Volkswagen is one of the major importers of cars into Japan, a country famous for export of cars. Little wonder, then that it was sensitive about trade mark applications which it believes are too close to its famous sub-brand, “POLO”.
Volkswagen’s strategy in Japan is implied in this passage from its website https://www.volkswagenag.com/en/news/stories/2019/03/volkswagen-group-japanese-passenger-car-market-status.html :
This blog entry looks at two decisions, three years apart, in which Volkswagen was unsuccessful in defending its important “POLO” sub-brand in Japan.
Car-pollo
The first of these decisions dates back to 2019. Baidu Online Network Technology Beijing Company Limited had applied for a Japanese trade mark application for “Car-pollo” in respect of “navigation apparatus (GPS) for vehicles [on-board computers]; car video recorders; batteries for vehicles; battery charging devices for motor vehicles; electric locks for vehicles and others in class 9, wheel barrows; airplanes; vessels; bicycles; electric bicycles in class 12, and automatic driving cars design in class 42”. Volkswagen opposed the application (opposition case no. 2019-900054), relying upon its “POLO” registration, and asserting that Baidu’s mark should be denied registration according to Article 4(1)(xi) and 4(1)(xv) of the Japan Trademark Law.
The Japan Patent Office Opposition Board found “POLO” and “Car-pollo” are totally dissimilar from visual, phonetic, and conceptual standpoints. That seems odd. “Car” describes the thing to which the goods are applied or integrated with: “pollo” is substantially identical of itself with “POLO”. Further, in Japan, while the use of foreign words in marketing to capture the attention of consumers is ubiquitous, the care and attention Japanese-speaking consumers pay to foreign words is diminished by reason of a broad lack of fluency. A Japanese consumer could be forgiven for thinking that the Class 9 devices sold under the “Car-Pollo” brand were interoperable with Volkswagen Polo cars.
But worse, the Board found that the word “polo” was lacking in originality – the Board noted that it was a game played on horseback between two teams, each of four players, and so had a recognisable meaning.
This seems especially harsh given the game of equestrian polo has nothing to do with automobiles. Equestrian polo is a difficult game for people who have mastery of horse-riding and, although not universally, the affluence to afford to keep horses. The key marketing messages which come from POLO are “skill” and “affluence”. These are the sorts of impressions which a car manufacturer would want to imbue in its products.
Finally, the Board noted that, ““Car” isn’t a usual word to indicate ‘wheelbarrows; aeroplanes; vessels; bicycles; electric bicycles’ of class 12”.” It is not obvious what sort of evidence might have been provided by Baidu to say that it had the good faith intention to sell both wheelbarrows and airplanes under the brand – a remarkable breadth of offerings.
QOLO
A second trade mark opposition involving the POLO brand in 2022 (Opposition Case no. 2022-900157) resulted in a more understandable decision. In this case, the disputed mark was filed by a Japanese company, Qolo Inc.
Volkswagen argued the mark “Qolo” was too visually and aurally similar to “POLO”. There was no doubt about the overlap of goods and services: the opposed mark designated “electric vehicles; automobiles” in class 12, “repair and maintenance of automobiles; vehicle battery charging” in class 37, and “rental of automobiles, vehicles” in class 39 .
Volkswagen said that in view of the remarkable reputation of VW POLO cars and the close resemblance between “Qolo” and “POLO”, it is highly likely that relevant consumers confuse a source of goods and services of the opposed mark when used on automobiles and its related services.
But the Board disagreed. In a decision issued on 28 December 2022, it found that “POLO” and “Qolo” are dissimilar in appearance and sound. “Qolo” does not. (For English speakers, setting aside those familiar with the Australian airline QANTAS, the digraph “qu” is the norm and the absence of the letter “u” in a brand – or any word – is always odd.) The Board decided there was no likelihood of confusion between “POLO” and “Qolo” even when the opposed mark is used on goods and services in question. The Board also again noted that “POLO” was an equestrian game and as such lacked originality.
I expressly wish to thank Masaki Mikami of Marks IP in Japan for his two blog posts which drew these decisions to my attention. Those blog posts are found here:
Failed trademark opposition by Volkswagen: POLO vs. QOLO – MARKS IP LAW FIRM (marks-iplaw.jp)