カテゴリー: Invalidation trial

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 dispute: UNITED vs UNITED GOLD

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In a dispute over the similarity of the marks “UNITED” and “UNITED GOLD” in connection with apparel, the Japan IP High Court upheld the JPO decision and found that both marks were dissimilar.
[Court case no. Reiwa6(Gyo-ke)10066, decided on December 10, 2024]

UNITED GOLD

Nishitomi Shoji Co., Ltd. filed a trademark application with the Japan Patent Office (JPO) on January 17, 2022 for the word mark “UNITED GOLD” in standard character for use on apparel in class 25 and retail services for apparel in class 35.

The applicant promotes men’s suits bearing the applied mark via internet.

https://unitedgold.jp/

In accordance with a request for accelerated examination from the applicant based on the actual use of the mark on any one of the designated goods and services, the JPO carried out a substantive examination and registered the mark on March 25, 2022 [TM Reg No. 6534957].

Invalidation action

On December 15, 2023, Howard Corporation, an owner of earlier TM Reg no. 2053119 “UNITED” in class 25, filed an application for a declaration of invalidity against the mark “UNITED GOLD” with the JPO in contravention of Article 4(1)(xi) of the Japan Trademark Law due to its similarity to earlier trademark “UNITED”.

https://www.haward.co.jp/united.html

However, the JPO Invalidation Board found “UNITED GOLD” to be dissimilar to “UNITED” and therefore dismissed the invalidation action on June 17, 2024 [Invalidation Case No. 2023-890089].

To challenge the JPO decision, Howard filed an appeal with the IP High Court on July 10, 2024, claiming that the JPO erred in finding that the contested mark “UNITED GOLD” should be assessed in its entirety.

In the compliant, Howard argued that the term “GOLD” has a low degree of distinctiveness in relation to the goods and services in question. On the other hand, the term “UNITED” is highly distinctive because of its meaning. If so, the term “UNITED” plays a dominant role in identifying a source of the contested mark

IP High Court ruling

The IP High Court, at the outset, referred to the Supreme Court ruling in 2008 which established the criterion to grasp a composite mark in its entirety in the assessment of similarity of the mark.

“Where a mark in dispute is recognized as a composite mark consisting of two elements or more, it is not permissible to assess the similarity of mark simply by means of taking out an element of the composite mark and then comparing such element with the other mark, unless consumers or traders are likely to perceive the element as a dominant portion indicating its source of origin of goods/service, or remaining elements truly lack inherent distinctiveness as a source indicator in view of sound and concept.”

Based on the criteria, the court found that contested mark shall be assessed in its entirety on the following grounds:

  1. From appearance and meaning, there is no reasonable ground to find “UNITED” and “GOLD” shall be recognized individual and separable.
  2. In conjunction with clothing of class 25, more than 150 trademarks that contain the term “UNITED”, e.g. “UNITED ARROWS”, “UNITED COLORS OF BENETTON”, “UNITED TOKYO”, “UNITED DOORS”, are registered with the JPO in the name of third party. These facts suggest that the term “UNITED” is also lowly distinctive in relation to apparel.
  3. Even if there are actual examples in which the term ‘GOLD’, when combined with another distinctive term, implies a high quality of the goods, it would be anything but convincing to find that the term ‘UNITED’ plays a dominant role in identifying the goods and services bearing the contested mark, given that, as stated above, the term ‘UNITED’ has a low degree of distinctiveness.

Based on the foregoing, the judges concluded that the JPO did neither err in comparing both marks as a whole nor applying Article 4(1)(xi).

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).

COSME MUSEUM vs Cosmetic Museum

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In a trademark invalidation action disputing similarity between “COSME MUSEUM” and “Cosmetic Museum”, the Japan Patent Office (JPO) found both marks dissimilar and unlikely to cause confusion when used in relation to cosmetics.
[Invalidation case no. 2024-890015, decided on November 6, 2024]

COSME MUSEUM

CEL-ENA Co., Ltd. filed a trademark application for the wordmark “COSME MUSEUM” (Contested mark) with the JPO on February 24, 2023. It designates various services classified in class 35, including retail or wholesale services for cosmetics (TM App no. 2023-18992).

