カテゴリー: Device mark

Top 10 Trademark News in Japan, 2024

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As the year 2024 comes to an end, it is a good time to share the top 10 trademark news in Japan by counting the total number of likes on the Linkedin “Like” Button.

1: Japan IP High Court said No to registering the color of Hermes packaging

The Japan IP High Court ruled to dismiss Herme’s appeal against the JPO decision that rejected Hermes packaging color due to a lack of inherent and acquired distinctiveness.

Japan IP High Court said No to registering the color of Hermes packaging.

2: Can a ‘Letter of Consent’ guarantee successful trademark registration in Japan?

The revised Japan Trademark Law will come into effect on April 1, 2024, introducing the “Letter of Consent” as a means to overcome conflicts with earlier trademark registrations.

Can a ‘Letter of Consent’ guarantee successful trademark registration in Japan?

3: COCO vs. KOKO

In a recent administrative decision, the Japan Patent Office (JPO) found that the trademarks “CoCo” and “koko” are dissimilar and unlikely to cause confusion.

COCO vs. KOKO

4: CHANEL defeated in Trademark Opposition against “COCOCHI”

The Japan Patent Office (JPO) handed a loss to Chanel SARL in trademark opposition against TM Reg no. 6674710 for the “COCOCHI” mark by finding unlikelihood of confusion with “COCO”.

CHANEL defeated in Trademark Opposition against “COCOCHI”

5: ZARA Unsuccessful Opposition against TM “LAZARA”

On April 22, 2024, the Japan Patent Office (JPO) dismissed an opposition filed by Industria de Diseño Textil, SA (INDITEX), owner of the fashion brand “ZARA”, against TM Reg no. 6699667 for word mark “LAZARA” in classes 25 due to dissimilar marks and unlikelihood of confusion with “ZARA”.

ZARA Unsuccessful Opposition against TM “LAZARA”

6: CHANEL Lost in Trademark opposition against “COCOBABY”

The Japan Patent Office (JPO) did not side with CHANEL in an opposition against TM Reg no. 6650252 for wordmark “COCOBABY” in class 25 by finding dissimilarity of mark between “COCOBABY” and “COCO”.

CHANEL Lost in Trademark opposition against “COCOBABY”

7: Trademark Dispute: Chateau Mouton Rothschild vs MOUTON

The Japan Patent Office (JPO) declared invalidation of TM Reg no. 6090508 for wordmark “MOUTON” in classes 35 and 43 due to a likelihood of confusion with famous mark “Mouton” as a source indicator of Chateau Mouton Rothschild, one of the most famous wine estates in the world.

Trademark Dispute: Chateau Mouton Rothschild vs MOUTON

8: Hermes Victory with Invalidating Birkin Lookalike Design

The Japan IP High Court has ruled in favor of Hermes in a dispute over the validity of Design Reg no. 1606558 by finding a likelihood of confusion with Hermes.

Hermes Victory with Invalidating Birkin Lookalike Design

9: Trademark dispute: VALENTINO GARAVANI vs GIANNI VALENTINO

In a trademark opposition claimed by Valentino S.p.A. against TM Reg no. 6550051 for the GIANNI VALENTINO mark, the Japan Patent Office (JPO) decided to cancel the registration due to a conflict with earlier IR no. 975800 for the VALENTINO GARAVANI mark.

Trademark dispute: VALENTINO GARAVANI vs GIANNI VALENTINO

10: Japan IP High Court gives Green Light to 3D “Godzilla” shape as Trademark

On October 30, 2024, the Japan IP High Court disaffirmed the administrative decision by the Japan Patent Office (JPO) not to register the 3D shape of the eponymous character from the film “Shin Godzilla” as a trademark.

