カテゴリー: Composite mark

JPO Dismisses IOC’s Opposition Against “OLYMPIA” Logo Mark

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The Japan Patent Office (JPO) dismissed an opposition filed by the International Olympic Committee (IOC) seeking the cancellation of Trademark Reg. No. 6571632 for a composite mark containing the word “OLYMPIA” in Class 44.
[Opposition case no. 2022-900358, decided on August 27, 2026]

Contested mark

The contested mark consists of three elements arranged vertically as shown below in connection with the services of “Providing massage, chiropractic, acupuncture, moxibustion, judo seifuku (bone setting), aromatherapy, and nutritional guidance” in Class 44.

  1. Top: A design depicting a droplet shape wrapped from below by two arc-shaped branches with leaves facing each other.
  2. Middle: The word “OLYMPIA” represented in bold, prominent lettering (with a larger letter “O”).
  3. Bottom: The phrase “OLYMPIA is the concierge of your body.” in smaller, thin text.

The mark was filed by a Japanese individual with the JPO on March 24, 2022. By virtue of the accelerated examination requested by the applicant, the mark was granted registration in less than three months, on June 14, 2022. [TM Reg no. 6571632]

https://www.karada-concierge.com/

IOC’s Opposition

The opponent, the International Olympic Committee (IOC), filed an opposition on August 22, 2022, arguing that the registration should be canceled under Article 4(1)(xv) of the Japanese Trademark Law, which prohibits registration of marks likely to cause confusion with another person’s well-known goods or services.

The IOC relied on IR no. 1128501 for its well-known mark “OLYMPIC” (and related marks/symbols), claiming that:

  • The prefix “OLYMPI-” is identical.
  • The opponent uses various terms starting with “OLYMPI-” such as “OLYMPIAN” or “OLYMPISM.”
  • The leaf-branch design in the contested mark evokes an association with the Olympic Games (e.g., laurel crowns).
  • Due to the immense fame of the “OLYMPIC” mark, relevant consumers in Japan would associate the contested mark with the IOC or assume a business or economic connection between the parties.

JPO Decision

The JPO Opposition Board dismissed the IOC’s arguments and maintained the registration based on the following grounds:

1. Famousness of the Opponent’s Mark

The Board recognized that the cited mark “OLYMPIC” is widely famous among Japanese consumers as an indicator of the Olympic Games hosted by the IOC.

2. Degree of Similarity Between the Marks

  • Dominant Portion: The Board held that the middle text “OLYMPIA” serves as the dominant, distinctive feature of the contested mark because the top logo design generates no specific conceptual meaning and the bottom sentence (“OLYMPIA is the concierge of your body.”) is printed in extremely small font and lacks distinctive dominance.
  • Visual: Comparing “OLYMPIA” and “OLYMPIC,” both consist of 7 letters, sharing the first 6 letters in upper-case letters. Although the ending letters (“A” vs. “C”) differ, the visual impression remains similar.
  • Aural: “OLYMPIA” (5 syllables: O-ri-n-pi-a) and “OLYMPIC” (6 syllables: O-ri-n-pi-k-ku) share the first 4 syllables (O-ri-n-pi), but the endings (-a vs. -k-ku) are clearly distinguishable by ear.
  • Conceptual:
    • “OLYMPIA” evokes the concept of Olympia, the ancient Greek plain and birthplace of the ancient Olympic Games.
    • “OLYMPIC” evokes the modern Olympic Games.
    • Because “OLYMPIA” is a recognized geographic name/dictionary word, the two marks convey distinct concepts and do not cause conceptual confusion.
  • Overall: Although visually similar to some degree, the low similarity in sound and distinctness in concept mean the overall degree of similarity between the marks is low.

3. Connection Between Services and Likelihood of Confusion

  • Service Relationship: The contested services in Class 44 (massage, chiropractic, acupuncture, nutritional guidance, etc.) differ significantly in nature, purpose, channels of trade, and business categories from the IOC’s core services (planning and managing sports events). The connection between the respective services is very low.
  • No False Association: The Board rejected the IOC’s claim that the leaf/droplet design in the contested mark misleads consumers into believing there is an official association with the Olympic Games, as there was no evidence showing that this specific design is widely used by or associated with the Olympic Games.
  • Conclusion: Given the low similarity between the marks and the low relationship between the services, relevant consumers in Japan are unlikely to associate “OLYMPIA” with “OLYMPIC” or assume any organizational or economic connection to the IOC.

