Likelihood of confusion

JPO Decision: KATSEYE is Dissimilar to CAT’S EYE for Watches

Posted on2025年8月30日2025年9月12日

The Japan Patent Office (JPO) dismissed an opposition filed by Sowind S.A. against TM Reg no. 6876057 for word mark “KATSEYE” who claimed its cancellation based on earlier IR no. 1056129 for word mark “CAT’S EYE” by finding dissimilarity between the marks.
[Opposition case no. 2025-900048, decided on August 15, 2025]

KATSEYE

HYBE UMG LLC, American record company jointly founded by South Korean entertainment company, HYBE and Universal Music Group (UMG), filed a trademark application for word mark “KATSEYE” in standard character for use on various goods and services in Classes 9, 14, 16, 18, 25, 28, 41, and 42, including watches (cl. 14) with the JPO on May 15, 2024 [TM App no. 2024-51239].

The JPO examiner granted registration of the mark on Decem 3, 2024, and published it for a post-grant opposition on December 23, 2024.

CAT’S EYE

Sowind S.A. filed an opposition on February 25, 2025 by citing earlier IR no. 1056129 for word mark “CAT’S EYE” in standard character for use on watches which do not contain chrysoberyl cat’s eyes in Class 14.

Sowind S.A. argued the contested mark should be cancelled in contravention of Article 4(1)(xi) of the Japan Trademark Law on the ground that the contested mark “KATSEYE” is confusingly similar to the cited mark “CAT’S EYE” from visual, phonetic and conceptual points of view, and the goods designated under the contested mark in Class 14 is identical or similar to watches.

JPO Decision

The JPO Opposition Board assessed similarity of the marks and found that the contested mark is dissimilar to the cited mark by stating that:

The term “KATSEYE” does not appear in ordinary dictionaries and no circumstances have been identified indicating that it is recognized as having a specific meaning, it shall be perceived as a coined word that does not give rise to any particular concept.

With respect to coined words that lack a specific meaning, it is customary to be pronounced in accordance with commonly accepted English or Romanized readings. Accordingly, the contested mark, consistent with its composition, will be pronounced as “KATSU-AI” or “CATS-EYE” and has no specific meaning.

As the term “CAT’S EYE” bears the meaning of “chrysoberyl (cat’s eye),” the cited mark, in accordance with its composition, will be pronounced as “CATS-EYE” and gives rise to the concept of a “cat’s eye (gemstone).”

The contested mark and the cited mark, each consisting of no more than seven or eight letters, are clearly distinguishable in appearance by reason of the difference between the initial letter “K” and “C” and the presence or absence of an apostrophe (“’”) in the middle of the word.

When the contested mark is pronounced as “CATS-EYE”, both marks are identical in sound.

In comparing the sound “KATS-EYE” of the contested mark with the sound “CATS-EYE”, since both consist of only five syllables, the difference between the initial sounds “KA” and “KYA” exerts a non-negligible influence upon the overall pronunciation, whereby the two marks can be clearly distinguished in sound.

Further, while the contested mark does not give rise to any particular concept, the cited mark gives rise to the concept of a “cat’s eye (gemstone).” Accordingly, the two marks are not likely to be confused in concept.

In consequence, even if there is a case that the two marks can be identically pronounced, they are unlikely to be confused in appearance and concept. When the contested mark is pronounced as “KATSU-AI”, the two marks are sufficiently distinguishable in appearance, pronunciation, or concept. Therefore, taking into a global consideration commercial impression, memory, and association given to traders and consumers through their appearance, concept, and pronunciation, the contested mark and the cited mark are dissimilar and unlikely to cause confusion.

Based on the foregoing, the Board decided to dismiss the entire opposition.

