According to “JPO Status Report 2025” released on March 24, 2025, by the Japan Patent Office (JPO), a total of 158,792 trademark applications were filed in 2024. This number decreased 3.2% compared to the previous year when the number of applications amounted to 164,061.
Pfizer Inc. remains a top-ranking foreign registrant for the fifth year in a row. NEOPLE Inc, a Korean video game developer, was ranked in 8th (47 registrations) in 2024, a drastic increase from the previous year, when it was ranked in 2559th.
Requests for accelerated examination increased to 8,138 by 8.0% in 2024, which enables applicants to obtain trademark registration within 2 months.
As a background, it should be noted that the entire trademark process for general examination at the JPO (the total time of application from filing to registration) takes 7.3 months on average, which gets 0.4 months longer than the previous year.
You can access and download the full text of “JPO Status Report 2025” from here.
In a dispute over the similarity of the marks “UNITED” and “UNITED GOLD” in connection with apparel, the Japan IP High Court upheld the JPO decision and found that both marks were dissimilar. [Court case no. Reiwa6(Gyo-ke)10066, decided on December 10, 2024]
UNITED GOLD
Nishitomi Shoji Co., Ltd. filed a trademark application with the Japan Patent Office (JPO) on January 17, 2022 for the word mark “UNITED GOLD” in standard character for use on apparel in class 25 and retail services for apparel in class 35.
The applicant promotes men’s suits bearing the applied mark via internet.
In accordance with a request for accelerated examination from the applicant based on the actual use of the mark on any one of the designated goods and services, the JPO carried out a substantive examination and registered the mark on March 25, 2022 [TM Reg No. 6534957].
Invalidation action
On December 15, 2023, Howard Corporation, an owner of earlier TM Reg no. 2053119 “UNITED” in class 25, filed an application for a declaration of invalidity against the mark “UNITED GOLD” with the JPO in contravention of Article 4(1)(xi) of the Japan Trademark Law due to its similarity to earlier trademark “UNITED”.
However, the JPO Invalidation Board found “UNITED GOLD” to be dissimilar to “UNITED” and therefore dismissed the invalidation action on June 17, 2024 [Invalidation Case No. 2023-890089].
To challenge the JPO decision, Howard filed an appeal with the IP High Court on July 10, 2024, claiming that the JPO erred in finding that the contested mark “UNITED GOLD” should be assessed in its entirety.
In the compliant, Howard argued that the term “GOLD” has a low degree of distinctiveness in relation to the goods and services in question. On the other hand, the term “UNITED” is highly distinctive because of its meaning. If so, the term “UNITED” plays a dominant role in identifying a source of the contested mark
IP High Court ruling
The IP High Court, at the outset, referred to the Supreme Court ruling in 2008 which established the criterion to grasp a composite mark in its entirety in the assessment of similarity of the mark.
“Where a mark in dispute is recognized as a composite mark consisting of two elements or more, it is not permissible to assess the similarity of mark simply by means of taking out an element of the composite mark and then comparing such element with the other mark, unless consumers or traders are likely to perceive the element as a dominant portion indicating its source of origin of goods/service, or remaining elements truly lack inherent distinctiveness as a source indicator in view of sound and concept.”
Based on the criteria, the court found that contested mark shall be assessed in its entirety on the following grounds:
From appearance and meaning, there is no reasonable ground to find “UNITED” and “GOLD” shall be recognized individual and separable.
In conjunction with clothing of class 25, more than 150 trademarks that contain the term “UNITED”, e.g. “UNITED ARROWS”, “UNITED COLORS OF BENETTON”, “UNITED TOKYO”, “UNITED DOORS”, are registered with the JPO in the name of third party. These facts suggest that the term “UNITED” is also lowly distinctive in relation to apparel.
Even if there are actual examples in which the term ‘GOLD’, when combined with another distinctive term, implies a high quality of the goods, it would be anything but convincing to find that the term ‘UNITED’ plays a dominant role in identifying the goods and services bearing the contested mark, given that, as stated above, the term ‘UNITED’ has a low degree of distinctiveness.
Based on the foregoing, the judges concluded that the JPO did neither err in comparing both marks as a whole nor applying Article 4(1)(xi).
