. JPO backed Toho this time, and Taguchi, feeling the heat, took it to the IPHC for a rematch.
Taguchi argued that “GUZZILLA” was a heavyweight in Class 7, targeting specialised companies in civil engineering. They claimed no overlap with the general consumer-loving “GODZILLA” fanbase.
Now, cue the IPHC’s grand entrance on July 19, 2023. The court ruled that “GUZZILLA” was playing a dangerous game of confusion, pointing out the striking similarities in pronunciation and appearance.
They gave a shout-out to “GODZILLA” as a creative heavyweight and highlighted the potential for mix-ups, especially in business partnerships and affiliations.
The IPHC’s decision was a blockbuster in line with the JPO Trademark Examination Guidelines. It emphasised the drama of similarity, trademark recognition, distinctiveness, company ties, business diversification, and the whole script of potential confusion.
So, there you have it – a trademark showdown with twists and turns, and in the end, “GUZZILLA” takes a hit, leaving “GODZILLA” to roar victorious in the trademark arena.
Intellectual Property (IP)
The forms of IP we register and advise in are Patents, Trademarks and Designs.
Self-reflection
If you are searching for a new brand, “GUZZILLA”, would you identify that it infringes “GODZILLA” before lodging a Trademark application with the Trademark Office, and without knowing this case?
Need Legal Representation?
We’re here to help! Contact us to have your trademark portfolio managed.
Allow our firm to ensure your trademark protection is not jeopardised with our IP management software and our experienced staff.
