カテゴリー: Abbreviation

Japan IP High Court reversed JPO decision regarding similarity between COSME MUSEUM and Cosmetic Museum

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On November 17, 2025, the Japan IP High Court handed down a ruling to disaffirm the JPO Invalidation Board’s decision regarding similarity between COSME MUSEUM in Class 35 for retail services for cosmetics and Cosmetic Museum in Class 3 for cosmetics.
[Court case no. Reiwa6(Gyo-ke)10104, decided on November 17, 2025]

COSME MUSEUM

The contested mark, consisting of the word “COSME MUSEUM” in a plain letter, was filed with the JPO on February 24, 2023. It designates various services classified in class 35, including retail or wholesale services for cosmetics (TM App no. 2023-18992).

The applicant owns the domain “cosme-museum.com” and uses the contested mark on the domain’s web pages.

https://cosme-museum.com/

The JPO examiner granted registration of the contested mark on August 9, 2023, without issuing a notice of refusal. Upon payment of the statutory registration fee, the mark was registered on October 19, 2023 [TM Reg no. 6746429].

Cosmetic Museum

MOMOTANIJUNTENKAN Co., Ltd. filed a trademark application for the wordmark “Cosmetic Museum” in standard character with the JPO on February 16, 2023 (8 days prior to the contested mark) for use on breath freshening preparations, deodorants for animals, soaps and detergents, dentifrices, bath preparations, not for medical purposes, perfumes and flavor materials, incense, false nails, false eyelashes, and cosmetics in class 3 (TM App no. 2023-16082) to secure online use of the mark in connection with cosmetics on its websites under the domain “cosmeticmuseum.jp”.

https://cosmeticmuseum.jp/shop

The JPO registered the earlier mark on July 13, 2023 (3 months prior to the contested mark) [TM Reg no. 6717335].

On March 28, 2024, five months after the registration of the contested mark, MOMOTANIJUNTENKAN filed an invalidation petition with the JPO requesting that the contested mark be retroactively annulled based on Article 4(1)(xi) of the Japan Trademark Law.

Article 4(1)(xi) is a provision that prohibits the registration of a junior mark that is deemed identical with, or similar to, any earlier registered mark.

JPO decision

The JPO Invalidation Board found the contested mark “COSME MUSEUM” is dissimilar to the cited mark “Cosme Museum” by stating that:

Firstly, comparing the appearance of the contested mark and the cited mark, there are visual distinctions in the presence or absence of the term “tic”, and the upper-case letters or lower-case letters consisting of the respective mark. Therefore, the Board has a reason to believe that two marks are clearly distinguishable, and unlikely to cause confusion in appearance.

Secondly, the pronunciation of the contested mark and that of the cited mark clearly differ in the presence or absence of a “tic” sound in the middle, and are clearly audible.

Thirdly, the two marks do not convey any particular meaning at all. In this regard, they remain conceptually neutral.

Based on the foregoing, the contested mark and the cited mark are unlikely to cause confusion due to a low degree of similarity in appearance and pronunciation. Taking a global view of the impression, memory, and association that the relevant consumers will perceive from the appearance, sound and concept of the marks, the Board has a reason to believe that the contested mark “COSME MUSEUM” should be found dissimilar to the earlier mark “Cosmetic Museum” and unlikely to cause confusion.”

On December 12, 2024, MOMOTANIJUNTENKAN filed a lawsuit with the IP High Court, claiming that the court should annul the contested decision because the JPO erroneously applied Article 4(xi) of the Japan Trademark Law and thus found “COSME MUSEUM” and “Cosmetic Museum” similar.

IP High Court ruling

The court noted that the term “COSME” is defined as an abbreviation for cosmetics in Japanese dictionaries and is widely used in the industry to refer to cosmetics. Thus, relevant consumers would associate the term with cosmetics, and the contested mark will convey the meaning of a museum for cosmetics as a whole.

Although the term “COSME” is recognized as an abbreviation for “cosmetics” or “cosmetic”, there is insufficient evidence to demonstrate that the terms have been used in trade practice to indicate different sources without causing confusion. Bearing this in mind, the court found that the two marks do not differ significantly in appearance.

Similarly, the court observed that the aural difference between “COSME” and “cosmetic” would be negligible.

Since both marks have the same meaning, it is reasonable to believe that relevant consumers may confuse the source of the contested mark with the earlier mark when used in connection with retail services for cosmetics.

