カテゴリー: 2026

Rolex “Deepsea” Couldn’t Block “DeepSeek” Trademark Registration for Smartwatches

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The Japan Patent Office (JPO) dismissed an opposition filed by ROLEX SA against TM Reg No. 6959836 for the stylized mark “deepseek” in Class 9 (covering smartwatches, etc.), finding the mark dissimilar to Rolex’s earlier mark “DEEP SEA.”
[Opposition Case No. 2025-900224, decided on June 1, 2026]

DeepSeek’s Trademark Application

Hangzhou DeepSeek Artificial Intelligence General Technology Research Co., Ltd., a Chinese artificial intelligence startup known for its cost-efficient and lightweight model, “DeepSeek,” filed a trademark application for the stylized word mark “deepseek” (as shown below) in Classes 9, 35, and 42 with the JPO on March 3, 2025 [TM App. No. 2025-021716].

The applicant designated various goods in Class 9, including smartwatches, time recording apparatus, wearable computers, and wearable activity trackers.

The JPO granted registration of the mark on August 21, 2025 [TM Reg No. 6959836], and subsequently published it for post-grant opposition on August 29, 2025.

Opposition by ROLEX

On October 23, 2025, ROLEX SA, the owner of the earlier TM Reg. No. 4146855 for the word mark “DEEP SEA” in Class 14, filed an opposition with the JPO. Rolex sought a partial cancellation of the contested mark with respect to smartwatches, time recording apparatus, wearable computers, and wearable activity trackers, alleging a violation of Article 4(1)(xi) of the Japan Trademark Law.

Rolex argued that the contested mark is confusingly similar to its cited mark, asserting that the mere difference of the final letter “k” is insufficient for relevant consumers to distinguish the commercial origin of the goods from a visual and aural standpoint. Furthermore, Rolex maintained that the goods at issue share the same functions as watches in Class 14.

The JPO Decision

The JPO Opposition Board conducted a comprehensive assessment of the marks based on the three traditional pillars of trademark comparison:

  • Visual Similarity (外観): Dissimilar. The marks are clearly distinguishable due to structural differences, including font styling, capitalization (lowercase vs. uppercase), word spacing, total letter count, and the critical difference in their endings (“ek” vs. “A”).
  • Phonetic Similarity (称呼): Dissimilar. Comparing ” diːpsiːk” against ” diːpsiː”, the JPO ruled that the difference in the total number of syllables and the presence/absence of the trailing “k” sound alters the overall tone and cadence. Thus, there is no risk of oral confusion or mishearing.
  • Conceptual Similarity (観念): Dissimilar. Because the contested mark is a meaningless coined word while the cited mark directly evokes “deep sea” (深海), there is no risk of conceptual confusion in the minds of consumers.

Based on the foregoing, the JPO concluded that the contested mark “deepseek” and the cited mark “DEEP SEA” are overall dissimilar, and subsequently dismissed the opposition in its entirety without any reference to the similarity of goods.

Does Pictogram Play a Role in Identifying Commercial Origin?

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While the examiner found a lack of inherent distinctiveness in the pictogram depicting a claw crane game machine and a player in relation to amusement arcade services, the JPO Appeal Board reversed the rejection, finding that the mark possesses a distinctive character capable of identifying commercial origin.
[Appeal Case No. 2025-11695, decided on June 4, 2026]

The Disputed Mark

TAITO Corporation, a Japanese video game and entertainment company, filed a trademark application for a device mark representing a claw crane game machine and a player (see below) for use in connection with amusement arcade services in Class 41 on May 1, 2024. [TM App. No. 2024-046625]

The mark is currently used at four “TAITO Station” game centers in Japan (located in Tokyo, Hokkaido, and Nagoya).

https://www.taito.co.jp/

JPO Examiner’s Rejection

On April 21, 2025, the JPO examiner issued a decision to reject the mark under Article 3(1)(vi) of the Japan Trademark Law.

Article 3(1)(vi) is a catch-all provision that prohibits the registration of any mark lacking inherent distinctiveness:

Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered, unless the trademark:
(vi) is, in addition to those listed in each of the preceding items, a trademark by which consumers are not able to recognize the goods or services as those pertaining to a business of a particular person.