JPO dismisses Honda’s opposition against “WONKEY” mark for motorcycles

Posted on2025年8月23日2025年8月30日

The Japan Patent Office (JPO) dismissed an opposition filed by Honda Motor Co., Ltd. against TM Reg No. 6852662 for the word mark “WONKEY” in Class 12, finding no similarity or likelihood of confusion with Honda’s well-known “MONKEY” bikes.
[Opposition Case No. 2024-900262, decided July 15, 2025]

The Contested Mark: “WONKEY”

The opposed mark, consisting of the stylized word “WONKEY” in bold font (see below), was filed by Diner Co., Ltd. on February 26, 2024, for use on motorcycles, electrically operated scooters, and electric bicycles in Class 12 [TM App. No. 2024-18623].

The applicant promotes “WONKEY” motorized bicycles that may be driven by persons over 16 years of age without a driver’s license.

The JPO granted registration on October 9, 2024 [TM Reg. No. 6852662], and published it for post-grant opposition on October 18, 2024.

Honda’s Opposition

On December 17, 2024, Honda filed an opposition, seeking cancellation under Article 4(1)(vii), (x), (xi), (xv), and (xix) of the Trademark Law, relying on its earlier Trademark Registration No. 2512844 for the stylized word mark “MONKEY” in Class 12.

Honda argued that “WONKEY” is visually similar to “MONKEY,” emphasizing that:

“Of the six letters, five (‘onkey’) are identical in type, spelling, and sequence. The only difference lies in the initial letters ‘w’ and ‘m,’ which themselves share similar forms composed of two v-shaped or u-shaped strokes. At first glance, the two letters appear alike, and thus the marks as a whole create a closely similar impression, rendering them confusingly similar in appearance.”

To support its case, Honda submitted extensive evidence demonstrating the fame of its “Monkey” bikes, which have been marketed since 1961.

The JPO’s Decision

The Opposition Board acknowledged the widespread recognition of Honda’s “Monkey” bikes among relevant consumers at the time of application and registration of the contested mark.

Nevertheless, the Board denied similarity between the marks. In particular, it reasoned that:

The contested mark “WONKEY” does not generate any specific concept.
The cited mark “MONKEY,” by contrast, is a well-known word in Japan with the meaning “monkey,” giving rise to both the pronunciation “monkey” and the concept of “monkey.”
While the two marks share all letters and sounds except for their initial characters (“w” vs. “m”; “wo” vs. “mo”), both are short (six letters and four sounds). Accordingly, the initial differences exert a significant impact on the overall appearance and pronunciation.
Coupled with the concept of “monkey” derived from the cited mark, these differences lead to a clear distinction in the overall impressions, memories, and associations conveyed to consumers.

The Board concluded that, given the low degree of similarity, relevant consumers were unlikely to confuse the source of the contested goods in Class 12 with Honda or any economically or organizationally related entity.

Based on the above findings, the JPO dismissed the opposition in its entirety and upheld the validity of the contested mark “WONKEY.”

UNDER ARMOUR Unsuccessful Challenge in Trademark Opposition against AROUMRIN

Posted on2025年7月27日2025年7月27日

The Japan Patent Office (JPO) dismissed the opposition filed by Under Armour, Inc. against TM Reg no. 6839569 for the stylized mark “ARMOURIN” in Classes 25 and 28 due to dissimilarity to and unlikelihood of confusion with earlier registrations for the mark “UNDER ARMOUR”.
[Opposition case no. 2024-900229, decided on July 2, 2025]

ARMOURIN

The contested mark (see below) was filed by AMH LO INC., a U.S. company, in connection with apparel and footwear, including golf shoes, in Class 25; and sporting articles, inter alia golf clubs, golf equipment, in Class 28, with the JPO on December 26, 2023 [TM App no. 2023-143646].

The JPO examiner, as a result of substantive examination, granted protection of the mark on August 6, 2024 without issuing an office action.

After registration, the mark was published in the gazette for a post-grant opposition on September 9, 2024.

Opposition by Under Armour

Under Armour, Inc., a U.S. sports apparel company, filed an opposition against the mark “ARMOURIN” with the JPO on November 8, 2024, and claimed cancellation based on Article 4(1)(xi) and (xv) of the Japan Trademark Law due to the similarity to and likelihood of confusion with their earlier registrations for the word mark “UNDER ARMOUR”.