Based on the foregoing, the court declared the annulment of the contested decision because the JPO errored in applying Article 4(1)(xi) and finding the relevant facts.

Porsche Successful in Registration of Composite Mark “PCA”

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The Japan Patent Office (JPO) reversed the examiner’s rejection of TM App no. 2023-61383 for composite mark “PCA” filed by Porshe Japan on account of dissimilarity to earlier trademark registrations for word mark “PCA”.
[Appeal case no. 2024-3079, decided on February 17, 2025]

PREMIUM CHARGING ALLIANCE “PCA”

Porsche Japan K.K., a wholly-owned subsidiary of Porsche AG as an official distributor of Porsche vehicles in Japan, filed trademark application for composite mark “PCA” as shown below with the JPO for use on ‘compute programs’ in class 9 and ‘computer software design; computer programing; maintenance of computer software; providing computer programs on data networks’ in class 42 on June 5, 2023.

Porsche Japan has launched a project to expand the network of 150kW fast charging stations across Japan by forming an alliance with Audi in April 2022. The applied mark is used to indicate the project.

JPO examination

On November 21, 2023, the JPO examiner rejected the applied mark due to a conflict with earlier trademark registration nos. 1738222, 5762134 and 5764544 for word mark “PCA” in class 9 and 42 owned by PCA Corporation based on Article 4(1)(xi) of the Trademark Law.

In the refusal decision, the examiner stated that the element “PCA” in the upper line of the applied mark is dominant in the overall visual impression. If so, the applied mark is confusingly similar to the cited marks, even though there is a difference in appearance, since both marks give rise to the same sound.

Porsche Japan filed an appeal against the rejection on February 21, 2024, requesting that the decision be set aside.

Appeal Board decision

The JPO Appeal Board found the applied mark should not be dissected into individual parts from its overall configuration. Relevant consumers would recognize the term “PCA” in the upper line as an abbreviation of the term “PREMIUM CHARGING ALLIANCE” in the lower line. Both the term “PCA” and “PREMIUM CHARGING ALLIANCE” would not give rise to any specific meaning.

In assessing similarity of the marks, the Board held there is no clear distinction in appearance between the marks as a whole. Phonetically, the applied mark is dissimilar to the cited marks on account of the sound arising from the term “PREMIUM CHARGING ALLIANCE”. The conceptual aspect does not have impact on the assessment of similarity, since both marks are meaningless.

Based on the above findings, the Board found the examiner erroneously applied Article 4(1)(xi) and declared registration of the applied mark due to dissimilarity to the earlier mark “PCA”.

TOMMY HILFIGER vs TOMTOMMY

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The Japan Patent Office (JPO) did not side with Tommy Hilfiger Licensing B.V. in an opposition against TM Reg no. 6604265 “TOMTOMMY” due to dissimilarity and unlikelihood of confusion with “TOMMY” and “TOMMY HILFIGER”.
[Opposition case no. 2022-900456, gazette issued on December 27, 2024]

TOMTOMMY

The contested mark, consisting of the word “TOMTOMMY” in standard characters, was filed with the JPO by a Chinese individual on January 20, 2022 for use on shoulder bags, tote bags, sports bags, wallets, umbrellas and other goods in Class 18, and underwear, belts, shoes, caps, coats, socks and other goods in Class 25 on January 30, 2022 (TM App no. 2022-10028).

The JPO examiner made an administrative decision to grant registration of the mark on August 3, 2022. Subsequently, the mark was published in Trademark Gazette for post-grant opposition on August 31, 2022.

Opposition by Tommy Hilfiger

Tommy Hilfiger Licensing B.V. filed an opposition with the JPO on October 31, 2022 by citing its own earlier trademark registrations for the wordmark “TOMMY” or “TOMMY HILFIGER”.

Tommy Hilfiger claimed that the contested mark should be cancelled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law.

Article 4(1)(xi) is a provision that prohibits the registration of a junior mark that is deemed identical with, or similar to, any earlier registered mark.

Article 4(1)(xv) prohibits the registration of trademarks that are likely to cause confusion with the business of other entities.

