カテゴリー: Likelihood of confusion

JPO Dismisses IOC’s Opposition Against “OLYMPIA” Logo Mark

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The Japan Patent Office (JPO) dismissed an opposition filed by the International Olympic Committee (IOC) seeking the cancellation of Trademark Reg. No. 6571632 for a composite mark containing the word “OLYMPIA” in Class 44.
[Opposition case no. 2022-900358, decided on August 27, 2026]

Contested mark

The contested mark consists of three elements arranged vertically as shown below in connection with the services of “Providing massage, chiropractic, acupuncture, moxibustion, judo seifuku (bone setting), aromatherapy, and nutritional guidance” in Class 44.

  1. Top: A design depicting a droplet shape wrapped from below by two arc-shaped branches with leaves facing each other.
  2. Middle: The word “OLYMPIA” represented in bold, prominent lettering (with a larger letter “O”).
  3. Bottom: The phrase “OLYMPIA is the concierge of your body.” in smaller, thin text.

The mark was filed by a Japanese individual with the JPO on March 24, 2022. By virtue of the accelerated examination requested by the applicant, the mark was granted registration in less than three months, on June 14, 2022. [TM Reg no. 6571632]

https://www.karada-concierge.com/

IOC’s Opposition

The opponent, the International Olympic Committee (IOC), filed an opposition on August 22, 2022, arguing that the registration should be canceled under Article 4(1)(xv) of the Japanese Trademark Law, which prohibits registration of marks likely to cause confusion with another person’s well-known goods or services.

The IOC relied on IR no. 1128501 for its well-known mark “OLYMPIC” (and related marks/symbols), claiming that:

  • The prefix “OLYMPI-” is identical.
  • The opponent uses various terms starting with “OLYMPI-” such as “OLYMPIAN” or “OLYMPISM.”
  • The leaf-branch design in the contested mark evokes an association with the Olympic Games (e.g., laurel crowns).
  • Due to the immense fame of the “OLYMPIC” mark, relevant consumers in Japan would associate the contested mark with the IOC or assume a business or economic connection between the parties.

JPO Decision

The JPO Opposition Board dismissed the IOC’s arguments and maintained the registration based on the following grounds:

1. Famousness of the Opponent’s Mark

The Board recognized that the cited mark “OLYMPIC” is widely famous among Japanese consumers as an indicator of the Olympic Games hosted by the IOC.

2. Degree of Similarity Between the Marks

  • Dominant Portion: The Board held that the middle text “OLYMPIA” serves as the dominant, distinctive feature of the contested mark because the top logo design generates no specific conceptual meaning and the bottom sentence (“OLYMPIA is the concierge of your body.”) is printed in extremely small font and lacks distinctive dominance.
  • Visual: Comparing “OLYMPIA” and “OLYMPIC,” both consist of 7 letters, sharing the first 6 letters in upper-case letters. Although the ending letters (“A” vs. “C”) differ, the visual impression remains similar.
  • Aural: “OLYMPIA” (5 syllables: O-ri-n-pi-a) and “OLYMPIC” (6 syllables: O-ri-n-pi-k-ku) share the first 4 syllables (O-ri-n-pi), but the endings (-a vs. -k-ku) are clearly distinguishable by ear.
  • Conceptual:
    • “OLYMPIA” evokes the concept of Olympia, the ancient Greek plain and birthplace of the ancient Olympic Games.
    • “OLYMPIC” evokes the modern Olympic Games.
    • Because “OLYMPIA” is a recognized geographic name/dictionary word, the two marks convey distinct concepts and do not cause conceptual confusion.
  • Overall: Although visually similar to some degree, the low similarity in sound and distinctness in concept mean the overall degree of similarity between the marks is low.

3. Connection Between Services and Likelihood of Confusion

  • Service Relationship: The contested services in Class 44 (massage, chiropractic, acupuncture, nutritional guidance, etc.) differ significantly in nature, purpose, channels of trade, and business categories from the IOC’s core services (planning and managing sports events). The connection between the respective services is very low.
  • No False Association: The Board rejected the IOC’s claim that the leaf/droplet design in the contested mark misleads consumers into believing there is an official association with the Olympic Games, as there was no evidence showing that this specific design is widely used by or associated with the Olympic Games.
  • Conclusion: Given the low similarity between the marks and the low relationship between the services, relevant consumers in Japan are unlikely to associate “OLYMPIA” with “OLYMPIC” or assume any organizational or economic connection to the IOC.