Under Armour argued the contested mark contains the term “ARMOUR” that has become famous among relevant consumers of the goods in question and played a prominent role in identifying a commercial source of the goods bearing the cited mark. Therefore, the contested mark should be considered similar to the cited mark “UNDER ARMOUR” and likely to cause confusion with the opposer’s business when used on the goods in question.

The JPO decision

Article 4(1)(xi) – Similarity of mark

The JPO Opposition Board found that the contested mark does not give rise to any specific meaning as a whole.

Regarding the cited mark “UNDER ARMOUR”, the Board observed that there is reason to dissect the term “UNDER” and “ARMOUR” into individual parts from visual and conceptual points of view.

Global assessment suggests there is no similarity in appearance and sound. Besides, a conceptual comparison is neutral as neither the contested mark nor the cited mark has a clear meaning. Therefore, the marks are dissimilar, even if the goods in question are the same as those cited, by taking account of the overall impression, memory, and association created in the minds of relevant consumers.

Article 4(1)(xv) – Likelihood of confusion

The Board negated a famousness of the cited mark “UNDER ARMOUR” because the opposer failed to provide sufficient objective evidence of actual sales amount and advertising in Japan.

Bearing in mind that the contested mark has a low degree of similarity to the cited mark, there is no reason to believe that relevant consumers will confuse the source of the goods in question bearing the contested mark with Under Armour, the Board noted.

In the light of the foregoing, the Board dismissed the opposition and declared the contested mark valid as status quo.

Trademark Battle Over Swiss Flag-Like Cross Design

Posted on2025年7月19日2025年7月20日

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

WENGER

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

SWISSWIN

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

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

Tokyo District Court ruling

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

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

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

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

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

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

JPO found BYOMA and BIYŌMA dissimilar marks

Posted on2025年6月14日2025年6月21日

In an invalidation action disputing the validity of TM Reg no. 6637032 for the word mark “BIYŌMA” in class 3 due to its similarity to the earlier IR no. 1633315 for the word mark “BYOMA”, the Japan Patent Office (JPO) found BYOMA and BIYŌMA to be dissimilar.
[Invalidation case no. 2023-890015, gazette issued on May 30, 2025]

TM Reg no. 6637032

The contested mark, consisting of the word “BIYŌMA” in a plain font (see below), was filed with the JPO for use on cosmetics of class 3 in particular and various goods in classes 21, 24, 25 and 30 on March 17, 2022, by TSUKAMONO CORPORATION. [TM App no. 2022-30868]

The JPO examiner notified a refusal ground that states the mark is unregistrable due to a conflict with IR no. 1633315 for word mark “BYOMA” based on Article 4(1)(xi) of the Japan Trademark Law. The applicant filed a response in which they argued dissimilarity of mark.

Eventually, the examiner withdrew his refusal and granted protection of the mark on September 30, 2022.

The applicant promotes body cream, body soap, hand cream, and lip stick displaying the mark “BIYŌMA”.

Invalidation action by BYOMA Limited

BYOMA Limited, the owner of IR no. 1633315 “BYOMA”, filed an application for a declaration of partial invalidation to the contested mark on March 14, 2023 with the JPO in contravention of Article 4(1)(xi) of the Trademark Law, and disputed similarity between “BYOMA” and “BIYŌMA” in relation to cosmetics of class 3.

BYOMA Limited argued that the contested mark resembles the cited mark because it contains all of the letters that constitute the cited mark, and the difference in the second letter, “I,” is trivial. A conceptual comparison is neutral as both marks have any clear meaning. Besides, taking account of aural similarity, the contested mark should be considered similar to the cited mark.

JPO decision

On October 2, 2024, the JPO Invalidation Board dismissed the invalidation petition by stating that:

Visual Comparison

Although the contested mark and the cited mark contain the same letters “B,” “Y,” “O,” “M,” and “A”, there are differences in the presence or absence of the letter “I” in the second character and the hyphen in the letter “O.” These differences have a significant impact on the overall visual impression of the contested mark. Especially, when comparing the relatively short constituent characters of six and five letters. Therefore, both marks are clearly distinguishable in appearance.

