カテゴリー: Article 4(1)(xi)

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.

Trademark Dispute: RUBIK CUBE vs RUBiK Pi

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The Japan Patent Office (JPO) dismissed the opposition to TM Reg no. 6945136 for the stylized mark “RUBiK Pi,” claimed by SPIN MASTER TOYS UK LIMITED, the owner of the famous “RUBIK CUBE” mark for the three-dimensional puzzle cube, by finding dissimilarity and unlikelihood of confusion between the two marks.
[Opposition case no. 2025-900188, decided on March 16, 2026]

TM Reg no. 6945136

The contested mark (see below) was filed by Thunder Software Technology Co., Ltd., a leading Chinese provider of smart operating system (OS) technologies and services, for use on computer-related goods and services in Classes 9, 41, and 42 with the JPO on December 3, 2024 [TM App no. 2024-129535].

The literal element of the mark appears to be “RUBi Pi” due to a cube design placed between two terms. However, the applicant’s website indicates the contested mark in colors to be read as “RUBIK Pi”.

https://www.thundercomm.com/product/rubik-pi/

The JPO examiner did not issue a notice of grounds for refusal. The mark was registered on July 4, 2025, and then published for a post-grant opposition on July 14.

Opposition by SPIN MASTER TOYS UK LIMITED

On September 16, 2025, just before the lapse of statutory opposition period for two months, SPIN MASTER TOYS UK LIMITED filed an opposition against the contested mark and claimed cancellation of its entire registration in contravention of Article 4(1)(vii), (xi), (xv) and (xix) of the Japan Trademark Law by citing the earlier marks in connection with the world-famous three-dimensional puzzle cube (Cited mark No. 1 – 6), “RUBIK CUBE”.

The claimant argued that relevant consumers and traders will consider the cube design representing the letter “K,” and thus the contested mark, to be read as “RUBIK” or “RUBIK Pi” in the course of actual business, given that the applicant’s product (a lightweight development board for AI platforms) using the contested mark is offered for sale in the name of “RUBIK Pi” on their website.

Considering that the Cited marks are famous worldwide as an indicator of the claimant’s 3D puzzle cubes, consumers would mistakenly recognize the commercial source of the goods and services in question as being from the claimant or other economically linked undertakings at the sight of the contested mark.

JPO decision

The JPO Opposition Board admitted the remarkable degree of recognition and popularity of the Cited mark Nos. 3, 5, and 6 as source indicators of the claimant’s business based on the evidence submitted by the claimant. However, the Board questioned whether the other Cited marks, which mainly consist of the term “RUBIK,” have also become famous for identifying the claimant’s source.

Regarding the contested mark, the Board found that its overall configuration would not create the sound of “RUBIK” or “RUBIK Pi.” Instead, the contested mark gives rise to the sound of “RUBi Pi,” but has no clear meaning.

Even if the Cited mark 3 “RUBIK CUBE” has become famous, relevant consumers are unlikely to associate the goods and services in question bearing the contested mark with the Cited marks due to the marks’ low degree of similarity. Therefore, the Board held that the contested mark should not be vulnerable to cancellation based on Article 4(1)(xv) of the Trademark Law.

JPO found BISOU dissimilar to its mirrored mark

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In an appeal disputing the similarity between the word BISOU and its mirrored mark, the Japan Patent Office (JPO) overturned the examiner’s rejection and found both marks dissimilar.
[Appeal case no. 2025-18518, decided on March 2, 2026]

TM App no. 2024-86220

The disputed mark was filed by a Japanese individual for use on cosmetics in Class 3 with the JPO on August 8, 2024. It appears to be a word consisting of five letters, “UOSIB,” written in bold font, as shown below. You will immediately notice that the third and fifth letters, “S” and “B,” are flipped.

Rejection by the examiner

The JPO examiner raised her objection based on Article 4(1)(xi) of the Japan Trademark Law by citing TM Reg no. 6648235 “BISOU” in Class 3 owned by LOOP Inc.

She had an opinion that relevant consumers would consider the disputed mark as a mirrored spelling of the term “BISOU.” From this viewpoint, the two marks are visually similar. Since both marks create the same meaning and sound of ‘kiss’ in French, consumers are likely to confuse the commercial origin of goods bearing the disputed mark with those bearing the cited mark.

https://yukitakeshima.com/

The applicant filed an appeal against the examiner’s rejection on November 20, 2025, and argued dissimilarity of the marks. Simultaneously, the applicant requested an accelerated appeal trial.

