カテゴリー: Similarity of goods

“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.

Trademark Dispute Over Double Diamond Symbol

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The Japan Patent Office (JPO) did not side with Erreà Sport S.p.A. in a trademark opposition against TM Reg. No. 6903310 for a double diamond device mark, finding clear visual differences when compared to the Erreà Sport double diamond symbol. (Opposition Case No. 2025-900101, decided on July 2, 2026)

Contested Mark

Sakagawa Co., Ltd. sought registration for a device mark consisting of two vertically oriented, thick-lined, symmetrical rhombus shapes (see below) for footwear in Class 25, and retail/wholesale services for footwear in Class 35.

The applicant promotes Japanese sandals bearing the contested mark.

https://yamatokobo.jp/c/mens/mc6

As the JPO examiner did not find any absolute or relative grounds for refusal, the contested mark was granted registration on March 4, 2025 [TM Reg. No. 6903310].

Opposition by Erreà Sport

Before the lapse of the two-month statutory opposition period, Erreà Sport S.p.A., an Italian company specializing in the manufacture of technical sportswear, filed an opposition with the JPO on May 12, 2025. They requested cancellation under Article 4(1)(xi) of the Japan Trademark Law, citing their earlier registered mark (see below) featuring their double diamond symbol designating footwear in Class 25.

In the opposition, Erreà Sport argued:

“The most readily recognizable and fundamental characteristic of the figurative elements of both marks is that each consists of two diamond-shaped figures arranged side by side. Given this shared feature, consumers are likely to receive a strong visual impression of the marks, retain that impression in their memory, and recall it when encountering the marks. Accordingly, these marks are visually similar to such an extent that they are liable to be mistaken for one another.”

JPO Decision

The Opposition Board observed that both the Contested Mark and the Cited Mark consist purely of abstract geometric (rhombus/polygonal) shapes. As neither design conveys a recognized meaning or word in Japan, the JPO determined that neither mark generates a specific pronunciation or concept.

Comparing the visual features:

  • Contested Mark: Two separate, thick-lined rhombus figures placed side-by-side.
  • Cited Mark: A single solid-black polygon created by overlapping geometric shapes with an outline.

The JPO held that the visual impression between the two is markedly distinct. Since pronunciation and concept could not be compared, the clear visual difference was decisive. The JPO concluded that consumers are unlikely to confuse the two marks, rendering them dissimilar.

The Opposer further argued that the Cited Mark is widely recognized due to its sponsorship of professional sports teams and distribution of uniforms in Japan, which would amplify the risk of confusion.

However, the Opposition Board rejected this argument due to a lack of concrete evidence. The Opposer failed to submit critical data such as:

  • Sales figures and market share in Japan
  • Advertising frequency, reach, and marketing expenditure

Without objective commercial metrics, the JPO could not evaluate the degree of recognition among Japanese consumers. Consequently, the claim of an increased risk of confusion was dismissed.

Valentino Successful in Trademark Opposition against “ITALOVALENTINO”

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The Japan Patent Office (JPO) sided with Valentino SpA in a trademark opposition against TM Reg No. 6683584 for the wordmark “ITALOVALENTINO” in Class 25, finding that the mark is confusingly similar to the prior registered famous fashion brand “VALENTINO.”
[Opposition case no. 2023-900127, decided on June 10, 2026]

The Opposed Mark: ITALOVALENTINO

On September 12, 2022, T&K Design Association Co., Ltd. filed a trademark application for the wordmark “ITALOVELANTINO” written in a casual, handwritten-style font (see below) for use on clothing, footwear, headgear, sportswear, sports shoes, belts and other goods in Class 25 with the JPO [TM App No. 2022-111238].

As the JPO examiner did not find any initial grounds for refusal, the mark was registered on March 24, 2023 [TM Reg no. 6683584], and subsequently published for post-grant opposition on April 24, 2023.

