カテゴリー: Device mark

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

Posted on

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

Contested Mark

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

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

Opposition by DC Comics

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

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

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

JPO Decision

1. Fame Must Be Established with Concrete Market Evidence

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

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

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

In particular, the evidence did not sufficiently establish:

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

2. Assessment of Similarity

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

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

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

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

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

3. No Likelihood of Confusion

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

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

Trademark Dispute Over Double Diamond Symbol

Posted on

The Japan Patent Office (JPO) did not side with Erreà Sport S.p.A. in a trademark opposition against TM Reg. No. 6903310 for a double diamond device mark, finding clear visual differences when compared to the Erreà Sport double diamond symbol. (Opposition Case No. 2025-900101, decided on July 2, 2026)

Contested Mark

Sakagawa Co., Ltd. sought registration for a device mark consisting of two vertically oriented, thick-lined, symmetrical rhombus shapes (see below) for footwear in Class 25, and retail/wholesale services for footwear in Class 35.

The applicant promotes Japanese sandals bearing the contested mark.

https://yamatokobo.jp/c/mens/mc6

As the JPO examiner did not find any absolute or relative grounds for refusal, the contested mark was granted registration on March 4, 2025 [TM Reg. No. 6903310].

Opposition by Erreà Sport

Before the lapse of the two-month statutory opposition period, Erreà Sport S.p.A., an Italian company specializing in the manufacture of technical sportswear, filed an opposition with the JPO on May 12, 2025. They requested cancellation under Article 4(1)(xi) of the Japan Trademark Law, citing their earlier registered mark (see below) featuring their double diamond symbol designating footwear in Class 25.

In the opposition, Erreà Sport argued:

“The most readily recognizable and fundamental characteristic of the figurative elements of both marks is that each consists of two diamond-shaped figures arranged side by side. Given this shared feature, consumers are likely to receive a strong visual impression of the marks, retain that impression in their memory, and recall it when encountering the marks. Accordingly, these marks are visually similar to such an extent that they are liable to be mistaken for one another.”

JPO Decision

The Opposition Board observed that both the Contested Mark and the Cited Mark consist purely of abstract geometric (rhombus/polygonal) shapes. As neither design conveys a recognized meaning or word in Japan, the JPO determined that neither mark generates a specific pronunciation or concept.

Comparing the visual features:

  • Contested Mark: Two separate, thick-lined rhombus figures placed side-by-side.
  • Cited Mark: A single solid-black polygon created by overlapping geometric shapes with an outline.

The JPO held that the visual impression between the two is markedly distinct. Since pronunciation and concept could not be compared, the clear visual difference was decisive. The JPO concluded that consumers are unlikely to confuse the two marks, rendering them dissimilar.

The Opposer further argued that the Cited Mark is widely recognized due to its sponsorship of professional sports teams and distribution of uniforms in Japan, which would amplify the risk of confusion.

However, the Opposition Board rejected this argument due to a lack of concrete evidence. The Opposer failed to submit critical data such as:

  • Sales figures and market share in Japan
  • Advertising frequency, reach, and marketing expenditure

Without objective commercial metrics, the JPO could not evaluate the degree of recognition among Japanese consumers. Consequently, the claim of an increased risk of confusion was dismissed.

Does Pictogram Play a Role in Identifying Commercial Origin?

Posted on

While the examiner found a lack of inherent distinctiveness in the pictogram depicting a claw crane game machine and a player in relation to amusement arcade services, the JPO Appeal Board reversed the rejection, finding that the mark possesses a distinctive character capable of identifying commercial origin.
[Appeal Case No. 2025-11695, decided on June 4, 2026]

The Disputed Mark

TAITO Corporation, a Japanese video game and entertainment company, filed a trademark application for a device mark representing a claw crane game machine and a player (see below) for use in connection with amusement arcade services in Class 41 on May 1, 2024. [TM App. No. 2024-046625]

The mark is currently used at four “TAITO Station” game centers in Japan (located in Tokyo, Hokkaido, and Nagoya).

https://www.taito.co.jp/

JPO Examiner’s Rejection

On April 21, 2025, the JPO examiner issued a decision to reject the mark under Article 3(1)(vi) of the Japan Trademark Law.

Article 3(1)(vi) is a catch-all provision that prohibits the registration of any mark lacking inherent distinctiveness:

Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered, unless the trademark:
(vi) is, in addition to those listed in each of the preceding items, a trademark by which consumers are not able to recognize the goods or services as those pertaining to a business of a particular person.

In the refusal, the examiner determined that:

  • The applied-for mark would be easily recognized as a simplified, abstract figure of a person playing on a gaming machine.
  • Relevant traders and consumers in the amusement arcade service industry would perceive it merely as a “pictogram” indicating amusement/gaming services, rather than a specific commercial origin.

