カテゴリー: Refusal appeal

JPO Finds Game Software Similar to Computers and Display Monitors for Trademark Purposes

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In a recent appeal decision, the Japan Patent Office (JPO) upheld the examiner’s refusal to TM App no. 2024-134546 for wordmark “SHINOBI” after finding the designated game software similar to the cited electronic devices and display monitors.
[Appeal case no. 2025-9765, decided on May 22, 2026]

SHINOBI by SEGA

Sega Corporation, a Japanese video game company, filed an application to register the word mark “SHINOBI” in standard characters covering “game programs for mobile phones or computers; computer game software; virtual reality game software” in class 9 with the JPO on December 13, 2024 [TM App no. 2024-134546].

https://shinobi-art-of-vengeance.sega.jp/

JPO Examination

On March 24, 2025, the examiner rejected the mark based on Article 4(1)(xi) of the Japan Trademark Law by citing IR no. 1659265 for word mark “SHINOBI” in relation to the goods of “Electronic devices for displaying, editing, recording, encoding, storing, transferring, transmitting or reproducing data, electronic data, video and audio excluding electronic devices for playing video games; display monitors; apparatus for the reproduction of sound or images” in class 9.

The examiner considered the goods similar despite the applicant’s contention that game software and electronic devices are fundamentally different products produced and sold by different industries.

To contest, SEGA filed an appeal against the rejection on June 24, 2025, and challenging the examiner’s finding of similarity between the goods.

Appeal Board decision

The Appeal Board reiterated the long-established principle that the similarity of goods does not depend on whether consumers would confuse the goods themselves.

Instead, the relevant question is whether the use of identical or similar trademarks on those goods would lead consumers to believe that the goods originate from the same commercial source.

In making that assessment, the JPO considered factors such as:

• production channels;
• sales channels;
• quality and characteristics;
• intended purpose;
• consumer groups; and
• the relationship between finished products and components.

Hardware and software as closely related goods

The Appeal Board first observed that the cited goods essentially covered general-purpose electronic devices such as computers and smartphones, as well as display monitors.

Game software, by its nature, is executed on computers, smartphones, and similar electronic devices. Display monitors are likewise commonly used when operating computer games.

Accordingly, the JPO found that the cited electronic devices and monitors are products used to run or utilize the applicant’s game software, creating a close commercial relationship between the goods.

Production and sales channels

The applicant argued that game software is typically produced by game developers, whereas computers and monitors are manufactured by electronics companies.

However, the JPO relied on marketplace evidence showing that certain businesses manufacture and offer both gaming software and computer-related hardware products.

The Appeal Board therefore concluded that the production sources may overlap.

The same reasoning was applied to sales channels.

According to the JPO, game software, computers, and display monitors are frequently sold through the same retail outlets, including large electronics stores. In many cases, the products are displayed in close proximity and may even be offered by the same supplier.

Purpose and consumers

The Board also emphasized that gaming monitors are widely marketed and sold specifically for gaming purposes.

Moreover, although the cited specification expressly excluded dedicated video game consoles, it still encompassed general-purpose computers and smartphones capable of running games.

As a result, both categories of goods may, in certain circumstances, share the same gaming-related purpose.

The Board further noted that the relevant consumers substantially overlap, since both goods target ordinary consumers who use computers and similar electronic devices.

Software and hardware: a relationship close to components and finished products

Notably, the Board also addressed the relationship between software and hardware.

While acknowledging that software and hardware are not literally a finished product and its component, the JPO nevertheless found them to be closely comparable to such a relationship.

Game software is installed on electronic devices and used in conjunction with monitors. In practice, the products function together as part of a single user experience.

This functional interdependence weighed heavily in favor of finding similarity.

Conclusion

Taking all relevant factors into account, the Appeal Board concluded that the designated game software and the cited electronic devices and display monitors constitute similar goods. The examiner therefore did not err in refusing the application under Article 4(1)(xi) of the Trademark Act.