Opposition by Valentino SpA

The famous fashion house Valentino SpA filed an opposition on May 30, 2023, seeking the total cancellation of the mark “ITALOVALENTINO” under Article 4(1)(xi) of the Japan Trademark Law, citing its own prior registered famous mark “VALENTINO” in Class 25.

JPO Decision

The JPO Opposition Board found that the addition of a geographical prefix was insufficient to alter the dominant impression of the famous fashion brand in connection with the goods at issue.

First, the Board observed that Italian language and design are highly familiar within the fashion industry. Since “ITALO” translates to “Italian” in Italian, Japanese consumers would merely perceive this portion as an indicator of the geographical origin or style of the goods. Thus, “ITALO” lacks a distinctive character or source-identifying function.

Conversely, the letters “VALENTINO” are immensely famous in Japan, instantly evoking the luxury fashion house founded by Valentino Garavani. Because the latter portion “VALENTINO” plays a dominant role in identifying a commercial source, the Board held that it would be permissible to dissect the literal portion and isolate “VALENTINO” as the “essential part” for similarity comparison.

Visual Similarity: The essential part “VALENTINO” of the opposed mark shares the exact same spelling as the cited mark. Therefore, despite the casual handwritten font and the presence of the prefix, the marks are visually similar.

Aural Similarity: While the opposed mark can be pronounced in its entirety as “Italo-valentino,” it also naturally gives rise to the shorter pronunciation “valentino” from its essential part. This dominant sound is phonetically identical to the pronunciation of the cited mark, leading to a high risk of aural confusion.

Conceptual Similarity: Both marks create the exact same commercial concept known for the famous luxury brand established by Valentino Garavani. Consequently, they are conceptually identical.

In conclusion, the JPO Opposition Board found that “ITALOVALENTINO” and “VALENTINO” are confusingly similar in appearance, sound, and meaning, and the goods at issue are identical or closely similar to those of the cited mark. Based on the findings, the Board decided to cancel the registration of the opposed mark entirely under Article 4(1)(xi).

VW Unsuccessful Trademark Invalidation Action against “Beecle”

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The Japan Patent Office (JPO) dismissed an invalidation action initiated by VW against TM Reg No. 6623923 for a composite mark containing the term “Beecle” in Class 12, ruling that the mark is not confusingly similar to VW’s prior registered mark “Beetle.”
[Invalidation case no. 2026-890008, decided on June 15, 2026]

“Beecle” with a Bee Design (The Contested Mark)

The contested mark (shown below) is a composite mark featuring a green hexagonal device with a black border, containing three yellow counter-clockwise arrows along its corners. On the left-middle side, a prominent white-out illustration of a bee is depicted (with only its right wing visible). Immediately adjacent to the wing, the alphabetical letters “Beecle” are written horizontally in a white, cursive, script-like font.

The contested mark was filed for goods including lorries, trucks, electric cars, motorized golf carts in Class 12 with the JPO on April 12, 2022, and was registered on October 5 of the same year [TM Reg no. 6623923].

Invalidation action by Volkswagen

On January 30, 2026, Volkswagen Aktiengesellschaft filed a petition to invalidate the contested mark under Article 4(1)(xi) of the Japan Trademark Law, citing its own senior Trademark Registration No. 4095809 for wordmark “Beetle” covering automobiles and other goods in Class 12.

VW argued that the prominent literal element “Beecle” of the contested mark closely resembles the cited mark in both sound and appearance. VW contended that even if the conceptual similarity is neutral, relevant consumers are highly likely to associate the commercial source of the goods bearing the contested mark with VW’s famous automobiles.

JPO Decision

First, the Invalidation Board addressed whether a specific element of the contested mark could be isolated to assess similarity.

The Board noted that the bee’s wing could easily be perceived as a stylized letter “B”. Because this graphic seamlessly integrates with the following letters “eecle”, consumers would naturally recognize the entire central combination as the stylized word “Beecle”. Since the term “Beecle” occupies a prominent and dominant position in the center, it serves as a strong source identifier. Thus, the Board found it permissible to segregate the term “Beecle” as the “essential element” for similarity comparison.