JPO Appeal Board decision

On March 2, 2026, the JPO Appeal Board held that the examiner erred in finding the disputed mark and thus erroneously applied Article 4(1)(xi) by stating that:

It makes sense that relevant consumers would understand that the disputed mark starts with “UO,” followed by “S” in mirrored spelling, then “I,” and ends with “B” in mirrored spelling. They would recognize it as a stylized word mark containing some mirrored spellings. Based on this, the disputed mark does not give rise to any meaning and sound. Therefore, even if the goods covered by the disputed mark are deemed identical to those covered by the cited mark, the examiner’s rejection should be annulled due to the examiner’s inappropriate findings regarding the disputed mark.

Two words arranged in two lines with different fonts are considered in their entirety, the JPO says

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The Japan Patent Office (JPO) reversed the examiner’s rejection against IR no. 1653013 for a stylized wordmark consisting of “Cool Water” and “REBORN” arranged in two lines due to a similarity to the earlier mark “Re:born” and found both marks dissimilar.
[Appeal case no. 2025-650030, decided on February 18, 2026]

IR no. 1653013

Zino Davidoff SA, a Swiss Company, filed trademark application for a stylized word mark consisting of  “Cool Water” and “REBORN” arranged in two lines (see below) for use on  Perfumery products; perfumes and eaux de toilette; shower gels; skin lotions for cosmetic use; after-shave preparations; deodorants and antiperspirants for personal use in Class 3 with the JPO via the Madrid Protocol on November 13, 2023.

The applicant promotes Eau de Toilette bearing the mark.

https://www.zinodavidoff.com/

Earlier marks

On October 21, 2024, the JPO examiner decided the mark not eligible for registration under Article 4(1)(xi) of the Japan Trademark Law by citing earlier trademark registrations for the word mark “Re:born” or its transliteration written in Japanese katakana characters in Class 3.

On April 30, 2025, the applicant filed an appeal against the rejection. In the appeal, the applicant argued the dissimilarity of the marks.

JPO Appeal Board decision

The JPO Appeal Board found that the mark should be assessed in its entirety. It is not permissible to dissect the mark into individual parts and make a comparison with the cited marks by stating that:

  • Despite the evident divergence in font and size, the terms “Cool Water” and “REBORN”, arranged in two lines, appear to be positioned in a close and unified manner.
  • The sound “Cool water reborn” can be articulated as a single, uninterrupted phrase.
  • Conceptually, there is no reason for relevant consumers to take more note of the literal element “REBORN,” since “Cool Water” also has a clear meaning.
  • Therefore, the consumers are unlikely to see the term “REBORN” dominant in the mark. The Board found no evidence to support that the term plays a significant role in identifying the source of goods in question by taking into consideration actual trade practice in the relevant industry.

Based on the foregoing, the Board decided the examiner erred in finding similarity of the marks and thus erroneously applied Article 4(1)(xi).

ALCOTT Unsuccessful in Trademark Opposition against ACLOTT

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In a trademark dispute regarding similarity between “ACLOTT” and “ALCOTT”, the Japan Patent Office (JPO) found both marks dissimilar and dismissed the opposition claimed by Capri S.r.l.
[Opposition case no. 2025-900047, decided on January 26, 2026]

ACLOTT

HARIZURY Co., Ltd. filed a trademark application for the word mark “ACLOTT” with its Japanese transliteration arranged in two lines (see below) for use on school bags, bags, pouches, leathercloth, and leather items in Class 18 with the JPO on March 1, 2024 [TM App no. 2024-20955].

The mark was registered without any refusal from the JPO examiner [TM Reg no. 6875775]. On December 23, 2024, it was published for a post-grant opposition.

Opposition by Capri

On February 20, 2025, Capri S.r.l., an Italian Fashion House, filed an opposition against the mark “ACLOTT” by citing IR no. 878382 for wordmark “ALCOTT” in Classes 3,14,18, and 25, and claimed the contested mark should be cancelled in contravention of Article 4(1)(xi) of the Japan Trademark Law because of close resemblance to the cited mark “ALCOTT”.

Capri argued that the contested mark looks and sounds similar to the cited mark, since the difference in the second and third letters will not outweigh the commonality of the remaining four letters. Even if a conceptual comparison is neutral since neither mark has any clear meaning, in view of a similar commercial impression of the marks when used on the goods in Class 18, relevant consumers are likely to confuse a source of the goods bearing the contested mark with the cited mark.

JPO decision

The JPO Opposition Board assessed the similarity of the marks in aspects of appearance, sound, and concept.