In a trademark opposition regarding a likelihood of confusion between the mark “COSTCO” and “MINICOS” in relation to retail or wholesale services, the Japan Patent Office (JPO) found no confusion with the American mega-chain Costco. [Opposition case no. 2024-900059, decided on November 6, 2024]
MINICOS
The contested mark, consisting of the terms “MINICOS” and “RETAIL SHOP” arranged in two lines with five-star devices (see below), was filed with the JPO on October 31, 2023 for use in retail or wholesale services for food and beverages in Class 35.
The applicant uses the mark in their retail and online shops that resell the food and beverages purchased at Costco Wholesale.
As the applicant requested the JPO to accelerate examination procedure, the examiner granted registration of the MINICOS mark in two months without issuing any office action.
Accordingly, the mark was officially registered on December 27, 2023 (TM Reg no. 6766577) and published for a post-grant opposition on January 11, 2024.
Opposition
MINISO Hong Kong Limited filed an opposition on March 8, 2024 to contest validity of the mark based on Article 4(1)(vii) and (xv) of the Japan Trademark Law by citing the earlier mark “COSTCO”.
The opponent argued that the applicant undoubtedly has knowledge of Costco Wholesale in view of their business and that the relevant consumers are likely to associate the contested mark with Costco because of the concept of “a small-size Costco retail store” and the same color combinations of red and blue.
In light of the relatedness between the Costco Wholesale business and the services in question as well as the high level of recognition of the cited mark among Japanese consumers, it is likely to cause confusion with Costco Wholesale when the contested mark is used in connection with the retail services for food and beverages.
JPO Decision
Astonishingly, the JPO Opposition Board questioned famousness of the cited mark among Japanese consumers because of insufficient evidence to show sales, market share, advertisement and promotional activities by Costco in Japan.
Besides, the Board found that given the cited mark has not acquired a high degree of recognition, the contested mark would not give rise to any specific meaning. If so, there is no reason to find similarity between the contested mark and the cited mark from visual, aural and conceptual points of view.
Even if the Costco Wholesale business is highly related to the contested services, given the low degree of similarity between the marks, the Board has reason to believe that the relevant consumers are unlikely to confuse a source of the services represented by the contested mark with Costco.
A mere fact that the applicant filed the contested mark with a knowledge of Costco in their business to resell the food and beverages purchased at Costco Wholesale is irrelevant to find fraudulent intention to obtain unjustifiable benefit from it.
Based on the foregoing, the JPO decided to dismiss the opposition entirely.
PAGANI S.p.A. lost in a bid to oppose TM Reg no. 6731316 for word mark “PAGANI DESIGN” in class 14 as the JPO denied a likelihood of confusion with Italian sports car brand “PAGANI”. [Opposition case no. 2023-900251, decided on September 3, 2024]
PAGANI DESIGN
The contested mark, consisting of word “PAGANI DESIGN” in standard character, was filed by a Chinese company for use on watches in class 14 with the Japan Patent Office (JPO) on August 31, 2022. The watches bearing the contested mark have been distributed via the internet.
In the course of substantive examination, the JPO examiner issued an office action based on Article 4(1)(xi) of the Japan Trademark Law by citing senior IR no. 979660 for wordmark “PAGANI” covering horological and chronometric instruments of class 14.
As a countermeasure, the applicant filed a non-use cancellation action against the cited mark in order to overcome the examiner’s office action.
Since IR no. 979660 was partially cancelled because PAGANI could not demonstrate actual use of the mark “PAGANI” in connection with the goods in question for the past three years at all [Cancellation case no. 2022-670054], the examiner withdrew her refusal and granted registration of the contested mark on August 25, 2023. The JPO registered the contested mark on August 30, 2023 and published it for a post-grant opposition on September 7, 2023.
Opposition by PAGANI
Italian sports car manufacturer, PAGANI, filed an opposition against the mark “PAGANI DESIGN” with the JPO on November 7, 2023, shortly before the lapse of the two-month statutory period counting from the publication date.
In the opposition, PAGANI argued that the contested mark “PAGANI DESIGN” should be cancelled in contravention of Article 4(1)(xv) of the Trademark Law because the relevant consumers, especially those who like sports cars and hyper cars, are likely to confuse a source of watches bearing the contested mark with the opponent, well known as an Italian manufacturer of the prestigious high-end sports cars PAGANI.