As the term is a coined word, it gives rise to the pronunciation “Bee-ku-ru” and carries no specific conceptual meaning.

Visual Similarity: Even when comparing the essential element “Beecle” with the cited mark “Beetle,” they are visually distinct. The contested mark combines a bee device/letter “B” with a cursive font, while the cited mark uses standard character. Additionally, they differ in their fourth letters (“c” vs. “t”). Given that both marks have a relatively short six-letter structure, these visual differences significantly impact the overall impression, making them clearly distinguishable.

Aural Similarity: The contested mark is pronounced “Bee-ku-ru” and the cited mark is pronounced “Bee-to-ru”. Both share a short four-syllable structure in Japanese (including the long vowel) with identical beginnings (“Bee-“) and endings (“-ru”). However, the Board emphasized that for such short words, the difference in the middle sound (“ku” vs. “to”) heavily influences the entire tone and cadence. When spoken continuously, they sound distinct and are unlikely to cause phonetic confusion.

Conceptual Similarity: The contested mark produces no specific meaning as a coined word, whereas the cited mark evokes the concept of a “beetle/insect.” Consequently, there is no risk of conceptual confusion.

Taking all factors into account comprehensively, the JPO Invalidation Board concluded that “Beecle” and “Beetle” are mutually distinct in appearance, sound, and meaning. Because the marks are fundamentally dissimilar, the Board held that the contested mark does not fall under Article 4(1)(xi) and sustained the validity of the registration.

Rolex “Deepsea” Couldn’t Block “DeepSeek” Trademark Registration for Smartwatches

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The Japan Patent Office (JPO) dismissed an opposition filed by ROLEX SA against TM Reg No. 6959836 for the stylized mark “deepseek” in Class 9 (covering smartwatches, etc.), finding the mark dissimilar to Rolex’s earlier mark “DEEP SEA.”
[Opposition Case No. 2025-900224, decided on June 1, 2026]

DeepSeek’s Trademark Application

Hangzhou DeepSeek Artificial Intelligence General Technology Research Co., Ltd., a Chinese artificial intelligence startup known for its cost-efficient and lightweight model, “DeepSeek,” filed a trademark application for the stylized word mark “deepseek” (as shown below) in Classes 9, 35, and 42 with the JPO on March 3, 2025 [TM App. No. 2025-021716].

The applicant designated various goods in Class 9, including smartwatches, time recording apparatus, wearable computers, and wearable activity trackers.

The JPO granted registration of the mark on August 21, 2025 [TM Reg No. 6959836], and subsequently published it for post-grant opposition on August 29, 2025.

Opposition by ROLEX

On October 23, 2025, ROLEX SA, the owner of the earlier TM Reg. No. 4146855 for the word mark “DEEP SEA” in Class 14, filed an opposition with the JPO. Rolex sought a partial cancellation of the contested mark with respect to smartwatches, time recording apparatus, wearable computers, and wearable activity trackers, alleging a violation of Article 4(1)(xi) of the Japan Trademark Law.

Rolex argued that the contested mark is confusingly similar to its cited mark, asserting that the mere difference of the final letter “k” is insufficient for relevant consumers to distinguish the commercial origin of the goods from a visual and aural standpoint. Furthermore, Rolex maintained that the goods at issue share the same functions as watches in Class 14.

The JPO Decision

The JPO Opposition Board conducted a comprehensive assessment of the marks based on the three traditional pillars of trademark comparison:

  • Visual Similarity (外観): Dissimilar. The marks are clearly distinguishable due to structural differences, including font styling, capitalization (lowercase vs. uppercase), word spacing, total letter count, and the critical difference in their endings (“ek” vs. “A”).
  • Phonetic Similarity (称呼): Dissimilar. Comparing ” diːpsiːk” against ” diːpsiː”, the JPO ruled that the difference in the total number of syllables and the presence/absence of the trailing “k” sound alters the overall tone and cadence. Thus, there is no risk of oral confusion or mishearing.
  • Conceptual Similarity (観念): Dissimilar. Because the contested mark is a meaningless coined word while the cited mark directly evokes “deep sea” (深海), there is no risk of conceptual confusion in the minds of consumers.

