カテゴリー: Similarity of mark

Court Case: VALENTINO GARVANI vs GIANNI VALENTINO

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The Japan IP High Court affirmed the JPO decision that cancelled TM Reg no. 6550051 for the GIANNI VALENTINO mark due to a conflict with earlier IR no. 975800 for the VALENTINO GARVANI mark.
[Court case no. Reiwa6(Gyo-ke)10089, decided on February 27, 2025]

GIANNI VALENTINO

YOUNG SANGYO CO., LTD filed a trademark application with the JPO on November 10, 2021 for a mark consisting of a “V” device in a circle and the word “GIANNI VALENTINO” (see below) for use on footwear in class 25 [TM App no. 2021-140169].

The applicant, as one of the official licensees, has been distributing bags and pouches bearing the applied mark in the Japanese market.

https://shop.gianni-valentino.com/

The JPO examiner granted registration of the applied mark on April 19, 2022. The mark was published for a post-grant opposition on May 11, 2022 [TM Reg no. 6550051].

Opposition by Valentino S.p.A.

Valentino S.p.A. filed an opposition on July 6, 2022 and claimed cancellation of the GIANNI VALENTINO mark in contravention of Article 4(1)(xi) of the Japan Trademark Law on the ground that the contested mark is confusingly similar to earlier IR no. 975800 for a mark consisting of an iconic “V” device in a circle and the words “VALENTINO” and “GARAVANI” arranged in two lines (see below), which designates footwear and other goods in class 25.

Valentino argued that the literal element “VALENTINO” was dominant in the cited mark because of a high degree of recognition as a source indicator of the opponent’s business as a result of substantial and continuous use in relation to fashion industries. Therefore, relevant consumers with an ordinary care are likely to consider the term “VALENTINO” as a prominent portion of the contested mark when used on the goods in question. If so, the contested mark shall be deemed similar to the cited mark from visual, aural and conceptual points of view.

On August 23, 2024, the JPO Opposition Board decided to cancel the contested mark based on Article 4(1)(xi) of the Japan Trademark Law by stating that the dominant part of respective mark would be the literal element “VALENTINO” given famousness of the mark “VALENTINO” as a source indication for apparel of Valentino S.p.A.

To contest, the applicant filed an appeal with the IP High Court on September 30, 2024.

IP High Court decision

The IP High Court held that the JPO did not err in applying Article 4(1)(xi) to the case by stating that:

The court has no question to find that the mark “VALENTINO” is famous among relevant consumers and traders in Japan for apparel.

From appearance, the contested mark can be dissected into three parts, namely, figurative element, “GIANNI”, and “VALENTINO”. Given the mark “GIANNE VALENTINO” has not been recognized among relevant consumers as a source indicator of the applicant, it is reasonable to consider the literal element “VALENTINO” as a dominant part of the contested mark, which plays a role in identifying the source of the goods in question.

Similarly, the literal element “VALENTINO” of the cited mark can be considered as a dominant part because of its famousness to indicate the opponent’s business.

It is obvious that the dominant part of both marks has the same appearance, sound and meaning.

Therefore, the court has a reason to believe that the contested mark, even as a whole, is confusingly similar to the cited mark from a visual, aural and conceptual point of view.

As a conclusion, the court ruled to dismiss the appeal in favor of Valentino S.p.A.

Trademark dispute: SONY vs SONIMART

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The Japan Patent Office (JPO) sided with SONY in a trademark invalidation action against TM Reg no. 6162062 for word mark “SONIMARK” in classes 35 and 42 by finding a likelihood of confusion with famous mark “SONY”.
[Invalidation case no. 2024-890041, decided on January 27, 2025]

SONIMART

The contested mark, consisting of word “SONIMART” and its transliteration written in Japanese katakana character arranged in two lines (see below), was filed by Sonic Line Co., Ltd. for use on various services including retail service and providing computer programs on data networks in classes 35 and 42 with the JPO on June 14, 2018.

The JPO examiner did not find similarity to and a likelihood of confusion with famous brand “SONY” and granted registration of the mark on July 12, 2019.

Invalidation action by SONY

SONY, one of the most recognized Japanese brands globally, filed an application for declaration of invalidity with the JPO on July 11, 2024, just before the lapse of five years counting from its registration date.

SONY claimed that the contested mark shall be invalidated in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law by citing its owned earlier trademark registrations for the mark “SONY”.

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.

Article 4(1)(xv) is a provision to prohibit any mark from registering if it is likely to cause confusion with other business entities’ well-known goods or services.

SONY argued that relevant consumers of the services in question are likely to find the contested mark consists of “SONI” and “MART”. Since the term ‘MART’ is less distinctive in relation to the services in question, the element ‘SONI’, which is visually and phonetically confusingly similar to ‘SONY’, would play a dominant role in indicating the source of the services covered by the contested mark.

