カテゴリー: Article 4(1)(xix)

ALVIERO MARTINI Defeated Over World Map Mark Dispute

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The Japan Patent Office (JPO) dismissed an invalidation claim by ALVIERO MARTINI S.p.A., against TM Reg no. 6320074, which features an old-world map design, due to its dissimilarity and less likelihood of confusion with the claimant’s 1A CLASSE “GEO MAP” mark.
[Invalidation case no. 2024-890008, decided on September 18, 2025]

Japan TM Reg no. 6320074

Two Korean individuals filed a trademark application with the JPO for a device mark depicting an old-world map (see below) in relation to bags and other leather goods of Class 18 on December 24, 2019 [TM App no. 2019-165453].

Without raising any ground of refusal, the JPO examiner granted registration of the mark on December 24, 2020.

Invalidation action by Alviero Martini

ALVIERO MARTINI S.p.A., known as an Italian heritage brand, Alviero Martini 1A Classe, filed an invalidation action with the JPO on February 13, 2024, and claimed invalidation of TM Reg no. 6320074 in contravention of Article 4(1)(vii), (xi), (xv) and (xix) of the Japan Trademark Law by citing earlier IR no. 982100 of the world map mark in Class 18.

ALVIERO MARTINI argued the contested mark is confusingly similar to the cited mark that has been widely recognized among relevant consumers to identify a source of Alviero Martini 1A CLASSE brand.

The claimant also pointed out the fact that the applicant applied for other mark containing the term “PRIMA CLASSE” (see below). Given a high degree of resemblance between the marks and close relatedness between the goods in question and the claimant’s fashion business, it is presumed that the applicant had maliciously filed the contested mark with an intention to free-ride goodwill on the cited mark.

JPO decision

The JPO Invalidation Board noted the fact that the cited mark has been used in a manner that depicts only a portion of the world map on the claimant’s goods. The produced evidence does not suggest that the cited mark is ever used in its entirety as a source indicator.

Therefore, it would be unreasonable to conclude that the cited mark has acquired a certain degree of recognition in Japan and other jurisdictions.

Regarding the similarity of the marks, the Board stated, “Although they both consist of a device that represents a world map in common, the overall impressions differ significantly due to the different arrangement of continents, the presence of country and ocean names, and sailing ships. Therefore, the contested mark is visually dissimilar to the cited mark”, and “the coincidence in the graphic element representing world map is not sufficient to counteract or outbalance these visual differences.”

Based on the foregoing, the Board found that the marks are dissimilar and relevant consumers are unlikely to confuse the source of the goods in question bearing the contested mark with the cited owner.

Given the lack of persuasive evidence demonstrating a high recognition of the cited mark, it is unclear whether the applicant has a malicious intent vulnerable to invalidation.

JPO dismisses Honda’s opposition against “WONKEY” mark for motorcycles

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The Japan Patent Office (JPO) dismissed an opposition filed by Honda Motor Co., Ltd. against TM Reg No. 6852662 for the word mark “WONKEY” in Class 12, finding no similarity or likelihood of confusion with Honda’s well-known “MONKEY” bikes.
[Opposition Case No. 2024-900262, decided July 15, 2025]

The Contested Mark: “WONKEY”

The opposed mark, consisting of the stylized word “WONKEY” in bold font (see below), was filed by Diner Co., Ltd. on February 26, 2024, for use on motorcycles, electrically operated scooters, and electric bicycles in Class 12 [TM App. No. 2024-18623].

The applicant promotes “WONKEY” motorized bicycles that may be driven by persons over 16 years of age without a driver’s license.

https://wobikes.com/collections/wonkey

The JPO granted registration on October 9, 2024 [TM Reg. No. 6852662], and published it for post-grant opposition on October 18, 2024.

Honda’s Opposition

On December 17, 2024, Honda filed an opposition, seeking cancellation under Article 4(1)(vii), (x), (xi), (xv), and (xix) of the Trademark Law, relying on its earlier Trademark Registration No. 2512844 for the stylized word mark “MONKEY” in Class 12.