In the refusal, the examiner determined that:

  • The applied-for mark would be easily recognized as a simplified, abstract figure of a person playing on a gaming machine.
  • Relevant traders and consumers in the amusement arcade service industry would perceive it merely as a “pictogram” indicating amusement/gaming services, rather than a specific commercial origin.

JPO Appeal Board Decision

However, the Appeal Board reversed the examiner’s decision based on the following crucial points:

1. Lack of Industry-Wide Descriptive Use:

While the disputed mark appears to depict a claw crane game machine and a player, it is not a realistic depiction. More importantly, the Board’s ex officio investigation found no evidence that the relevant industry uses this specific mark—or any similar abstract figures of individuals operating machinery—as a standard descriptive tool to indicate the provision of such services.

2. No Evidentiary Basis for Lack of Distinctiveness:

There were no surrounding circumstances or market evidence to suggest that relevant traders and consumers would fail to recognize the disputed mark as a source identifier.

Based on the above findings, the JPO Appeal Board observed that the disputed mark does not solely indicate a “venue to play arcade games.” Instead, it is fully capable of functioning as a distinctive source identifier.

Accordingly, the Board held that the disputed mark does not fall under Article 3(1)(vi) and revoked the examiner’s refusal.

Trademark Dispute: PINGU vs pingu・pongu

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In a recent opposition decision, the Japan Patent Office (JPO) dismissed an opposition claimed by Joker, Inc. against TM Reg no. 6924753 for wordmark “pingu・pongu”, finding dissimilarity to and unlikelihood of confusion with the opponent’s earlier mark “PINGU.”
[Opposition case no. 2025-900151, decided on May 22, 2026]

Contested mark

A Japanese individual filed trademark application for wordmark “pingu・pongu” in standard character for use on several services in Class 41, including educational and instruction service, arranging seminars, providing electronic publications, and amusement with the JPO on October 3, 2024 [TM App no. 2024-106222]

The JPO granted registration of the mark on May 1, 2025, and published it for a post- grant opposition on May 13, 2025.

Opposition by Joker, Inc.

Joker, Inc., an owner of the copyright and trademark rights featuring a 5-year-old boy penguin character “Pingu”, filed an opposition on July 11, 2025 and claimed cancellation of the contested mark in contravention of Article 4(1)(vii), (xi), (xv) and (xix) of the Trademark Law based on their earlier trademark registration no. 5316898 (see below).

The JPO Opposition Board decision

1. Recognition of the cited mark “PINGU”

The JPO acknowledged that the name “PINGU” (ピングー), associated with the well-known penguin character, had been used in Japan since the 1990s and had achieved a certain degree of public recognition by the early 2000s.

However, the Office found that the evidence submitted by the opponent was insufficient to demonstrate that the cited mark remained widely recognized at the time the contested mark was filed and registered. While the record showed ongoing activities such as merchandise sales, social media promotions, and events involving PINGU, no evidence was provided regarding sales figures, market share, advertising expenditures, or the current level of consumer recognition.

The JPO also noted the absence of objective evidence linking those activities directly to the opponent’s business. As a result, the Office concluded that the opponent had failed to prove that the cited mark PINGU was widely recognized among consumers in Japan or abroad as indicating the opponent’s goods or services.

2. Comparison of two marks

Although the mark contains the element “pingu,” the two components are represented in the same font, size, and spacing, and are connected by a centered do, the JPO held that the contested mark “pingu・pongu” should be viewed as a single, inseparable coined term. The pronunciations, “Pingu-Pongu,” are neither awkward nor unnatural. Since neither “pingu” nor “pongu” has a recognized meaning in ordinary dictionaries, consumers would perceive the mark as a whole as an invented term without any particular meaning.

The cited mark consisted of a penguin character design incorporating the word “PINGU,” together with the wording “PINGU’S ENGLISH.”

According to the JPO, both the figurative and verbal elements of the cited mark could independently function as source identifiers. The literal elements therefore generated pronunciations such as “Pingu,” “Pingu’s English,” but conveyed no specific meaning because the elements are coined terms.

3. No Likelihood of Confusion

Comparing the marks, the JPO found significant differences in appearance. The cited mark contains a prominent penguin device and additional wording, whereas the contested mark consists solely of the standard-character expression “pingu・pongu.”