Japan IP High Court gives Green Light to 3D “Godzilla” shape as Trademark

Trademark Parody case : Champion vs Nyanpion

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

Contested mark

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

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

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

Invalidation action by Champion

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

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

JPO Decision

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

In assessing similarity, the Board found that:

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

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

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

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


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

Japan IP High Court gives Green Light to 3D “Godzilla” shape as Trademark

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On October 30, 2024, the Japan IP High Court disaffirmed the administrative decision by the Japan Patent Office (JPO) not to register the 3D shape of the eponymous character from the film “Shin Godzilla” as a trademark.
[Judicial case no. Riewa6(Gyo-ke)10047]

GODZILLA

Godzilla, a science-fiction monster spawned from the waste of nuclear tests that resembles an enormous bipedal lizard was released in Japanese film in 1954. The character has since become an international pop culture icon. After the original 1954 cinematic masterpiece, Godzilla has appeared in more than 30 films spanning seven decades and several eras produced by Toho Co., Ltd.

https://godzilla.com/blogs/movies

On July 29, 2016, the film “Shin Godzilla (Godzilla Resurgence)” produced by Toho was theatrically released as a 31st film of Godzilla trilogy. The film grossed $79 million worldwide, making it the highest-grossing live-action Japanese film of 2016. It received 11 Japan Academy Prize nominations and won seven, including Picture of the Year and Director of the Year.

https://godzilla.com/blogs/movies

Toho Co. filed a trademark application with the JPO for the 3D shape of Godzilla’s fourth form in the film “Shin Godzilla”, the final evolutionary form of the character appearing in the film, as a trademark for use in stuffed toys, figures, dolls and toys of class 28 on September 29, 2020 (TM App no. 2020-120003).

The JPO examiner, however, rejected the 3D mark based on Article 3(1)(iii) of the Trademark Law due to a lack of distinctiveness in relation to the goods. The JPO Appeal Board also dismissed an appeal on the same ground and held that the 3D shape has not acquired distinctiveness because of insufficient use of the 3D mark in relation to the goods in question (Appeal case no. 2021-11555).

On May 10, 2024, Toho filed an appeal to the IP High Court and called for the JPO decision to be revoked.

IP High Court decision

The IP High Court affirmed the findings of the JPO to reject the 3D shape due to a lack of inherent distinctiveness in relation to the goods in question.

In the meantime, the court found that the JPO errored in applying Article 3(2) and assessing the acquired distinctiveness of the 3D mark by stating that:

  1. Toho has produced and distributed 30 films in the “Godzilla” series over a 69-year period from 1954 to 2023, and although the shape of the “Godzilla” character in these films changed slightly, the basic shape of the character was largely the same, and the form of the Godzilla character with its countless folds and complex rocklike texture is distinctive among other monster characters of the same type.
  2. The applied mark represents the 3D shape of Godzilla’s fourth form in the film “Shin Godzilla”, the final evolutionary form of the character appearing in the film. It has the same features with the monster appeared in the previous “Godzilla” films. It is obvious that the basic shape of the “Godzilla” character has been widely recognized among general public to indicate a monster character produced by Toho even before the release of the film “Shin Godzilla”.
  3. Even if the term “use” under Article 3(2) of the Trademark Law should be limited to actual use of a sign strictly identical with the applied mark, in determining whether a consumer has come to “recognize the goods bearing the applied mark to indicate a specific source” under the article, it should be reasonable or rather necessary to consider the influence of the entire “Godzilla” films including “Shin Godzilla” on consumers’ recognition to the applied 3D mark.
  4. The interview conducted in September, 2021, targeting 1,000 interviewees of men and women aged 15 to 69 nationwide, showed an extremely high level of recognition, namely, 64.4% answered “Godzilla” or “Shin Godzilla” to the open-ended responses (70.8% among men).

Volkswagen Lost in Trademark Opposition over VW emblem

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The Japan Patent Office (JPO) dismissed an opposition claimed by Volkswagen AG against TM Reg no. 6776072 for a device mark in class 25 due to dissimilarity to and unlikelihood of confusion with famous VW emblem.
[Opposition case no. 2024-900086, decided on October 9, 2024]

Contested mark

SAKAIYA PLANNING INC. filed a trademark application for a device mark (see below) in connection with clothing, footwear, garters, sock suspenders, suspenders for clothing, waistbands, belts [clothing] of class 25 with the JPO on June 6, 2023.

According to the applicant’s website, the applied mark is used in conjunction with “ANNA MALIA”.

The JPO examiner did not issue any office actions and granted protection of the mark on January 30, 2024. Accordingly, it was published for a post-grant opposition on February 14, 2024.

Opposition by Volkswagen

On April 12, 2024, German car giant Volkswagen AG filed an opposition and claimed cancellation of the contested mark in contravention of Article 4(1)(xi), (xv) and 8(1) of the Japan Trademark Law by citing earlier IR no. 1555245 for their iconic VW emblem (see below) covering clothing, footwear and other goods in class 25.