Tommy Hilfiger contends that the contested mark is composed of two distinctive words, “TOM” and “TOMMY”. Since “TOMMY” has been widely recognized by the relevant consumers to indicate the world-famous fashion brand “TOMMY HILFIGER”, the average consumers, uppon seeing the goods in question bearing the contested mark, will consider the term “TOMMY” as a prominent part of the contested mark in order to identify its origin. If so, the contested mark is similar to the cited marks a high degree.

Moreover, Tommy Hilfiger has used not only the mark “TOMMY”, but also various marks containing “TOMMY”, such as “TOMY JEANS”, “TOMMY NOW”, “TOMMY SPORT”, “TEAM TOMMY”, “TOMMY FACTORY”. In those circumstances, the consumers are likely to mistakenly believe that the goods in question bearing the contested mark “TOMTOMMY” come from the same undertaking or from economically-linked undertaking.

JPO decision

To my surprise, the JPO Opposition Board questioned the high degree of recognition of fashion brands, “TOMMY” and “TOMMY HILFIGER”, because the claimant did not provide sufficient evidence to prove the substantial and extensive use of the cited marks in Japan.

Furthermore, the Board denied similarity even between “TOMTOMMY” and “TOMMY” by stating:

  1. The contested mark is considered to be a coined word, and therefore has no specific meaning.
  2. Visually, both marks are distinguishable due to the difference in the number of letters that constitutes respective mark (8 letters vs 5 letters).
  3. Aurally, both sounds are dissimilar because the prefix sound “TOM” has a significant impact on the overcall pronunciation.
  4. A conceptual comparison is neutral because neither “TOMTOMMY” nor “TOMMY” has any clear meaning.

Because Tommy Hilfiger failed to demonstrate a high degree of popularity of the cited marks, the Board found that there was no reason to believe that the relevant consumer would confuse the source of the goods at issue bearing the contested mark with Tommy Hilfiger or an economically-linked undertaking due to a low degree of similarity between the marks.

Based on the foregoing, the Board decided the contested mark shall not be canceled and dismissed the oppositions entirely.

Trademark dispute: MONSTER EVERGY vs POCKET MONSTERS

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In a trademark opposition disputed between “MONSTER ENERGY” and “POCKET MONSTERS”, the Japan Patent Office (JPO) did not side with Monster Energy Company and decided in favor of Nintendo.
[Opposition case no. 2023-900162, decided on December 19, 2024]

POCKET MONSTERS

Nintendo / Creatures Inc. / Game Freak Inc., the IP owners of “Pocket Monsters”, widely known as its abbreviation, “Pokémon” as well, filed a trademark application for wordmark “POCKET MONSTRERS” in standard character for use on various categories of goods and services in classes 3, 9, 14, 16, 18, 20, 21, 24, 25, 28, 30 and 41 with the JPO on September 1, 2022 (TM App no. 2022-101055).

Pokémon, a blend of the words “Pocket Monsters”, means not only fictional creatures that inhabit the fictional Pokémon World, but also a Japanese media franchise that includes video games, animated series, films, and a trading card game.

The JPO granted protection of the applied mark without issuing any office action on April 3, 2023. Subsequently, the mark was published for post-grant opposition on May 12, 2023.

Opposition by Monster Energy

Monster Energy Company, the parent company of Monster Energy Drink, filed an opposition against “POCKET MONSTERS” with the JPO on July 10, 2023 before the lapse of a two-month statutory period counting from the publication date.

Monster Energy claimed a partial cancellation of the applied mark in relation to the designated goods of class 30 including tea, tea-based beverages, coffee, coffee beverages, cocoa based on Article 4(1)(vii) and (xv) of the Japan Trademark Law by citing its owned earlier marks that consist of “MONSTER ENERGY” or “MONSTER” in class 32.

Monster Energy alleged that the mark “MONSTER” has become famous among consumers to indicate energy drinks originating from the claimant. There was no dispute that the applied mark contains the term “MONSTER”. Therefore, relevant consumers would mistakenly associate the opposed mark with the claimant and consider a source of the beverages bearing the mark “POCKET MONSTERS” from a licensee of the claimant.

JPO decision

The JPO Opposition Board found evidence sufficient to establish a high degree of recognition of the mark “MONSTER ENERGY” to indicate energy drinks from the claimant. However, the Board questioned whether the cited marks have been widely recognized even among general consumers of carbonated beverages and juices other than energy drinks.

In addition, the Board found evidence insufficient to find a certain degree of recognition of the mar “MONSTER” per se.