Honda argued that “WONKEY” is visually similar to “MONKEY,” emphasizing that:

“Of the six letters, five (‘onkey’) are identical in type, spelling, and sequence. The only difference lies in the initial letters ‘w’ and ‘m,’ which themselves share similar forms composed of two v-shaped or u-shaped strokes. At first glance, the two letters appear alike, and thus the marks as a whole create a closely similar impression, rendering them confusingly similar in appearance.”

To support its case, Honda submitted extensive evidence demonstrating the fame of its “Monkey” bikes, which have been marketed since 1961.

https://www.honda.co.jp/Monkey125/

The JPO’s Decision

The Opposition Board acknowledged the widespread recognition of Honda’s “Monkey” bikes among relevant consumers at the time of application and registration of the contested mark.

Nevertheless, the Board denied similarity between the marks. In particular, it reasoned that:

  • The contested mark “WONKEY” does not generate any specific concept.
  • The cited mark “MONKEY,” by contrast, is a well-known word in Japan with the meaning “monkey,” giving rise to both the pronunciation “monkey” and the concept of “monkey.”
  • While the two marks share all letters and sounds except for their initial characters (“w” vs. “m”; “wo” vs. “mo”), both are short (six letters and four sounds). Accordingly, the initial differences exert a significant impact on the overall appearance and pronunciation.
  • Coupled with the concept of “monkey” derived from the cited mark, these differences lead to a clear distinction in the overall impressions, memories, and associations conveyed to consumers.

The Board concluded that, given the low degree of similarity, relevant consumers were unlikely to confuse the source of the contested goods in Class 12 with Honda or any economically or organizationally related entity.

Based on the above findings, the JPO dismissed the opposition in its entirety and upheld the validity of the contested mark “WONKEY.”

Trademark Dispute: Domino’s Pizza vs Dog’s Pizza

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In a trademark opposition against TM Reg no. 6804935 for the mark “Dog’s Pizza”, the Japan Patent Office (JPO) did not side with Domino’s IP Holder LLC, which claimed similarity to and likelihood of confusion with Domino’s red and blue rectangular emblem with three white dots.
[Opposition case no. 2024-900149, decided on April 2, 2025]

Dog’s Pizza

The contested mark, consisting of the words “DOG’s PIZZA” in red and its translation written in Japanese katakana character, and rectangular device in red and dark blue with two paw prints (see below), was filed with the JPO by a Japanese individual for use on February 14, 2024 for use on pet food and dog food in Class 31 [TM App no. 2024-14656].

Upon request for accelerated examination, the JPO examiner granted registration of the mark on April 30, 2024, without raising any grounds for refusal.

https://mogmogwan.jp/ca2/22/p-r2-s/

Opposition by Domino’s Pizza

On July 23, 2024, a two-month statutory period counting from the publication date, May 23, 2024, Domino’s IP Holder LLC filed an opposition and claimed cancellation of the contested mark in contravention of Article 4(1)(x), (xv) and (xix) of the Japan Trademark Law.

Domino argued that the rectangular device of the contested mark is distinctive and dominant element to identify a specific source. Comparing the device with Domino’s red and blue rectangular emblem with three white dots, which has become famous per se as the source indicator of Domino’s Pizza in Japan, they are visually similar to a high degree. Therefore, the relevant consumers, upon seeing the contested mark used on the goods in question, would associate it with Domino’s Pizza and confuse the source with Domino’s Pizza or any business entity economically or systematically related to Domino’s Pizza.

JPO decision

The JPO Opposition Board stated that, even though Domino’s Pizza Japan, Inc., a domestic franchisee, has operated more than 1,000pizza delivery and take-away stores in Japan, unless the evidence submitted included sales figures, market share, and advertising expenditures in Japan and other countries, the Board could not find it reasonable to concede a high degree of recognition of the cited mark among the relevant consumers.

Regarding the similarity of the marks, the Board considers that the consumers are unlikely to confuse the two marks because of the clear difference in the dots and paw prints depicted in the rectangular device. Furthermore, there is no indication of similarity from an aural and conceptual point of view.