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

https://cosme-museum.com/

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

Cosmetic Museum

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

https://cosmeticmuseum.jp/shop

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

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

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

JPO decision

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

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

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

Thirdly, both marks do not give rise to any specific meaning at all. In this regard, they are not comparable in conception.

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

Accordingly, the Board decided to dismiss the invalidation action and declared the contested mark valid.

IP High Court Found “Medical Equipment” Similar to “Rental of Medical Equipment”

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On November 11, 2024, the Japan IP High Court overturned the JPO decision that found “Medical Apparatus and Instrument” in Class 10 dissimilar to “Rental of Medical Apparatus and Instrument” in Class 44.
[Court case no. Reiwa6(Gyo-ke)10028]

Disputes

G-Wave Co., Ltd. has obtained trademark registration for word mark “AWG治療” (it means AWG treatment) over “medical apparatus and instrument” in Class 10 since Jan 17, 2020 (TM Reg no. 6217436).

Subsequently, a third party filed a trademark application for the same mark in connection with “rental of medical apparatus and instrument” and other services of Class 44 on October 21, 2019.

According to the Trademark Examination Guidelines for Similar Goods and Services, the similar group code of “medical apparatus and instrument” is 10D01. In the meantime, “rental of medical apparatus and instrument” has 42X09.

Under the JPO practice, it has been considered that the goods or services which have the same similar group codes are presumed to be similar to each other in principle even in different classes. In other words, as long as the code is different, the goods and services are presumed to be dissimilar even if they belong to the same class.

Based on the established practice, the JPO granted registration of the junior mark (TM Reg no. 6320554) on November 25, 2020, without questioning a conflict with the earlier mark.

On June 30, 2023, G-Wave CO., Ltd. filed a partial invalidation action against the junior mark with the JPO due to similarity between “rental of medical apparatus and instrument” of Class 44 and “medical apparatus and instrument” of Class 10 in contravention of Article 4(1)(xi) of the Japan Trademark Law.

JPO decision

On February 8, 2024, not surprisingly, the JPO Invalidation Board decided to dismiss the entire allegations by stating that the business entities involved in manufacturing and selling of the goods and those providing the service are fundamentally different. Moreover, the intended use and purpose, the place where the goods are sold is not the same as the place where the service is provided. Therefore, even if they may coincide in some of consumers, taking into account the general and constant practice in the course of trade, the Board has reason to believe that the goods and services in question are dissimilar [Invalidation case no. 2023-890053].

G-Wave Co., Ltd. filed an appeal with the IP High Court on March 19, 2024, seeking invalidation of the junior mark in connection with “rental of medical apparatus and instrument” in Class 44.

IP High Court ruling

In determining the similarity of goods and services, the court considered factors such as related business entities, purpose, distribution channel, and consumers.

  1. Relatedness of business entities
    • The judges paid great attention to the fact that 68.8% of the companies that are members of the Japan Medical Industry Association (JMIA) and are licensed to manufacture, sell or rent medical equipment have both licenses. This means that about two-thirds of the companies that manufacture or sell medical equipment can engage in the rental business as well.
  2. Purpose
    • The rental of medical equipment aims to provide the goods for medical purposes. If so, the purpose of the service will be common to the use of medical equipment.
  3. Distribution channel
    • The sale and rental of medical equipment both take place at the company’s place of business or on its internet website. Therefore, it is reasonable to assume that the distribution channel of the goods and services in question is in many cases the same.
  4. Consumers
    • Respective consumers are substantially overlapping since both include medical institutions and general consumers.