Based on the above findings, the Board assessed similarity of mark by comparing overall appearance, sound and meaning between “MONSTER ENERGY” and “POCKET MONSTERS”.

From appearance and sound, the difference of words, “ENERGY” and “POCKET” has a material effect on overall visual and aural impression to the extent that relevant consumers can easily distinguish. Conceptually, the marks are unlikely to cause confusion because the opposed mark does not give rise to any specific meaning contrary to the cited marks. Therefore, the opposed mark is deemed dissimilar to the cited mark “MONSTER ENERGY”.

Given the low degree of similarity between “MONSTER ENERGY” and “POCKET MONSTERS”, the Board has no reason to believe that relevant consumers are likely to associate the opposed mark used on the goods in class 30 with Monster Energy or its licensee.

If so, the opposed mark should not be cancelled in contravention of Article 4(1)(vii) and (xv).

“Uber Finish” Causes No likelihood of confusion with “Uber”?

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In an appeal trial against the examiner’s refusal to TM App no. 2023-19561 for word mark “Uber Finish”, the Japan Patent Office (JPO) decided to reverse the refusal by finding unlikelihood of confusion with trademark “Uber”.
[Appeal case no. 2024-4656, decided on September 3, 2024]

Uber Finish

A Japanese individual filed a trademark application for wordmark “Uber Finish” in standard character for use on adult dating services and others of class 45 in the field of adult entertainment business with the JPO on February 24, 2023.

Uber

On January 4, 2024, the JPO examiner rejected the mark on following grounds.

Article 4(1)(viii)

The examiner pointed out that the applied mark “Uber Finish” contains the term “Uber” that is identical with a famous abbreviation of the global company Uber Technologies Inc.
Provided that the applicant has not obtained an approval to register the applied mark in Japan from the company, it is not registrable under Article 4(1)(viii) of the Trademark Law.

Article 4(1)(xv)

Unquestionably, the term “Uber” is identical with a famous mark “Uber” that has been used by the global company Uber Technologies Inc. on ride-sharing services and food delivery services prior to the filing of the applied mark. Accordingly, it is not registrable under Article 4(1)(xv) of the Trademark Law because relevant consumers of the service in question are likely to confusion a source of the services bearing the applied mark “Uber Finish” with Uber Technologies or other business entity systematically or economically connected with Uber.

The applicant filed an appeal against the refusal on March 18, 2024 and argued registrability of the applied mark.

JPO decision

To my surprise, the JPO Appeal Board denied famousness of the mark “Uber” as an abbreviation of Uber Technologies Inc., even though they admitted the company has operated ride-hailing and food delivery services in the name of “Uber Taxi” and “Uber Eats”.

Based on the above finding, the Board found the applied mark does not contain a famous abbreviation of the company name, Uber Technologies Inc. Therefore, the examiner erroneously applied Article 4(1)(viii) to the case.

The Board found the mark “Uber Finish” and “Uber” dissimilar by stating that:

“From appearance, the marks share the word “Uber” at the beginning of the word, but the difference in the word “Finish” that follows makes them different words as a whole, and therefore, it is easy to distinguish them.
Although the four sounds of “Uber” at the beginning of the word may be common, the difference in the sound of “Finish” at the end of the word makes the overall tone and impression different, so it is easy to distinguish two marks.
A conceptual comparison is neutral as neither “Uber Finish” not “Uber” have any clear meaning.
Taking a global account of visual and aural distinctions, average consumers would consider them as different trademarks to indicate a different source respectively.”

Besides, the business managed by Under Technologies Inc. is remotely associated with the services in question, namely, adult entertainment services. If so, relevant consumers with an ordinary care are unlikely to confuse a source of services bearing the applied mark with Uber Technologies Inc. In this respect, the examiner made an error in applying Article 4(1)(xv).

Consequently, the Board decided to overturn the examiner’s refusal and grant registration of the applied mark.

JPO decision: “PENINSULA HILLS” unlikely to cause confusion with “The Peninsula”

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The Japan Patent Office (JPO) reversed the examiner’s refusal and granted registration of the word mark “PENINSULA HILLS” written in Japanese Katakana characters in Classes 36 and 43, finding no likelihood of confusion with a world-renowned hotel “The Peninsula”.
[Appeal case no. 2023-4720, decided on July 25, 2024]

PENINSULA HILLS

CF-1 Co., Ltd. filed a trademark application with the JPO on January 7, 2022 for the word mark “PENINSULA HILLS” written in Japanese Katakana characters (see below) for use in, among other things, real estate services in Class 36 and hotel and restaurant services in Class 43 (TM App No. 2022-1353).