Based on the foregoing, the JPO concluded that the contested mark “deepseek” and the cited mark “DEEP SEA” are overall dissimilar, and subsequently dismissed the opposition in its entirety without any reference to the similarity of goods.

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 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.

ALCOTT Unsuccessful in Trademark Opposition against ACLOTT

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In a trademark dispute regarding similarity between “ACLOTT” and “ALCOTT”, the Japan Patent Office (JPO) found both marks dissimilar and dismissed the opposition claimed by Capri S.r.l.
[Opposition case no. 2025-900047, decided on January 26, 2026]

ACLOTT

HARIZURY Co., Ltd. filed a trademark application for the word mark “ACLOTT” with its Japanese transliteration arranged in two lines (see below) for use on school bags, bags, pouches, leathercloth, and leather items in Class 18 with the JPO on March 1, 2024 [TM App no. 2024-20955].

The mark was registered without any refusal from the JPO examiner [TM Reg no. 6875775]. On December 23, 2024, it was published for a post-grant opposition.

Opposition by Capri

On February 20, 2025, Capri S.r.l., an Italian Fashion House, filed an opposition against the mark “ACLOTT” by citing IR no. 878382 for wordmark “ALCOTT” in Classes 3,14,18, and 25, and claimed the contested mark should be cancelled in contravention of Article 4(1)(xi) of the Japan Trademark Law because of close resemblance to the cited mark “ALCOTT”.

Capri argued that the contested mark looks and sounds similar to the cited mark, since the difference in the second and third letters will not outweigh the commonality of the remaining four letters. Even if a conceptual comparison is neutral since neither mark has any clear meaning, in view of a similar commercial impression of the marks when used on the goods in Class 18, relevant consumers are likely to confuse a source of the goods bearing the contested mark with the cited mark.

JPO decision

The JPO Opposition Board assessed the similarity of the marks in aspects of appearance, sound, and concept.

  • Appearance

The contested mark and the cited mark are sufficiently distinguishable in appearance due to the distinction arising from the reversed order of the second and third letter, “C” and “L,” of a relatively short six-letter composition.

  • Sound

Comparing respective sounds, the difference in the second and third syllables of a short five-syllable configuration significantly affects the overall phonetic impression. Relevant consumers will be able to distinguish these sounds with ordinary care.

  • Concept

As both marks have no specific meaning, a conceptual comparison is neutral.

Based on the foregoing, the Board found that relevant consumers are unlikely to confuse the source of the goods in question with the cited mark, and thus both marks are deemed dissimilar. Consequently, the Board dismissed the entire opposition.

JPO found “is me” dissimilar to “iS.ME” as trademark

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The Japan Patent Office (JPO) reversed the examiner’s rejection of the word mark “is me” in Classes 14, 18, and 25, by finding it dissimilar to senior TM Reg No. 5006417 for the mark “iS.ME” with an oval device.
[Appeal case no. 2025-4535, decided on December 17, 2025]

“is me”

ARIGATO CO., LTD. filed a trademark application for the stylized mark “is me” (see below) in connection with personal ornaments (Cl. 14), bags (Cl. 18), and apparel products (Cl. 25) with the JPO on February 8, 2024. [TM App no. 2024-18788]

https://www.argt-ltd.com/eventlist/438/

TM Reg No. 5006417

On October 4, 2024, the JPO examiner issued a notice of ground for refusal by citing senior TM Reg No. 5006417 for the mark “IS.ME” with an oval device (see below) in Classes 12, 14, and 25.

The applicant filed a response against the refusal on November 27, 2024, to argue the dissimilarity of these marks. However, on February 4, 2025, the examiner decided to reject the entire application due to similarity to the cited mark based on Article 4(1)(xi) of the Japan Trademark Law.