In light of the foregoing, the court found that relevant traders and consumers are likely to confuse a source of the service “rental of medical equipment” using the mark “AWG治療” with the goods “medical equipment” bearing the same mark. Accordingly, the JPO errored in evaluating similarity between “medical apparatus and instrument” in Class 10 and “rental of medical apparatus and instrument” in Class 44, and decided to cancel the decision.

TRILITH STUDIOS vs TRILITH

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The Japan Patent Office (JPO) declared the invalidation of TM Reg no. 6371496 “TRILITH” due to similarity with earlier IR no. 1534597 “TRILITH STUDIOS” owned by Trilith IP Holdings, LLC.
[Invalidation case no. 2022-890066, decide on July 8, 2024]

TRILITH

On January 5, 2021, GAIAMOND Inc., a Japanese company, filed an application for registration of wordmark “TRILITH” (‘the contested mark’) with the JPO (TM app no. 2021-745), designating, inter alia, “game trading cards; toys” in Class 28.

Immediately after the filing, the applicant requested an accelerated examination based on the fact the company uses the contested mark in relation to display frame for game trading cards.

https://ginzo-shop.com/items/62a42b262bf901166cb94227

Accordingly, the JPO examiner granted protection of the contested mark in two months on March 15, 2021 (TM Reg no. 6371496).

TRILITH STUDIOS

Trilith IP Holdings, LLC, a holder of IR no. 1534597 for word mark “TRILITH STUDIOS” that is known as one of the largest purpose-built movie studios in North America and home to blockbuster films and independent shows like Avengers: Endgame, Zombieland: Double Tap, and Moon and Me, filed a notice of opposition to registration of the contested mark in respect of game trading cards and toys with the JPO on June 18, 2021. The ground relied on in support of the opposition was that set out in Article 8(1) of the Trademark Law.

Article 8(1) is a provision to prohibit registration of a junior mark that is identical with, or similar to any earlier applied mark which is pending before the substantive examination at the time of registration of the junior mark in accordance with the “first-to-file” principle.

The opposition applicant argued that the contested mark “TRILITH” is not eligible for registration under Article 8(1) because of similarity to earlier IR no. 1534597 “TRILITH STUDIOS”, and the goods in question is deemed similar to “downloadable video game software; recorded video game software” in Class 9 designated under the cited mark.

However, the JPO Opposition Board dismissed the opposition on the ground that there is no similarity between the mark “TRILITH STUDIOS” and “TRILITH” on April 7, 2022 (Opposition case no. 2021-900241).

On August 10, 2022, MARKS IP LAW FIRM, on behalf of Trilith IP Holdings, LLC, filed an application for a declaration of invalidity to the contested mark with the JPO based on the same ground.

To bolster the arguments, the invalidity applicant presented evidence to show a low degree of distinctiveness of the word “STUDIOS” in connection with the goods in question. Bearing in mind that the term “TRILITH” is a coined word unfamiliar to the relevant consumers in Japan, it is obvious that the term “TRILITH” is dominant in the cited mark. If so, the contested mark should be invalidated in contravention of Article 8(1).

JPO decision

Noticeably, the Invalidation Board found that the literal element “TRILITH” to be dominant in the cited mark by stating that:

 A space separates the terms “TRILITH” and “STUDIOS.” The word “STUDIOS” is commonly known as a term to indicate ” a film or video production facility.” or “workshop for painters or cameramen, recording room for radio or television, recording studio for music.” Therefore, the cited mark is easily recognizable as a combination of the terms “TRILITH” and “STUDIOS.

In light of the fact that the term “GAME STUDIOS” has been generally used to indicate workplaces where games are created in the relevant industry, the word “STUDIOS” would be less distinctive in connection with the cited goods.

Meanwhile, the term “TRILITH” is a coined and highly distinctive word with no specific meaning. Accordingly, the Board has a reason to believe that the term to be dominant in the cited mark.

Based on the above finding, the Board compared the dominant portion of the cited mark with the contested mark and found that both marks are similar from visual and aural points of view in spite that a conceptual comparison is neutral as neither the contested mark nor the cited mark have any clear meaning.