The Peninsula

The JPO examiner decided to reject the applied mark “PENINSULA HILLS” by finding a likelihood of confusion with a world-renowned hotel “The Peninsula” because the mark contains the term “PENINSULA”, which is highly recognized by consumers as an abbreviation of the luxury hotel, based on Article 4(1)(xv) of the Japan Trademark Law on December 6, 2022.

To contest the rejection, the applicant filed an appeal against the rejection with the JPO on March 3, 2023.

JPO Appeal Board decision

To my surprise, the JPO Appeal Board questioned a high degree of recognition of the hotel “The Peninsula” by stating that:

“The Peninsula Tokyo” is the only hotel commercially operated by The Hongkong Shanghai Hotels, Limited in Japan. If so, the number of users is quite limited. Even if there are hotels with the name “The Peninsula” operated by the company in foreign countries and then Japanese travelers may stay the hotels, it is insufficient to find a high recognition of the hotel to average consumers since there is no objective data regarding the number of users, its sales, and the ratio of Japanese users and sales.

Therefore, the Board has no reason to believe that the term “PENINSULA” is widely recognized by consumers in Japan as an abbreviation for the hotels managed by the company.

In a global assessment of the likelihood of confusion, the Board found the applied mark is dissimilar to the cited mark “The Peninsula”.

The applied mark and the cited mark differ significantly in appearance due to the difference in the number of letters and the presence of the word “HILLS”. Furthermore, the difference in the number of syllables and the presence of the sound “HILLS” make the pronunciations easily distinguishable. Therefore, the relevant consumers and traders will be able to distinguish between the two marks are will consider them to be dissimilar because of the clear difference in the overall impression.

Given no high recognition of the hotel “The Peninsula” and low degree of similarity to the applied mark, the Board finds no reason to believe the applied mark may cause confusion with the cited mark when used in relation to the services in question.

In view of the foregoing, the Board held that the examiner had errored in applying Article 4(1)(xv), and decided to grant protection to the applied mark.

Cobra Golf Scores Win in an Attempt to Register Mark “MIM”

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In a recent decision, the Japan Patent Office (JPO) Appeal Board sided with Cobra Golf Incorporated, represented by MARKS IP LAW FIRM, and disaffirmed the examiner’s rejection by finding dissimilarity between TM Reg no. 6208087 and Cobra’s mark “MIM” for use on golf clubs.
[Appeal case nos. 2023-16540, decided on July 9, 2024]

Cobra Golf “MIM”

Cobra Golf Incorporated, one of the leasing US golf club and golf equipment manufacturer, applied for registration of wordmark “MIM” in standard character with the JPO on December 7, 2020 for use on golf clubs in class 28 (TM App no. 2020-151063).

Cobra Golf uses the mark on their golf irons produced with a new innovative “MIM” technology which stands for ‘Metal Injection Molding’.

The JPO examiner rejected the mark in contravention of Article 4(1)(xi) of the Trademark Law due to a conflict with an earlier trademark registration no. 6208087 for a composite mark consisting of the word “MIZKAN MUSEUM” with a device that can be seen as the word “MIM” (see below) in class 21 on June 30, 2023.

Marks IP Law Firm, on behalf of Cobra Golf, filed an appeal with the JPO on September 29, 2023, arguing that the cited mark is dissimilar to the word mark “MIM” because the figurative element of the cited mark would not be considered as a word “MIM” due to its stylization, but rather as a design consisting of a vertical line in between two “M” letters representing an initial letter of “MIZKAN” and “MUSEUM” respectively.

JPO decision

The JPO Appeal Board found that the cited mark would not give rise to a pronunciation of “MIM” from the figurative element by stating that:

There is a slight possibility that the building-like figures on the left and right sides of the upper part of the cited mark will be perceived as the letter “M” from appearance. However, the Board considers that the relevant consumers are unlikely to find so because of the considerable stylization. The vertical line between the letters, combined with the fact that it is of a shorter length than the letters, will also not be identified as the letter “I.”

It is therefore reasonable to conclude that the upper part of the cited mark would never be immediately recognized as representing the word “MIM” as a whole. Rather, the relevant consumers would recognize it only as a representation of a design with no specific meaning in its entirety.