Aural Comparison

There is a difference between “biyo” and “byo” in the initial sound, which is an important element in distinguishing the pronunciation. In the comparison of the short constituent sounds of four or three syllables, these differences affect the overall pronunciation of the two marks. Even when pronounced consecutively, the tone and feeling of the pronunciations differ to the extent relevant consumers can easily distinguish them phonetically.

Conceptual Comparison

The conceptual aspect does not have impact on the assessment of similarity, since both marks are meaningless.

Based on the foregoing, the Board decided that the contested mark is dissimilar to and unlikely to cause confusion with the cited mark even when used on the goods in question.

Trademark dispute over MASTER SOMMELIER

Posted on2025年6月8日2025年6月8日

The Japan Patent Office (JPO) decided to overturn the examiner’s rejection to TM App no. 2023-37634 for the mark “MASTER SOMMELIER OF SAKE” due to an unlikelihood of confusion with “The Court of Master Sommeliers” when used in connection with educational consultancy and examination services of class 41.
[Appeal case no. 2024-10027, decided on May 15, 2025]

MASTER SOMMELIER OF SAKE

Sake Sommelier Academy Limited, a UK company, filed a trademark application for the mark “MASTER SOMMELIER OF SAKE” (see below) for use on educational consultancy; educational examination; arranging, conducting and organization of seminars; providing electronic publications and other services in class 41 with the JPO on April 7, 2023.

The applicant works alongside a network of approved professional sake educators in all corners of the globe, to provide unprecedented Sake Sommelier training.

The Court of Master Sommeliers

On March 19, 2024, the JPO examiner rejected the applied mark because the term “MASTER SOMMELIER” is widely recognized by consumers as the highest-level sommelier qualification conferred by the Court of Master Sommeliers (CMS), a UK-based organization. Therefore, because of the close resemblance between the marks, using the applied mark in connection with the designated services could cause consumers to believe a source of the services in question from CMS or its association. Accordingly, the applied mark is unregistrable based on Article 4(1)(xv) of the Japan Trademark Law.

The applicant filed an appeal with the JPO to contest the rejection on June 17, 2024, and argued that there is no likelihood of confusion with CMS.

JPO decision

In global assessment of a likelihood of confusion, the JPO Appeal Board compared similarity of mark as one of the factors.

“When comparing the appearance of the applied mark with that of the cited mark, notable differences are evident. The applied mark contains a figurative element that represents a small sake cup (ochoko). The literal element of the applied mark contains the phrase “of Sake” at the end, which is not present in the cited mark. These differences have a significant impact on the overall visual impression, and the marks are therefore unlikely to be confused in appearance.

Secondly, with respect to pronunciation, “Master Sommelier of Sake” differs from “Master Sommelier” due to “of Sake” at the end. The distinction substantially alters the whole sound of respective marks, making the two marks clearly distinguishable.

Finally, a conceptual comparison is neural as neither the applied mark nor the cited mark has any clear meaning”.

In light of the foregoing, the Board found that two marks are deemed dissimilar overall, and the degree of similarity between them is low.

Given that it is unclear whether the cited mark is widely recognized among consumers in Japan as an indicator of services associated with CMS, using the applied mark by the applicant in connection with the services in class 41 is unlikely to cause traders or consumers to associate or recall the cited mark, the Board held.

Based on the foregoing, the JPO Appeal Board overturned the examiner’s rejection and granted protection of the applied mark accordingly.

Trademark dispute: MINI vs. DMINI

Posted on2025年5月3日2025年5月10日

The Japan Patent Office (JPO) dismissed an opposition claimed by BMW against TM Reg no. 6798869 for wordmark “DMINI” in class 12 due to dissimilarity to and unlikelihood of confusion with a famous small car “MINI”.
[Opposition case no. 2024-900137, Gazette issued date: April 25, 2025]

DMINI

Mitsubishi Motors Corporation filed a trademark application for word mark “DMINI” in standard character for use on automobiles, motorcycles, bicycles, electric cars, hybrid electric cars, driverless cars and other goods in class 12 with the JPO on October 10, 2023.