Given that the goods in question is similar to “downloadable video game software; recorded video game software” in Class 9 designated under the cited mark, the invalidation applicant is successful in proving the requirements of Article 8(1).

Consequently, in light of the foregoing, the Board decided to invalidate the contested mark in relation to “game trading cards; toys” in Class 28.

SpaceX Scores Win in Trademark Invalidation Action

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The Japan Patent Office (JPO) sided with Space Exploitation Technologies Corporation (SpaceX) in an attempt to revoke TM Reg no. 6613282 for the mark “SPACEX / spacex.co.jp” (cl. 25, 26) in contravention of Article 4(1)(viii) and (xv) of the Japan Trademark Law.
[Invalidation case no. 2023-890010, decided on June 4, 2024]

Contested mark

NDR Tech Co., Ltd. filed trademark application for a mark composed of the two word-elements “SPACEX” and “spacex.co.jp”, arranged in two lines (see below) for use on apparels and footwear in class 25 and insignias for wear, buckles for clothing, badges for wear, brooches for clothing, brassards in class 26 with the JPO on December 20, 2021 (TM App no. 2021-163633).

The JPO examiner granted protection to the mark on August 19, 2022.

Invalidation action by SpaceX

Space Exploitation Technologies Corporation, aka SpaceX, filed an invalidation action on February 15, 2023 and claimed the contested mark shall be invalidated in contravention of Article 4(1)(viii), (x), (xv) and (xix) of the Japan Trademark Law.

Article 4(1)(viii) is a provision to prohibit registration of trademark that contains the representation or name of any person, famous pseudonym, professional name, or pen name of another person, or famous abbreviation thereof.

Article 4(1)(xv) prohibits the registration of trademarks that are likely to cause confusion with the business of other entities.

SpaceX could not rely on Article 4(1)(xi) because their attempt to register the mark “SPACEX” in class 25 (TM App no. 2020-125746) was unsuccessful due to a conflict with the earlier TM Reg no. 6222450 for wordmark “SPACEX” owned by NDR Tech.

SpaceX argued that the mark “SpaceX” has been widely recognized as a commercial name of the claimant among the general public in Japan even before the time of initial application of the contested mark due to its frequent appearance in print and broadcast media.

NDR Tech asserted that the domain name “spacex.co.jp” is only available to companies registered in Japan. As the proprietor of the domain, they have a legitimate interest in registering and owning the contested mark.

JPO decision

The JPO Invalidation Board admitted that the mark “SpaceX” has become famous among the general public as an abbreviation of the claimant.

It is obvious that the contested mark contains the term “SPACEX” and “spacex”, which are known as a famous abbreviation of the claimant. Based on the fact that NDR Tech did not obtain the consent of SpaceX, the contested mark does not comply with the requirements of Article 4(1)(viii).

Bearing in mind that the mark “SpaceX” has been used on T-shirts, hoodies and caps, the Board has reasons to believe that relevant consumers are likely to confuse a source of goods in question bearing the contested mark with SpaceX. If so, the contested mark shall be revoked under Article 4(1)(xv) as well.

https://shop.spacex.com/

In the decision, the Board noted ‘The fact that NDR Tech owns the domain “spacex.co.jp” is irrelevant to the invalidity of the contested mark based on the above articles.’

Trademark battle: FORTNITE vs FORTNIGHT

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In an invalidation trial against TM Reg no. 6389929 for word mark “FORTNIGHT” in classes 9, 16, 28, 35, 41 and 43, the Japan Patent Office (JPO) did not rule in favor of Epic Games, Inc. due to an unlikelihood of confusion with “FORTNITE”.
[Invalidation case no. 2023-890068, decided on May 9, 2024]

FORTNIGHT

A Japanese company sought registration of word mark “FORTNIGHT” in standard character for use on various goods and services in classes 9, 16, 28, 35, 41 and 43 (including games) with the JPO on June 4, 2018 (TM App no. 2028-79647).