Accordingly, the JPO concluded that the contested mark does not fall under Article 4(1)(xv) and upheld the registration.

“LuLuLun” vs. “rururun”: JPO Dismisses Opposition by Popular Face Mask Brand Against Footwear Mark

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The Japan Patent Office (JPO) dismissed an opposition filed by Dr. LuLuLun Inc., maker of Japan’s top-selling face mask brand “LuLuLun”, seeking to cancel trademark registration No. 6995158 for a stylized mark “rururun / ルルルン” registered for footwear and apparel in Class 25, due to visual distinctions and the limited reputation of the cited mark outside the field of face masks and related cosmetics.
[Opposition case no. 2026-900047, decided on August 4, 2026]

“rururun / ルルルン”

The opposed mark (Reg. No. 6995158) consists of the stylized white-out alphabets “rururun” (with small circular cutouts inside the two “u”s) positioned above the small Japanese Katakana characters “ルルルン” (transliteration of “rururun” and a pink horizontal rectangle (see below).

The mark was applied for on September 12, 2025, by My Planet Co., Ltd. and registered on December 9, 2025, for footwear, slippers, sandals, clothing, and related goods in Class 25.

Opposition by Dr. LuLuLun

On opposition, Dr. LuLuLun Inc. claimed that the opposed mark should be canceled under Articles 4(1)(xv) and 4(1)(xix) of the Japan Trademark Law.

The opponent argued that:

  1. High Renown: The cited marks for LuLuLun (TM Reg. Nos. 5473904 and 5662305) have achieved immense fame as Japan’s No. 1 face mask brand, selling over 2.4 billion sheets across 20,000 retail locations nationwide.
  2. Likelihood of Confusion (Article 4(1)(xv)): The marks share the exact same phonetic reading. Moreover, given the increasing trend of cosmetic brands collaborating with fashion and loungewear brands (e.g., SNIDEL HOME, LUSH, SHISEIDO MEN), consumers would likely assume a commercial connection or assiciation between the parties.
  3. Bad Faith / Free-Riding (Article 4(1)(xix)): The applicant advertised slippers on a home shopping channel using the mark and customer reviews included comments such as, “I thought it was a bit pricey, but since it’s a LuLuLun product, I clicked buy,” demonstrating clear intent to free-ride on the opponent’s goodwill.

JPO Board Decision

The JPO Board dismissed the opposition on August 4, 2026, upholding the registration of the opposed mark based on the following findings:

  1. Scope of Well-Knownness: The Board recognized that “LuLuLun” is well-known among Japanese consumers for face masks and closely related cosmetic products. However, there was no evidence showing that the mark’s fame extended beyond cosmetics into apparel, footwear, or general daily goods.
  2. Visual & Overall Dissimilarity:
    • Visuals: The marks differ significantly in overall configuration, background shapes, and typography. Comparing the letterings, “rururun” (with initial/internal ‘r’s) and “LuLuLun” (with prominent ‘L’s) leave distinctly different visual impressions.
    • Phonetics & Semantics: While both marks share the identical phonetic sound “rururun”, sound alone cannot override the severe visual differences. Neither mark conveys a specific conceptual meaning.
    • Conclusion on Similarity: Taken as a whole, the marks are dis-similar.
  3. No Likelihood of Confusion (Article 4(1)(xv)): Given the low degree of similarity between the marks and the difference in commercial channels (cosmetics vs. footwear/clothing), consumers are unlikely to confuse the origin of the goods in question or assume an organizational connection. The Board noted that brand collaborations alone do not mean cosmetics and apparel are produced or distributed by the same entities as a general market practice.
  4. No Bad Faith (Article 4(1)(xix)): The evidence was insufficient to establish that the trademark owner acted with unfair intent or bad faith to dilute or free-ride on the opponent’s brand reputation.