JPO Refuses “PICASSO” for Printed Matter and Artworks Despite Authorization from the Picasso Family

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The Japan Patent Office (JPO) affirmed an examiner’s refusal of the word mark “PICASSO” for Class 16 goods, finding that consumers would perceive the mark merely as indicating the author, subject matter, or content of the goods rather than their commercial origin.
[Appeal case no. 2025-15872, decided on April 21, 2026]

PICASSO

Picasso International Incorporation, a Taiwanese company, sought to register the wordmark “PICASSO” in standard characters for goods including printed matter and artworks with the JPO on January 15, 2025 [TM App no. 2025-3195].

JPO Examination

On August 19, 2025, the JPO examiner refused registration under Article 3(1)(iii) of the Japan Trademark Law, which bars registration of marks that merely describe the quality, characteristics, or other attributes of the designated goods or services.
The examiner first noted that “PICASSO” is universally recognized as referring to Pablo Picasso, the famous Spanish painter. When the mark is used on artworks, consumers would naturally perceive it as identifying the author of the work. In the case of reproductions, consumers would understand it as identifying the author of the original artwork. Therefore, the examiner concluded that, in relation to artworks, the term “PICASSO” functions primarily as an indication of authorship rather than as a trademark identifying a particular commercial source. The examiner reached a similar conclusion for printed matter by noting that:
Consumers encountering the mark on printed matter would merely understand it to mean:
• a publication about Picasso;
• a publication containing Picasso’s works; or
• a publication otherwise related to Picasso.
The mark would therefore be perceived as describing the content of the goods rather than indicating a single commercial source.

Appeal Trial

On October 6, 2025, the applicant filed an appeal against the examiner’s rejection and argued that the mark possessed sufficient inherent distinctiveness of the mark “PICASSO” based on the following grounds.
First, it argued that its representative had obtained authorization from the Picasso family to develop, manufacture, and sell products reproducing Picasso’s artworks throughout the Asia-Pacific region.
Second, the applicant pointed out that it already owned numerous PICASSO trademark registrations in Japan.
Third, the applicant argued that consumers would not necessarily encounter the mark only as a title or content indication. If PICASSO appeared as the name of a publisher or source identifier, consumers could allegedly recognize it as distinguishing the applicant’s goods from those of other publishers.

The JPO Appeal Board Decision

The JPO did not side with the applicant. The decision emphasizes that the assessment under Article 3(1)(iii) is based on how relevant consumers and traders would ordinarily perceive the mark when used in relation to the designated goods.
The key question is not whether a particular applicant has obtained authorization from the individual’s heirs or estate. Nor is the question whether the applicant already owns other trademark registrations.
Instead, the decisive issue is whether the mark “PICASSO” would generally be understood as describing characteristics of the goods.
The Board considered that relevant consumers would perceive PICASSO merely as indicating that the goods relate to Picasso, such as:
• artworks created by Picasso;
• reproductions of Picasso’s works;
• books about Picasso; or
• publications containing Picasso’s works.
The Appeal Board further stressed the public-interest rationale underlying Article 3(1)(iii).
Citing a Japan Supreme Court precedent, the JPO noted that descriptive indications should remain available for use by all market participants. Because publishers, museums, galleries, art dealers, and others may legitimately need to use the name “Picasso” to describe the content, authorship, or subject matter of their products, granting one entity exclusive trademark rights over the term would be inappropriate.
The JPO Appeal Board therefore concluded that PICASSO lacks source-identifying significance for the relevant goods and cannot function as a trademark.

What about earlier registrations?

The applicant also relied on trademark registrations consisting of the names of historical figures, including artists.
The JPO dismissed this argument, reiterating a familiar principle of Japanese trademark practice:
Registrability must be assessed on a case-by-case basis, taking into account the specific mark, the designated goods or services, and the actual circumstances of trade at the time of examination or appeal.
The existence of earlier registrations does not control the registrability of a subsequent application.

