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 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.

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.

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.

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.

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.

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.

TM App no. 2024-17220

Fighters Sports & Entertainment Co., Ltd., an affiliate company of the Japanese professional baseball team “Hokkaido Nippon-Ham Fighters”, filed a trademark application for a mark consisting of the letter “F” and a blue-star device (see below) for use on various foods in class 29 and 30 with the JPO on February 21, 2024.

The applied mark is used to indicate a newly developed facilities and ES CON FIELD, a home stadium of Nippon-Ham Fighters in Hokkaido.

TM Reg no. 4105585

On August 1, 2024, the JPO examiner rejected the applied mark based on Article 4(1)(xi) of the Japan Trademark Law due to its similarity to an earlier TM Reg no. 4105585 for an encircled star device mark in class 30.

The applicant filed an appeal against the rejection on November 20, 2024, and requested cancellation of the examiner’s refusal by arguing dissimilarity of mark.

JPO decision

At the outset, the JPO Appeal Board found the literal element “F” of the applied mark per se would not play a role in identifying specific source because a single digit is commonly used to describe a model or code of the goods in question. If so, the star device can be dominant in the applied mark.

The Board further stated that the applied mark as a whole is clearly distinguishable from the cited mark by the presence or absence of the letter “F.”

Even when comparing the respective star devices, there are two distinguishing features. First, the cited mark has two longer lower protrusions. Second, the star device is represented in a circle. These differences are sufficient to find a lack of likelihood of confusion when they are compared at different times and locations.

An aural and conceptual comparison is neutral because neither the applied mark nor the cited mark has any clear meaning.

Considering that the two marks are not visually similar and cannot be compared in terms of pronunciation and concept, the Board believes that the applied mark is dissimilar to the cited mark. Therefore, there is less risk of confusion regarding the source of the goods in question when considering the overall impression and memory of the respective marks.

Dog’s Pizza

The contested mark, consisting of the words “DOG’s PIZZA” in red and its translation written in Japanese katakana character, and rectangular device in red and dark blue with two paw prints (see below), was filed with the JPO by a Japanese individual for use on February 14, 2024 for use on pet food and dog food in Class 31 [TM App no. 2024-14656].

Upon request for accelerated examination, the JPO examiner granted registration of the mark on April 30, 2024, without raising any grounds for refusal.

Opposition by Domino’s Pizza

On July 23, 2024, a two-month statutory period counting from the publication date, May 23, 2024, Domino’s IP Holder LLC filed an opposition and claimed cancellation of the contested mark in contravention of Article 4(1)(x), (xv) and (xix) of the Japan Trademark Law.

Domino argued that the rectangular device of the contested mark is distinctive and dominant element to identify a specific source. Comparing the device with Domino’s red and blue rectangular emblem with three white dots, which has become famous per se as the source indicator of Domino’s Pizza in Japan, they are visually similar to a high degree. Therefore, the relevant consumers, upon seeing the contested mark used on the goods in question, would associate it with Domino’s Pizza and confuse the source with Domino’s Pizza or any business entity economically or systematically related to Domino’s Pizza.

JPO decision

The JPO Opposition Board stated that, even though Domino’s Pizza Japan, Inc., a domestic franchisee, has operated more than 1,000pizza delivery and take-away stores in Japan, unless the evidence submitted included sales figures, market share, and advertising expenditures in Japan and other countries, the Board could not find it reasonable to concede a high degree of recognition of the cited mark among the relevant consumers.

Regarding the similarity of the marks, the Board considers that the consumers are unlikely to confuse the two marks because of the clear difference in the dots and paw prints depicted in the rectangular device. Furthermore, there is no indication of similarity from an aural and conceptual point of view.

Given the lack of evidence concerning the reputation of the cited mark and the low degree of similarity between the marks, the Board found that there was no reason to find a likelihood of confusion on the part of the public.

Based on the foregoing, the Board decided to dismiss the entire allegations and, accordingly , to declare the validity of the contested mark.

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.

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.

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.

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”.

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”.

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”.

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.

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.

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.

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.

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).

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.

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.

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).