Marriott’s W Hotels Fails to Overturn Registration of “THE W Relax Garden Resort” in Japan

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The Japan Patent Office (JPO) dismissed an opposition filed by Marriott International’s affiliate against the trademark registration for standard characters “THE W Relax Garden Resort” (TM Reg. No. 6977166), finding it dissimilar to the famous luxury hotel brand’s “W / HOTELS” composite marks and concluding that there was no likelihood of confusion under Japanese trademark law.
[Opposition Case No. 2025-900283, Decided on July 23, 2026]

Contested Mark

The contested mark, consisting of the standard characters “THE W Relax Garden Resort”, was filed by Sokyu Co., Ltd. with the JPO on July 23, 2025 [TM App. No. 2025-83433], designating services in Class 43 (e.g., providing temporary accommodation, catering, campground facilities) and Class 44 (e.g., providing bath/sauna facilities, beauty salon services, massage, landscape design).

The applicant filed a request for accelerated examination with the JPO on the filing date based on the fact that it had already launched glamping resort facilities using the mark in Japan. Accordingly, the contested mark was registered on October 15, 2025, without facing any office action [TM Reg no. 6977166].

https://thew.jp/

Opposition by Marriott / W Hotels

The Opponent (owner of the W HOTELS brand under Marriott International) filed a trademark opposition on December 15, 2025, requesting the cancellation of the contested registration under Articles 4(1)(xi) and 4(1)(xv) of the Japanese Trademark Law.

The Opponent cited four prior registrations (including TM Reg. Nos. 4965244, 5331759, 5046547, and 5294655) for composite marks featuring a prominent, styled letter “W” positioned above the smaller word “HOTELS” (see below) in Classes 35, 36, 39, 43, 44, and 45.

Main Arguments of the Opponent

  1. Similarity of Marks (Article 4(1)(xi)):
    • The prefix “THE W” forms the dominant visual and distinctive feature of the contested mark because the subsequent portion, “Relax Garden Resort,” merely indicates the characteristics and nature of hotel/resort/spa services in Class 43 and Class 44.
    • Excluding the generic English definite article “THE,” consumers would focus on “W”, rendering the contested mark confusingly similar in sound and concept to the cited “W / HOTELS” marks.
  2. Likelihood of Confusion / Reputation (Article 4(1)(xv)):
    • Since the opening of W New York in 1998, the W HOTELS brand has expanded to around 70 luxury lifestyle hotel locations globally. In Japan, W OSAKA opened in March 2021 to significant media coverage and won three titles at the 2023 World Luxury Hotel Awards.
    • Due to extensive promotional activities, community collaborations, and media exposure, the cited “W / HOTELS” mark and the standalone “W” logo had become widely known among Japanese traders and consumers as source indicators of the Opponent’s high-end hotel, dining, spa, and event services.
    • Therefore, use of “THE W Relax Garden Resort” on identical or closely related services would lead relevant consumers to misbelieve that the services originate from or are economically connected to Marriott’s W Hotels brand.

JPO Board Decision

The JPO Opposition Board evaluated both grounds and ruled to maintain the registration.

1. Assessment of Mark Similarity (Article 4(1)(xi))

  • Visual Aspect: The contested mark “THE W Relax Garden Resort” is composed of plain standard characters rendered continuously with uniform font and size. Although both marks share the single letter “W,” their overall character sequences are entirely different, making them clearly distinguishable visually.
  • Aural Aspect: The contested mark is pronounced smoothly as a single unit: “Za-Da-Bu-Ryu-Ri-Rak-Ku-Su-Gaa-Den-Ri-Zoo-To.” In contrast, the cited mark yields the pronunciation “Da-Bu-Ryu-Ho-Te-Ru-Zu.” The sound structures, cadences, and syllable counts are distinct and easily distinguishable by ear.
  • Conceptual Aspect: Neither mark produces a specific, definite conceptual meaning as a whole. Thus, a conceptual comparison cannot be drawn.