Revised JPO Trial and Appeal Procedures

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On May 21, 2026, amendments to the JPO’s trial and appeal procedures came into force following the 2022 revision of Japan’s Code of Civil Procedure. Importantly, the new rules apply not only to newly filed matters, but also to all cases pending before the JPO as of the effective date.

The amendments modernize evidentiary procedures and expand the use of digital tools in JPO proceedings. Key changes include the following:

🔹 Electronic Evidence

The JPO now expressly recognizes electronic records — including digitized documents, video files, and audio files — as admissible evidence.

In practice, however, the filing method remains relatively conservative. Electronic evidence must still be submitted via physical media such as CD-Rs or DVD-Rs, and the examination procedures largely follow the traditional framework applicable to documentary evidence.

As a result, parties may continue existing practices for submitting trademark gazette, webpages, emails, images, videos, and audio recordings.

🔹 Expansion of Web Conference Procedures

The amendments significantly expand the use of web conferences in JPO proceedings.

Witness examinations and expert testimony may now be conducted remotely from a broader range of locations, subject to procedural safeguards similar to those applicable to remote oral hearings.

The reforms also introduce:
• remote inspections conducted through web conference systems; and
• participation of interpreters via web conference (or by telephone conference where necessary).

These developments reflect the JPO’s continued movement toward more flexible and digital-friendly proceedings.

🔹 Changes to Hearing Records

The revised rules also strengthen procedural transparency regarding hearing records.

Where a party objects to the contents of a hearing record, the objection itself and its substance must now be recorded by the trial clerk.

In addition, obvious clerical or calculation errors may be corrected either upon request or ex officio at any time.

Another notable development is the formal recognition that video and audio recordings may be incorporated into hearing records through electronic recording media. In some cases, recorded audio or video testimony may even replace written descriptions in the official record.

🔹 Simplification of Witness and Expert Oaths

The traditional requirement for witnesses and expert witnesses to sign written oath documents has, in principle, been abolished.

Under the new rules, oral administration of the oath will generally suffice, although written oaths remain available where special circumstances prevent oral recitation.

These amendments are another example of Japan’s gradual but steady modernization of administrative adjudication procedures, particularly in relation to digital evidence and remote participation.

For practitioners involved in JPO litigation and appeals, understanding these procedural updates will be increasingly important in managing evidence and hearings effectively.

MARKS IP successfully assists “European Sugar Cone” with proving acquired distinctiveness as a trademark for ice cream in Japan

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In an administrative appeal, the Japan Patent Office (JPO) decided to overturn the examiner’s rejection of TM App no. 2023-14684 for the stylized wordmark “European Sugar Cone,” written in Japanese Katakana characters, by finding acquired distinctiveness of the mark in relation to the sugar cone ice cream multipack of Class 30.
[Appeal case no. 2024-14037, decided on March 16, 2026]

European Sugar Cone

Kracie, Ltd., a Japanese corporation established in 1887, operating in the business fields of toiletries & cosmetics, pharmaceuticals, and foods, filed a trademark application for the stylized wordmark “European Sugar Cone” written in Japanese Katakana character (see below) by designating several goods in Class 30, including ice cream, with the JPO on February 14, 2023. [TM App no. 2023-14684]

“European Sugar Cone” is a long-selling cone ice cream that has been manufactured and marketed by Kracie for nearly four decades (first use in 1986). Since its launch, the “European Sugar Cone” ice cream has been characterized by its distinctive three-layer combination of vanilla ice cream, chocolate coating, and a crispy sugar cone, which together create a well-balanced texture and flavor.

The name comes from the concept of bringing the experience of enjoying cone ice cream—similar to that found at European street-side ice cream shops—into Japanese households.

Examiner’s rejection

The JPO examiner rejected the mark laid down in Article 3(1)(iii) and 4(1)(xvi) of the Japan Trademark Law, because the word “European” suggests that the goods in question come from, or are associated with European countries. The term “Sugar Cone” is commonly used in connection with ice cream to indicate sugar cone ice cream. Therefore, relevant consumers would merely perceive the mark as a descriptive indication of ice cream.