Accordingly, the JPO concluded that the contested mark does not fall under Article 4(1)(xv) and upheld the registration.

Marriott’s W Hotels Fails to Overturn Registration of “THE W Relax Garden Resort” in Japan

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The Japan Patent Office (JPO) dismissed an opposition filed by Marriott International’s affiliate against the trademark registration for standard characters “THE W Relax Garden Resort” (TM Reg. No. 6977166), finding it dissimilar to the famous luxury hotel brand’s “W / HOTELS” composite marks and concluding that there was no likelihood of confusion under Japanese trademark law.
[Opposition Case No. 2025-900283, Decided on July 23, 2026]

Contested Mark

The contested mark, consisting of the standard characters “THE W Relax Garden Resort”, was filed by Sokyu Co., Ltd. with the JPO on July 23, 2025 [TM App. No. 2025-83433], designating services in Class 43 (e.g., providing temporary accommodation, catering, campground facilities) and Class 44 (e.g., providing bath/sauna facilities, beauty salon services, massage, landscape design).

The applicant filed a request for accelerated examination with the JPO on the filing date based on the fact that it had already launched glamping resort facilities using the mark in Japan. Accordingly, the contested mark was registered on October 15, 2025, without facing any office action [TM Reg no. 6977166].

https://thew.jp/

Opposition by Marriott / W Hotels

The Opponent (owner of the W HOTELS brand under Marriott International) filed a trademark opposition on December 15, 2025, requesting the cancellation of the contested registration under Articles 4(1)(xi) and 4(1)(xv) of the Japanese Trademark Law.

The Opponent cited four prior registrations (including TM Reg. Nos. 4965244, 5331759, 5046547, and 5294655) for composite marks featuring a prominent, styled letter “W” positioned above the smaller word “HOTELS” (see below) in Classes 35, 36, 39, 43, 44, and 45.

Main Arguments of the Opponent

  1. Similarity of Marks (Article 4(1)(xi)):
    • The prefix “THE W” forms the dominant visual and distinctive feature of the contested mark because the subsequent portion, “Relax Garden Resort,” merely indicates the characteristics and nature of hotel/resort/spa services in Class 43 and Class 44.
    • Excluding the generic English definite article “THE,” consumers would focus on “W”, rendering the contested mark confusingly similar in sound and concept to the cited “W / HOTELS” marks.
  2. Likelihood of Confusion / Reputation (Article 4(1)(xv)):
    • Since the opening of W New York in 1998, the W HOTELS brand has expanded to around 70 luxury lifestyle hotel locations globally. In Japan, W OSAKA opened in March 2021 to significant media coverage and won three titles at the 2023 World Luxury Hotel Awards.
    • Due to extensive promotional activities, community collaborations, and media exposure, the cited “W / HOTELS” mark and the standalone “W” logo had become widely known among Japanese traders and consumers as source indicators of the Opponent’s high-end hotel, dining, spa, and event services.
    • Therefore, use of “THE W Relax Garden Resort” on identical or closely related services would lead relevant consumers to misbelieve that the services originate from or are economically connected to Marriott’s W Hotels brand.

JPO Board Decision

The JPO Opposition Board evaluated both grounds and ruled to maintain the registration.

1. Assessment of Mark Similarity (Article 4(1)(xi))

  • Visual Aspect: The contested mark “THE W Relax Garden Resort” is composed of plain standard characters rendered continuously with uniform font and size. Although both marks share the single letter “W,” their overall character sequences are entirely different, making them clearly distinguishable visually.
  • Aural Aspect: The contested mark is pronounced smoothly as a single unit: “Za-Da-Bu-Ryu-Ri-Rak-Ku-Su-Gaa-Den-Ri-Zoo-To.” In contrast, the cited mark yields the pronunciation “Da-Bu-Ryu-Ho-Te-Ru-Zu.” The sound structures, cadences, and syllable counts are distinct and easily distinguishable by ear.
  • Conceptual Aspect: Neither mark produces a specific, definite conceptual meaning as a whole. Thus, a conceptual comparison cannot be drawn.

Consequently, considering the overall visual, aural, and conceptual differences, the Board concluded that the marks are dissimilar as a whole, rendering Article 4(1)(xi) inapplicable even though the services in question are identical or similar.