The JPO Opposition Board questioned a high degree of popularity and reputation of the opponent mark “PAGANI” among relevant consumers by stating that:
The produced evidences show that in Japan, the public gets to see the opponent cars in 2013 for the first time, and from 2020, the cars were displayed by the authorized import car dealers in their showrooms located in Kobe and Tokyo. However, the number of “Pagani Huayra” sold in Japan, only two units, is extremely small. It is undeniable that most of Japanese consumers has not purchased the opponent cars.
Taking account of several presence in magazines and events at major motor car races in Japan, the opponent mark “PAGANI” has obtained a certain degree of recognition among the consumers who have a high interest to automobiles. However, the evidence is insufficient to find a high degree of recognition of the opponent mark among relevant consumers in question.
Given the mark “PAGANI” has not acquired a high degree of recognition, the Board has no reason to find that the consumers consider the term “PAGANI” as a dominant element to indicate a source of the contested mark.
Moreover, cars are rarely related to watches by nature, purpose and consumers.
Therefore, a mere fact that the contested mark contains the term “PAGANI” is not enough to find a likelihood of confusion based on the above findings.
As a conclusion, the Board dismissed the opposition entirely.
The Japan Patent Office (JPO) declared the invalidation of TM Reg no. 6371496 “TRILITH” due to similarity with earlier IR no. 1534597 “TRILITH STUDIOS” owned by Trilith IP Holdings, LLC. [Invalidation case no. 2022-890066, decide on July 8, 2024]
TRILITH
On January 5, 2021, GAIAMOND Inc., a Japanese company, filed an application for registration of wordmark “TRILITH” (‘the contested mark’) with the JPO (TM app no. 2021-745), designating, inter alia, “game trading cards; toys” in Class 28.
Immediately after the filing, the applicant requested an accelerated examination based on the fact the company uses the contested mark in relation to display frame for game trading cards.
Accordingly, the JPO examiner granted protection of the contested mark in two months on March 15, 2021 (TM Reg no. 6371496).
TRILITH STUDIOS
Trilith IP Holdings, LLC, a holder of IR no. 1534597 for word mark “TRILITH STUDIOS” that is known as one of the largest purpose-built movie studios in North America and home to blockbuster films and independent shows like Avengers: Endgame, Zombieland: Double Tap, and Moon and Me, filed a notice of opposition to registration of the contested mark in respect of game trading cards and toys with the JPO on June 18, 2021. The ground relied on in support of the opposition was that set out in Article 8(1) of the Trademark Law.
Article 8(1) is a provision to prohibit registration of a junior mark that is identical with, or similar to any earlier applied mark which is pending before the substantive examination at the time of registration of the junior mark in accordance with the “first-to-file” principle.
The opposition applicant argued that the contested mark “TRILITH” is not eligible for registration under Article 8(1) because of similarity to earlier IR no. 1534597 “TRILITH STUDIOS”, and the goods in question is deemed similar to “downloadable video game software; recorded video game software” in Class 9 designated under the cited mark.
However, the JPO Opposition Board dismissed the opposition on the ground that there is no similarity between the mark “TRILITH STUDIOS” and “TRILITH” on April 7, 2022 (Opposition case no. 2021-900241).
On August 10, 2022, MARKS IP LAW FIRM, on behalf of Trilith IP Holdings, LLC, filed an application for a declaration of invalidity to the contested mark with the JPO based on the same ground.
To bolster the arguments, the invalidity applicant presented evidence to show a low degree of distinctiveness of the word “STUDIOS” in connection with the goods in question. Bearing in mind that the term “TRILITH” is a coined word unfamiliar to the relevant consumers in Japan, it is obvious that the term “TRILITH” is dominant in the cited mark. If so, the contested mark should be invalidated in contravention of Article 8(1).
JPO decision
Noticeably, the Invalidation Board found that the literal element “TRILITH” to be dominant in the cited mark by stating that:
A space separates the terms “TRILITH” and “STUDIOS.” The word “STUDIOS” is commonly known as a term to indicate ” a film or video production facility.” or “workshop for painters or cameramen, recording room for radio or television, recording studio for music.” Therefore, the cited mark is easily recognizable as a combination of the terms “TRILITH” and “STUDIOS.
In light of the fact that the term “GAME STUDIOS” has been generally used to indicate workplaces where games are created in the relevant industry, the word “STUDIOS” would be less distinctive in connection with the cited goods.