Furthermore, when the mark is used in connection with goods other than ice cream, it may misrepresent the quality of such goods.

Acquired Distinctiveness

On September 2, 2024, Marks IP, on behalf of Kracie, filed an appeal against the examiner’s rejection and requested registration by arguing acquired distinctiveness of the mark “European Sugar Cone” with sufficient evidence based on Article 3(2).

For the purpose of demonstrating acquired distinctiveness of the mark as a commercial origin, we proposed to conduct the brand awareness survey that targets a total of 1,000 men and women aged from 15 to 79 who had purchased an ice cream multipack for the past three months (summer season), and to restrict the designated goods in Class 30 to sugar cone ice cream multipack.

The survey, conducted from October 7 to 9, 2025, revealed 74.9% of the interviewees answered that they knew an ice cream multipack bearing the mark “European Sugar Cone”.

JPO Appeal Board Decision

The JPO Appeal Board noted that the evidence is sufficient to find the mark has acquired distinctiveness for relevant consumers to identify a specific commercial origin of the amended goods (sugar cone ice cream multipack) by stating:

Since its launch in 1986, the goods using the mark have been continuously sold nationwide for nearly 40 years, achieving cumulative sales of over 342 million units and stable annual revenues of JPY 2.5 – 5.4 billion. Since 2020, it has held a market share exceeding 40% in the categories of cone ice cream multipack.

The ice cream has been extensively promoted through television commercials since 1987, including over 1,000 nationwide broadcasts in 2022 alone. It has also ranked highly in consumer preference surveys and gained recognition through third-party media coverage and collaborations across various product fields.

Furthermore, a consumer survey revealed that 74.6% of respondents recognized the goods from the mark itself, indicating a high level of public awareness.

Based on the foregoing, the Board has a reason to believe that the mark has become widely recognized by consumers as identifying the applicant’s cone-type ice cream multipack.

Accordingly, the Board decided to overturn the examiner’s rejection and granted registration of the mark “European Sugar Cone” by applying Article 3(2).

JPO found BISOU dissimilar to its mirrored mark

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In an appeal disputing the similarity between the word BISOU and its mirrored mark, the Japan Patent Office (JPO) overturned the examiner’s rejection and found both marks dissimilar.
[Appeal case no. 2025-18518, decided on March 2, 2026]

TM App no. 2024-86220

The disputed mark was filed by a Japanese individual for use on cosmetics in Class 3 with the JPO on August 8, 2024. It appears to be a word consisting of five letters, “UOSIB,” written in bold font, as shown below. You will immediately notice that the third and fifth letters, “S” and “B,” are flipped.

Rejection by the examiner

The JPO examiner raised her objection based on Article 4(1)(xi) of the Japan Trademark Law by citing TM Reg no. 6648235 “BISOU” in Class 3 owned by LOOP Inc.

She had an opinion that relevant consumers would consider the disputed mark as a mirrored spelling of the term “BISOU.” From this viewpoint, the two marks are visually similar. Since both marks create the same meaning and sound of ‘kiss’ in French, consumers are likely to confuse the commercial origin of goods bearing the disputed mark with those bearing the cited mark.

https://yukitakeshima.com/

The applicant filed an appeal against the examiner’s rejection on November 20, 2025, and argued dissimilarity of the marks. Simultaneously, the applicant requested an accelerated appeal trial.

JPO Appeal Board decision

On March 2, 2026, the JPO Appeal Board held that the examiner erred in finding the disputed mark and thus erroneously applied Article 4(1)(xi) by stating that:

It makes sense that relevant consumers would understand that the disputed mark starts with “UO,” followed by “S” in mirrored spelling, then “I,” and ends with “B” in mirrored spelling. They would recognize it as a stylized word mark containing some mirrored spellings. Based on this, the disputed mark does not give rise to any meaning and sound. Therefore, even if the goods covered by the disputed mark are deemed identical to those covered by the cited mark, the examiner’s rejection should be annulled due to the examiner’s inappropriate findings regarding the disputed mark.