The JPO examiner did not raise any objection in the course of substantive examination, and granted registration on March 29, 2024.

The mark “DMINI” was published on trademark registration gazette (TM Reg no. 6798869) for a post-grant opposition on May 7, 2024.

Opposition by BMW

Bayerische Motoren Werke GmbH (BMW) filed an opposition with the JPO on July 5, 2024 before the lapse of two-month statutory period counting from the publication date.

BMW requested the cancellation of the mark “DMINI” based on Article 4(1)(vii), (xi), and (xv) of the Japan Trademark Law by citing its owned earlier trademark registrations for wordmark “MINI” in class 12.

Allegedly, the cited mark has become famous among the relevant consumers to indicate a source of the world-famous small cars “MINI” that have been imported into Japan for more than the past six decades. BMW argued that the literal element “MINI” would be dominant in the opposed mark, taking into account the high degree of recognition of the cited mark “MINI” among the consumers. If so, both marks should be considered similar, or likely to cause confusion in relation to the goods in question.

JPO decision

From the produced evidence, the JPO Opposition Board found the cited mark “MINI” has acquired a remarkable degree of popularity and reputation among consumers to indicate the automobiles (small cars) manufactured by BMW.

However, the Opposition Board question similarity of the marks by stating that:

“There is a difference in the presence or absence of the letter “D” at the beginning of each mark. The difference has a strong visual impact and is likely to create a different impression given the relatively short character structure of five and four letters respectively. Therefore, there is a low degree of visual similarity between the marks.

Secondly, there is a difference between in the overall sound of “DMINI” and “MINI” due to the presence or absence of the sound “D” at the beginning. It has a significant impact on the overall sound, given the short phonetic structure of four or two sounds, and thus the overall tone and aural impression are clearly different to the extent that a risk of confusion in pronunciation is not conceivable.

Thirdly, the opposed mark does not give rise to a specific meaning, whereas the cited mark has a meaning of “famous automobile brand owned by BMW”. If so, there will be any conceptual confusion.”

Even if the cited mark “MINI” has become famous and the goods in question are highly related to the goods bearing the cited mark administered by BMW, given the facts that the term “MINI” is not a coined word and the low degree of similarity between “MINI” and “DMINI”, the Board has no reason to believe that the consumers are likely to confuse a source of goods bearing the opposed mark “DMINI” with BMW.

Based on the foregoing, the Board decided to dismiss the entire opposition and declared the validity of the mark “DMINI” as status quo.

Trademark Dispute: Domino’s Pizza vs Dog’s Pizza

Posted on2025年4月27日2025年5月5日

In a trademark opposition against TM Reg no. 6804935 for the mark “Dog’s Pizza”, the Japan Patent Office (JPO) did not side with Domino’s IP Holder LLC, which claimed similarity to and likelihood of confusion with Domino’s red and blue rectangular emblem with three white dots.
[Opposition case no. 2024-900149, decided on April 2, 2025]

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.

HERMES Defeated with Trademark Opposition against KIMONO TWILLY

Posted on2025年4月19日2025年5月4日

The Japan Patent Office (JPO) dismissed an opposition filed by Hermes International against TM Reg no. 6753650 for the word mark “KIMONO TWILLY” in Class 18, claiming a likelihood of confusion with the Hermes scarves “TWILLY”.
[Opposition case no. 2024-900010 / Gazette issued date: March 28, 2025]

KIMONO TWILLY

The contested mark, consisting of word “KIMONO TWILLY” in standard character, was filed by NPO Kimono For World Heritage Promotion Committee for use on bags and pouches, purses, vanity cases in Class 18 with the JPO on April 20, 2023 [TM App no. 2023-49360].