The Office also determined that the respective pronunciations are clearly distinguishable. “Pingu-Pongu” differs substantially in both syllabic structure and overall sound from “Pingu,” and “Pingu’s English.”

As neither mark conveys a particular concept, no conceptual comparison could be made.

Considering the visual and phonetic differences as a whole, the JPO concluded that the marks are dissimilar and unlikely to be confused. Consequently, the contested mark did not fall within Article 4(1)(xi) and (xv) of the Trademark Law.

JPO Finds Game Software Similar to Computers and Display Monitors for Trademark Purposes

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In a recent appeal decision, the Japan Patent Office (JPO) upheld the examiner’s refusal to TM App no. 2024-134546 for wordmark “SHINOBI” after finding the designated game software similar to the cited electronic devices and display monitors.
[Appeal case no. 2025-9765, decided on May 22, 2026]

SHINOBI by SEGA

Sega Corporation, a Japanese video game company, filed an application to register the word mark “SHINOBI” in standard characters covering “game programs for mobile phones or computers; computer game software; virtual reality game software” in class 9 with the JPO on December 13, 2024 [TM App no. 2024-134546].

https://shinobi-art-of-vengeance.sega.jp/

JPO Examination

On March 24, 2025, the examiner rejected the mark based on Article 4(1)(xi) of the Japan Trademark Law by citing IR no. 1659265 for word mark “SHINOBI” in relation to the goods of “Electronic devices for displaying, editing, recording, encoding, storing, transferring, transmitting or reproducing data, electronic data, video and audio excluding electronic devices for playing video games; display monitors; apparatus for the reproduction of sound or images” in class 9.

The examiner considered the goods similar despite the applicant’s contention that game software and electronic devices are fundamentally different products produced and sold by different industries.

To contest, SEGA filed an appeal against the rejection on June 24, 2025, and challenging the examiner’s finding of similarity between the goods.

Appeal Board decision

The Appeal Board reiterated the long-established principle that the similarity of goods does not depend on whether consumers would confuse the goods themselves.

Instead, the relevant question is whether the use of identical or similar trademarks on those goods would lead consumers to believe that the goods originate from the same commercial source.

In making that assessment, the JPO considered factors such as:

• production channels;
• sales channels;
• quality and characteristics;
• intended purpose;
• consumer groups; and
• the relationship between finished products and components.

Hardware and software as closely related goods

The Appeal Board first observed that the cited goods essentially covered general-purpose electronic devices such as computers and smartphones, as well as display monitors.

Game software, by its nature, is executed on computers, smartphones, and similar electronic devices. Display monitors are likewise commonly used when operating computer games.

Accordingly, the JPO found that the cited electronic devices and monitors are products used to run or utilize the applicant’s game software, creating a close commercial relationship between the goods.

Production and sales channels

The applicant argued that game software is typically produced by game developers, whereas computers and monitors are manufactured by electronics companies.

However, the JPO relied on marketplace evidence showing that certain businesses manufacture and offer both gaming software and computer-related hardware products.

The Appeal Board therefore concluded that the production sources may overlap.

The same reasoning was applied to sales channels.

According to the JPO, game software, computers, and display monitors are frequently sold through the same retail outlets, including large electronics stores. In many cases, the products are displayed in close proximity and may even be offered by the same supplier.

Purpose and consumers

The Board also emphasized that gaming monitors are widely marketed and sold specifically for gaming purposes.

Moreover, although the cited specification expressly excluded dedicated video game consoles, it still encompassed general-purpose computers and smartphones capable of running games.

As a result, both categories of goods may, in certain circumstances, share the same gaming-related purpose.

The Board further noted that the relevant consumers substantially overlap, since both goods target ordinary consumers who use computers and similar electronic devices.

Software and hardware: a relationship close to components and finished products

Notably, the Board also addressed the relationship between software and hardware.

While acknowledging that software and hardware are not literally a finished product and its component, the JPO nevertheless found them to be closely comparable to such a relationship.

Game software is installed on electronic devices and used in conjunction with monitors. In practice, the products function together as part of a single user experience.

This functional interdependence weighed heavily in favor of finding similarity.

Conclusion

Taking all relevant factors into account, the Appeal Board concluded that the designated game software and the cited electronic devices and display monitors constitute similar goods. The examiner therefore did not err in refusing the application under Article 4(1)(xi) of the Trademark Act.