Two words arranged in two lines with different fonts are considered in their entirety, the JPO says

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The Japan Patent Office (JPO) reversed the examiner’s rejection against IR no. 1653013 for a stylized wordmark consisting of “Cool Water” and “REBORN” arranged in two lines due to a similarity to the earlier mark “Re:born” and found both marks dissimilar.
[Appeal case no. 2025-650030, decided on February 18, 2026]

IR no. 1653013

Zino Davidoff SA, a Swiss Company, filed trademark application for a stylized word mark consisting of  “Cool Water” and “REBORN” arranged in two lines (see below) for use on  Perfumery products; perfumes and eaux de toilette; shower gels; skin lotions for cosmetic use; after-shave preparations; deodorants and antiperspirants for personal use in Class 3 with the JPO via the Madrid Protocol on November 13, 2023.

The applicant promotes Eau de Toilette bearing the mark.

https://www.zinodavidoff.com/

Earlier marks

On October 21, 2024, the JPO examiner decided the mark not eligible for registration under Article 4(1)(xi) of the Japan Trademark Law by citing earlier trademark registrations for the word mark “Re:born” or its transliteration written in Japanese katakana characters in Class 3.

On April 30, 2025, the applicant filed an appeal against the rejection. In the appeal, the applicant argued the dissimilarity of the marks.

JPO Appeal Board decision

The JPO Appeal Board found that the mark should be assessed in its entirety. It is not permissible to dissect the mark into individual parts and make a comparison with the cited marks by stating that:

  • Despite the evident divergence in font and size, the terms “Cool Water” and “REBORN”, arranged in two lines, appear to be positioned in a close and unified manner.
  • The sound “Cool water reborn” can be articulated as a single, uninterrupted phrase.
  • Conceptually, there is no reason for relevant consumers to take more note of the literal element “REBORN,” since “Cool Water” also has a clear meaning.
  • Therefore, the consumers are unlikely to see the term “REBORN” dominant in the mark. The Board found no evidence to support that the term plays a significant role in identifying the source of goods in question by taking into consideration actual trade practice in the relevant industry.

Based on the foregoing, the Board decided the examiner erred in finding similarity of the marks and thus erroneously applied Article 4(1)(xi).

OneClick is not descriptive in relation to computer software, JPO says

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The Japan Patent Office (JPO) overturned the examiner’s rejection of TM App no. 2024-64572 for the wordmark “OneClick” in Class 9 by finding that the term can play a role in identifying a source of the goods in question.
[Appeal case no. 2025-13091, decided on January 22, 2026]

OneClick

Osstem Implant Co., Ltd., a Korean dental implant company, filed a trademark application for the wordmark “OneClick” in standard character for use on computer software for management of medical devices or the database in Class 9 with the JPO on June 14, 2024.

Rejection by examiner

The JPO examiner notified a ground for refusal laid down in Article 3(1)(iii) of the Japan Trademark Law.

In the refusal decision, the examiner noted that the term “OneClick” has the meaning of “pressing a computer-mouse button to operate a computer.” Computer software operable with a single click has been distributed in relevant industries.

Therefore, the consumers who encounter the term when used on the goods at issue, will just recognize it as a functional indication of the goods.

The applicant argued that the mark is mainly intended for use on computer software in highly specialized business fields such as medical institutions and insurance claims processing, and that its users are limited to medical professionals and specialized staff. Consequently, the mark does not directly indicate the feature or quality of the goods “operable with a single click.”

The examiner did not find the arguments persuasive based on the fact that the applicant’s identified goods are not limited to medical use and include the goods used in a wide range of business fields, such as “computer software for databases” and “computer programs for image processing.”

On August 20, 2025, the applicant filed an appeal against the rejection and disputed the inherent distinctiveness of the mark.

Appeal Board decision

The JPO Appeal Board decided to revoke the examiner’s rejection laid down in Article 3(1)(iii) of the Trademark Law by stating that:

Even though the term “OneClick” has a meaning of “a single click of the button on a computer mouse,” it is doubtful whether relevant consumers would immediately recognize it as an indication of the specific function or quality of the goods in question.