Volkswagen argued that the contested mark consists of monogrammed letters, “V” and “W” represented in a circle. Therefore, where the mark is observed upside down, it looks closely similar to the VM emblem. Customers have been accustomed to observing clothing and other goods in question from various angles. In this respect, even though conceptual and phonetical comparisons are neutral as neither the contested mark nor the VM emblem have any clear sound and meaning, both marks should be considered similar because of a high degree of visual similarity.

Besides, the VW emblem has acquired substantial popularity and reputation as a source indicator of famous automobile maker, Volkswagen. Thus, it is highly likely that relevant traders and consumers confuse the source of the goods in question bearing the contested mark with Volkswagen or a business entity systematically or economically connected with the opponent.

JPO decision

The Opposition Board found that the VW emblem has become famous for a source indicator of opponent by taking into consideration of the facts that opponent’s cars with the VW emblem have been continuously imported to Japan since 1953 and ranked in the top 3 of new imported automobile registrations for the past three years.

In the meantime, the Board denied visual similarity between the contested mark and the VM emblem by stating that:

The mountainous lines in the circle of the contested mark are too stylized to be recognized as the representation of characters from its overall composition. Therefore, it can be seen to represent a geometric figure as a whole.

Meantime, the V-shaped line and the W-shaped line of the cited mark do not overlap, and both ends of the V-shaped line and the W-shaped line neatly overlap with the circle.

These differences give rise to a distinctive visual impression from their overall appearance, which can be sufficiently distinguishable when observed at a distance.

Given a low degree of similarity between the marks, the Board has a reason to believe that relevant consumers are unlikely to confuse a source of goods in question bearing the contested mark with Volkswagen.

Based on the foregoing, the Board found the opposition groundless and decided not to cancel the contested mark.

P&G Unsuccessful attempt to register 3D shape of SK-II bottle

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In an attempt to register TM App no. 2020-1611 for 3D mark representing a bottle shape of the SK-II Facial Moisturizing Lotions, the Japan Patent Office (JPO) upheld the examiner’s rejection and dismissed the appeal filed by The Procter & Gamble Company (P&G).
[Appeal case no. 2022-6, decided on May 9, 2024]

SK-II

P&G filed a trademark application for 3D bottle shape of the SK-II cosmetic lotions (see below) in class 3 with the JPO on February 14, 2020 (TM App no. 2020-1611).

SK-II is a Japanese-based multinational beauty brand with premium skincare solutions sold in East Asia, North America, Europe, and Australia, launched in the early 1980s.

Allegedly, domestic sales of the “SK-II” facial treatment essence (moisturizing lotions) contained in the applied 3D mark were approximately JPY 10 billion to 16.5 billion in each of the fiscal years from 2016 to 2020.

Article 3(1)(iii)

The JPO examiner rejected the 3D mark based on Article 3(1)(iii) of the Japan Trademark Law due to a lack of inherent distinctiveness.

Article 3(1)(iii) is a provision to prohibit registration of any mark that is descriptive in relation to designated goods and service. Trademark Examination Guideline (TEG) refers to 3D bottle shape of goods as an example subject to the article.

Where trademark is merely recognized as the shapes of designated goods (including shape of packages), it is evaluated just to indicate the “shape” of the goods. Moreover, the same principle shall apply to cases where a trademark is recognized as part of the shapes of designated goods (including their packages).

Article 3(2)

P&G argued acquired distinctiveness of the 3D mark as a result of substantial use. However, the examiner rejected the argument, stating that since the applied mark has been consistently used with the word mark “SK-II” on every bottle, there is no reason to believe that the 3D shape perse has played a role in identifying the source of the cosmetics.
Therefore, the applied mark shall not be registrable based on Article 3(2) of the Trademark Law due to a lack of acquired distinctiveness.

JPO decision

The JPO Appeal Board found the applied mark should be rejected in accordance with Article 3(1)(iii) due to the prevalence of cylindrical bottles in the contexts of cosmetics and other industries.

In its decision, the Board noted that a considerable amount of sales had been made to date and that advertising and promotional activities had been conducted at a considerable expense. The SK-II cosmetics bearing the 3D mark have been extensively advertised through a variety of channels, including magazine advertisements, TV commercials, events, and other campaign activities. They have also been widely covered by the web media and other media outlets.