2. Lack of Concrete Evidence on Well-Known Status & No Likelihood of Confusion (Article 4(1)(xv))

  • Insufficient Quantitative Proof: While the Opponent established the global presence of W Hotels and the opening of W OSAKA in 2021 alongside local event participation, the Board pointed out that the Opponent failed to submit concrete, quantitative evidence—such as overall sales turnover, market share in Japan, and the specific scale/budget/reach of advertising campaigns using the cited marks.
  • Without objective numerical evidence, the Board could not find that the cited mark “W / HOTELS” or the standalone “W” logo had achieved a high degree of recognition (well-known status) among Japanese consumers at the time of filing or registration of the contested mark.
  • Low Similarity Eliminates Confusion: Furthermore, because “THE W Relax Garden Resort” and “W / HOTELS” are overall dissimilar marks, consumers encountering the contested mark on Class 43 or Class 44 services would not reasonably associate or connect it with Marriott’s W Hotels brand.

The Flash: Fame Alone Does Not Establish Likelihood of Confusion in Japan

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The Japan Patent Office (JPO) dismissed an opposition against a device mark featuring a stylized lightning bolt surrounded by two circular arcs, finding it dissimilar to an earlier composite mark featuring the wording “The FLASH” and a lightning-bolt device cited by DC Comics. The JPO also found that the evidence was insufficient to establish that the cited mark had become well known or famous in Japan.
[Opposition Case No. 2025-900260, decided on July 22, 2026]

Contested Mark

SPECIAL HEROES Inc., LTD. filed a trademark application for a device mark that consists of a stylized lightning-bolt design surrounded by two circular arcs (see below) in connection with apparel, sports shoes, sportswear in Class 25 and sports equipment in Class 28 with the JPO on February 18, 2025 [TM App. No. 2025-22711].

The application proceeded to registration without an office action being issued. The mark was registered on October 21, 2025, and published for a two-month post-registration opposition period on October 29, 2025.

Opposition by DC Comics

DC Comics, one of the largest and oldest American comic-book publishers, filed an opposition against the contested mark on November 28, 2025, arguing that the registration should be cancelled under Articles 4(1)(xi) and 4(1)(xv) of the Japanese Trademark Law.

The opponent cited TM Reg. No. 6701619 for a composite mark that consists of the stylized term “The FLASH” and a thin-lined lightning-bolt device with two bends surrounded by a circular arc (see below), registered in Class 25 and other classes.

The opponent argued that, in light of the high level of recognition of the American comic “The FLASH” and the close resemblance between the contested mark and the figurative element of the cited mark, relevant consumers would be likely to confuse the source of the goods bearing the contested mark with those of the opponent.

JPO Decision

1. Fame Must Be Established with Concrete Market Evidence

The opponent submitted evidence showing that “The Flash” has been used since 1940 as the title of an American comic book and as the name of its character. The character is also associated with a distinctive emblem combining a circular design and a lightning bolt.

The evidence further indicated that comic books, merchandise such as figures, DVDs, and other works featuring the character have been available in Japan. There was also evidence of a pop-up shop in Kanagawa Prefecture in 2017 and an animated film featuring the character.

Nevertheless, the JPO found this evidence insufficient to establish that the cited mark was well known or famous in Japan.

In particular, the evidence did not sufficiently establish:

  • when the relevant goods or services were first marketed in Japan;
  • sales volumes or market share;
  • the scale of advertising and promotional activities; or
  • other concrete evidence demonstrating the extent of recognition among Japanese traders and consumers.

2. Assessment of Similarity

Although both marks shared the basic concept of combining a lightning-bolt design with a circular arc, the JPO found significant differences in:

  • the number of bends in the lightning bolt;
  • the thickness of the lines;
  • the number of circular arcs;
  • the thickness of the arcs; and
  • whether the lightning bolt and circular arc were connected.

These differences were considered sufficient to make the two figurative elements clearly distinguishable in appearance.

The JPO also found that the contested mark had no specific pronunciation or conceptual meaning because the lightning-bolt design did not convey a sufficiently definite meaning. By contrast, the cited mark gives rise to the pronunciations “THE FLASH” or “FLASH” and the concept of a “flash” or “sudden burst of light.”

Accordingly, the JPO found that the marks were distinguishable in appearance, pronunciation, and meaning, and that their degree of similarity was low.

3. No Likelihood of Confusion

Since the opponent had failed to establish that the cited mark was sufficiently well known or famous in Japan at the filing date of the contested mark, and the degree of similarity between the marks was low, the JPO concluded that consumers would not associate the contested mark with the cited mark or mistakenly believe that the goods originated from the opponent or an economically or organizationally related entity.