JPO decision

The JPO Invalidation Board did not question the high degree of reputation and popularity of the mark “SONY” in relation to telecommunications and electronic machines and apparatus, and consumer games.

Comparing the contested mark and the cited mark “SONY”, although the marks differ in their overall structure, both marks contain the same initial three letters, “SON” and the same pronunciation. Moreover, the term “SONI” and its sound are likely to be associated with the cited mark “SONY”, which is well known and famous in the fields of telecommunications and electronic machines and apparatus, and consumer games.

Bearing in mind that SONY has plenty of group companies and stores using a name consisting of “SONY” and descriptive word, such as Sony shop, Sony music entertainment, Sony bank, Sony city, the Board has a reason to believe that there is a certain degree of similarity between the contested mark and the cited mark.

Consumers of the services in question, in particular retail services for smart phone cases, rental of computers, and providing computer programs on data networks, are overlapping with those of telecommunications and electronic machines and apparatus. In this respect, these are closely related.

Based on the foregoing, the Board decided to invalidate the contested mark in contravention of Article 4(1)(xv) because the relevant consumers are likely to confuse a source of the services in question with SONY or an entity that is systematically or economically connected to the claimant.

JPO found “Pitta” dissimilar to “PITTA MASK”

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In an administrative decision on Jan 14, 2025, the Japan Patent Office (JPO) overturned the examiner’s rejection that found similarity of mark between earlier TM Reg no. 6486979 “PITTA MASK” (Cl. 35) and junior TM App no. 2023-61590 “Pitta” (Cl. 35).
[Appeal case no. 2024-6542]

Applied mark “Pitta”

Pitta Co., Ltd. filed a trademark application for word mark “Pitta” in standard character with the JPO on June 5, 2023.

The application designates various services in classes 35 and 42, in particular ‘advertising and publicity services; promoting the goods and services of others through the administration of sales and promotional incentive schemes involving trading stamps; business management; marketing research or analysis; providing commercial information and advice for consumers in the choice of products and services’.

Earlier mark “PITTA MASK”

On November 20, 2023, the JPO examiner raised her objection due to a conflict with earlier TM Reg no. 6486979 “PITTA MASK” (see below) 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.

https://www.arax.co.jp/pittamask/en/product/

Though the cited mark is just in use for sanitary masks, it is allowed under the trademark law to designate goods and services other than masks as long as the total number of similarity code does not exceed 22 in each class. Since the cited mark also covers the same services unrelated to sanitary masks with the applied mark in class 35, the JPO examiner decided to reject the applied mark on March 18, 2024.

The applicant filed an appeal against the rejection with the JPO on April 17, 2024 and claimed cancellation of the examiner’s rejection by arguing dissimilarity of the marks.

JPO decision

The JPO Appeal Board found the examiner errored in finding similarity of mark and decided to reverse the rejection.

The Board reasoned that the term “SELECT” is a less distinctive word since it is commonly used to exaggerate quality of goods and service. Meanwhile, the term “PITTA” and “MASK” are depicted in a larger and conspicuous font, and visually represented as a combined element. The term “MASK” would not be less distinctive when used on goods and services unrelated to sanitary masks. If so, the literal portion consisting of “PITTA” and “MASK” can be extricable part of the cited mark. Therefore, it is permissible to consider the portion as a dominant in the cited mark and assess similarity of mark by comparing the dominant portion with the applied mark.

Based on the above findings, the Board found the cited mark gives rise to a pronunciation of ‘pitta mask” but no specific meaning.

Visually, the applied mark is distinguishable from the dominant portion due to non-existence of the term “MASK” and horizontal lines.

Phonetically, comparing ‘pitta’ with ‘pitta mask’, both marks are easily distinguishable.

A conceptual comparison is neutral as both marks have any clear meaning.

As a conclusion, given both marks are dissimilar, even if the designated services in class 35 are overlapping, the Board has no reason to find the applied mark subject to Article 4(1)(xi).

UNIQLO Lost in Trademark Opposition against UNIPRO

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UNIQLO lost in its attempt to oppose TM Reg no. 6746724 for the mark “UNIPRO” in class 28 due to dissimilarity and unlikelihood of confusion with a world-famous Japanese clothing brand “UNIQLO”.
[Opposition case no. 2023-900278, Gazette issued on December 27, 2024]

UNIPRO

Kabushiki Kaisha UNIQUE, a Japanese corporation, filed a trademark application for the mark “UNIPRO” in relation to pet toys and sports equipment in class 28 with the Japan Patent Office (JPO) on April 17, 2023 [TM App no. 2023-41531]. The mark has the word “UNIPRO” written in two lines inside a square (see below).

On October 10, 2023, the JPO examiner approved the registration of the applied mark without issuing an office action. Subsequently, the JPO published the mark for a post-grant opposition on October 27, 2023.