  • Appearance

The contested mark and the cited mark are sufficiently distinguishable in appearance due to the distinction arising from the reversed order of the second and third letter, “C” and “L,” of a relatively short six-letter composition.

  • Sound

Comparing respective sounds, the difference in the second and third syllables of a short five-syllable configuration significantly affects the overall phonetic impression. Relevant consumers will be able to distinguish these sounds with ordinary care.

  • Concept

As both marks have no specific meaning, a conceptual comparison is neutral.

Based on the foregoing, the Board found that relevant consumers are unlikely to confuse the source of the goods in question with the cited mark, and thus both marks are deemed dissimilar. Consequently, the Board dismissed the entire opposition.

JPO Found Trademark “Finto” Dissimilar to “Fi.n.t”

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The Japan Patent Office (JPO) set aside rejection by the examiner to register TM App no. 2025-57051 “Finto” in Class 9 by finding dissimilarity to earlier TM Reg no. 5547097 for the wordmark “Fi.n.t” in the same class.
[Appeal case no. 2025-16841, decided on January 22, 2026]

Finto

Visional Co., Ltd. filed a trademark application for the word mark “Finto” in standard character for use on computer software and other computer-related goods in Class 9 with the JPO on May 26, 2026. [TM App no. 2025-57051]

Fi.n.t

On June 4, 2025, the JPO examiner gave the applicant a notice of ground for refusal laid down in Article 4(1)(xi) of the Japan Trademark Law by citing earlier TM Reg no. 5547097 for a word mark “Fi.n.t” with its Japanese transliteration (see below) in Class 9 that has been effectively registered since 2012.

The applicant filed a response to the office action on July 9, 2025, and argued dissimilarity of the marks. However, the examiner did not withdraw his refusal and finally decided to reject the entire application on July 25.

The applicant filed an appeal against the examiner’s rejection on October 22, 2025, and argued dissimilarity of the marks.

Appeal Board decision

The JPO Appeal Board noted that the term “Finto” is not listed in standard dictionaries. As no circumstances are confirmed to suggest its specific meaning in Japan, it will be recognized as a coined word. Therefore, the mark has a sound of “finto” and does not elicit any particular connotations.

Regarding the cited mark, the Board observed that it comprises the letters “Fi.n.t” and their Japanese katakana transliteration, arranged in two lines. It is regular to refrain from pronouncing two dots placed in the middle of the letters. From overall appearance, it is reasonable to find that the cited mark also has a sound of “finto” and no meaning in its entirety.

Due to the clear distinctions in literal configuration, the number of letters, and the presence and absence of “,” / “o,” visual impressions differ remarkably to the extent that relevant consumers can distinguish two marks in appearance. Evidently, both marks have the same sound. A conceptual comparison is neutral as neither of the concepts has a clear meaning.

Based on the foregoing, the Board found that even if the marks have common sound and the conceptual comparison is neutral, given that the marks are sufficiently distinguishable in appearance, relevant consumers will not confuse the source of goods in question bearing the mark “Finto” with the cited mark. If so, the Board has reason to believe that they are dissimilar as a whole.

Ziploc Ribbon, Ziploc, or Ribbon?

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In an appeal concerning the similarity between the registered mark “Ribbon” and a junior application containing the literal elements “Ziploc” and “Ribbon,” the Japan Patent Office (JPO) overturned the examiner’s refusal and held that the two marks were dissimilar.
(Appeal Case No. 2025-4546, decision dated January 19, 2026)

The contested mark: “Ziploc Ribbon”

SC Johnson & Son, Inc. filed a trademark application on February 14, 2024, for a composite mark comprising the literal elements “Ziploc” and “Ribbon,” with the word “Ribbon” placed below “Ziploc” within a ribbon design (see image below). The application designated plastic bags and containers in Classes 16 and 21. [TM Application No. 2024-14335]

“Ziploc” is widely known as a brand of reusable, re-sealable zipper storage bags and containers manufactured by S. C. Johnson & Son, a US-based company.

https://www.beams.co.jp/special/ziplocribbon/

JPO examination

On January 29, 2025, the JPO examiner rejected the application pursuant to Article 4(1)(xi) of the Japan Trademark Law, citing prior registered trademark No. 4873505 for the word mark “Ribbon” in standard character, which has been registered since 2005 for identical or similar goods in the same classes.

SC Johnson filed an appeal against the examiner’s decision on March 25, 2025, seeking revocation of the refusal.