JPO Refuses “PICASSO” for Printed Matter and Artworks Despite Authorization from the Picasso Family

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The Japan Patent Office (JPO) affirmed an examiner’s refusal of the word mark “PICASSO” for Class 16 goods, finding that consumers would perceive the mark merely as indicating the author, subject matter, or content of the goods rather than their commercial origin.
[Appeal case no. 2025-15872, decided on April 21, 2026]

PICASSO

Picasso International Incorporation, a Taiwanese company, sought to register the wordmark “PICASSO” in standard characters for goods including printed matter and artworks with the JPO on January 15, 2025 [TM App no. 2025-3195].

JPO Examination

On August 19, 2025, the JPO examiner refused registration under Article 3(1)(iii) of the Japan Trademark Law, which bars registration of marks that merely describe the quality, characteristics, or other attributes of the designated goods or services.
The examiner first noted that “PICASSO” is universally recognized as referring to Pablo Picasso, the famous Spanish painter. When the mark is used on artworks, consumers would naturally perceive it as identifying the author of the work. In the case of reproductions, consumers would understand it as identifying the author of the original artwork. Therefore, the examiner concluded that, in relation to artworks, the term “PICASSO” functions primarily as an indication of authorship rather than as a trademark identifying a particular commercial source. The examiner reached a similar conclusion for printed matter by noting that:
Consumers encountering the mark on printed matter would merely understand it to mean:
• a publication about Picasso;
• a publication containing Picasso’s works; or
• a publication otherwise related to Picasso.
The mark would therefore be perceived as describing the content of the goods rather than indicating a single commercial source.

Appeal Trial

On October 6, 2025, the applicant filed an appeal against the examiner’s rejection and argued that the mark possessed sufficient inherent distinctiveness of the mark “PICASSO” based on the following grounds.
First, it argued that its representative had obtained authorization from the Picasso family to develop, manufacture, and sell products reproducing Picasso’s artworks throughout the Asia-Pacific region.
Second, the applicant pointed out that it already owned numerous PICASSO trademark registrations in Japan.
Third, the applicant argued that consumers would not necessarily encounter the mark only as a title or content indication. If PICASSO appeared as the name of a publisher or source identifier, consumers could allegedly recognize it as distinguishing the applicant’s goods from those of other publishers.

The JPO Appeal Board Decision

The JPO did not side with the applicant. The decision emphasizes that the assessment under Article 3(1)(iii) is based on how relevant consumers and traders would ordinarily perceive the mark when used in relation to the designated goods.
The key question is not whether a particular applicant has obtained authorization from the individual’s heirs or estate. Nor is the question whether the applicant already owns other trademark registrations.
Instead, the decisive issue is whether the mark “PICASSO” would generally be understood as describing characteristics of the goods.
The Board considered that relevant consumers would perceive PICASSO merely as indicating that the goods relate to Picasso, such as:
• artworks created by Picasso;
• reproductions of Picasso’s works;
• books about Picasso; or
• publications containing Picasso’s works.
The Appeal Board further stressed the public-interest rationale underlying Article 3(1)(iii).
Citing a Japan Supreme Court precedent, the JPO noted that descriptive indications should remain available for use by all market participants. Because publishers, museums, galleries, art dealers, and others may legitimately need to use the name “Picasso” to describe the content, authorship, or subject matter of their products, granting one entity exclusive trademark rights over the term would be inappropriate.
The JPO Appeal Board therefore concluded that PICASSO lacks source-identifying significance for the relevant goods and cannot function as a trademark.

What about earlier registrations?

The applicant also relied on trademark registrations consisting of the names of historical figures, including artists.
The JPO dismissed this argument, reiterating a familiar principle of Japanese trademark practice:
Registrability must be assessed on a case-by-case basis, taking into account the specific mark, the designated goods or services, and the actual circumstances of trade at the time of examination or appeal.
The existence of earlier registrations does not control the registrability of a subsequent application.

Revised JPO Trial and Appeal Procedures

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On May 21, 2026, amendments to the JPO’s trial and appeal procedures came into force following the 2022 revision of Japan’s Code of Civil Procedure. Importantly, the new rules apply not only to newly filed matters, but also to all cases pending before the JPO as of the effective date.