In the meantime, the Board pointed out the use of distinctive words, such as “SK-II”, “SECRET KEY II”, “MAX FACTOR” etc., on the bottle of the CK-II facial moisturizing lotions. In this respect, there is no sufficient evidence and material featuring the 3D mark so that consumers at the sight of advertisements can consider the bottle shape as a source indicator.

Besides, P&G did not produce evidence of brand awareness survey to demonstrate acquired distinctiveness of the bottle shape. The registration of the same mark in other jurisdictions, such as the United Arab Emirates and South Korea, does not have any binding power in Japan when it comes to evaluating distinctiveness.

Based on the above findings, the Board concluded that the 3D mark per se has not acquired distinctiveness and should not apply Article 3(2).

IP High Court Rejected TM Registration of AP “ROYAL OAK” Watch Design

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On March 28, 2024, the Japan IP High Court decided to dismiss the appeal filed by Audemars Piguet Holding SA, a Swiss luxury watchmaker, against the JPO’s decision (Appeal No. 2021-013234) to reject TM Application No. 2020-20319 for the device mark representing AP’s iconic “ROYAL OAK” watch collection for lack of both inherent and acquired distinctiveness.
[Court case no. Reiwa5(Gyo-ke)10119]

Audemars Piguet “ROYAL OAK” Watch Collection

On February 26, 2020, Audemars Piguet Holding SA (AP) filed a trademark application for the shape of the flagship watch collection “ROYAL OAK” (see below) to be used on ‘watches’ in class 14 with the Japan Patent Office (JPO) [TM application no. 2020-20319].

The mark consists of a dial with tapisserie pattern and hour markers, minute track, date window, an octagonal bezel with 8 hexagonal screws, case, a crown, and a lug of the famed “ROYAL OAK” watch collections.

JPO Refusal

On June 8, 2023, the JPO Appeal Board affirmed the examiner’s rejection and decided to refuse registration of the applied mark due to a lack of inherent distinctiveness based on Articles 3(1)(iii) of the Japan Trademark Law by stating that relevant consumers would simply recognize it as a generic shape of a wristwatch, not a specific source indication since many watchmakers have supplied with similar shape to the dial, bezel, case, crown, and lug of the applied mark (see below examples).

Besides, the Board found the produced evidence is insufficient to determine whether the shape per se has acquired nationwide recognition as a source indicator of AP’s watches.

Audemars Piguet Holding SA filed a lawsuit with the Japan IP High Court on October 20, 2023, and disputed inherent and acquired distinctiveness of the applied mark.

IP High Court ruling

  • Inherent distinctiveness: Article 3(1)(iii)

In the decision, the judge said “There is no particular circumstance in which the shape represented by the applied mark is taken novel in comparison with the shapes of other wristwatches. If so, it is considered within the range of shapes normally required to achieve basic function of the goods. Even supposing that the shape is unique as a whole, the shape of each component is made in a form suitable for use as a wristwatch, and selected from the viewpoint to achieve the function of the goods. Therefore, the applied mark lacks distinctiveness since it remains within the scope of expected selection of the shape for functional reasons of a wristwatch.”

AP claimed the JPO finding is inadequate because none of competitors watches have the same combination of three unique features, namely, (i) an octagonal bezel, (ii) 8 hexagonal screws, and (iii) tapisserie pattern on the surface of a dial. Visual similarity in one or two components are insufficient to deny inherent distinctiveness of the applied mark.

However, the court did not agree with this allegation and said “It is sufficient to assess whether each shape of components is distinctive as part of the shape of wristwatch”.

  • Acquired distinctiveness: Article 3(2)

AP argued acquired distinctiveness of the applied mark as a result of substantial use since 1972. Allegedly, annual sales of the “ROYAL OAK” luxury watches exceed JPY 8 billion on average in the past six years. Each year, AP spent more than JPY400 million on advertisement and promotion in Japan.

In this respect, the court pointed out the “ROYAL OAK” watches have some collections that do not represent three unique features, such as, “Royal Oak Offshore” and “Royal Oak Concept” (see below). If so, the annual sales and expenditures on advertisement and promotion would not all attribute to watches representing the applied mark.

Besides, AP has not produced the result of market research to demonstrate a certain degree of recognition of the applied mark. Accordingly, the court has no reason to believe the applied mark per se has played a role in identifying the source of famous luxury watch, Audemas Piguet.