Appeal Board decision

The JPO Appeal Board reversed the examiner’s decision and concluded that the marks were dissimilar, reasoning as follows:

  1. Because the literal elements of the applied-for mark are depicted in a similar monochromatic color scheme and arranged in close proximity, relevant consumers are likely to perceive the mark as a single, unified whole.
  2. The term “Ribbon” possesses only a low degree of inherent distinctiveness, as it is commonly used to denote a long, narrow strip of material employed for tying or decorative purposes.
  3. Given that the element “Ziploc,” which is prominently displayed in the contested mark, is widely recognized as an indicator of origin for the applicant’s zipper storage bags and containers, there is no evidence to suggest that the term “Ribbon,” shown beneath “Ziploc” in a smaller font, plays a dominant role in identifying the commercial source of the goods.
  4. In light of the foregoing, it is unreasonable to assess similarity between the marks based solely on the shared element “Ribbon.”

Based on this analysis, the Appeal Board set aside the examiner’s refusal and granted registration of the “Ziploc Ribbon” mark.

Abercrombie & Fitch Fails to Protect Trademark “A&F” with Moose silhouette

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The Japan Patent Office (JPO) did not side with Abercrombie & Fitch in an appeal against the JPO examiner’s rejection of the mark “A&F” with an iconic moose silhouette in Class 9 due to a conflict with the earlier mark “A&F” in Class 35.
[Appeal case no. 2025-9982, decided on December 23, 2025]

Abercrombie & Fitch

Abercrombie & Fitch filed a trademark application for the mark consisting of the term “A&F” and their iconic Moose silhouette (see below) for use on eyeglasses, sunglasses, googles for sports, earphones, headphones, telecommunication machines and apparatus, personal digital assistants, cases for smartphones in class 9 with the JPO on February 26, 2024 [TM App no. 2024-18531].

Rejection laid down in Article 4(1)(xi)

On May 7, 2025, the JPO examiner rejected the mark applied for lain down in Article 4(1)(xi) of the Japan Trademark Law by citing two earlier TM Reg Nos. 5218488 and 5588154 for the mark “A&F” owned by A&F Corporation.

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.

The cited marks designate retail or wholesale services for telecommunication machines and apparatus, and eyeglasses in Class 35.

Under the JPO practice, goods and retail or wholesale services for the goods are deemed similar.

JPO Appeal Board decision

Abercrombie & Fitch filed an appeal to request that the examiner’s rejection be set aside on June 26, 2025.

In the appeal brief, Abercrombie & Fitch argued that the figurative element is dominant in the contested mark as the Moose silhouette has acquired a certain degree of recognition among the relevant consumers in Japan.

However, the Board observed the examiner did not err in finding facts relevantly and dismissed the appeal by stating that:

  1. The figurative element does not engender any specific meaning or sound. The literal element, “A&F,” is also recognized as a coined word, as it does not appear in ordinary dictionaries. There is no reasonable basis to consider these elements as a whole due to the significant space gap and lack of conceptual association between them. Therefore, it is appropriate to find that the literal element “A&F” of the contested mark plays an independent role in identifying the source of the goods bearing the contested mark.
  2. Even if a conceptual comparison is neutral, as neither the contested mark nor the cited marks have a clear meaning, the relevant consumers are likely to confuse the source of the goods in question with the cited owner because of the close resemblance in appearance and pronunciation.
  3. Based on the evidence submitted by Abercrombie & Fitch to demonstrate the popularity of the moose design, the Board found it unpersuasive that the design plays a dominant role as a source indicator.

JPO found “is me” dissimilar to “iS.ME” as trademark

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The Japan Patent Office (JPO) reversed the examiner’s rejection of the word mark “is me” in Classes 14, 18, and 25, by finding it dissimilar to senior TM Reg No. 5006417 for the mark “iS.ME” with an oval device.
[Appeal case no. 2025-4535, decided on December 17, 2025]

“is me”

ARIGATO CO., LTD. filed a trademark application for the stylized mark “is me” (see below) in connection with personal ornaments (Cl. 14), bags (Cl. 18), and apparel products (Cl. 25) with the JPO on February 8, 2024. [TM App no. 2024-18788]

https://www.argt-ltd.com/eventlist/438/

TM Reg No. 5006417

On October 4, 2024, the JPO examiner issued a notice of ground for refusal by citing senior TM Reg No. 5006417 for the mark “IS.ME” with an oval device (see below) in Classes 12, 14, and 25.

The applicant filed a response against the refusal on November 27, 2024, to argue the dissimilarity of these marks. However, on February 4, 2025, the examiner decided to reject the entire application due to similarity to the cited mark based on Article 4(1)(xi) of the Japan Trademark Law.