Consequently, considering the overall visual, aural, and conceptual differences, the Board concluded that the marks are dissimilar as a whole, rendering Article 4(1)(xi) inapplicable even though the services in question are identical or similar.

2. Lack of Concrete Evidence on Well-Known Status & No Likelihood of Confusion (Article 4(1)(xv))

  • Insufficient Quantitative Proof: While the Opponent established the global presence of W Hotels and the opening of W OSAKA in 2021 alongside local event participation, the Board pointed out that the Opponent failed to submit concrete, quantitative evidence—such as overall sales turnover, market share in Japan, and the specific scale/budget/reach of advertising campaigns using the cited marks.
  • Without objective numerical evidence, the Board could not find that the cited mark “W / HOTELS” or the standalone “W” logo had achieved a high degree of recognition (well-known status) among Japanese consumers at the time of filing or registration of the contested mark.
  • Low Similarity Eliminates Confusion: Furthermore, because “THE W Relax Garden Resort” and “W / HOTELS” are overall dissimilar marks, consumers encountering the contested mark on Class 43 or Class 44 services would not reasonably associate or connect it with Marriott’s W Hotels brand.

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

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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.

JPO found “BUZZ Pay” dissimilar to “BUZZ” for cashless payment services

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The Japan Patent Office (JPO) Appeal Board reversed an examiner’s refusal of “BUZZ Pay,” finding that it was dissimilar to the earlier mark “BUZZ” for cashless payment services.
[Appeal case no. 2026-004207, decided on July 23, 2026]

1. BUZZ Pay (Applied Mark)

The applicant, BUZZ GROUP Co., Ltd., filed a trademark application for the word mark “BUZZ Pay” in standard character for use in connection with cashless payment services, such as cryptocurrency management/exchange, electronic funds transfer, credit/debit card payment settlement, prepaid card issuance in Class 36 with the JPO on July 14, 2025 [TM App no. 2025-79480].

2. Examiner’s Refusal / Cited Mark

The JPO Examiner refused the registration of the applied mark “BUZZ Pay” under Article 4(1)(xi) of the Japanese Trademark Law (prohibiting registration of marks similar to prior registered trademarks) by citing TM Reg no. 6346356 for a composite mark consisting of the term “BUZZ” and a device featuring two hexagonal frames with a yellow lightning bolt (see below) in Class 36.

The examiner considered the initial term “BUZZ” as the dominant/essential portion of “BUZZ Pay” and concluded that it was confusingly similar to the cited mark “BUZZ”.

To contest, the applicant appealed the examiner’s refusal to the JPO Appeal Board.

3. JPO Appeal Board Decision

The JPO Appeal Board reversed the refusal and granted registration for “BUZZ Pay”, finding that the two marks are dissimilar and unlikely to cause confusion.

(1) Integrated Perception in the Payment Sector

Although “Pay” literally means payment or expenditure, the Board recognized that the combination format of “[Brand] + Pay” (e.g., Yucho Pay, Bank Pay, au PAY, Amazon Pay, Merpay, PayPay, Rakuten Pay) is widely used as a standard service name in the cashless payment industry.

Because consumers are familiar with this naming structure, they naturally perceive “BUZZ Pay” in its entirety as an indivisible, unitary trademark, rather than focusing solely on “BUZZ”.

(2) Comparison of Similarity

  • Appearance (Visual): “BUZZ Pay” is a pure word mark, whereas the cited mark contains prominent graphical elements (hexagonal frames and a lightning symbol). The presence of “Pay” also creates a clear visual difference.
  • Pronunciation (Phonetic): “BUZZ Pay” is pronounced as “Ba-zu-pei” (4 syllables in Japanese), whereas the cited mark is pronounced as “Ba-zu” (2 syllables). The sound of “Pay” ensures clear phonetic distinction.
  • Concept (Conceptual): “BUZZ Pay” is recognized as a coined, unitary mark that conveys no specific conceptual meaning as a whole. Conversely, the cited mark evokes the dictionary definition of the English word “buzz” (humming or buzzing sound).