The opposition was therefore dismissed, as the contested mark did not fall under Article 4(1)(xi) and 4(1)(xv) of the Japanese Trademark Law.

JPO found “BUZZ Pay” dissimilar to “BUZZ” for cashless payment services

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The Japan Patent Office (JPO) Appeal Board reversed an examiner’s refusal of “BUZZ Pay,” finding that it was dissimilar to the earlier mark “BUZZ” for cashless payment services.
[Appeal case no. 2026-004207, decided on July 23, 2026]

1. BUZZ Pay (Applied Mark)

The applicant, BUZZ GROUP Co., Ltd., filed a trademark application for the word mark “BUZZ Pay” in standard character for use in connection with cashless payment services, such as cryptocurrency management/exchange, electronic funds transfer, credit/debit card payment settlement, prepaid card issuance in Class 36 with the JPO on July 14, 2025 [TM App no. 2025-79480].

2. Examiner’s Refusal / Cited Mark

The JPO Examiner refused the registration of the applied mark “BUZZ Pay” under Article 4(1)(xi) of the Japanese Trademark Law (prohibiting registration of marks similar to prior registered trademarks) by citing TM Reg no. 6346356 for a composite mark consisting of the term “BUZZ” and a device featuring two hexagonal frames with a yellow lightning bolt (see below) in Class 36.

The examiner considered the initial term “BUZZ” as the dominant/essential portion of “BUZZ Pay” and concluded that it was confusingly similar to the cited mark “BUZZ”.

To contest, the applicant appealed the examiner’s refusal to the JPO Appeal Board.

3. JPO Appeal Board Decision

The JPO Appeal Board reversed the refusal and granted registration for “BUZZ Pay”, finding that the two marks are dissimilar and unlikely to cause confusion.

(1) Integrated Perception in the Payment Sector

Although “Pay” literally means payment or expenditure, the Board recognized that the combination format of “[Brand] + Pay” (e.g., Yucho Pay, Bank Pay, au PAY, Amazon Pay, Merpay, PayPay, Rakuten Pay) is widely used as a standard service name in the cashless payment industry.

Because consumers are familiar with this naming structure, they naturally perceive “BUZZ Pay” in its entirety as an indivisible, unitary trademark, rather than focusing solely on “BUZZ”.

(2) Comparison of Similarity

  • Appearance (Visual): “BUZZ Pay” is a pure word mark, whereas the cited mark contains prominent graphical elements (hexagonal frames and a lightning symbol). The presence of “Pay” also creates a clear visual difference.
  • Pronunciation (Phonetic): “BUZZ Pay” is pronounced as “Ba-zu-pei” (4 syllables in Japanese), whereas the cited mark is pronounced as “Ba-zu” (2 syllables). The sound of “Pay” ensures clear phonetic distinction.
  • Concept (Conceptual): “BUZZ Pay” is recognized as a coined, unitary mark that conveys no specific conceptual meaning as a whole. Conversely, the cited mark evokes the dictionary definition of the English word “buzz” (humming or buzzing sound).

Based on the above findings, the Appeal Board observed that “BUZZ Pay” cannot be dissected into “BUZZ”. Viewed as a whole, it clearly differs from the cited mark in appearance, sound, and concept. Therefore, even if the services in question are deemed similar, the applied mark should not be rejected in relation to the cited mark based on Article 4(1)(xi).

Why trademark owner for popular Finnish outdoor game “MÖLKKY” couldn’t win trademark opposition againt Japan Mölkky Association

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In a trademark dispute involving “MÖLKKY”—the popular Finnish lawn bowling game, the Japan Patent Office (JPO) did not side with Tactic Games Oy, the IP owner of the game, who opposed TM Reg No. 6906850 for a composite mark “MÖLKKY WORLD CHAMPIONSHIPS – HAKODATE, JAPAN” in the name of the Japan Mölkky Association.
[Opposicion case no. 2025-900111, decided on June 23, 2026]

Contested mark

Japan Mölkky Association filed a trademark application for a composite mark consisting of a maroon double-circle design containing 12 white ovals, featuring the text “MÖLKKY WORLD CHAMPIONSHIPS / HAKODATE / JAPAN” integrated seamlessly within the circular border (see below) for use on various goods and services in Classes 9, 21, 25, and 41 with the JPO on June 21, 2024 [TM App No. 2024-6998].

The JPO granted registration of the mark on March 12, 2025 [TM Reg No. 6906850], and then published it for post-grant opposition on March 21, 2025.