Given the lack of evidence concerning the reputation of the cited mark and the low degree of similarity between the marks, the Board found that there was no reason to find a likelihood of confusion on the part of the public.

Based on the foregoing, the Board decided to dismiss the entire allegations and, accordingly , to declare the validity of the contested mark.

HERMES Defeated with Trademark Opposition against KIMONO TWILLY

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The Japan Patent Office (JPO) dismissed an opposition filed by Hermes International against TM Reg no. 6753650 for the word mark “KIMONO TWILLY” in Class 18, claiming a likelihood of confusion with the Hermes scarves “TWILLY”.
[Opposition case no. 2024-900010 / Gazette issued date: March 28, 2025]

KIMONO TWILLY

The contested mark, consisting of word “KIMONO TWILLY” in standard character, was filed by NPO Kimono For World Heritage Promotion Committee for use on bags and pouches, purses, vanity cases in Class 18 with the JPO on April 20, 2023 [TM App no. 2023-49360].

“KIMONO” is a traditional piece of Japanese clothing like a long loose coat, worn at special ceremonies.

https://omotenashi.or.jp/

The JPO granted registration of the mark “KIMONO TWILLY” on October 13, 2024, without issuing any refusal notice, and published it for a post-grant opposition on November 22, 2023.

Hermes TWILLY

On Jan 19, 2024, Hermes International filed an opposition against “KIMONO TWILLY” based on Article 4(1)(xv) and (xix) of the Japan Trademark Law by citing an owned earlier TM Reg no. 4764732 for the word mark “TWILLY” in Classes 24, 25, and 26.

Hermes argued that the contested mark is confusingly similar to the earlier mark “TWILLY”, which has become famous for Hermes’ tie-like scarves, because the term “KIMONO” is less distinctive in relation to the goods in question.

Taking into consideration that the contested mark covers bags, which have a close association with Hermes, and that the “TWILLY” scarves are widely known to be used to wrap the handles of Hermes handbags, the relevant consumers are likely to confuse a source of the goods in question bearing the contested mark with Hermes. Given the significant popularity and reputation of the Hermes TWILLY scarves, the applicant would have to be in bad faith to free-ride on that reputation by deliberately adopting a similar mark.

JPO decision

The JPO Opposition Board noted the submitted evidence was inadequate to substantiate a high degree of recognition for the earlier mark “TWILLY” since Hermes failed to provide objective evidence concerning sales figures, market share, and advertising expenditures in Japan and other countries.

Additionally, the Board found that the contested mark should be assessed in its entirety even if the term “KIMONO” indicates a traditional piece of Japanese clothing, as the respective word of the contested mark is represented in the same font, size, and the whole sound is not too long.

If so, both marks are deemed dissimilar because there is a clear difference in appearance and sound even though a conceptual comparison is neutral as none of them have any clear meaning.

Based on the above findings, the Board has no reason to believe that relevant consumers of the goods in question would associate the contested mark with Hermes “TWILLY” scarves.

Consequently, the Board decided the contested mark should not be canceled in contravention of Article 4(1)(xv) and (xix).

End of the TOKYO 2020 Olympic emblem dispute

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On March 12, 2025, the Japan IP High Court handed down a decision regarding the validity of TM Reg no. 6008759 for the Tokyo 2020 Olympic Emblem owned by the International Olympic Committee (IOC).
[Court case no. Reiwa6(Gyo-ke)10057]

Tokyo 2020 Olympic Emblem

The official emblem of the 2020 Tokyo Olympics was scrapped in 2016 (see below left) and replaced with the new emblem (see below right) before the opening of the Olympics, as you recall.

Even after the Games closed without spectators in 2021, a year after originally scheduled to due to a global pandemic, the new official emblem was to face with another challenge at the Japan Patent Office (JPO) in 2022.