Based on the above findings, the Appeal Board observed that “BUZZ Pay” cannot be dissected into “BUZZ”. Viewed as a whole, it clearly differs from the cited mark in appearance, sound, and concept. Therefore, even if the services in question are deemed similar, the applied mark should not be rejected in relation to the cited mark based on Article 4(1)(xi).

“HARIBOW” vs. “HARIBO” – German Candy Giant Fails to Block Similar Mark in Class 41

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The Japan Patent Office (JPO) dismissed an opposition filed by HARIBO Holding GmbH & Co. KG against TM Reg. No. 6904890 for wordmark “HARIBOW” in Class 41 despite finding a high degree of visual and phonetic similarity with their famous brand “HARIBO” for gummy candy.
[Opposition case no. 2025-900106, decided on July 10, 2026]

HARIBOW

The contested mark, “HARIBOW” (Reg. No. 6904890), written in standard block letters, was filed on August 8, 2024, and registered on March 6, 2025 for use on various entertainment and educational services in Class 41, including:

Providing images via the internet, movie showing/production/distribution, providing music via the internet, organization of sports events, seminars, video production, operating sound/video studios, and related entertainment services.

Opposition by HARIBO

On May 13, 2025, HARIBO Holding GmbH & Co. KG, a world-famous confectionery company founded in Germany in 1920, filed an opposition claiming that “HARIBOW” should be canceled under Article 4(1)(xv) of the Japanese Trademark Law.

HARIBO argued that the registration creates a likelihood of confusion regarding the commercial source of services, given the immense global and domestic reputation of its cited trademark “HARIBO”.

JPO Decision

The JPO Board of Opposition dismissed the opposition and decided to maintain the registration of “HARIBOW”, citing the following reasons:

1. Fame of the Cited Mark (“HARIBO”)

While the JPO acknowledged that HARIBO gummies have been sold in Japan since around 1985 and gained traction around 2021 through award-winning TV commercials, it held that the mark was not widely recognized among Japanese consumers at the time of filing and registration.

  • Lack of Historical Evidence: The opponent failed to submit objective evidence demonstrating continuous sales volume, store numbers, or market share in Japan between 2000 and 2024.
  • Brief Advertising History: Promotional activities were mostly limited to a TV commercial campaign in 2021, and the Japanese subsidiary was only established in 2023—shortly before the contested mark’s filing date.
  • Niche Product Category: HARIBO’s mark is used solely for gummy candy (a single product category) rather than a broad range of consumer goods.

2. Similarity of the Marks

The JPO determined that the degree of similarity between “HARIBOW” and “HARIBO” is HIGH.

  • Visuals: Both marks share the identical first six letters (“HARIBO”), differing only in the trailing letter “W”.
  • Pronunciation: Both generate the primary pronunciation “HA-RI-BOH”, making them phonetically confusing when spoken sequentially.

3. Relatedness of Goods/Services & Likelihood of Confusion

Despite the high similarity between the marks, the JPO concluded there is NO likelihood of confusion.

  • Unrelated Industries: “HARIBO” is used for gummy candies (Class 30), whereas “HARIBOW” covers Class 41 entertainment services. The trade channels, manufacturing processes, and target users are fundamentally distinct.
  • Even if gummy candies are sold at cinemas or entertainment venues, the JPO found no functional or economic connection between confectionery sales and entertainment service providers.
  • Since “HARIBO” was not proven to be broadly well-known across general industries, consumers would not associate “HARIBOW” in Class 41 with the German confectionery brand.

Why trademark owner for popular Finnish outdoor game “MÖLKKY” couldn’t win trademark opposition againt Japan Mölkky Association

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In a trademark dispute involving “MÖLKKY”—the popular Finnish lawn bowling game, the Japan Patent Office (JPO) did not side with Tactic Games Oy, the IP owner of the game, who opposed TM Reg No. 6906850 for a composite mark “MÖLKKY WORLD CHAMPIONSHIPS – HAKODATE, JAPAN” in the name of the Japan Mölkky Association.
[Opposicion case no. 2025-900111, decided on June 23, 2026]

Contested mark

Japan Mölkky Association filed a trademark application for a composite mark consisting of a maroon double-circle design containing 12 white ovals, featuring the text “MÖLKKY WORLD CHAMPIONSHIPS / HAKODATE / JAPAN” integrated seamlessly within the circular border (see below) for use on various goods and services in Classes 9, 21, 25, and 41 with the JPO on June 21, 2024 [TM App No. 2024-6998].