The JPO examiner rejected the mark due to a likelihood of confusion with famous game software and distribution platform “FORTNITE” managed by Epic Games, Inc.

However, the JPO Appeal Board disaffirmed the rejection by stating that there is no reason to find “FORTNITE” has been widely recognized among relevant consumers to indicate Epic business and the applicant deleted games from designation. If so, it is unlikely that relevant consumers would not confuse the source of goods and service bearing “FORTNIGHT” with Epic’s “FORTNITE”.

The mark “FORTNIGHT” was registered on June 8, 2021.

Invalidation action by Epic Games, Inc.

Epic Games, Inc. is an American video game development and distribution company, widely known for the success of “Fortnite”, a free multiplayer online video game first released in 2017, and its game marketplace. On August 10, 2021, Epic filed a post-grant opposition against TM Reg no. 6389929 “FORTNIGHT” on August 10, 2021, but the opposition was unsuccessful (Opposition case no. 2021-900304).

On August 22, 2023, Epic filed an invalidation action and claimed that the mark “FORTNIGHT” should be invalidated in contravention of Article 4(1)(xv) and (xix) of the Japan Trademark Law.

Epic repeatedly argued “FORTNIGHT” has a high degree of similarity to “FORTNITE” from visual, phonetical and conceptual points of view. Taking account of famous online game “FORTNITE” among game users and close relation between online games and the goods and services in question, relevant consumers are likely to confuse “FORTNIGHT” with “FORTNITE”.

Given that the initial filing designated the game in question, it is presumed that the company had knowledge of the well-known online game software “FORTNITE” and aimed to benefit from its reputation.

JPO decision

The JPO Invalidation Board found that “FORTNITE” has been widely recognized to indicate video games of Epic among consumers and traders in video game industry. However, given that the launch of the video games in Japan precedes the application date of the mark “FORTNIGHT” by three months, such recognition would be limited to the industry.

With regard to the similarity of the marks, the Board stated, “Although “FORTNIGHT” and “FORTNITE” share the same sound, they are distinguishable in appearance, and the concepts are not comparable. In assessing the overall impression, the Board has a reason to find a low degree of similarity between the marks.”

In light of the aforementioned findings, the Board determined that relevant consumers are unlikely to confuse the source of the goods and services in question bearing the mark “FORTNIGHT” with “FORTNITE.”

Furthermore, there is no evidence to suggest that the applicant had any malicious intention of free-riding on or damaging Epic’s online video games “FORTNITE.”

Consequently, the Board dismissed the invalidation action and declared the validity of TM Reg. No. 6389929.

Trademark Dispute: Chateau Mouton Rothschild vs MOUTON

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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.
[Invalidation case no. 2022-890079, decided on January 22, 2024]

TM Reg no. 6090508 “MOUTON”

WALTZ Co., Ltd. filed a trademark application for wordmark “MOUTON” in relation to retail or wholesale services of various foods and drinks (not including wine) of class 35 and restaurant services of class 43 with the JPO on November 17, 2017. The applicant operates a bar and restaurant named “MOUTON” in Shinjuku, Tokyo.

A screen capture from https://www.pub-mouton.com/

The mark was granted protection on September 5, 2018, published for a post-grant opposition on November 13, 2018.

Unsuccessful Opposition

Baron Philippe de Rothschild S.A. filed an opposition against TM Reg no. 6090508 “MOUTON” on January 15, 2019 and claimed cancellation of the mark in contravention of Article 4(1)(vii) and (xv) of the Trademark Law. However, the JPO Opposition Board decided to dismiss the opposition on September 6, 2019 (Opposition case no. 2019-900012).

