カテゴリー: compound 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.

“We Are The World”: JPO Appeal Board Allows Registration of Iconic Song Title Mark

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The Japan Patent Office (JPO) Appeal Board overturned an examiner’s refusal of the word mark “We Are The World” in Classes 9, 35, 36, and 42 by finding that registering the title of the famous 1985 charity song by an unrelated third party would neither breach international comity nor disrupt fair trade under Article 4(1)(vii).
[Appeal case no. 2026-9743, decided on August 20, 2026]

“We Are The World”

The subject mark consists of the words “We Are The World” in block letters (see below), filed by a Japanese individual on October 6, 2025. [TM App no. 2025-114656]

Following amendments, the designated goods and services spanned four classes:

  • Class 9: Computer software and electronics
  • Class 35: Business management and advertising services
  • Class 36: Financial and monetary services
  • Class 42: Software-as-a-Service (SaaS) and technology services

JPO Examiner’s Refusal

The JPO examiner refused the application under Article 4(1)(vii) of the Japan Trademark Law, which prohibits the registration of trademarks that are likely to harm public order or morality.

The examiner reasoned that:

  1. World-Famous Song: “We Are The World” is a world-renowned charity song released in 1985, produced by Quincy Jones and co-written by Michael Jackson and Lionel Richie, sung by 45 famous artists under the name “USA for Africa.”
  2. Enduring Fame: Even after 40 years, the title remains widely recognized in Japan as a monumental charity anthem, frequently used in connection with global humanitarian relief projects (e.g., natural disasters, COVID-19 pandemic relief).
  3. Morality Violation: Allowing an individual with no connection to the song or its rights holders to register the mark without authorization would free-ride on the fame and reputation of a globally famous song. The examiner concluded that monopolizing the mark would injure the honor of the rights holders, disrupt fair trade, and violate international comity, thus running counter to public order and morality.

Dissatisfied with the decision, the applicant filed an appeal with the JPO Appeal Board on June 17, 2026.

JPO Appeal Board Decision

Upon ex officio examination, the Appeal Board revoked the examiner’s refusal and granted registration, providing the following reasoning:

  1. Meaning and Perception: While the Board acknowledged that the phrase is recognized to a certain degree in Japan as the title of the 1985 pop song, the constituent words (“We,” “Are,” “The,” and “World”) are extremely basic, elementary English words. Consumers can easily understand the mark as simply meaning “We are the world,” meaning the phrase does not invariably point to the song title alone.
  2. No Intrinsic Offensiveness: The phrase itself contains no immoral, obscene, discriminatory, extreme, or offensive elements.
  3. Strict Criteria for Article 4(1)(vii): The Board affirmed that Article 4(1)(vii) is applied narrowly. The evidence failed to demonstrate that:
    • Use of the mark would violate public interest or general social morals;
    • The mark is prohibited by other laws;
    • The mark insults a specific nation/citizens or breaches international comity; or
    • The filing circumstance was so socially unacceptable as to undermine the statutory trademark order.

Finding no concrete facts or special circumstances to justify a public morality bar—and discovering no other grounds for refusal—the JPO Appeal Board granted registration to the mark.

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).

Ziploc Ribbon, Ziploc, or Ribbon?

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

The contested mark: “Ziploc Ribbon”

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

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

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

JPO examination

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

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

Appeal Board decision

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

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

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

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

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

Abercrombie & Fitch

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

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

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

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

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

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

JPO Appeal Board decision

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

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

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

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

JPO found “@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.

JPO Found “TRITON” dissimilar to “Toriton, Inc.”

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In an administrative appeal, the Japan Patent Office (JPO) disaffirmed the examiner’s rejection to TM App no. 2024-90390 for wordmark “Toriton, Inc.” by negating similarity to earlier mark “TRITON.”
[Appeal case no. 2025-6661, decided on July 15, 2025]

Toriton, Inc.

On August 21, 2024, Toriton, Inc. filed a trademark application with the JPO for the word mark “Toriton, Inc.” in bold font with a shadow effect (see below) that designates computer software design, computer programming, or maintenance of computer software; providing computer programs on data networks and other services in Class 42 [TM App no. 2024-90390].

TRITON

The JPO examiner gave a notice of grounds for refusal based on Article 4(1)(xi) of the Japan Trademark Law by citing TM Reg no. 3221980 for stylized word mark “TORITON” (see below). The examiner considered the marks are confusingly similar and both designate the same or similar services in Class 42.

The applicant filed a response and argued dissimilarity of the marks. However, the examiner did not change his stance and decided to reject the mark on February 5, 2025.

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

JPO decision

The JPO Appeal Board observed that “Toriton, Inc.” and “TRITON” are dissimilar by stating that:

  1. From appearance, obvious are differences in the number and composition of the characters that consist of respective marks. When comparing the dominant element of the applied mark, “Toriton,” and the cited mark, “TRITON”, the differences in upper and lower case letters, as well as the presence or absence of the letter “o” after the first letter “T”, distinguish them.
  2. Aural comparison reveals that the overall pronunciations are distinguishable due to differences in the number of sounds and sound composition. However, the sound derived from the dominant element “Toriton” is identical to the cited mark. In this respect, both marks have a sound in common.
  3. Conceptually, the applied mark can evoke the meaning “a company named Toriton” as a whole, or no specific meaning from the dominant element. In contrast, the cited mark does not evoke any specific concept. Therefore, a conceptual comparison is neutral.
  4. Based on the foregoing, even though both marks share one sound, the Board believes there is no likelihood of confusion due to the clear distinction in appearance and concept. Taking into account the impressions, memories, and associations conceived by relevant traders and consumers, it is unlikely that the applied mark will cause confusion with the cited mark when used in connection with the services in question.
  5. Accordingly, the examiner’s findings are inaccurate, and the decision should be overturned.