The contested new emblem was filed by the IOC for use on all goods and services in every class from 1 to 45 with the JPO on April 25, 2016. In the course of substantive examination, the mark was assigned to the Tokyo Olympic Committee (TOC). Subsequently, the JPO granted registration on December 7, 2017 (TM Reg no. 6008759). Upon the Olympic Games finalizing, it was re-assigned to the IOC in December 2021.

Invalidation action

A group of Japanese legal experts filed an application for a declaration of invalidity against the new Tokyo 2020 Olympic Emblem with the JPO on June 21, 2022. They claimed that the emblem should be invalidated in contravention of Article 4(1)(vi), (vii), (x) and (xix) of the Japan Trademark Law.

The experts argued, inter alia, that the IOC failed to comply with Article 31(1) of the Trademark Law, which prohibits the licensing of a trademark registration to a third party given the mark was registered subject to Article 4(2).

Article 4(2) provides an exception to allow the registration of a trademark applied for by a non-profit organization engaged in activities in the public interest, even if the trademark is unregistrable under Article 4(1)(vi).

In this respect, the experts considered it illegal that the IOC granted a trademark license to the TOC, other organizers and sponsors. In fact, under the license, the TOC sent C&D letters based on TM Reg no. 6008759 to entities seeking to benefit from the Tokyo 2020 Olympic Games in order to prevent ambush marketing.

In these circumstances, the contested mark should be declared invalid in contravention of Article 4(1)(vii) because the IOC had a bad faith intent to unjustifiably protect the profits of official sponsors without legal basis by harming the interests of other entities.

It should be noted that Article 31(1) was revised in 2019, one year after the registration of the contested mark. Now, the prohibition to license the registered mark under Article 4(2) no longer exists.

IP High Court decision

In its ruling, the IP High Court acknowledged the need to restrict ambush marketing, which deliberately attempts to persuade or mislead consumers into believing they are associated with a sporting mega-event, or to use their IP without permission.

The Court found that since the elimination of the restriction on granting a license for a mark registered under Article 4(2) came into effect immediately after the promulgation of the Trademark Law Revision in 2019, it would rather serve to promote the appropriate use of the famous trademark for the public interest and satisfy the intention behind the law.

Therefore, even if the IOC had licensed the contested mark to the TOC and official sponsors in order to prevent ambush marketing, it would be irrelevant to find that the contested mark should be invalidated in contravention of Article 4(1)(vii) due to the likelihood of causing damage to public order or morality.

Trademark Squatter Seeking to Ruin Luxury Brand with Obscene Language

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In May 2022, the Japan IP High Court ruled in favor of the plaintiff, OMEGA S.A. The case concerns cancellation of TM Reg no. 6277280 for the word mark “OMECO” in Class 14 (watches) owned by a Japanese company, OMECO Co., Ltd.

In the complaint, OMEGA S.A. argued that the contested mark is likely to cause confusion with world-famous brand “OMEGA” when used on watches. The court declared cancellation of the contested mark, however, not because of the LOC, but the likelihood of damage to public order or morality based on Article 4(1)(vii) of the Japan Trademark Law.

Do you think OMEGA S.A. is satisfied with the court’s decision?

As a matter of fact, the company continues to sell wristwatches bearing the mark “OMECO” even now.

https://omeco.buyshop.jp/

If the court ruled the case by finding a likelihood of confusion with OMEGA based on Article 4(1)(xv), the goods must be prohibited from selling because of trademark infringement or unfair competition. Ironically, the court decision encourages the company to promote watches bearing a vulgar, obscene, prurient and immoral mark by slightly changing famous luxury brands as shown below. The names have a vulgar, obscene and prurient meaning in Japanese.

https://omeco.buyshop.jp/

Not only the actual use, but the company is seeking trademark registration of these vulgar, obscene, lewd and immoral marks in Japan, which obviously intends to free-ride on famous luxury brands such as Cartier, PATEK PHILIPPE, HUBLOT, A. LANGE & SOHNE, RICHARD MILLE, BOTTEGA VENETA, ROLEX.

Recently, the Japan Patent Office (JPO) examiner issued an office action based on Article 4(1)(xi), (xv) and (xix) of the Trademark Law due to similarity to and likelihood of confusion with famous luxury brands.

