Chanel recently lost its attempt to block the Japanese Trademark registration consisting of the words, “Gonna Getcha”, its decision handed down by the Opposition Board of the Japan Patent Office (JPO) on October 20, 2020.
According to Masaki Mikami, Founder and Attorney at Japan Intellectual Property Law, Marks IP Law Firm (Japan), JPO found the literal element of “Gonna Getcha” is indivisibly combined with the figurative element of two inverted and interlocked “G”.
“If so, the opposed mark shall be considered in its entirety, and it is inadequate to dissect the figurative element in assessing the similarity with Chanel’s monogram,” he said. “Since the JPO decided to review the case based on the “Anti- Dissection Rule”, the literal element of the opposed mark, “Gonna Getcha” hindered Chanel from demonstrating the similarity as well as a likelihood of confusion between renowned “C” monogram and the “G” device.”
In using words such as “Gonna Getcha” embedded in jewellery, he adds, “Unless otherwise, the words embedded in jewellery are descriptive in relation to the jewellery, it is likely the words may constitute trademark infringement if the similar one is registered on the goods.”