Opposition by Tactic Games Oy

On May 21, 2026, just before the lapse of two-month statutory opposition period, Tactic Games Oy, the IP owner of the popular Finnish outdoor game, filed a trademark opposition against the contested mark. The opponent requested the cancellation of its registration based on Article 4(1)(xi) and 4(1)(xv) of the Japan Trademark Law, citing its own earlier registered marks in Japan.

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

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

JPO decision

1. The Pitfall of Evidentiary Shortfalls: “Well-Known” Status Denied

To succeed in a likelihood of confusion claim under Article 4(1)(xv), an opponent must demonstrate that their mark is widely recognized among Japanese consumers.

While the JPO acknowledged that the game “Mölkky” is recognized in Japan and that Tactic Games’ products are sold via local distributors, it pointed out a fatal flaw in the evidence:

The Opponent failed to provide specific figures regarding sales duration, sales volume, revenue, market share, or the scale of advertising campaigns prior to the application date.

Consequently, the JPO found that “MÖLKKY” could not be recognized as a source indicator widely known among Japanese consumers for Tactic Games’ business.

2. The Rules of Engagement: No “Separation” of Composite Marks

Under Article 4(1)(xi), Tactic Games argued that the term “MÖLKKY” constitutes a prominent element that is sepearable from the other elements of the contest mark, and therefore, it is permissible to compare this specific element with the cited marks.

The JPO rejected this dissecting approach, ruling that:

  • The text “MÖLKKY WORLD CHAMPIONSHIPS,” “HAKODATE,” and “JAPAN,” along with the graphic elements, are harmoniously and integrally represented within the circular logo.
  • Because the word “MÖLKKY” was not proven to be exceptionally well-known in Japan, consumers would not naturally focus soly on that specific textual portion.

Therefore, the JPO held that dissecting the term “MÖLKKY” for a similarity comparison was legally impermissible. Based on the foregoing, the JPO dismissed the entire opposition due to the dissimilarity of the marks when compared as a whole.

Valentino Successful in Trademark Opposition against “ITALOVALENTINO”

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The Japan Patent Office (JPO) sided with Valentino SpA in a trademark opposition against TM Reg No. 6683584 for the wordmark “ITALOVALENTINO” in Class 25, finding that the mark is confusingly similar to the prior registered famous fashion brand “VALENTINO.”
[Opposition case no. 2023-900127, decided on June 10, 2026]

The Opposed Mark: ITALOVALENTINO

On September 12, 2022, T&K Design Association Co., Ltd. filed a trademark application for the wordmark “ITALOVELANTINO” written in a casual, handwritten-style font (see below) for use on clothing, footwear, headgear, sportswear, sports shoes, belts and other goods in Class 25 with the JPO [TM App No. 2022-111238].

As the JPO examiner did not find any initial grounds for refusal, the mark was registered on March 24, 2023 [TM Reg no. 6683584], and subsequently published for post-grant opposition on April 24, 2023.

Opposition by Valentino SpA

The famous fashion house Valentino SpA filed an opposition on May 30, 2023, seeking the total cancellation of the mark “ITALOVALENTINO” under Article 4(1)(xi) of the Japan Trademark Law, citing its own prior registered famous mark “VALENTINO” in Class 25.

JPO Decision

The JPO Opposition Board found that the addition of a geographical prefix was insufficient to alter the dominant impression of the famous fashion brand in connection with the goods at issue.

First, the Board observed that Italian language and design are highly familiar within the fashion industry. Since “ITALO” translates to “Italian” in Italian, Japanese consumers would merely perceive this portion as an indicator of the geographical origin or style of the goods. Thus, “ITALO” lacks a distinctive character or source-identifying function.

Conversely, the letters “VALENTINO” are immensely famous in Japan, instantly evoking the luxury fashion house founded by Valentino Garavani. Because the latter portion “VALENTINO” plays a dominant role in identifying a commercial source, the Board held that it would be permissible to dissect the literal portion and isolate “VALENTINO” as the “essential part” for similarity comparison.

Visual Similarity: The essential part “VALENTINO” of the opposed mark shares the exact same spelling as the cited mark. Therefore, despite the casual handwritten font and the presence of the prefix, the marks are visually similar.

Aural Similarity: While the opposed mark can be pronounced in its entirety as “Italo-valentino,” it also naturally gives rise to the shorter pronunciation “valentino” from its essential part. This dominant sound is phonetically identical to the pronunciation of the cited mark, leading to a high risk of aural confusion.