Based on the foregoing, the court determined that the JPO did not err in its findings and that the application of Article 3(1)(iii) and 3(2) was appropriate. As a result, the court decided to dismiss the appeal in its entirely.

Hermes Victory with Invalidating Birkin Lookalike Design

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The Japan IP High Court has ruled in favor of Hermes in a dispute over the validity of Design Reg no. 1606558 by finding a likelihood of confusion with Hermes.
[Court case no. Reiwa5(Gyo-ke)10113, decided on February 19,2024]

Design Registration no. 1606558

Plaintiff, Toms and Collective Co., Ltd applied a 3D shape of bag (see below) with the JPO on August 23, 2017 (Design App no. 2017-18064). The JPO, as a result of substantive examination, granted protection of the design on May 18, 2018.

Defendant, Hermes International filed an invalidation action with the JPO on January 13, 2023 and claimed the design registration shall be invalidated in contravention of Article 5(ii) of the Japan Design Law.

Article 5(ii) provides a design that has a risk of causing confusion with goods of another person’s business may not be registered.

Hermes referred to three trademark registrations that are relevant to the 3D shape of Birkin bags (TM Reg no. 5438059) and two “H” logos (TM Reg nos. 4672965 and 5864813) in class 18. They argued that the disputed design is likely to cause confusion with Hermes when used on bags due to the famousness of the registered marks and the resemblance between the disputed design and Hermes’ marks.

Invalidation decision by JPO

On September 4, 2023, the JPO Trial Board decided to invalidate the disputed mark by stating that:

  1. As there is a remarkable gap between the disputed design and 3D shape of Birkin bags, the Board has no reason to find a likelihood of confusion with TM Reg no. 5438059.
  2. The Board questions whether the “H” logo for TM Reg no. 4672965 (H1 mark) has become famous as a source indicator of Hermes. Therefore, the disputed design would not cause confusion with H1 mark.
  3. Meanwhile, Meanwhile, the plaintiff admits that the ‘H’ logo for TM Reg no. 5864813 (H2 mark) has become famous for identifying Hermes. The padlock in the disputed design bears a resemblance to the H2 mark that has been used on the buckles of Hermes bags. As a result, relevant consumers are likely to confuse the bags with Hermes upon seeing the disputed design, particularly the padlock.

IP High Court decision

On October 11, 2023, the Plaintiff filed an appeal with the IP High Court and requested the cancellation of the invalidation decision made by JPO.

In the lawsuit, Plaintiff argued that the padlock should not be considered a prominent element of the design, as it is merely an accessory to the disputed design that represents a shape of the bag as a whole.

Screenshot taken from https://annecoquine.com/

The judge stated that any partial shape of the entire design is subject to assessment in adapting Article 5(ii). It is unrelated to the “prominent element” used to assess design similarity under Article 3(1)(iii) of the Design Law.

The judge also addressed that it is irrelevant to consider whether Plaintiff promotes bags representing the disputed design but without the padlock.

Based on the foregoing, the court dismissed all allegations and invalidated the disputed design due to a likelihood of confusion with Hermes.

Yves Saint Laurent Failed Opposition against USL monogram

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The Japan Patent Office (JPO) did not support Yves Saint Laurent in their trademark opposition against TM Reg no. 6666672 for the “USL” monogram in class 25. The JPO found no similarity or unlikelihood of confusion with the famous “YSL” monogram.
[Opposition case no. 2023-900076, decided on January 18, 2024]

Opposed mark

Marusho hotta Co., Ltd. filed a trademark application for mark consisting of the “USL” monogram and a circle device (see below) in relation to outer clothing of class 25 with the JPO on August 18, 2022.

The applicant uses the mark on knitted wear, pants and caps as a logo of “UN-USELESS” brand.

The JPO examiner, without raising any objections, granted protection of the mark on January 25, 2023. Subsequently, the mark was published for post-grant opposition on February 6, 2023.

Opposition by Yves Saint Laurent

The renowned French luxury fashion house Yves Saint Laurent has filed a trademark opposition with the JPO on April 6, 2023 and claimed cancellation of the opposed mark in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law by citing their earlier trademark registrations for the famous “YSL” monogram.