On March 25, 2025, the applicant filed an appeal against the contested decision, requesting that the rejection be set aside.

JPO Appeal Board decision

The JPO Appeal Board disaffirmed the contested decision and found that the mark “is me” should not be subject to rejection under Article 4(1)(xi) by stating that:

  1. The mark in question consists of the letters “is me” written in a script font. Both terms, “is” and “me”, are English words generally familiar to Japanese consumers, meaning “to be” and “myself” respectively. Therefore, the mark has the sound of “iz-miː.” Meanwhile, as “is me” lacks a subjective term, it does not give rise to any specific meaning as a whole.
  2. The literal elements of the cited mark will not be considered inextricable from the graphical element because of a space between them, and lack of conceptual integrity as a whole. In this regard, it is reasonable to consider the literal element as dominant in the cited mark, and compare it with the mark in question to assess similarity between the marks. The literal element gives rise to various sounds, not limited to “iz-miː.”, but “ai-es-dot-emu-iː”, “iz-dot-miː.”, “ai-es-dot-miː”.
  3. From appearance, the cited mark features a distinctive combination of the initial letter “i” in lowercase and the subsequent three letters in uppercase, all written in bold Gothic and colored in red. This constitutes a prominent distinction from the mark in question, resulting in strong commercial impressions that are easily distinguishable.
  4. Aurally, even if both sounds are the same when the cited mark is pronounced as “iz-miː”, the other sounds are clearly distinguishable.
  5. A conceptual comparison is neutral as neither of them has any specific meaning.
  6. Based on the foregoing, given both marks are unlikely to cause confusion from visual and phonetic points of view, the Board has reason to believe the mark “is me” is deemed dissimilar to the cited mark as a whole.

Japan IP High Court reversed JPO decision regarding similarity between COSME MUSEUM and Cosmetic Museum

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On November 17, 2025, the Japan IP High Court handed down a ruling to disaffirm the JPO Invalidation Board’s decision regarding similarity between COSME MUSEUM in Class 35 for retail services for cosmetics and Cosmetic Museum in Class 3 for cosmetics.
[Court case no. Reiwa6(Gyo-ke)10104, decided on November 17, 2025]

COSME MUSEUM

The contested mark, consisting of the word “COSME MUSEUM” in a plain letter, was filed with the JPO on February 24, 2023. It designates various services classified in class 35, including retail or wholesale services for cosmetics (TM App no. 2023-18992).

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

https://cosme-museum.com/

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

Cosmetic Museum

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

https://cosmeticmuseum.jp/shop

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

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

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

JPO decision

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

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

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

Thirdly, the two marks do not convey any particular meaning at all. In this regard, they remain conceptually neutral.

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

On December 12, 2024, MOMOTANIJUNTENKAN filed a lawsuit with the IP High Court, claiming that the court should annul the contested decision because the JPO erroneously applied Article 4(xi) of the Japan Trademark Law and thus found “COSME MUSEUM” and “Cosmetic Museum” similar.

IP High Court ruling

The court noted that the term “COSME” is defined as an abbreviation for cosmetics in Japanese dictionaries and is widely used in the industry to refer to cosmetics. Thus, relevant consumers would associate the term with cosmetics, and the contested mark will convey the meaning of a museum for cosmetics as a whole.

Although the term “COSME” is recognized as an abbreviation for “cosmetics” or “cosmetic”, there is insufficient evidence to demonstrate that the terms have been used in trade practice to indicate different sources without causing confusion. Bearing this in mind, the court found that the two marks do not differ significantly in appearance.

Similarly, the court observed that the aural difference between “COSME” and “cosmetic” would be negligible.

Since both marks have the same meaning, it is reasonable to believe that relevant consumers may confuse the source of the contested mark with the earlier mark when used in connection with retail services for cosmetics.

Based on the foregoing, the court declared the annulment of the contested decision because the JPO errored in applying Article 4(1)(xi) and finding the relevant facts.