JPO Appeal Board Decision

However, the Appeal Board reversed the examiner’s decision based on the following crucial points:

1. Lack of Industry-Wide Descriptive Use:

While the disputed mark appears to depict a claw crane game machine and a player, it is not a realistic depiction. More importantly, the Board’s ex officio investigation found no evidence that the relevant industry uses this specific mark—or any similar abstract figures of individuals operating machinery—as a standard descriptive tool to indicate the provision of such services.

2. No Evidentiary Basis for Lack of Distinctiveness:

There were no surrounding circumstances or market evidence to suggest that relevant traders and consumers would fail to recognize the disputed mark as a source identifier.

Based on the above findings, the JPO Appeal Board observed that the disputed mark does not solely indicate a “venue to play arcade games.” Instead, it is fully capable of functioning as a distinctive source identifier.

Accordingly, the Board held that the disputed mark does not fall under Article 3(1)(vi) and revoked the examiner’s refusal.

JPO Decision: No Likelihood of Confusion with Lacoste Crocodile Logo

Posted on

In a trademark dispute arguing similarity to and likelihood of confusion with the Lacoste Crocodile logo, the Japan Patent Office (JPO) did not side with Lacoste.
[Opposition case no. 2025-90093, decided on April 6, 2026]

Contested mark

Yagyu Office Co., Ltd. filed a trademark application for a design depicting a green crocodile lying prone, facing to the right with its mouth wide open (see below) in connection with various goods, including apparel, sportswear, and footwear of classes 18 and 25 at the JPO on June 14, 2024. [TM App no. 2024-64585]

On February 14, 2025, the JPO examiner granted registration of the mark without raising any objections.

Opposition by Lacoste

On May 1, 2025, Lacoste filed an opposition against the contested mark and claimed cancellation of the contested mark in contravention of Article 4(1)(xi), (xv), and (xix) of the Japan Trademark Law by citing its well-known crocodile logos.

Lacoste argued that the contested mark consists of a design depicting a green crocodile lying prone, facing to the right with its mouth wide open, and thus creates a similar commercial impression to the cited mark due to a high degree of visual similarity in its entirety. Taking into account the remarkable reputation of the cited mark and the close resemblance between the marks, the average consumers are likely to confuse a source of the goods in question bearing the contested mark with the cited mark.

JPO decision

The JPO Opposition Board found that the cited mark has been famous among relevant consumers and traders in Japan and other jurisdictions as a source-identifier of Lacoste’s business.

However, the JPO observed the contested mark would not be recognized as a crocodile, but “a light green geometric figure formed by white linear cutouts. It depicts a right-facing creature with an open mouth, a thick body, four legs, and a long, slightly curved tail extending backward.”

While the JPO acknowledged that the contested mark could be perceived as representing some types of reptile, it found that the design was too abstract to evoke a specific animal. As such, it was held not to give rise to any specific pronunciation or concept.

In contrast, the cited mark is recognized as clearly depicting a crocodile and conveying the well-known brand identity associated with Lacoste.

Based on the differences in concept and the tail orientation (extended backward vs. raised upward), the Board found that both marks are distinguishable in appearance as well, and therefore dissimilar and unlikely to cause confusion, even if the goods in question are highly related to Lacoste’s business.

Trademark Dispute: RUBIK CUBE vs RUBiK Pi

Posted on

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.

JPO denied registration of Thom Browne RWB Stripe as a color mark three times in a row

Posted on

The JPO examiner rejected Thom Browne branding identifier, the red, white, and blue stripes as a color mark, due to a lack of inherent distinctiveness and non-conformity with the requisites for a color mark.

Thom Browne’s signature red, white, and blue stripes

Thom Brown, Inc. filed two trademark applications for a color mark to represent Thom Browne’s signature red, white, and blue stripe (see below) via the Madrid Protocol with the JPO for use on eyewear, eyeglasses, eyeglass frames, and sunglasses in Class 9.

IR 1744718

The applicant specified the mark as “The color(s) white, red, and blue is/are claimed as a feature of the mark. The mark consists of tag, label, and design features comprising five contiguous bands, the first, third, and fifth being white, the second band red, and the fourth band blue; the first and fifth bands are of a smaller width than the second, third, and fourth bands; the dashed-lined border is included merely for perspective and is not part of the mark.”

IR 1750744

The applicant specified the mark as “The color(s) white, red, and blue is/are claimed as a feature of the mark. The mark consists of a design feature comprising five contiguous bands, the first, third, and fifth being white, the second band red, and the fourth band blue. The first and fifth bands are of a smaller width than the second, third, and fourth bands. The dashed lines adjacent the first and fifth bands, and the dashed line depiction of an eyeglass frame, are included merely for perspective and are not part of the mark.”

The JPO examiner rejected the marks on two grounds.