The amendments modernize evidentiary procedures and expand the use of digital tools in JPO proceedings. Key changes include the following:

🔹 Electronic Evidence

The JPO now expressly recognizes electronic records — including digitized documents, video files, and audio files — as admissible evidence.

In practice, however, the filing method remains relatively conservative. Electronic evidence must still be submitted via physical media such as CD-Rs or DVD-Rs, and the examination procedures largely follow the traditional framework applicable to documentary evidence.

As a result, parties may continue existing practices for submitting trademark gazette, webpages, emails, images, videos, and audio recordings.

🔹 Expansion of Web Conference Procedures

The amendments significantly expand the use of web conferences in JPO proceedings.

Witness examinations and expert testimony may now be conducted remotely from a broader range of locations, subject to procedural safeguards similar to those applicable to remote oral hearings.

The reforms also introduce:
• remote inspections conducted through web conference systems; and
• participation of interpreters via web conference (or by telephone conference where necessary).

These developments reflect the JPO’s continued movement toward more flexible and digital-friendly proceedings.

🔹 Changes to Hearing Records

The revised rules also strengthen procedural transparency regarding hearing records.

Where a party objects to the contents of a hearing record, the objection itself and its substance must now be recorded by the trial clerk.

In addition, obvious clerical or calculation errors may be corrected either upon request or ex officio at any time.

Another notable development is the formal recognition that video and audio recordings may be incorporated into hearing records through electronic recording media. In some cases, recorded audio or video testimony may even replace written descriptions in the official record.

🔹 Simplification of Witness and Expert Oaths

The traditional requirement for witnesses and expert witnesses to sign written oath documents has, in principle, been abolished.

Under the new rules, oral administration of the oath will generally suffice, although written oaths remain available where special circumstances prevent oral recitation.

These amendments are another example of Japan’s gradual but steady modernization of administrative adjudication procedures, particularly in relation to digital evidence and remote participation.

For practitioners involved in JPO litigation and appeals, understanding these procedural updates will be increasingly important in managing evidence and hearings effectively.

JPO Finds “ON” Distinctive in Relation to Footwear

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The Japan Patent Office (JPO) has reversed an examiner’s refusal of International Registration (IR) No. 1050016 for the mark “ON,” filed by On Clouds GmbH, finding that the mark possesses inherent distinctiveness in relation to footwear.
[Appeal Case No. 2023-650076, decided on April 9, 2026]

IR No. 1050016 “ON”

On Clouds GmbH, a Swiss company renowned for its “On” brand and its leadership in performance sportswear and athletic shoes, filed a trademark application for the wordmark “ON” in standard characters via the Madrid Protocol on August 13, 2020. The application designated footwear in Class 25.

JPO Examiner’s Rejection

The JPO examiner initially found the mark unregistrable, stating:

“A mark comprising only two Latin letters is perceived as a type of symbol or code used to indicate product model numbers or similar identifiers. As such, it constitutes a mark consisting solely of an extremely simple and common mark, and thus falls under Article 3(1)(v) of the Japan Trademark Law.”

The examiner further noted that even after taking into account the evidence submitted by the applicant, it was insufficient to prove that the mark had acquired distinctiveness through use under Article 3(2). Consequently, the examiner issued a final refusal on May 10, 2023.

In response, On Clouds GmbH filed an appeal on September 4, 2023, arguing both the inherent and acquired distinctiveness of the mark “ON” specifically within the footwear industry.

Appeal Board Decision

The JPO Appeal Board found that the examiner erred in applying Article 3(1)(v), observing that:

“Generally, while two Latin letters may be used as symbols or codes to indicate part or model numbers, the Board could not find evidence of actual use of the letters ‘ON’ in the footwear industry for such purposes. Furthermore, ‘On AG,’ a group company of the applicant, launched the ‘On’ brand as a Swiss-born footwear label in 2010. Currently, more than 9,500 retail stores in over 66 countries carry ‘On’ products. In Japan, ‘On’ shoes have been distributed since 2015 through over 650 retailers and various e-commerce sites. The evidence shows that the brand is extensively featured in sports and fashion magazines, website articles, and newspapers, alongside robust advertising via social media, celebrity endorsements, and promotional events.”

Based on these findings—specifically that “ON” is a well-known English word with no established commercial practice as a model number in the footwear industry, and that the mark is already widely recognized by Japanese consumers—the Board concluded that relevant consumers are unlikely to perceive the mark merely as a model or part number.