It is anticipated that the company files a response to the office action and argue dissimilarity and unlikelihood of confusion by referring to the court decision since the rejection would affect their business.

UNIQLO Lost in Trademark Opposition against UNIPRO

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UNIQLO lost in its attempt to oppose TM Reg no. 6746724 for the mark “UNIPRO” in class 28 due to dissimilarity and unlikelihood of confusion with a world-famous Japanese clothing brand “UNIQLO”.
[Opposition case no. 2023-900278, Gazette issued on December 27, 2024]

UNIPRO

Kabushiki Kaisha UNIQUE, a Japanese corporation, filed a trademark application for the mark “UNIPRO” in relation to pet toys and sports equipment in class 28 with the Japan Patent Office (JPO) on April 17, 2023 [TM App no. 2023-41531]. The mark has the word “UNIPRO” written in two lines inside a square (see below).

On October 10, 2023, the JPO examiner approved the registration of the applied mark without issuing an office action. Subsequently, the JPO published the mark for a post-grant opposition on October 27, 2023.

Opposition by UNIQLO

Fast Retailing Co., Ltd., a public Japanese retail holding company, is best known for its flagship brand UNIQLO. The company filed an opposition with the JPO on December 8, 2023 by citing its own earlier trademark registrations for the UNIQLO mark.

Fast Retailing claimed that the applied mark should be cancelled in contravention of Article 4(1)(xi), (xv) and (xix) of the Japan Trademark Law because of a high degree of similarity to and a likelihood of confusion with famous fashion brand UNIQLO when used on the goods in question.

Fast Retailing argued, among other things, visual and aural similarity between UNIPRO and UNIQLO. Arranging the first three letters “UNI” in the top line and the last three letters in the bottom line in a square would be anything but a coincidence. Since the mark “UNIQLO” is a coined word and has become famous to indicate Japanese clothing brand operated by Fast Retailing Group, the applicant must have intended to free-ride on the goodwill bestowed on UNIQLO and unjustifiably obtain profits by using the applied mark “UNIPRO” that is confusingly similar to the cited mark.

JPO decision

The JPO Opposition Board found that the cited mark and “UNIQLO” have been widely recognized among relevant consumers in Japan to indicate a source of clothing managed by Fast Retailing Group.

In the meantime, the Board held “UNIPRO” is dissimilar to and unlikely to cause confusion with “UNIQLO” by stating:

  1. The applied mark and the cited mark both consist of white letters and a square. They also share the letters “UNI” in the top line and “O” in the bottom line. However, the difference of the letters “PR” and “QL” in the bottom line gives an impression that the marks represent different word in a square. Therefore, the applied mark is distinguishable from the cited mark in appearance.
  2. Comparing the sound of the applied mark with that of the cited mark, there is a difference in the third tone of “pu” and “ku”. This difference has anything but negligible effect on the overall tone and impression since respective sound has a short four-syllable structure. Thus, the Board finds it reasonable to conclude that there is no risk of mishearing each other.
  3. Conceptual aspect does not have impact on the assessment of likelihood of confusion, since both marks are meaningless.

Taking into consideration a low degree of similarity between the marks, even if the cited mark has become famous among relevant consumers, the Board has no reason to believe the consumers would consider an origin of the goods in question bearing the applied mark from UNIQLO or an undertaking economically or systematically linked to Fast Retailing.

Based on the foregoing, the Board decided to dismissed the entire opposition.

Trademark Parody case : Champion vs Nyanpion

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On Novem 20, 2024, the Japan Patent Office (JPO) handed a win to HBI Branded Apparel Enterprises, LLC in trademark invalidation action against TM Reg no. 6368388 for the mark “Nyanpion” with a cat face logo due to similarity to the famous apparel brand “Champion.”
[Invalidation case no. 2022-890045]

Contested mark

A Japanese individual applied a composite mark consisting of a stylized word “Nyanpion” and a cat face logo (see below) for use on apparel, headgear, footwear, sports shoes, and sportswear in class 25 with the JPO on August 25, 2020. “Nyan” is the sound cats make in Japan. Because of it, “Nyanpion” easily reminds us of a combination of cat sounds and “Champion”.