 Ex officio investigation did not reveal any evidence to suggest that the term “OneClick” or its equivalent is actually and commonly used to indicate the function or quality of goods in the relevant business field. Besides, the Board could not find circumstances to negate the distinctiveness of the mark as a source indicator when used on, or in connection with goods in question.

Based on the foregoing, it has reason to believe that the mark “OneClick” can play a role in identifying the source of the goods in question, and thus it will not be a mark consisting solely of a term indicating the quality of the identified goods in a manner commonly used.

JPO Found Trademark “Finto” Dissimilar to “Fi.n.t”

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The Japan Patent Office (JPO) set aside rejection by the examiner to register TM App no. 2025-57051 “Finto” in Class 9 by finding dissimilarity to earlier TM Reg no. 5547097 for the wordmark “Fi.n.t” in the same class.
[Appeal case no. 2025-16841, decided on January 22, 2026]

Finto

Visional Co., Ltd. filed a trademark application for the word mark “Finto” in standard character for use on computer software and other computer-related goods in Class 9 with the JPO on May 26, 2026. [TM App no. 2025-57051]

Fi.n.t

On June 4, 2025, the JPO examiner gave the applicant a notice of ground for refusal laid down in Article 4(1)(xi) of the Japan Trademark Law by citing earlier TM Reg no. 5547097 for a word mark “Fi.n.t” with its Japanese transliteration (see below) in Class 9 that has been effectively registered since 2012.

The applicant filed a response to the office action on July 9, 2025, and argued dissimilarity of the marks. However, the examiner did not withdraw his refusal and finally decided to reject the entire application on July 25.

The applicant filed an appeal against the examiner’s rejection on October 22, 2025, and argued dissimilarity of the marks.

Appeal Board decision

The JPO Appeal Board noted that the term “Finto” is not listed in standard dictionaries. As no circumstances are confirmed to suggest its specific meaning in Japan, it will be recognized as a coined word. Therefore, the mark has a sound of “finto” and does not elicit any particular connotations.

Regarding the cited mark, the Board observed that it comprises the letters “Fi.n.t” and their Japanese katakana transliteration, arranged in two lines. It is regular to refrain from pronouncing two dots placed in the middle of the letters. From overall appearance, it is reasonable to find that the cited mark also has a sound of “finto” and no meaning in its entirety.

Due to the clear distinctions in literal configuration, the number of letters, and the presence and absence of “,” / “o,” visual impressions differ remarkably to the extent that relevant consumers can distinguish two marks in appearance. Evidently, both marks have the same sound. A conceptual comparison is neutral as neither of the concepts has a clear meaning.

Based on the foregoing, the Board found that even if the marks have common sound and the conceptual comparison is neutral, given that the marks are sufficiently distinguishable in appearance, relevant consumers will not confuse the source of goods in question bearing the mark “Finto” with the cited mark. If so, the Board has reason to believe that they are dissimilar as a whole.

Ziploc Ribbon, Ziploc, or Ribbon?

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In an appeal concerning the similarity between the registered mark “Ribbon” and a junior application containing the literal elements “Ziploc” and “Ribbon,” the Japan Patent Office (JPO) overturned the examiner’s refusal and held that the two marks were dissimilar.
(Appeal Case No. 2025-4546, decision dated January 19, 2026)

The contested mark: “Ziploc Ribbon”

SC Johnson & Son, Inc. filed a trademark application on February 14, 2024, for a composite mark comprising the literal elements “Ziploc” and “Ribbon,” with the word “Ribbon” placed below “Ziploc” within a ribbon design (see image below). The application designated plastic bags and containers in Classes 16 and 21. [TM Application No. 2024-14335]

“Ziploc” is widely known as a brand of reusable, re-sealable zipper storage bags and containers manufactured by S. C. Johnson & Son, a US-based company.

https://www.beams.co.jp/special/ziplocribbon/

JPO examination

On January 29, 2025, the JPO examiner rejected the application pursuant to Article 4(1)(xi) of the Japan Trademark Law, citing prior registered trademark No. 4873505 for the word mark “Ribbon” in standard character, which has been registered since 2005 for identical or similar goods in the same classes.