Meanwhile, the term “TRILITH” is a coined and highly distinctive word with no specific meaning. Accordingly, the Board has a reason to believe that the term to be dominant in the cited mark.
Based on the above finding, the Board compared the dominant portion of the cited mark with the contested mark and found that both marks are similar from visual and aural points of view in spite that a conceptual comparison is neutral as neither the contested mark nor the cited mark have any clear meaning.
Given that the goods in question is similar to “downloadable video game software; recorded video game software” in Class 9 designated under the cited mark, the invalidation applicant is successful in proving the requirements of Article 8(1).
Consequently, in light of the foregoing, the Board decided to invalidate the contested mark in relation to “game trading cards; toys” in Class 28.
According to “JPO Status Report 2024” released on March 28, 2024, by the Japan Patent Office (JPO), a total of 164,061 trademark applications were filed in 2023. This number decreased 3.6% compared to the previous year when the number of applications amounted to 170,275.
Pfizer Inc. became a top-ranking foreign registrant in 2023 who could successfully register 86 trademarks in Japan, drastically decreased from the previous year.
Requests for accelerated examination decreased to 7.532 by 17.2% in 2023, which enables applicants to obtain trademark registration within 2months.
As a background, it should be noted that the entire trademark process for general examination at the JPO (the total time of application from filing to registration) takes 6.9 months on average, which gets 4.3 months shorter in two years.
You can access and download the full text of “JPO Status Report 2024” from here.
The Japan Patent Office (JPO) did not side with CHANEL in an opposition against TM Reg no. 6650252 for wordmark “COCOBABY” in class 25 by finding dissimilarity of mark between “COCOBABY” and “COCO”. [Opposition case no. 2023-900041, decided on February 9, 2024]
COCOBABY
On September 22, 2022, a Japanese individual applied to register the word mark ‘COCOBABY’ for use in relation to apparel and toddler clothes of class 25 and immediately after the filing, the applicant requested an accelerated examination based on the fact that he operates the online shop “COCOBABY”, which offers a wide range of clothes for toddlers and babies.
A screen capture from https://www.rakuten.co.jp/princessdream/
Accordingly, the JPO examiner granted protection on November 30, 2022 without raising her objection due to a conflict with Chanel’s COCO mark.
Opposition by CHANEL
On February 14, 2023, Chanel SARL filed an opposition against TM Reg no. 6650252 for the mark “COCOBABY”, and claimed cancellation of the mark in contravention of Article 4(1)(xi), (xv) and (xix) of the Japan Trademark Law by citing earlier trademark registrations for their historical mark “COCO”.
Chanel argued that the term “BABY” was descriptive in relation to the designated goods, namely children’s clothing in class 25. In addition, the mark “COCO” has become famous as an indication of origin for Chanel’s perfumes and cosmetics. In those circumstances, the relevant consumers would consider the term “COCO” to be a prominent part of the opposed mark and would be likely to confuse the source of the clothes bearing the opposed mark with Chanel and an entity economically or systematically liked to Chanel.
JPO decision
The JPO Opposition Board accepted that the mark “COCO” has been well known for Chanel’s perfume. However, the Board questioned whether, on the basis of the evidence submitted, the mark has become also well known among consumers of other goods.
In addition, the Board found that the opposed mark had to be assessed as a whole, even in relation to children’s clothing, from a visual point of view. The mark “COCOBABY”, taken as a whole, does not have a specific meaning.
If so, the opposed mark is not conceptually comparable to the mark “COCO”, but is visually and aurally distinguishable from it.
In view of the low degree of similarity between the marks and the insufficient evidence of the reputation of the mark “COCO” among consumers of the goods in question, the Board has no reason to believe that the consumers are unlikely to confuse the source of the clothing and children’s clothing bearing the opposed mark with Chanel.
Based on the foregoing, the Board dismissed the opposition entirely and decided to maintain the opposed mark as the status quo.
Italian heritage label Furla lost a trademark opposition in Japan against TM Reg no. 6501195 for the wordmark “FURNA” in class 25 as a result of the JPO’s decision finding no likelihood of confusion with “FURLA”.