As a result, the Board overturned the examiner’s rejection and granted registration for the mark “ON,” ruling that it does not fall under Article 3(1)(v).

ARC’TERYX Unsuccessful Trademark Opposition against “Arcsilk”

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The Japan Patent Office (JPO) dismissed an opposition filed by Amer Sports Canada Incorporated against TM Registration No. 6889980 for the wordmark “Arcsilk” in Class 25, finding it dissimilar to and unlikely to be confused with “ARC’TERYX.”
[Opposition Case No. 2025-900056, decided on April 6, 2026]

The Contested Mark: “Arcsilk”

The contested mark, consisting of the word “Arcsilk” in standard characters, was filed by NIHONWASOU HOLDINGS, Inc. on December 27, 2023 [TM App. 2023-143938]. The application designates various goods, including clothing and footwear, in Classes 24 and 25.

The JPO examiner found no grounds for refusal and granted registration of the mark on September 20, 2024. Subsequently, the mark was published for post-grant opposition on January 11, 2025.

Opposition by ARC’TERYX

Amer Sports Canada Incorporated filed an opposition on March 12, 2025, seeking cancellation of the contested mark based on Article 4(1)(xi) and (xv) of the Japan Trademark Law, citing its earlier trademark registration No. 6748891 for the wordmark “ARC’TERYX” in Class 25.

In the opposition, the claimant alleged that the cited mark has become so widely known both in Japan and overseas that the use of the characters “ARC’TERYX” on outdoor goods immediately causes traders and consumers to recognize it as referring to the claimant. Furthermore, they argued that the term “ARC” is widely recognized even among general consumers as referring to the “ARC’TERYX” brand. The claimant contended that “silk” is a descriptive term for raw materials in Class 25 and cannot function as a source indicator. Therefore, they argued that “Arc” is the dominant portion of the contested mark. Since both marks share the dominant element “ARC,” the claimant asserted they are confusingly similar in appearance, concept, and pronunciation.

Additionally, the claimant argued that because the goods and target consumers are identical, the use of “Arcsilk” would lead consumers to misidentify the goods as being from a business entity with an economic or organizational relationship with the claimant.

JPO Decision

Surprisingly, the JPO Opposition Board found that the cited mark “ARC’TERYX” had not achieved a level of widespread recognition sufficient to support the claim of being a famous mark, stating:

“No evidence has been submitted that would allow for an objective and concrete assessment of facts concerning the period of use of the cited mark; sales figures, market share, and business scale; or the expenditures, methods, frequency, and duration of advertising activities. Consequently, we cannot find that the cited mark ‘ARC’TERYX’ was widely recognized among domestic dealers and consumers as an indication of the claimant’s goods at the time of the application or the registration of the contested mark.”

Regarding the similarity of the marks, the Board found that:

  • Visually: The marks are clearly distinguishable due to the presence of the apostrophe and the difference between “silk” and “TERYX.”
  • Aurally: “Arc-silk” and “Arc-teryx” differ in syllable count and constituent sounds, making them clearly distinguishable even when pronounced continuously.
  • Conceptually: The comparison is neutral as neither mark gives rise to a specific, well-defined meaning.

Based on the finding that the cited mark lacked evidence of widespread recognition and possessed a low degree of similarity to the contested mark, the Board concluded there was no risk of confusion. Consequently, the Board ruled that the contested mark should not be cancelled under Article 4(1)(xi) or (xv) of the Trademark Law.

The Supreme Court found the Tripp Trapp chair to be uncopyrightable

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In a legal dispute over whether artwork embodied on mass-produced utilitarian goods is protected under Japan’s copyright law, the Supreme Court of Japan upheld the High Court’s decision that the Tripp Trapp chairs are not copyrightable in Japan.
[Court case no. Reiwa7(Ju)356, decided on April 24, 2026]

1. Background of the Case

The Appellenats, Stokke AS, and Peter Opsvik AS, the manufacturer and distributor of the “TRIPP TRAPP” children’s chair (the “Chair”), designed by Peter Opsvik, alleged that the respondent’s products infringed upon their copyrights, asserting that the chair’s unique shape is protectable as a “work of authorship.”