Opposition by UNIQLO

Fast Retailing Co., Ltd., a public Japanese retail holding company, is best known for its flagship brand UNIQLO. The company filed an opposition with the JPO on December 8, 2023 by citing its own earlier trademark registrations for the UNIQLO mark.

Fast Retailing claimed that the applied mark should be cancelled in contravention of Article 4(1)(xi), (xv) and (xix) of the Japan Trademark Law because of a high degree of similarity to and a likelihood of confusion with famous fashion brand UNIQLO when used on the goods in question.

Fast Retailing argued, among other things, visual and aural similarity between UNIPRO and UNIQLO. Arranging the first three letters “UNI” in the top line and the last three letters in the bottom line in a square would be anything but a coincidence. Since the mark “UNIQLO” is a coined word and has become famous to indicate Japanese clothing brand operated by Fast Retailing Group, the applicant must have intended to free-ride on the goodwill bestowed on UNIQLO and unjustifiably obtain profits by using the applied mark “UNIPRO” that is confusingly similar to the cited mark.

JPO decision

The JPO Opposition Board found that the cited mark and “UNIQLO” have been widely recognized among relevant consumers in Japan to indicate a source of clothing managed by Fast Retailing Group.

In the meantime, the Board held “UNIPRO” is dissimilar to and unlikely to cause confusion with “UNIQLO” by stating:

  1. The applied mark and the cited mark both consist of white letters and a square. They also share the letters “UNI” in the top line and “O” in the bottom line. However, the difference of the letters “PR” and “QL” in the bottom line gives an impression that the marks represent different word in a square. Therefore, the applied mark is distinguishable from the cited mark in appearance.
  2. Comparing the sound of the applied mark with that of the cited mark, there is a difference in the third tone of “pu” and “ku”. This difference has anything but negligible effect on the overall tone and impression since respective sound has a short four-syllable structure. Thus, the Board finds it reasonable to conclude that there is no risk of mishearing each other.
  3. Conceptual aspect does not have impact on the assessment of likelihood of confusion, since both marks are meaningless.

Taking into consideration a low degree of similarity between the marks, even if the cited mark has become famous among relevant consumers, the Board has no reason to believe the consumers would consider an origin of the goods in question bearing the applied mark from UNIQLO or an undertaking economically or systematically linked to Fast Retailing.

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

TOMMY HILFIGER vs TOMTOMMY

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The Japan Patent Office (JPO) did not side with Tommy Hilfiger Licensing B.V. in an opposition against TM Reg no. 6604265 “TOMTOMMY” due to dissimilarity and unlikelihood of confusion with “TOMMY” and “TOMMY HILFIGER”.
[Opposition case no. 2022-900456, gazette issued on December 27, 2024]

TOMTOMMY

The contested mark, consisting of the word “TOMTOMMY” in standard characters, was filed with the JPO by a Chinese individual on January 20, 2022 for use on shoulder bags, tote bags, sports bags, wallets, umbrellas and other goods in Class 18, and underwear, belts, shoes, caps, coats, socks and other goods in Class 25 on January 30, 2022 (TM App no. 2022-10028).

The JPO examiner made an administrative decision to grant registration of the mark on August 3, 2022. Subsequently, the mark was published in Trademark Gazette for post-grant opposition on August 31, 2022.

Opposition by Tommy Hilfiger

Tommy Hilfiger Licensing B.V. filed an opposition with the JPO on October 31, 2022 by citing its own earlier trademark registrations for the wordmark “TOMMY” or “TOMMY HILFIGER”.

Tommy Hilfiger claimed that the contested mark should be cancelled in contravention of Article 4(1)(xi) and (xv) 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.

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

Tommy Hilfiger contends that the contested mark is composed of two distinctive words, “TOM” and “TOMMY”. Since “TOMMY” has been widely recognized by the relevant consumers to indicate the world-famous fashion brand “TOMMY HILFIGER”, the average consumers, uppon seeing the goods in question bearing the contested mark, will consider the term “TOMMY” as a prominent part of the contested mark in order to identify its origin. If so, the contested mark is similar to the cited marks a high degree.

Moreover, Tommy Hilfiger has used not only the mark “TOMMY”, but also various marks containing “TOMMY”, such as “TOMY JEANS”, “TOMMY NOW”, “TOMMY SPORT”, “TEAM TOMMY”, “TOMMY FACTORY”. In those circumstances, the consumers are likely to mistakenly believe that the goods in question bearing the contested mark “TOMTOMMY” come from the same undertaking or from economically-linked undertaking.

JPO decision

To my surprise, the JPO Opposition Board questioned the high degree of recognition of fashion brands, “TOMMY” and “TOMMY HILFIGER”, because the claimant did not provide sufficient evidence to prove the substantial and extensive use of the cited marks in Japan.