Given the upper part of the cited mark has neither sound nor meaning, both marks, when considered globally, are easily distinguishable from visual, phonetical and conceptual points of view and unlikely to cause confusion when used on goods in class 28.

Based on the foregoing, the Board held that the examiner errored in applying Article 4(1)(xi) and decided to grant registration of Cobra’s mark “MIM”.

Trademark dispute over Chandler Bats

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In a trademark opposition contesting the validity of the mark “CHANDLER,” the Japan Patent Office (JPO) dismissed the oppositions claimed by Group Authentic, LLC and David Chandler.
[Opposition case nos. 2023-900161, 2023-900212, and 2023-900213, decided on July 18, 2024]

Opposed mark

La Potencia LLC filed three trademark applications with the JPO on September 6, 2022 for the wordmark “CHANDLER”, “CHANDLER BATS,” and a composite mark consisting of the word “Chandler” in script with a “C” shaped design representing a bat knob inside for use on various goods and retail or wholesale services related to baseball in Classes 9, 18, 25, 28 and 35.

The marks were all granted for registration and published for post-grant opposition accordingly.

Opposition by David Chandler

Group Authentic, LLC and David Chandler jointly filed a trademark opposition against the marks before the lapse of two months from the publication date at the JPO.

In the opposition, they argued “Chandler” has been highly known in relation to baseball bats to indicate a name of David Chandler who has manufactured hundreds of models of baseball bats for Major League Baseball players since 2009. The opposing parties has no intention to give a consent for La Potencia LLC to register the opposed marks in Japan. Under the circumstance, the opposed mark shall be cancelled in contravention of Article 4(1)(vii) and (viii) of the Japan Trademark Law.

Article 4(1)(vii) prohibits any mark likely to cause damage to the social and public interest and disrupt the order of fair competition from registration.

Article 4(1)(viii) is a provision to prohibit registration of trademark that contains the representation or name of any person, famous pseudonym, professional name, or pen name of another person, or famous abbreviation thereof.

The JPO decision

The JPO Opposition Board found that the mere fact and documents regarding the USPTO’s rejection of US App Nos. 97313019, 97312938, and 97313467 for the opposed marks by the USPTO were insufficient to establish a high degree of popularity and reputation of the mark “Chandler” as an abbreviation of Mr. David Chandler.

Based on the above finding, the Board has no reason to believe a lack of the consent would cause damage to the social and public interest and disrupt the order of fair competition.

To the extent that insufficient evidence has been produced to establish that the mark “Chandler” is famous as an abbreviation of Mr. David Chandler, it is inadmissible to find that the opposed marks contain a famous abbreviation of a living person.

In light of the foregoing, the Board decided the opposed marks shall not be cancelled based on Article 4(1)(vii) and (viii), and dismissed the entire oppositions.

SpaceX Scores Win in Trademark Invalidation Action

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The Japan Patent Office (JPO) sided with Space Exploitation Technologies Corporation (SpaceX) in an attempt to revoke TM Reg no. 6613282 for the mark “SPACEX / spacex.co.jp” (cl. 25, 26) in contravention of Article 4(1)(viii) and (xv) of the Japan Trademark Law.
[Invalidation case no. 2023-890010, decided on June 4, 2024]

Contested mark

NDR Tech Co., Ltd. filed trademark application for a mark composed of the two word-elements “SPACEX” and “spacex.co.jp”, arranged in two lines (see below) for use on apparels and footwear in class 25 and insignias for wear, buckles for clothing, badges for wear, brooches for clothing, brassards in class 26 with the JPO on December 20, 2021 (TM App no. 2021-163633).

The JPO examiner granted protection to the mark on August 19, 2022.

Invalidation action by SpaceX

Space Exploitation Technologies Corporation, aka SpaceX, filed an invalidation action on February 15, 2023 and claimed the contested mark shall be invalidated in contravention of Article 4(1)(viii), (x), (xv) and (xix) of the Japan Trademark Law.

Article 4(1)(viii) is a provision to prohibit registration of trademark that contains the representation or name of any person, famous pseudonym, professional name, or pen name of another person, or famous abbreviation thereof.

Article 4(1)(xv) prohibits the registration of trademarks that are likely to cause confusion with the business of other entities.