  • A lack of inherent distinctiveness; and
  • Non-conformity to the requisites of a color mark. In this respect, the examiner considered above marks do not solely consist of colors, but contain a figurative element.

Apparently, the JPO considers that if an applicant does not indicate a specific position of the color mark, the constituent color(s) should be outlined in a straight line only and not surrounded on all four sides by other colors. In this respect, the following were rejected as a color mark due to nonconformity with the requirements.

Where an applicant requests registration of a color mark on a specific position in connection with designated goods, constituent color(s) should be outlined in a straight line only or painted on the relevant component entirely, and not be surrounded on all four sides by other colors. Following color marks with a specific position were rejected on this ground.

TM App no. 2025-12124

On February 6, 2025, Thom Brown, Inc. filed a trademark application for the same color (see below) directly with the JPO for use on eyeglasses, eyeglass frames, sunglasses, eyeglass cases, eyeglass holders, eyeglass chains, and eyeglass cords in Class 9.

On August 26, 2025, the JPO examiner issued a notice of refusal grounds only for a lack of inherent distinctiveness laid down in Article 3(1)(iii) of the Japan Trademark Law.

As the applicant did not respond to the office action, the JPO decided to reject the entire application on February 24, 2026. The decision is appealable by May 24, 2026.

TM App no. 2025-128977 (examination pending)

Seemingly, in anticipation of the refusal, Thom Brown, Inc. filed a trademark application for the color as a position mark with the JPO in the name of a local subsidiary, Thom Brown Japan Co., Ltd., for use on the same goods, on November 10, 2025 [TM App no. 2025-128977].

SERAPIAN Successful in Registering iconic MOSAICO braided pattern as trademark

Posted on

The Italian-based fashion house Stefano Serapian S.r.l. was successful in an appeal to overturn the examiner’s rejection of TM App no. 2022-131488 for the Serapian’s signature “Mosaico” leather pattern in Class 18.
[Appeal case no. 2023-16337, decided on December 17, 2025]

SERAPIAN MOSAICO

Stefano Serapian S.r.l. filed a trademark application for a braided pattern (see below) for use on bags, suitcases, tote bags, backpacks, key cases, porches, wallets, coin cases, and handbags in Class 18 with the JPO on November 17, 2022 [TM App no. 2022-131488].

The Serapian Mosaico pattern is known for its iconic hand-weaving technique, which dates back to 1947 and serves as an emblem of the Italian luxury brand, Serapian.

https://www.serapian.com/

JPO Examination

On June 26, 2023, the examiner rejected the mark based on Article 3(1)(vi) of the Japan Trademark Law by finding that:

The applied-for mark represents a continuous and repetitive geometric pattern consisting of a white square with a vertical line in the middle and a black square in a diagonal position. As a whole, it will be perceived merely as a decorative background design. Besides, there is no distinctive element that identifies the source of the goods in question. Consequently, consumers are unable to recognize it as a source indicator due to its lack of inherent distinctiveness.

Serapian filed an appeal against the rejection on September 27, 2023, to dispute the inherent distinctiveness of the mark based on substantial use and advertising of the Mosaico collection in Japan since 2014.

JPO Appeal Board Decision

The JPO Appeal Board noted the following facts.

  • Founded in 1928, the applicant is known for its line of bags favored by the late British actress Audrey Hepburn. The applicant’s bags, which depict the applied-for mark and were designed in 1947, have been sold nationwide in Japan for over 10 years and have been distributed in Japan since 2014.
  • Major fashion magazines and online articles have featured the bags and their iconic “MOSAICO” pattern design.
  • The bags are also sold in major department stores and online malls. Despite being expensive and high-end goods, annual sales exceeded JPY 50 million in 2023 and JPY 9 million in 2024.
  • A discretionary survey by the Board did not reveal the actual use of a similar pattern by others.

Based on the foregoing, the Board found that relevant consumers and traders can distinguish the applicant’s goods from others based solely on the Mosaico pattern.

Therefore, since the applied-for mark is not subject to Article 3(1)(vi) of the Japan Trademark Law, the Board overturned the examiner’s rejection.