Conceptual Similarity: Both marks create the exact same commercial concept known for the famous luxury brand established by Valentino Garavani. Consequently, they are conceptually identical.

In conclusion, the JPO Opposition Board found that “ITALOVALENTINO” and “VALENTINO” are confusingly similar in appearance, sound, and meaning, and the goods at issue are identical or closely similar to those of the cited mark. Based on the findings, the Board decided to cancel the registration of the opposed mark entirely under Article 4(1)(xi).

VW Unsuccessful Trademark Invalidation Action against “Beecle”

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The Japan Patent Office (JPO) dismissed an invalidation action initiated by VW against TM Reg No. 6623923 for a composite mark containing the term “Beecle” in Class 12, ruling that the mark is not confusingly similar to VW’s prior registered mark “Beetle.”
[Invalidation case no. 2026-890008, decided on June 15, 2026]

“Beecle” with a Bee Design (The Contested Mark)

The contested mark (shown below) is a composite mark featuring a green hexagonal device with a black border, containing three yellow counter-clockwise arrows along its corners. On the left-middle side, a prominent white-out illustration of a bee is depicted (with only its right wing visible). Immediately adjacent to the wing, the alphabetical letters “Beecle” are written horizontally in a white, cursive, script-like font.

The contested mark was filed for goods including lorries, trucks, electric cars, motorized golf carts in Class 12 with the JPO on April 12, 2022, and was registered on October 5 of the same year [TM Reg no. 6623923].

Invalidation action by Volkswagen

On January 30, 2026, Volkswagen Aktiengesellschaft filed a petition to invalidate the contested mark under Article 4(1)(xi) of the Japan Trademark Law, citing its own senior Trademark Registration No. 4095809 for wordmark “Beetle” covering automobiles and other goods in Class 12.

VW argued that the prominent literal element “Beecle” of the contested mark closely resembles the cited mark in both sound and appearance. VW contended that even if the conceptual similarity is neutral, relevant consumers are highly likely to associate the commercial source of the goods bearing the contested mark with VW’s famous automobiles.

JPO Decision

First, the Invalidation Board addressed whether a specific element of the contested mark could be isolated to assess similarity.

The Board noted that the bee’s wing could easily be perceived as a stylized letter “B”. Because this graphic seamlessly integrates with the following letters “eecle”, consumers would naturally recognize the entire central combination as the stylized word “Beecle”. Since the term “Beecle” occupies a prominent and dominant position in the center, it serves as a strong source identifier. Thus, the Board found it permissible to segregate the term “Beecle” as the “essential element” for similarity comparison.

As the term is a coined word, it gives rise to the pronunciation “Bee-ku-ru” and carries no specific conceptual meaning.

Visual Similarity: Even when comparing the essential element “Beecle” with the cited mark “Beetle,” they are visually distinct. The contested mark combines a bee device/letter “B” with a cursive font, while the cited mark uses standard character. Additionally, they differ in their fourth letters (“c” vs. “t”). Given that both marks have a relatively short six-letter structure, these visual differences significantly impact the overall impression, making them clearly distinguishable.

Aural Similarity: The contested mark is pronounced “Bee-ku-ru” and the cited mark is pronounced “Bee-to-ru”. Both share a short four-syllable structure in Japanese (including the long vowel) with identical beginnings (“Bee-“) and endings (“-ru”). However, the Board emphasized that for such short words, the difference in the middle sound (“ku” vs. “to”) heavily influences the entire tone and cadence. When spoken continuously, they sound distinct and are unlikely to cause phonetic confusion.

Conceptual Similarity: The contested mark produces no specific meaning as a coined word, whereas the cited mark evokes the concept of a “beetle/insect.” Consequently, there is no risk of conceptual confusion.

Taking all factors into account comprehensively, the JPO Invalidation Board concluded that “Beecle” and “Beetle” are mutually distinct in appearance, sound, and meaning. Because the marks are fundamentally dissimilar, the Board held that the contested mark does not fall under Article 4(1)(xi) and sustained the validity of the registration.

Trademark Dispute: PINGU vs pingu・pongu

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

Contested mark

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

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

Opposition by Joker, Inc.

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

The JPO Opposition Board decision

1. Recognition of the cited mark “PINGU”

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

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

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

2. Comparison of two marks

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

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

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

3. No Likelihood of Confusion

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

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

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

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

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.

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).