SpaceX could not rely on Article 4(1)(xi) because their attempt to register the mark “SPACEX” in class 25 (TM App no. 2020-125746) was unsuccessful due to a conflict with the earlier TM Reg no. 6222450 for wordmark “SPACEX” owned by NDR Tech.

SpaceX argued that the mark “SpaceX” has been widely recognized as a commercial name of the claimant among the general public in Japan even before the time of initial application of the contested mark due to its frequent appearance in print and broadcast media.

NDR Tech asserted that the domain name “spacex.co.jp” is only available to companies registered in Japan. As the proprietor of the domain, they have a legitimate interest in registering and owning the contested mark.

JPO decision

The JPO Invalidation Board admitted that the mark “SpaceX” has become famous among the general public as an abbreviation of the claimant.

It is obvious that the contested mark contains the term “SPACEX” and “spacex”, which are known as a famous abbreviation of the claimant. Based on the fact that NDR Tech did not obtain the consent of SpaceX, the contested mark does not comply with the requirements of Article 4(1)(viii).

Bearing in mind that the mark “SpaceX” has been used on T-shirts, hoodies and caps, the Board has reasons to believe that relevant consumers are likely to confuse a source of goods in question bearing the contested mark with SpaceX. If so, the contested mark shall be revoked under Article 4(1)(xv) as well.

https://shop.spacex.com/

In the decision, the Board noted ‘The fact that NDR Tech owns the domain “spacex.co.jp” is irrelevant to the invalidity of the contested mark based on the above articles.’

Tennis King Roger Federer Defeated out of the Court

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The Japan Patent Office (JPO) dismissed an opposition filed by Tenro AG, a Swiss company established by Tennis King Roger Federer, against Japanese TM Reg no. 6691122 for mark “Roger King” in class 28 by finding dissimilarity to IR nos. 1529136 “THE ROGER” & 1529148 “ROGER” and unlikelihood of confusion.
[Opposition case no. 2023-900151, decided on April 23, 2024]

Roger King

Hirota Gold Inc. applied trademark application for stylized word mark “Roger King” (see below) in relation to golf clubs, golf club head covers, golf bags, golf gloves, golf equipment, and sports equipment of class 28 with the JPO on February 1, 2022 (TM App no. 2022-11297).

The applicant is engaged in the business of promoting golf clubs bearing the applied mark.

https://www.hirotagolf.jp/product-group/3

The JPO granted protection of the applied mark on April 14, 2023, and then published it for post-grant opposition on April 27, 2023.

Opposition by Tenro AG

Tenro AG, a Swiss company established by Tennis King Roger Federer, filed an opposition against the applied mark “Roger King” and claimed the mark shall be canceled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law by citing their owned earlier trademark registration nos. IR 1529136 for wordmark “THE ROGER” and IR 1529148 for wordmark “ROGER” in class 25.

Tenro AG argued that when “Roger King” is used in connection with the designated goods in question (athletic equipment), relevant consumers will associate the famous Roger Federer. Since Mr. Federer is called “King Roger”, they will undoubtedly consider the opposed mark as the name of Mr. Federer. Consequently, the opposed mark and the cited marks are deemed similar because they share the same sound and appearance, and both give rise to the same meaning as the famous Roger Federer.

JPO decision

Initially, the JPO Opposition Board found that although Roger Federer is widely recognized as a prominent tennis player, he is not typically abbreviated as “Roger.” Furthermore, there is no concrete evidence indicating the scope and method of advertising and market share in Japan for goods using the cited marks. Therefore, the Board has no reason to believe that the cited marks are widely recognized as a source indicator of the claimant’s business among Japanese consumers.

Secondly, in evaluating the similarity of the marks, the Board held that, from appearance and sound, both marks are clearly distinguishable as a whole due to the presence and absence of “THE” and/or “KING”. Besides, the opposed mark does not have a specific concept. Meanwhile, the cited marks give rise to a meaning of a man’s name. If so, there is no similarity and confusion in concept.

In the absence of a convincing demonstration of the fame of the cited mark and a low degree of similarity between the opposed mark and the cited marks, it is unlikely that relevant consumers will confuse a source of goods in question bearing the opposed mark with Mr. Roger Federer or the claimant’s business.

Based on the foregoing, the Board decided that the opposed mark shall not be canceled in contravention of Article 4(1)(xi) and (xv) and dismissed the opposition entirely.