2. The Legal Standard for Mass-Produced Utilitarian Goods

The Supreme Court addressed whether mass-produced utilitarian goods—items intended for practical use in daily life—can be protected under the Copyright Act.

  • Relationship with Design Act: The Court noted that Japan has a Design Law specifically to protect the shapes of mass-produced goods that aim to contribute to industrial development. Broadly granting copyright protection to such goods could undermine the significance of the Design Law, as copyright offers a much longer protection period (up to 70 years after the author’s death) without requiring registration.
  • The “Conceptual Separability” Criterion: The SC ruled that a mass-produced item can be considered a “work of fine art” under the Copyright Law only where its shape can be conceptually grasped as a creative expression of thoughts or emotions, independent of the components derived from its utilitarian function.

3. Application to the “TRIPP TRAPP” Chair

The Appellants argued that the Chair’s creative character lies in its L-shaped side profile with two legs rising at a 66-degree angle. However, the SC concluded:

  • The specified features are merely configurations derived from the chair’s function for children.
  • The shape of the Chair cannot be grasped as a creative expression of thoughts or emotions separately from its functional components.
  • Therefore, the Chair does not constitute a “work of authorship” under the Copyright Law.

Supplementary Opinion of Justice Akira Ojima

The SC ruling includes Justice Ojima’s opinion on the legal balance with other jurisdictions, such as the US and Europe.

  • The Berne Convention: While the Berne Convention protects works of applied art, it leaves the specific conditions and scope of protection to the domestic legislation of each member nation.
  • International Comparisons: Although the “TRIPP TRAPP” chair might be protected by copyright in some European countries or the U.S. (under their specific “separability” doctrines), Japan’s distinct legal framework between the Copyright Law and the Design Law necessitates a rational boundary based on Japanese law.
  • Aesthetic Judgment: The Justice noted that the SC intentionally avoided the term “aesthetic appreciation” (used in the lower court’s ruling) to avoid the misunderstanding that a high level of artistic merit is required, as courts are generally not suited to judge artistic value.

JPO Decision: No Likelihood of Confusion with Lacoste Crocodile Logo

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In a trademark dispute arguing similarity to and likelihood of confusion with the Lacoste Crocodile logo, the Japan Patent Office (JPO) did not side with Lacoste.
[Opposition case no. 2025-90093, decided on April 6, 2026]

Contested mark

Yagyu Office Co., Ltd. filed a trademark application for a design depicting a green crocodile lying prone, facing to the right with its mouth wide open (see below) in connection with various goods, including apparel, sportswear, and footwear of classes 18 and 25 at the JPO on June 14, 2024. [TM App no. 2024-64585]

On February 14, 2025, the JPO examiner granted registration of the mark without raising any objections.

Opposition by Lacoste

On May 1, 2025, Lacoste filed an opposition against the contested mark and claimed cancellation of the contested mark in contravention of Article 4(1)(xi), (xv), and (xix) of the Japan Trademark Law by citing its well-known crocodile logos.

Lacoste argued that the contested mark consists of a design depicting a green crocodile lying prone, facing to the right with its mouth wide open, and thus creates a similar commercial impression to the cited mark due to a high degree of visual similarity in its entirety. Taking into account the remarkable reputation of the cited mark and the close resemblance between the marks, the average consumers are likely to confuse a source of the goods in question bearing the contested mark with the cited mark.

JPO decision

The JPO Opposition Board found that the cited mark has been famous among relevant consumers and traders in Japan and other jurisdictions as a source-identifier of Lacoste’s business.

However, the JPO observed the contested mark would not be recognized as a crocodile, but “a light green geometric figure formed by white linear cutouts. It depicts a right-facing creature with an open mouth, a thick body, four legs, and a long, slightly curved tail extending backward.”

While the JPO acknowledged that the contested mark could be perceived as representing some types of reptile, it found that the design was too abstract to evoke a specific animal. As such, it was held not to give rise to any specific pronunciation or concept.

In contrast, the cited mark is recognized as clearly depicting a crocodile and conveying the well-known brand identity associated with Lacoste.

Based on the differences in concept and the tail orientation (extended backward vs. raised upward), the Board found that both marks are distinguishable in appearance as well, and therefore dissimilar and unlikely to cause confusion, even if the goods in question are highly related to Lacoste’s business.