[Opposition case no. 2022-900128, decided on April 6, 2023]
FURNA
The opposed mark, consisting of the wordmark “FURNA” in standard character, was filed for use on clothing, dresses, footwear, garters, waistbands, belts [clothing] and other goods in class 25 with the JPO by URBAN TEX Co., Ltd., a Japanese company on November 1, 2021.
In accordance with a request for accelerated examination from the company based on the actual use of the mark on any one of the designated goods, the JPO carried out a substantive examination and granted protection on January 14, 2022. Subsequently, the mark was published for post-grant opposition on January 27, 2022.
Opposition by FURLA
Italian luxury retailer FURLA S.P.A. filed an opposition on May 28, 2022, and claimed the opposed mark shall be canceled in contravention of Article 4(1)(xi), (xv), and (xix) of the Japan Trademark Law.
FURLA argued a mere difference of “N” and “L” in the fourth letter of the respective word would be trivial and thus inadequate to find a low degree of similarity in appearance and sound. Given a close association between the goods in question and the opponent goods covered by earlier registrations for the FURLA marks that have acquired a high level of recognition among relevant consumers in Japan, the consumers are likely to confuse a source of the goods bearing the opposed mark with Furla or mistakenly consider it from an entity systematically or economically connected with FURLA S.P.A.
JPO decision
The JPO Opposition Board admitted a high level of recognition of the mark “FURLA” in connection with bags among relevant consumers as a source indicator of the opponent.
In the meantime, the Board questioned if both marks are deemed similar in visual, aural, and conceptual points of view by stating:
Comparing the opposed mark and the opponent mark, “FURNA” and “FURLA” differ in appearance in the fourth letter of “N” and “L” but the difference in these letters in the short five-character composition has a substantial effect on the overall composition, and they are sufficiently distinguishable in appearance.
Pronunciation arising from “FURNA” and “FURLA” are different even when they are called in succession, and there is no risk of mishearing each other.
The opposed mark is conceptually distinguishable because it does not give rise to any specific meaning, whereas the opponent mark has been known as “Furla’s brand”.
Even if the “FURLA” mark is widely recognized among Japanese consumers as an indication of the opponent’s business, given the low degree of similarity between “FURNA” and “FURLA”, the Board has no reason to believe that the consumers having a glimpse of the opposed mark used on the goods in question would associate or recall the opponent mark.
Based on the foregoing, the JPO dismissed the opposition entirely and decided that the opposed mark “FURNA” shall remain valid as the status quo.
According to “JPO Status Report 2022” released on March 31, 2022, by the Japan Patent Office (JPO), a total of 184,631 trademark applications were filed in 2021. This number increased 2% compared to the previous year when the number of applications amounted to 181,072.
It is astonishing to see that SM Entertainment Co., Ltd., a South Korean record label and entertainment agency, became a top-ranking foreign registrant in 2021 who could successfully register 185 trademarks in Japan, drastically increased from the previous year.
Requests for accelerated examination consecutively increased to 11,450 by 2.2% in 2021, which enables applicants to obtain trademark registration within 2months.
As a background, it should be noted that the entire trademark process for general examination at the JPO (the total time of application from filing to registration) takes 11.2 months on average, which is 0.3 months longer than the previous year.
You can access and download the full text of “JPO Status Report 2022” from here.
Unquestionably, 2020 was remarkably a tough and soul-destroying year for businesses around the world. The coronavirus pandemic has had a major impact on every aspect of day-to-day life, including the world of business. Just as the fluctuations in the economy and our changing work and lifestyles due to long months spent at homes destroyed our understanding of “normal.” Business mentality, preferences, and actions taken during the crisis have all changed. As a result, it was inevitable for trademark filings to be affected by these changes.
According to “JPO Status Report 2021” released on March 31, 2021, by the Japan Patent Office (JPO), a total of 181,072 trademark applications were filed in 2020. This number is down 5% compared to the previous year when the number of applications amounted to 190,773.
It is interesting to see that Pfizer Inc. became a top-ranking foreign registrant in 2020 who could successfully register 154 trademarks in Japan, drastically increased from the previous year.
Requests for accelerated examination consecutively increased to 11,204 by 38% in 2020, which enables applicants to obtain trademark registration within 2months.
As a background, it should be noted that the entire trademark process for general examination at the JPO (the total time of application from filing to registration) takes 10.9 months on average, which is nearly 2 months longer than the previous year.
You can access and download the full text of “JPO Status Report 2021” from here.