Subsequently, to challenge the validity of the trademark registration for the MOUTON mark, Baron Philippe de Rothschild S.A. filed an invalidation with the JPO on October 7, 2022, a month before the five-year statute of limitations from the registration date was set to lapse. The claimant argued the disputed mark is identical with a well-known abbreviation of the world-famous wine “Chateau Mouton Rothschild”. Besides, in view of close association between wine and the services in question, relevant consumers and traders would confuse a source of the services bearing the mark “MOUTON” with the claimant. If so, the disputed mark shall be invalidated in contravention of Article 4(1)(xv) of the Trademark Law.

WALTZ did not respond to the arguments during the invalidation trial procedure.

JPO Invalidation decision

On January 22, 2024, the JPO Trial Board decided to annul TM Reg no. 6090508 “MOUTON” in relation to all of the retail or wholesale services designated in class 35 and restaurant services in class 43 by stating that:

From the facts revealed by the produced evidence, the Board has a reason to believe that the term “Mouton” has acquired a substantial degree of reputation and popularity among relevant consumers and traders to indicate the world-famous wine and its abbreviation.

Undoubtedly, the disputed mark “MOUTON” shall be similar to the mark “Chateau Mouton Rothschild” from phonetical and conceptual points of view even if there is a distinction in appearance between the marks.

There is a close association between wine and retail or wholesale services of various foods and drinks as well as restaurant services.

If so, relevant consumers are likely to confuse a source of the services bearing the disputed mark with the claimant or other business entity systematically or economically connected with them.

Based on the foregoing, the Trial Board found the disputed mark shall be invalidated in contravention of Article 4(1)(xv) of the Trademark Law.

HERMES Victory in trademark dispute against HAIRMES

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On July 26, 2023, the Japan Patent Office (JPO) sided with Hermes International in an invalidation trial against TM Reg no. 6275593 for the wordmark “HAIRMES” by finding the owner’s unjustified intention to free-ride and dilute the famous fashion brand “HERMES” and cause confusion.

[Invalidation case no. 2022-890082]

Disputed mark

Dog Diggin Designs, LLC applied a wordmark “HAIRMES” in standard character for use on beds for household pets; pillows for pets; pet cushions in class 20, and toys for pets in class 28 with the JPO on October 16, 2019. Apparently, the company promotes parody dog toys & dog beds, and other pet supplies.

https://www.dogdiggindesigns.com/

Hermes International filed a post-grant opposition against the disputed mark with the JPO on October 15, 2020, and argued the disputed mark shall be canceled in contravention of Article 4(1)(x), (xi), (xv), and (xix) of the Trademark Law because of the remarkable reputation and popularity of the HERMES brand in the fashion industry and a high degree of similarity between “HAIRMES” and “HERMES” likely to cause confusion among relevant consumers in Japan.

The JPO Opposition Board decided to dismiss the opposition by finding unlikelihood of confusion due to a low degree of similarity between the marks. Click here.

Invalidation action by Hermes

Hermes International filed an invalidation action with the JPO based on the same grounds on October 18, 2022, and repeatedly argued the owner must have had an intention to imitate and free-ride on reputation and goodwill of the famous fashion brand “HERMES” by making use of similar trade dress with Hermes packaging color and design in addition to similar HAIRMES mark.

JPO decision

The JPO Invalidation Board admitted that “HERMES” has been widely recognized as a luxury fashion brand and source indicator of Hermes International.

In the assessment of similarity of mark, the Board found both marks are dissimilar in sound and concept. However, these marks give a similar visual impression by sharing the first letter “H” and the four letter “RMES” in the latter half of respective word, which catches the attention of consumers. If so, the Board has a reason to believe there is a certain degree of similarity between the marks.

The Board paid attention to a fact that the owner promotes pet beds and pet toys bearing similar color and decoration to the iconic Hermes packaging. Based on the circumstances, the Board had a view that presumably the owner, knowing that the HERMES mark has been widely recognized among consumers in Japan, must have had an intention to free-ride or dilute reputation on HERMES.

Based on the foregoing, the Board found relevant consumers are likely to confuse the source of pet beds and toys bearing the disputed mark with Hermes International in view of close association with fashion items as well, and decided to invalidate the disputed mark entirely.