カテゴリー: Composite mark

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).

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.

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.

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

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

COSME MUSEUM

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

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

https://cosme-museum.com/

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

Cosmetic Museum

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

https://cosmeticmuseum.jp/shop

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

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

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

JPO decision

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

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

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

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

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

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

IP High Court ruling

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

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

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

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

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

Trademark dispute: SUNRISE vs KILLER SUNRISE

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In a recent trademark dispute between “SUNRISE” and “KILLER SUNRISE”, the Japan Patent Office (JPO) found both marks dissimilar and non-confusable for wines and alcoholic beverages.
[Opposition case no. 2025-900010, decided on November 4, 2025]

KILLER SUNRISE

Monster Brewing LLC filed a trademark application for the word mark “KILLER SUNRISE” in standard character with the JPO for use on alcoholic beverages, except beer of Class 33 on June 7, 2024 [TM App no. 2024-61229].

https://beastunleashed.com/beast-unleashed/killer-sunrise/

The JPO examiner, without raising any grounds for refusal, granted registration of the mark on October 16, 2024. Subsequently, it was registered on November 6, 2024, and published in the JPO official gazette on November 14, 2024, for a post-grant opposition.

Opposition by Viña Concha y Toro

On January 8, 2025, Viña Concha y Toro S.A., the main Latin American wine producer, filed an opposition against the mark “KILLER SUNRISE” by citing their earlier TM Reg no. 4208026 for the word mark “SUNRISE” that has been used on Chilean wine.

Viña Concha y Toro argued that the cited mark has become famous to indicate the origin of their Chilean wines as a result of extensive use for three decades.

Relevant consumers will recognise the contested mark be composed of “KILLER” and “SUNRISE” in appearance and concept. As the term “KILLER” has an adjective meaning of ‘strikingly impressive or effective’ that appears to be less distinctive, the literal element “SUNRISE” would be a dominant portion of the contested mark. Since the dominant portion is identical to the cited mark, the contested mark should be considered similar to the cited mark. In view of a high degree of similarity between the marks and a highly-recognised “SUNRISE” Chilean wine, relevant consumers and traders would confuse the goods in question with the contested mark comes from the same undertaking or from an economically linked undertaking. Accordingly, the contested mark should be cancelled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law.

JPO Decision

The JPO Opposition Board observed that the evidence shows the cited mark was used in connection with wine and its advertising. However, it did not demonstrate the sales amount, market share, and advertising expenditure of the SUNRISE wine. Based on this finding, the Board noted that the evidence was insufficient and unpersuasive to demonstrate a high degree of recognition and reputation for the cited mark, “SUNRISE”.

Regarding the similarity of the marks, the Board stated that the marks are distinguishable in appearance and sound due to the presence of the term “KILLER.” The contested mark does not convey any specific meaning. Meanwhile, the cited mark has a concept of ‘the apparent rising of the sun above the horizon.’ Therefore, the conceptual comparison does not impact the finding of similarity between the marks.

Accordingly, the Board has a reason to believe that the contested mark is dissimilar to the cited mark.

Given that the cited mark is not famous, according to the evidence, and the low degree of similarity between the marks, relevant consumers are unlikely to confuse the source of goods in question bearing the contested mark with the cited mark.

Based on the foregoing, the Board dismissed the opposition entirely and found that the contested mark should not be subject to cancellation under Article 4(1)(xi) and (xv) of the Japan Trademark Law.

JPO found “@knowledge” dissimilar to “KNOWLEDGE”

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In an administrative appeal, the Japan Patent Office (JPO) overturned the examiner’s rejection of TM App no. 2024-8041 for the mark “@knowledge” due to dissimilarity between “@knowledge” and “KNOWLEDGE”.
[Appeal case no. 2024-19449, decided on October 21, 2025]

@knowledge

Property Data Bank, Inc. filed a trademark application with the JPO for the mark “@knowledge” (see below) in connection with several services in Classes 35, 36, and 42, including “Business management analysis or business consultancy; Marketing research; Providing information concerning commercial sales”, “Management of buildings and real estate; Agency services for the leasing or rental of buildings and real estate”, “Computer software design, computer programming, or maintenance of computer software; Technological advice relating to computers, automobiles and industrial machines” on January 29, 2024. [TM App no. 2024-8041]

KNOWLEDGE

On July 24,2024, the JPO examiner issued a refusal notice based on Article 4(1)(xi) of the Japan Trademark Law, citing senior TM Reg nos. 4522262, 4697986, and 5033530 for the wordmark “KNOWLEDGE” in Classes 35, 41, and 42.