The JPO granted registration of the mark on March 12, 2025 [TM Reg No. 6906850], and then published it for post-grant opposition on March 21, 2025.

Opposition by Tactic Games Oy

On May 21, 2026, just before the lapse of two-month statutory opposition period, Tactic Games Oy, the IP owner of the popular Finnish outdoor game, filed a trademark opposition against the contested mark. The opponent requested the cancellation of its registration based on Article 4(1)(xi) and 4(1)(xv) of the Japan Trademark Law, citing its own earlier registered marks in Japan.

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

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

JPO decision

1. The Pitfall of Evidentiary Shortfalls: “Well-Known” Status Denied

To succeed in a likelihood of confusion claim under Article 4(1)(xv), an opponent must demonstrate that their mark is widely recognized among Japanese consumers.

While the JPO acknowledged that the game “Mölkky” is recognized in Japan and that Tactic Games’ products are sold via local distributors, it pointed out a fatal flaw in the evidence:

The Opponent failed to provide specific figures regarding sales duration, sales volume, revenue, market share, or the scale of advertising campaigns prior to the application date.

Consequently, the JPO found that “MÖLKKY” could not be recognized as a source indicator widely known among Japanese consumers for Tactic Games’ business.

2. The Rules of Engagement: No “Separation” of Composite Marks

Under Article 4(1)(xi), Tactic Games argued that the term “MÖLKKY” constitutes a prominent element that is sepearable from the other elements of the contest mark, and therefore, it is permissible to compare this specific element with the cited marks.

The JPO rejected this dissecting approach, ruling that:

  • The text “MÖLKKY WORLD CHAMPIONSHIPS,” “HAKODATE,” and “JAPAN,” along with the graphic elements, are harmoniously and integrally represented within the circular logo.
  • Because the word “MÖLKKY” was not proven to be exceptionally well-known in Japan, consumers would not naturally focus soly on that specific textual portion.

Therefore, the JPO held that dissecting the term “MÖLKKY” for a similarity comparison was legally impermissible. Based on the foregoing, the JPO dismissed the entire opposition due to the dissimilarity of the marks when compared as a whole.

The “ZOOM” Trademark Infringement Verdict

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A landmark trademark ruling was handed down by the Tokyo District Court on April 24, 2026, ordering Zoom Communications Inc. to pay approximately JPY 166 million in monetary awards while completely dismissing the request for a service injunction.
[Court case no. Reiwa3(wa)30190, decided on April 24, 2026]

Plaintiff

Zoom Corporation, a Japanese company developing and selling electronic musical instruments and audio/video equipment, has held TM Registration No. 4940899 for the stylized mark “ZOOM” under Class 9 for “computer programs” since 2006.

Defendant

Zoom Communications, Inc., a U.S. corporation, established in 2011, has been providing the “Zoom” web conferencing service globally, including in Japan, since 2012. By 2019, the service had hosted over 8 million web conferences for more than 400,000 users across Japan.

In 2020, as COVID-19 spread and the government declared a state of emergency, the adoption of remote work skyrocketed among Japanese companies. This triggered explosive growth in the use of web conferencing systems. Japan’s overall utilization rate jumped from 44% at the end of December 2019 to 63% by the end of April 2020. During this surge, Zoom’s market share captured 35% in May 2020 and further expanded to a dominant 61% by October 2021.

Tokyo District Court decision

1. Are Free Downloadable Apps Considered “Goods”?

The Defendant argued that its free downloadable software did not constitute “goods” under the Japan Trademark Law. However, the Court rejected this, ruling that even if software is provided free of charge, it offers independent utility and commercial value to users. Thus, it is evaludated s “goods (computer programs)” under Class 9, and its distribution constitutes trademark usage.