T-shirts, sweats, hoodies, and tote bags bearing the Nyanpion mark have been promoted for sale with a catchword of “Champion” parody.

As the JPO published the Nyanpion mark for a post-grant opposition on April 13, 2021, HBI Branded Apparel Enterprises, LLC filed an opposition against the opposed mark on June 14 of that year. However, the JPO Opposition Board dismissed the entire opposition by finding dissimilarity to and unlikelihood of confusion with famous “Champion” mark on March 16, 2022. [Opposition case no. 2021-900230]

Invalidation action by Champion

On June 17, 2022, HBI Branded Apparel Enterprises, LLC filed an invalidation action against the Nyanpion mark with the JPO.

HBI repeatedly argued the opposed mark shall be canceled in contravention of Article 4(1)(vii), (x), (xi), (xv), and (xix) of the Japan Trademark Law because of the remarkable reputation and popularity of the Champion brand in relation to apparels and a high degree of similarity between the contested mark and its owned trademark registrations (see below) to the extent that relevant consumers are likely to confuse a source of the goods in question bearing the contested mark with “Champion”.

JPO Decision

The JPO Invalidation Board acknowledged that the “Champion” mark has acquired a high degree of reputation as a result of substantial use in Japan for more than four decades and has become remarkably famous as a source indicator of the opponent.

In assessing similarity, the Board found that:

The design portion of two marks have in common that the inside of the horizontal oval, which is drawn with a thick blue line and has an opening, is divided vertically into three parts, the middle colored in blue, the side with the opening colored in white and the side without the opening colored in red.

Differences in the presence of a face motif and two triangles placed at the top of the horizontal oval, in the direction of the opening of the horizontal oval and in the position of the red color within the horizontal oval would be less impressive given the resemblance in the overall configuration and the high degree of reputation and popularity of the cited marks.

Besides, the Board found no evidence to suggest that relevant consumers would consider the literal element “Nyanpion” to be a relatively as a prominent part of the contested mark. If so, the contested mark is confusingly similar to the cited mark as a whole, even if the cited mark does not contain the term “Nyanpion.”

Therefore, notwithstanding the fact that both marks have a distinctive sound, taking into account the visual and conceptual similarities, as well as the notable reputation of the cited mark, the Board has reason to believe that the contested mark, when used on the goods in question, will cause confusion with the cited mark


Based on the foregoing, the JPO declared invalidation of the contested mark in contravention of Article 4(1)(xi) and (xv).

Audemars Piguet Unsuccessful in Opposition to Trademark “ROYAL OAK”

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The Japan Patent Office (JPO) dismissed an opposition filed by Audemars Piguet Holding SA (AP), a Swiss luxury watchmaker, against TM Reg no. 6754358 for wordmark “ROYAL OAK” in class 33 due to insufficient recognition of “ROYAL OAK” luxury watches among general consumers.
[Opposition case no. 2024-900016, decided on October 16, 2024]

Opposed mark

On May 12, 2023, St. Michael Wine and Spirits Co., Ltd. filed an application for the registration of a word mark “ROYAL OAK” in standard character, in connection with whisky, spirits [beverages], liqueurs, and western liquors (class 33) with the JPO.

The applicant sells whisky and soda in cans bearing the mark “ROYAL OAK”.

The JPO did not raise any office action in the course of substantive examination and published it for a post-grant opposition on November 24, 2023.

Opposition by Audemars Piguet

On January 23, 2024, before the lapse of a two-month statutory period counting from the publication date, AP filed an opposition and claimed cancellation of the applied mark in contravention of Article 4(1)(vii), (xv) and (xix) of the Japan Trademark Law.