“KIMONO” is a traditional piece of Japanese clothing like a long loose coat, worn at special ceremonies.

The JPO granted registration of the mark “KIMONO TWILLY” on October 13, 2024, without issuing any refusal notice, and published it for a post-grant opposition on November 22, 2023.

Hermes TWILLY

On Jan 19, 2024, Hermes International filed an opposition against “KIMONO TWILLY” based on Article 4(1)(xv) and (xix) of the Japan Trademark Law by citing an owned earlier TM Reg no. 4764732 for the word mark “TWILLY” in Classes 24, 25, and 26.

Hermes argued that the contested mark is confusingly similar to the earlier mark “TWILLY”, which has become famous for Hermes’ tie-like scarves, because the term “KIMONO” is less distinctive in relation to the goods in question.

Taking into consideration that the contested mark covers bags, which have a close association with Hermes, and that the “TWILLY” scarves are widely known to be used to wrap the handles of Hermes handbags, the relevant consumers are likely to confuse a source of the goods in question bearing the contested mark with Hermes. Given the significant popularity and reputation of the Hermes TWILLY scarves, the applicant would have to be in bad faith to free-ride on that reputation by deliberately adopting a similar mark.

JPO decision

The JPO Opposition Board noted the submitted evidence was inadequate to substantiate a high degree of recognition for the earlier mark “TWILLY” since Hermes failed to provide objective evidence concerning sales figures, market share, and advertising expenditures in Japan and other countries.

Additionally, the Board found that the contested mark should be assessed in its entirety even if the term “KIMONO” indicates a traditional piece of Japanese clothing, as the respective word of the contested mark is represented in the same font, size, and the whole sound is not too long.

If so, both marks are deemed dissimilar because there is a clear difference in appearance and sound even though a conceptual comparison is neutral as none of them have any clear meaning.

Based on the above findings, the Board has no reason to believe that relevant consumers of the goods in question would associate the contested mark with Hermes “TWILLY” scarves.

Consequently, the Board decided the contested mark should not be canceled in contravention of Article 4(1)(xv) and (xix).

Trademark Squatter Seeking to Ruin Luxury Brand with Obscene Language

Posted on2025年3月22日2025年3月28日

In May 2022, the Japan IP High Court ruled in favor of the plaintiff, OMEGA S.A. The case concerns cancellation of TM Reg no. 6277280 for the word mark “OMECO” in Class 14 (watches) owned by a Japanese company, OMECO Co., Ltd.

In the complaint, OMEGA S.A. argued that the contested mark is likely to cause confusion with world-famous brand “OMEGA” when used on watches. The court declared cancellation of the contested mark, however, not because of the LOC, but the likelihood of damage to public order or morality based on Article 4(1)(vii) of the Japan Trademark Law.

Do you think OMEGA S.A. is satisfied with the court’s decision?

As a matter of fact, the company continues to sell wristwatches bearing the mark “OMECO” even now.

https://omeco.buyshop.jp/

If the court ruled the case by finding a likelihood of confusion with OMEGA based on Article 4(1)(xv), the goods must be prohibited from selling because of trademark infringement or unfair competition. Ironically, the court decision encourages the company to promote watches bearing a vulgar, obscene, prurient and immoral mark by slightly changing famous luxury brands as shown below. The names have a vulgar, obscene and prurient meaning in Japanese.

https://omeco.buyshop.jp/

Not only the actual use, but the company is seeking trademark registration of these vulgar, obscene, lewd and immoral marks in Japan, which obviously intends to free-ride on famous luxury brands such as Cartier, PATEK PHILIPPE, HUBLOT, A. LANGE & SOHNE, RICHARD MILLE, BOTTEGA VENETA, ROLEX.

Recently, the Japan Patent Office (JPO) examiner issued an office action based on Article 4(1)(xi), (xv) and (xix) of the Trademark Law due to similarity to and likelihood of confusion with famous luxury brands.

It is anticipated that the company files a response to the office action and argue dissimilarity and unlikelihood of confusion by referring to the court decision since the rejection would affect their business.