Yves Saint Laurent argued the monogram of opposed mark can be recognized a combination of three letters, “Y”, “S” and “L”. If so, the opposed mark has the same sound and spelling with the famous “YSL” monogram. Because of their close resemblance, consumers are likely to confuse a source of the goods bearing the opposed mark with Yves Saint Laurent.

JPO decision

The JPO Opposition Board had a view that relevant consumers with ordinary care would not conceive a combination of three letters, “Y”, “S” and “L” at the sight of the monogram of the opposed mark, but “U”, “S” and “L”.

Based on the finding, the Board held both marks are visually dissimilar by means of clear difference in the initial letter, font design and overall configuration. Aurally, there is a distinction between the ‘u’ and ‘y’ sounds at the beginning, and this contrast significantly affects the overall impression by taking account of a relatively short six-syllable structure. As both marks are meaningless, the concepts are incomparable.

If so, the Board has no reason to believe the opposed mark is similar to the YLS monogram and thus likely to cause confusion with Yves Saint Laurent even when used on the goods in question.

In conclusion, the Opposition Board determined that the opposed mark is not subject to Article 4(1)(xi) and (xv) and has therefore decided to dismiss the opposition entirely.

Lous Vuitton lost in a trademark battle over LV monogram

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The Japan Patent Office (JPO) dismissed a trademark opposition against TM Reg no. 6685241 in class 18 and 25 filed by LOUIS VUITTON MALLETIER due to dissimilarity to and unlikelihood of confusion with the famous “LV” monogram.
[Opposition case no. 2023-900138, decided on January 12,2024]

Opposed mark

A Japanese individual filed a mark consisting of “MARU des VINTAGES”, “KYOJI MARUYAMA”, and a monogram-like device (see below) for use on bags, leather products, clothing, footwear and other in class 18 and 25 on July 22, 2022 with the JPO.

Seemingly, the device looks like a motif made by overlapping “V” and other characters, “LI”, “LA” or “M”.

In the course of substantive examination, the JPO examiner raised his objection just to confirm if the applicant has a consent from the person named “KYOJI MARUYAMA”.

Upon confirmation, the examiner granted protection of the mark on March 10, 2023 and the JPO published it for a post-grant opposition on April 7, 2023.

Opposition by Lous Vuitton

On June 7, 2023, just before the lapse of two-month opposition period counting from the publication date, LOUIS VUITTON MALLETIER filed an opposition with the JPO and claimed that the opposed mark shall be cancelled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law by citing IR no. 1127687 for the famous “LV” monogram in classes 18, 25 and others effectively registered in Japan since April 2014.

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

Article 4(1)(xv) provides that a mark shall not be registered where it is likely to cause confusion with other business entities’ well-known goods or services.

Louis Vuitton argued the monogram-like device of opposed mark is confusingly similar to the world-famous “LV” monogram from a visual point of view. If so, relevant consumers are likely to confuse a source of the goods in class 18 and 25 bearing the opposed mark with Louis Vuitton even if the opposed mark contains distinctive literal elements, “MARU des VINTAGES”.

JPO decision

The JPO admitted a high degree of reputation and popularity of the LV monogram among relevant consumers as a source indicator of Louis Vuitton. The Opposition Board considered it unreasonable to assess similarity of mark simply by comparing respective mark in its entirety. The Board found the monogram-like device shall be a prominent portion of the opposed mark from visual impression.

However, the Board negated similarity between the device and the LV monogram by stating that:

Even if the device undoubtedly contains the letter “V” in its composition, it is impossible to specify what represents as a whole. Due to the reason, there is clear distinction in configuration, overall impression between two devices. If so, the Board has a reason to believe there is no likelihood of confusion in appearance.

The LV monogram gives rise to a sound of ‘elˈviː’ and a meaning of “Louis Vuitton”. In the meantime, the opposed device would not have any specific sound and meaning. Therefore, it is obvious that two devices are dissimilar from aural and conceptual points of view.

In view of a low degree of similarity between the monogram-like device and the “LV” monogram, difference caused by distinctive literal elements “MARU des VINTAGES”, “KYOJI MARUYAMA” of the opposed mark, the Board found relevant consumers are unlikely to confuse or associate the goods in question bearing the opposed mark with Lous Vuitton.

Based on the foregoing, the Opposition Board concluded the opposition’s arguments groundless and decided to dismiss the entire opposition.