AP argued that “ROYAL OAK” has been well known for AP’s luxury watches even among relevant consumers of the goods in question. Allegedly, “ROYAL OAK” luxury watches have been promoted for sale in Japan since 1972. Annual sales exceed JPY 8 billion on average in the past six years. Each year, AP spent more than JPY400 million on advertisement and promotion in Japan. Due to the high degree of reputation and popularity of “ROYAL OAK” luxury watches, consumers are likely to consider whiskey and western spirits bearing the “ROYAL OAK” mark as coming from the opponent or other business entity economically or systematically connected with AP.

JPO decision

The Opposition Board admitted a certain degree of recognition of the opponent’s “ROYAL OAK” among the consumers who have purchased or interest in luxury watches. However, the Board questioned a high degree of recognition among general consumers because the opponent’s watches are priced at a premium, with relatively low sales volumes and a limited distribution network in Japan. There are about 50 stores only that engage in the resale of the “ROYAL OAK” watches in Japan in addition to the AP official salon or shop. Presumably, lots of general consumers have seldom visited these stores and seen the “ROYAL OAK” watches.

Besides, the Board found whisky, spirits [beverages], liqueurs, and western liquors do not closely relate to luxury watches.

Given that the AP’s “ROYAL OAK” has not acquired a high degree of recognition among relevant consumers and a low degree of relatedness between the goods, the Board has no reason to find a likelihood of confusion between the opposed mark and the opponent business even if both marks are same.

Based on the foregoing, the Board concluded AP’s allegations groundless and decided to maintain the registration of the opposed mark.

BULLDOG vs GREEN BULLLDOG

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The Japan Patent Office (JPO) dismissed an opposition against TM Reg no. 6724674 for the wordmark “GREEN BULLDOG” claimed by DAVIDE CAMPARI – MILANO N.V. on the grounds of dissimilarity to and unlikelihood of confusion with earlier IR no. 1141768 for the wordmark “BULLDOG” for use on gin in Class 33.
[Opposition No. 2023-900229, decided on October 1, 2024]

GREEN BULLDOG

On April 15, 2022, Green Wave Unlimited Japan Co., Ltd (GWUJ) filed a trademark application with the JPO for the word mark “GREEN BULLDOG” and its Japanese transliteration arranged in two lines in connection with various goods in Classes 3, 5, and 33, including gin (Cl. 33) [TM App No. 2022-44073].

The applicant sells CBD products bearing the contested mark.

https://www.greenbulldog.jp/

The JPO examiner granted protection of the contested mark on June 2, 2023.

BULLDOG

DAVIDE CAMPARI – MILANO N.V. filed a partial opposition to the contested mark in respect of Western spirits, alcoholic fruit beverages, Japanese shochu-based beverages in Class 33 within the two-month statutory period from the date of publication on August 17, 2023, claiming that “GREEN BULLDOG” should be partially cancelled in contravention of Article 4(1)(x), (xi), (xv) and (xix) of the Japan Trademark Law by citing its own earlier IR no. 1141768 for the word mark “BULLDOG” in Class 33.

CAMPARI argued that since “BULLDOG” gin has achieved a high degree of recognition among relevant consumers and traders in Japan and abroad, the literal part of “BULLDOG” plays a dominant role in identifying the source of the contested mark when used in relation to the goods in question. If so, both marks should be considered similar and consumers are likely to confuse a source of alcoholic beverages bearing the contested mark with CAMPARI or “BULLDOG” gin.

JPO decision

The JPO Opposition Board did not allow a certain degree of recognition of the cited mark due to insufficient evidence provided by CAMPARI.

With respect to the similarity of the mark, the Opposition Board found that both marks are clearly distinguishable from appearance because the contested mark consists of alphabets and Japanese katakana characters arranged in two lines. On the other hands, the cited mark does not contain Japanese katakana characters and is not arranged in two lines.

Aurally, “BULLDOG” and “GREEN BULLDOG” are distinguishable because of a clear difference in the prefix sound.

A conceptual comparison is noteworthy as each mark evokes a different meaning.

Based on the above findings, the Board found that the two marks were dissimilar and unlikely to cause confusion when used for the goods in question.

Consequently, the Board decided to reject the opposition in its entirety and to maintain the contested mark as the status quo.