ALVIERO MARTINI Defeated Over World Map Mark Dispute

Posted on

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

Japan TM Reg no. 6320074

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

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

Invalidation action by Alviero Martini

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

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

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

JPO decision

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

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

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

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

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

JPO Found Tissa Fontaneda’s Bubble Pattern Descriptive of Bags

Posted on

The Japan Patent Office (JPO) sustained the examiner’s decision rejecting International Registration No. 1599413 for a three-dimensional, rounded “bubble” pattern in Class 18, known as the Tissa Fontaneda “Bubble Bag,” on the ground that the mark lacks inherent distinctiveness.
[Appeal Case no. 2023-650049, decided on August 26, 2025]

Tissa Fontaneda “Bubble Bag”

TISSA FONTANEDA, S.L. sought protection in Japan, via the Madrid Protocol, for a mark consisting of a repetitive pattern formed by the arrangement of a plurality of three-dimensional elements placed in a staggered manner on the surface of goods, in respect of “bags; tote bags; handbags; shoulder bags; clutch bags; traveling bags; pouches; trunks; suitcases; hip bags; rucksacks; purses; pocket wallets; wallets; credit card sleeves; traveling sets [leatherware]; credit card cases [wallets]; vanity cases, not fitted; tie cases,” in Class 18. [IR No. 1599413, filed on April 19, 2021]

Examiner’s Decision

On February 24, 2023, the examiner rejected the application under Article 3(1)(vi) of the Japan Trademark Law, on the following grounds:

A pattern can be perceived as an indication of origin only when it has acquired a certain degree of recognition among consumers. Although it appears that goods bearing the applied-for mark have been used by certain celebrities, the applicant did not establish the scale of sales, the duration of use, or the market share of such goods. Accordingly, it cannot be concluded that the applied-for mark has, through use, acquired nationwide recognition or come to be recognized by consumers as an indication of origin.

The applicant filed an appeal on June 20, 2023, asserting that the applied-for mark is inherently distinctive.

Appeal Board’s Findings

The Board finds as follows:

(1) In the representation of the applied-for mark, no distinctive element can be identified beyond the form of the pattern that would enable the mark to function as an indication of origin. Accordingly, the applied-for mark is perceived merely as a decorative background pattern.

(2) Even if competitors have not produced bags decorated with a three-dimensional rounded “bubble” pattern, this fact is insufficient to establish inherent distinctiveness, since bags bearing repetitive patterns formed by regularly arranging three-dimensional elements on their surfaces are commonly distributed.

(3) The fact that the applied-for mark is registered in other jurisdictions, such as the United States, Spain, Ireland, the Benelux, Brazil, Italy, and Mexico, is irrelevant, as distinctiveness must be assessed based on consumers and trade practices in Japan.

Consequently, the Board finds the examiner made no error in applying Article 3(1)(vi) of the Trademark Law.

Trademark Battle Over Swiss Flag-Like Cross Design

Posted on

On July 9, 2025, to a lawsuit brought by Wenger S.A., which claimed the backpacks bearing a cross-design mark imported by TravelPlus International constituted trademark infringement of IR no. 1002196, the Tokyo District Court found the defendant not liable due to the dissimilarity of the marks.
[Court case nos. Reiwa6(wa)70635]

WENGER

Wenger, the Swiss company, has owned international registration no. 1002196 for the cross mark (see below) for use on backpacks of class 18 and others goods in Japan since November 5, 2010.

SWISSWIN

Goichimaru Co., Ltd. (defendant) has been selling “SWISSWIN” brand backpacks, imported by TravelPlus International (TI), adorned with a logo resembling the Swiss flag (see below), via online shopping sites in Japan since January 11, 2024.

Wenger filed a lawsuit in the Tokyo District Court and sought a permanent injunction against the infringing goods and their destruction, pursuant to Article 36(1) and (2) of the Japan Trademark Law. Wenger claimed that the defendant’s sale of the backpacks infringed on the plaintiff’s trademark right.

Tokyo District Court ruling

The judge found that both marks have a wide cross-design surrounded by roughly square shapes. Since these relate to the basic configuration of respective mark, it will give traders and consumers the impression that they are similar.

On the other hand, the differences listed below give the Plaintiff’s mark a flat and simple, while the Defendant’s mark gives a more substantial and complex impression. In addition, the color of the Defendant’s mark is not monotone, which gives an overall different impression from the color of the Plaintiff’s mark. These differences outweigh the impression of similarity derived from the above common features, and thus there is a significant difference in the appearance between the Plaintiff’s mark and the Defendant’s mark.

1. Whether the outer edges are straight or curved
2. The presence or absence of connecting rods between the cross and the outer edges
3. Differences in the width of the outer edges
4. The outer edges, cross, and support rods are embossed
5. The outer edges have raised and recessed corners
6. Differences in the colors of the outer edges and cross (white and silver)
7. Differences in the background colors (black and red)

Therefore, the court opines that the appearance of the plaintiff’s and defendant’s marks give different impressions to traders and consumers; thus, both marks are visually distinguishable.

Accordingly, the fact that the Plaintiff’s and Defendant’s marks have the same concept and sound would not be significant to traders and consumers, as the aforementioned differences in appearance outweigh the coincidence of the concept and pronunciation.

Based on the foregoing, even if both marks are used on the same bags, the court cannot find a reason to consider that the defendant’s mark likely to cause confusion with bags bearing the plaintiff’s mark.