SC Johnson filed an appeal against the examiner’s decision on March 25, 2025, seeking revocation of the refusal.

Appeal Board decision

The JPO Appeal Board reversed the examiner’s decision and concluded that the marks were dissimilar, reasoning as follows:

  1. Because the literal elements of the applied-for mark are depicted in a similar monochromatic color scheme and arranged in close proximity, relevant consumers are likely to perceive the mark as a single, unified whole.
  2. The term “Ribbon” possesses only a low degree of inherent distinctiveness, as it is commonly used to denote a long, narrow strip of material employed for tying or decorative purposes.
  3. Given that the element “Ziploc,” which is prominently displayed in the contested mark, is widely recognized as an indicator of origin for the applicant’s zipper storage bags and containers, there is no evidence to suggest that the term “Ribbon,” shown beneath “Ziploc” in a smaller font, plays a dominant role in identifying the commercial source of the goods.
  4. In light of the foregoing, it is unreasonable to assess similarity between the marks based solely on the shared element “Ribbon.”

Based on this analysis, the Appeal Board set aside the examiner’s refusal and granted registration of the “Ziploc Ribbon” mark.

Abercrombie & Fitch Fails to Protect Trademark “A&F” with Moose silhouette

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The Japan Patent Office (JPO) did not side with Abercrombie & Fitch in an appeal against the JPO examiner’s rejection of the mark “A&F” with an iconic moose silhouette in Class 9 due to a conflict with the earlier mark “A&F” in Class 35.
[Appeal case no. 2025-9982, decided on December 23, 2025]

Abercrombie & Fitch

Abercrombie & Fitch filed a trademark application for the mark consisting of the term “A&F” and their iconic Moose silhouette (see below) for use on eyeglasses, sunglasses, googles for sports, earphones, headphones, telecommunication machines and apparatus, personal digital assistants, cases for smartphones in class 9 with the JPO on February 26, 2024 [TM App no. 2024-18531].

Rejection laid down in Article 4(1)(xi)

On May 7, 2025, the JPO examiner rejected the mark applied for lain down in Article 4(1)(xi) of the Japan Trademark Law by citing two earlier TM Reg Nos. 5218488 and 5588154 for the mark “A&F” owned by A&F Corporation.

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.

The cited marks designate retail or wholesale services for telecommunication machines and apparatus, and eyeglasses in Class 35.

Under the JPO practice, goods and retail or wholesale services for the goods are deemed similar.

JPO Appeal Board decision

Abercrombie & Fitch filed an appeal to request that the examiner’s rejection be set aside on June 26, 2025.

In the appeal brief, Abercrombie & Fitch argued that the figurative element is dominant in the contested mark as the Moose silhouette has acquired a certain degree of recognition among the relevant consumers in Japan.

However, the Board observed the examiner did not err in finding facts relevantly and dismissed the appeal by stating that:

  1. The figurative element does not engender any specific meaning or sound. The literal element, “A&F,” is also recognized as a coined word, as it does not appear in ordinary dictionaries. There is no reasonable basis to consider these elements as a whole due to the significant space gap and lack of conceptual association between them. Therefore, it is appropriate to find that the literal element “A&F” of the contested mark plays an independent role in identifying the source of the goods bearing the contested mark.
  2. Even if a conceptual comparison is neutral, as neither the contested mark nor the cited marks have a clear meaning, the relevant consumers are likely to confuse the source of the goods in question with the cited owner because of the close resemblance in appearance and pronunciation.
  3. Based on the evidence submitted by Abercrombie & Fitch to demonstrate the popularity of the moose design, the Board found it unpersuasive that the design plays a dominant role as a source indicator.