On March 25, 2025, the applicant filed an appeal against the contested decision, requesting that the rejection be set aside.

JPO Appeal Board decision

The JPO Appeal Board disaffirmed the contested decision and found that the mark “is me” should not be subject to rejection under Article 4(1)(xi) by stating that:

  1. The mark in question consists of the letters “is me” written in a script font. Both terms, “is” and “me”, are English words generally familiar to Japanese consumers, meaning “to be” and “myself” respectively. Therefore, the mark has the sound of “iz-miː.” Meanwhile, as “is me” lacks a subjective term, it does not give rise to any specific meaning as a whole.
  2. The literal elements of the cited mark will not be considered inextricable from the graphical element because of a space between them, and lack of conceptual integrity as a whole. In this regard, it is reasonable to consider the literal element as dominant in the cited mark, and compare it with the mark in question to assess similarity between the marks. The literal element gives rise to various sounds, not limited to “iz-miː.”, but “ai-es-dot-emu-iː”, “iz-dot-miː.”, “ai-es-dot-miː”.
  3. From appearance, the cited mark features a distinctive combination of the initial letter “i” in lowercase and the subsequent three letters in uppercase, all written in bold Gothic and colored in red. This constitutes a prominent distinction from the mark in question, resulting in strong commercial impressions that are easily distinguishable.
  4. Aurally, even if both sounds are the same when the cited mark is pronounced as “iz-miː”, the other sounds are clearly distinguishable.
  5. A conceptual comparison is neutral as neither of them has any specific meaning.
  6. Based on the foregoing, given both marks are unlikely to cause confusion from visual and phonetic points of view, the Board has reason to believe the mark “is me” is deemed dissimilar to the cited mark as a whole.

Samsung Unsuccessful in Trademark Opposition against BEAT GALAXY

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The Japan Patent Office (JPO) did not side with Samsung, the South Korean tech giant, in a trademark opposition against TM Reg no. 6895229 for word mark “BEAT GALAXY” in Class 9 by finding a low degree of similarity to and less likelihood of confusion with the mark “GALAXY” even when used on PDA, mobile phones.
[Opposition case no. 2025-900084, decided on December 2, 2025]

BEAT GALAXY

UMG Recordings Inc. filed a trademark application for the wordmark “BEAT GALAXY” in standard character with the JPO on November 13, 2023, for use on PDA, mobile phones, computers, computer software, audio files and other goods in Class 9 [TM App no. 2023-129205].

https://www.universalmusic.com/universal-music-group-and-supersocial-announce-beat-galaxy-on-roblox-a-groundbreaking-music-hub-featuring-artists-and-music-from-umg/

The JPO examiner granted protection of the mark on February 4, 2025.

Subsequently, it was published for a post-grant opposition on February 20, 2025.

Opposition by Samsung

Samsung, a South Korean tech giant, filed an opposition against the mark “BEAT GALAXY” on April 18, 2025, and claimed cancellation of the contested mark in contravention of Article 4(1)(vii), (x), (xi), (xv), and (xix) of the Japan Trademark Law by citing their earlier mark “GALAXY”.

Samsung argued the contested mark “BEAT GALAXY” is similar to the cited mark, and conveys a negative impression of defeating Samsung’s Galaxy. Thus, the contested mark detrimentally affects the goodwill of the cited mark. Relevant consumers are likely to associate the contested mark with Samsung.

JPO decision

The JPO Opposition Board found that the cited mark “GALAXY” has been widely recognised as an indicator of Samsung’s business.

In the meantime, the Board denied similarity between “BEAT GALAXY” and “GALAXY” by stating that:

The contested mark and the cited mark differ in the presence of the word “BEAT” at the beginning of the contested mark. Therefore, even when assessed in a different time and place, there is no likelihood of confusion in appearance.

Secondly, the different sound caused by the word “Beat” at the beginning of the contested mark significantly affects the overall aural impression. As both sounds are distinguishable as a whole, there is no likelihood of confusion in pronunciation.

As for concept, while the contested mark does not have any specific concept, the cited mark gives rise to a meaning of a collection of stars and planets that are held together by gravity. Accordingly, both marks are neutral in concept.

Based on the foregoing, the Board noted that, even though the goods in question are highly related to Samsung’s business, in view of a low degree of similarity and originality of the cited mark, it is reasonable to conclude that relevant consumers are unlikely to confuse a source of goods bearing the contested mark with Samsung or any undertaking economically or systematically connected with the claimant.

Consequently, the Board decided to dismiss the entire opposition.