2. The “Cut-off” Date for Confusion

The most unique aspect of this ruling is how the Court established a strict temporal boundary for “likelihood of confusion” based on shifting market realities:

  • Up to June 2020: There was a legitimate likelihood of confusion among general consumers regarding the source of the software, establishing trademark infringement.
  • From July 2020 Onward: Driven by the explosive adoption of remote work during the pandemic, the Defendant’s “Zoom” service achieved an overwhelming 74.7% recognition rate in Japan. Because the “ZOOM” mark became universally famous as the Defendant’s specific service, the Court ruled that the likelihood of confusion had entirely ceased to exist.

3. Injunction Standards: Why the App Stayed Online

Under Japanese law, a claim for an injunction is evaluated based on the market conditions at the close of oral arguments (January 19, 2026). Because the Defendant’s mark had already become too famous for consumers to confuse it with the Plaintiff’s goods or services by this date, the Court denied the Plaintiff’s request for an injunction order.

4. Calculation of Monetary Award (Unjust Enrichment)

The Court found the Defendant liable for infringement on the Plaintiff’s trademark rights from February 1, 2016, to June 30, 2020 (the period before the Defendant’s ZOOM mark became famous). While the Plaintiff’s tort-based damages claim for the period prior to October 18, 2019, had expired due to the 3-year statute of limitations, the claim for the return of unjust enrichment (based on a reasonable licensing fee) was still valid. Utilizing a standard licensing fee model, the Court awarded JPY 166,219,358 based on the Defendant’s historical revenues in Japan.

Trademark Dispute: PINGU vs pingu・pongu

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In a recent opposition decision, the Japan Patent Office (JPO) dismissed an opposition claimed by Joker, Inc. against TM Reg no. 6924753 for wordmark “pingu・pongu”, finding dissimilarity to and unlikelihood of confusion with the opponent’s earlier mark “PINGU.”
[Opposition case no. 2025-900151, decided on May 22, 2026]

Contested mark

A Japanese individual filed trademark application for wordmark “pingu・pongu” in standard character for use on several services in Class 41, including educational and instruction service, arranging seminars, providing electronic publications, and amusement with the JPO on October 3, 2024 [TM App no. 2024-106222]

The JPO granted registration of the mark on May 1, 2025, and published it for a post- grant opposition on May 13, 2025.

Opposition by Joker, Inc.

Joker, Inc., an owner of the copyright and trademark rights featuring a 5-year-old boy penguin character “Pingu”, filed an opposition on July 11, 2025 and claimed cancellation of the contested mark in contravention of Article 4(1)(vii), (xi), (xv) and (xix) of the Trademark Law based on their earlier trademark registration no. 5316898 (see below).

The JPO Opposition Board decision

1. Recognition of the cited mark “PINGU”

The JPO acknowledged that the name “PINGU” (ピングー), associated with the well-known penguin character, had been used in Japan since the 1990s and had achieved a certain degree of public recognition by the early 2000s.

However, the Office found that the evidence submitted by the opponent was insufficient to demonstrate that the cited mark remained widely recognized at the time the contested mark was filed and registered. While the record showed ongoing activities such as merchandise sales, social media promotions, and events involving PINGU, no evidence was provided regarding sales figures, market share, advertising expenditures, or the current level of consumer recognition.

The JPO also noted the absence of objective evidence linking those activities directly to the opponent’s business. As a result, the Office concluded that the opponent had failed to prove that the cited mark PINGU was widely recognized among consumers in Japan or abroad as indicating the opponent’s goods or services.

2. Comparison of two marks

Although the mark contains the element “pingu,” the two components are represented in the same font, size, and spacing, and are connected by a centered do, the JPO held that the contested mark “pingu・pongu” should be viewed as a single, inseparable coined term. The pronunciations, “Pingu-Pongu,” are neither awkward nor unnatural. Since neither “pingu” nor “pongu” has a recognized meaning in ordinary dictionaries, consumers would perceive the mark as a whole as an invented term without any particular meaning.

The cited mark consisted of a penguin character design incorporating the word “PINGU,” together with the wording “PINGU’S ENGLISH.”