The examiner noted that the mark consists of the “@” symbol with circle decorations and the term “knowledge.” There is no visual or conceptual connection between the symbol and the term, so they can’t be considered inextricable. Since the term “knowledge” is identical to the cited marks, it is confusingly similar to them as a whole.

The applicant counterargued that the mark should be taken as a whole and thus be deemed dissimilar from the cited marks from an aural, visual, and conceptual point of view due to the presence of the @ symbol. However, the examiner decided to reject the trademark application under the aforementioned article on October 30, 2024.

On December 4, 2024, the applicant filed an appeal and requested the cancellation of the examiner’s rejection.

JPO Appeal Board decision

The JPO Appeal Board considered the fact that “@” is widely recognized as a symbol representing “unit price” or “email address.” Nowadays, it is used commercially in trade as part of a company, website, or business name in conjunction with various words placed afterward.

Under these circumstances, consumers are unlikely to dissect the mark “@knowledge” into its individual parts. Rather, they will consider it as a whole. The sound of the mark is not so redundant that consumers cannot pronounce it as a whole. Additionally, there is no reason to conclude that the literal element “knowledge” alone identifies the source of the services in question.

Based on these findings, the Board concluded that the examiner erred in applying Article 4(1)(xi) by dissecting the mark into two parts. Consequently, the Board canceled the rejection and granted registration of the mark due to its dissimilarity to the cited marks.

CHEMICAN vs CHEMI-CON

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In a trademark opposition against Japan TM Reg no. 6894070 “Chemican” in Class 9, which disputed the similarity and a likelihood of confusion with the earlier mark “CHEMI-CON”, the Japan Patent Office (JPO) did not sustain the opposition due to the marks’ low degree of similarity even though the earlier mark to be famous in relation to aluminum electrolytic capacitors.
[Opposition case no. 2025-900082, decided on September 11, 2025]

CHEMICAN

Chemican, Inc. filed a trademark application for wordmark “Chemican” in standard character for use on various electrical and electronic goods, including capacitors of Class 9 with the JPO on December 9, 2024. [TM App no. 2024-132131]

Immediately after the filing, the applicant requested for accelerated examination.

Without raising any grounds for refusal, the JPO examiner granted protection of the mark on February 3, 2025. The mark “Chemican” was subsequently registered on February 6, 2025, and published for post-grant opposition on February 17.

Opposition by Nippon Chemi-Con Corporation

Nippon Chemi-Con Corporation, the largest manufacturer and supplier of aluminum electrolytic capacitors, has owned trademark registrations for the mark “CHEMI-CON” in Class 9 since 1984.

On April 16, 2025, Nippon Chemi-Con filed an opposition, disputing that the contested mark should be canceled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law.

Nippon Chemi-Con allegedly argued that the cited mark “CHEMI-CON” has become famous among relevant consumers of the goods in question, indicating a source of their aluminum electrolytic capacitors, which hold a top market share worldwide. The contested mark “Chemican” is confusingly similar to the cited mark “CHEMI-CON” in appearance and sound.

JPO decision

The JPO Opposition Board found that the cited mark has become famous as an indicator of the claimant’s aluminum electrolytic capacitors, considering the evidence and the claimant’s top-ranked global market share.  

However, the Board questioned the similarity of the marks by stating that:

  1. Although both marks have the initial element “Chemi” and “CHEMI” in common, there are several differences: (i) a hyphen; (ii) “a” in “can” and “O” in “CON”; and (iii) the contested mark consists of lowercase letters except for the initial letter “C”, whereas the cited mark is entirely uppercase. Moreover, the cited mark can be recognized as a combination of the familiar English word “CHEMI,” meaning “chemical,” and the term “CON” via a hyphen. Therefore, the cited mark gives a different commercial impression than the contested mark. Accordingly, the two marks are clearly distinguishable in appearance.
  2. The two marks’ pronunciations differ in the third sound, with “ka” and “ko,” respectively. Bearing in mind that these sounds come just before the weak sound “n” at the end and  that the overall sound structure consists of only four syllables, the two marks differ significantly in sound and appearance. Thus, the overall intonation and impression of these marks differ significantly, enabling clear distinction.
  3. A conceptual comparison is neutral, as neither mark has a clear meaning.

Based on the foregoing, the Board found that the contested mark is dissimilar to the cited mark, so it should not be vulnerable to cancellation based on Article 4(1)(xi).

Due to the low degree of similarity between the marks, the Board stated that relevant consumers are unlikely to confuse the source of the goods at question bearing the contested mark with the claimant, even if the cited mark is famous among consumers. For this reason, the Board dismissed the entire opposition.