According to the JPO, both the figurative and verbal elements of the cited mark could independently function as source identifiers. The literal elements therefore generated pronunciations such as “Pingu,” “Pingu’s English,” but conveyed no specific meaning because the elements are coined terms.

3. No Likelihood of Confusion

Comparing the marks, the JPO found significant differences in appearance. The cited mark contains a prominent penguin device and additional wording, whereas the contested mark consists solely of the standard-character expression “pingu・pongu.”

The Office also determined that the respective pronunciations are clearly distinguishable. “Pingu-Pongu” differs substantially in both syllabic structure and overall sound from “Pingu,” and “Pingu’s English.”

As neither mark conveys a particular concept, no conceptual comparison could be made.

Considering the visual and phonetic differences as a whole, the JPO concluded that the marks are dissimilar and unlikely to be confused. Consequently, the contested mark did not fall within Article 4(1)(xi) and (xv) of the Trademark Law.

ARC’TERYX Unsuccessful Trademark Opposition against “Arcsilk”

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The Japan Patent Office (JPO) dismissed an opposition filed by Amer Sports Canada Incorporated against TM Registration No. 6889980 for the wordmark “Arcsilk” in Class 25, finding it dissimilar to and unlikely to be confused with “ARC’TERYX.”
[Opposition Case No. 2025-900056, decided on April 6, 2026]

The Contested Mark: “Arcsilk”

The contested mark, consisting of the word “Arcsilk” in standard characters, was filed by NIHONWASOU HOLDINGS, Inc. on December 27, 2023 [TM App. 2023-143938]. The application designates various goods, including clothing and footwear, in Classes 24 and 25.

The JPO examiner found no grounds for refusal and granted registration of the mark on September 20, 2024. Subsequently, the mark was published for post-grant opposition on January 11, 2025.

Opposition by ARC’TERYX

Amer Sports Canada Incorporated filed an opposition on March 12, 2025, seeking cancellation of the contested mark based on Article 4(1)(xi) and (xv) of the Japan Trademark Law, citing its earlier trademark registration No. 6748891 for the wordmark “ARC’TERYX” in Class 25.

In the opposition, the claimant alleged that the cited mark has become so widely known both in Japan and overseas that the use of the characters “ARC’TERYX” on outdoor goods immediately causes traders and consumers to recognize it as referring to the claimant. Furthermore, they argued that the term “ARC” is widely recognized even among general consumers as referring to the “ARC’TERYX” brand. The claimant contended that “silk” is a descriptive term for raw materials in Class 25 and cannot function as a source indicator. Therefore, they argued that “Arc” is the dominant portion of the contested mark. Since both marks share the dominant element “ARC,” the claimant asserted they are confusingly similar in appearance, concept, and pronunciation.

Additionally, the claimant argued that because the goods and target consumers are identical, the use of “Arcsilk” would lead consumers to misidentify the goods as being from a business entity with an economic or organizational relationship with the claimant.

JPO Decision

Surprisingly, the JPO Opposition Board found that the cited mark “ARC’TERYX” had not achieved a level of widespread recognition sufficient to support the claim of being a famous mark, stating:

“No evidence has been submitted that would allow for an objective and concrete assessment of facts concerning the period of use of the cited mark; sales figures, market share, and business scale; or the expenditures, methods, frequency, and duration of advertising activities. Consequently, we cannot find that the cited mark ‘ARC’TERYX’ was widely recognized among domestic dealers and consumers as an indication of the claimant’s goods at the time of the application or the registration of the contested mark.”

Regarding the similarity of the marks, the Board found that:

  • Visually: The marks are clearly distinguishable due to the presence of the apostrophe and the difference between “silk” and “TERYX.”
  • Aurally: “Arc-silk” and “Arc-teryx” differ in syllable count and constituent sounds, making them clearly distinguishable even when pronounced continuously.
  • Conceptually: The comparison is neutral as neither mark gives rise to a specific, well-defined meaning.

Based on the finding that the cited mark lacked evidence of widespread recognition and possessed a low degree of similarity to the contested mark, the Board concluded there was no risk of confusion. Consequently, the Board ruled that the contested mark should not be cancelled under Article 4(1)(xi) or (xv) of the Trademark Law.