Furthermore, the Board denied similarity even between “TOMTOMMY” and “TOMMY” by stating:

  1. The contested mark is considered to be a coined word, and therefore has no specific meaning.
  2. Visually, both marks are distinguishable due to the difference in the number of letters that constitutes respective mark (8 letters vs 5 letters).
  3. Aurally, both sounds are dissimilar because the prefix sound “TOM” has a significant impact on the overcall pronunciation.
  4. A conceptual comparison is neutral because neither “TOMTOMMY” nor “TOMMY” has any clear meaning.

Because Tommy Hilfiger failed to demonstrate a high degree of popularity of the cited marks, the Board found that there was no reason to believe that the relevant consumer would confuse the source of the goods at issue bearing the contested mark with Tommy Hilfiger or an economically-linked undertaking due to a low degree of similarity between the marks.

Based on the foregoing, the Board decided the contested mark shall not be canceled and dismissed the oppositions entirely.

Trademark dispute: MONSTER EVERGY vs POCKET MONSTERS

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In a trademark opposition disputed between “MONSTER ENERGY” and “POCKET MONSTERS”, the Japan Patent Office (JPO) did not side with Monster Energy Company and decided in favor of Nintendo.
[Opposition case no. 2023-900162, decided on December 19, 2024]

POCKET MONSTERS

Nintendo / Creatures Inc. / Game Freak Inc., the IP owners of “Pocket Monsters”, widely known as its abbreviation, “Pokémon” as well, filed a trademark application for wordmark “POCKET MONSTRERS” in standard character for use on various categories of goods and services in classes 3, 9, 14, 16, 18, 20, 21, 24, 25, 28, 30 and 41 with the JPO on September 1, 2022 (TM App no. 2022-101055).

Pokémon, a blend of the words “Pocket Monsters”, means not only fictional creatures that inhabit the fictional Pokémon World, but also a Japanese media franchise that includes video games, animated series, films, and a trading card game.

The JPO granted protection of the applied mark without issuing any office action on April 3, 2023. Subsequently, the mark was published for post-grant opposition on May 12, 2023.

Opposition by Monster Energy

Monster Energy Company, the parent company of Monster Energy Drink, filed an opposition against “POCKET MONSTERS” with the JPO on July 10, 2023 before the lapse of a two-month statutory period counting from the publication date.

Monster Energy claimed a partial cancellation of the applied mark in relation to the designated goods of class 30 including tea, tea-based beverages, coffee, coffee beverages, cocoa based on Article 4(1)(vii) and (xv) of the Japan Trademark Law by citing its owned earlier marks that consist of “MONSTER ENERGY” or “MONSTER” in class 32.

Monster Energy alleged that the mark “MONSTER” has become famous among consumers to indicate energy drinks originating from the claimant. There was no dispute that the applied mark contains the term “MONSTER”. Therefore, relevant consumers would mistakenly associate the opposed mark with the claimant and consider a source of the beverages bearing the mark “POCKET MONSTERS” from a licensee of the claimant.

JPO decision

The JPO Opposition Board found evidence sufficient to establish a high degree of recognition of the mark “MONSTER ENERGY” to indicate energy drinks from the claimant. However, the Board questioned whether the cited marks have been widely recognized even among general consumers of carbonated beverages and juices other than energy drinks.

In addition, the Board found evidence insufficient to find a certain degree of recognition of the mar “MONSTER” per se.

Based on the above findings, the Board assessed similarity of mark by comparing overall appearance, sound and meaning between “MONSTER ENERGY” and “POCKET MONSTERS”.

From appearance and sound, the difference of words, “ENERGY” and “POCKET” has a material effect on overall visual and aural impression to the extent that relevant consumers can easily distinguish. Conceptually, the marks are unlikely to cause confusion because the opposed mark does not give rise to any specific meaning contrary to the cited marks. Therefore, the opposed mark is deemed dissimilar to the cited mark “MONSTER ENERGY”.

Given the low degree of similarity between “MONSTER ENERGY” and “POCKET MONSTERS”, the Board has no reason to believe that relevant consumers are likely to associate the opposed mark used on the goods in class 30 with Monster Energy or its licensee.

If so, the opposed mark should not be cancelled in contravention of Article 4(1)(vii) and (xv).

STARBUCKS Unsuccessful Invalidation Action against Trademark “STARBOSS”

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The Japan Patent Office (JPO) dismissed an invalidation action claimed by Starbucks Incorporation against TM Reg no. 6595964 for wordmark “STARBOSS” in class 32 due to dissimilarity to and unlikelihood of confusion with the world’s largest coffee chain “STARBUCKS”.
[Invalidation case no. 2023-890037, decided on December 17, 2024]

“STARBOSS”

Kenkoman Co., Ltd. filed a trademark application for wordmark “STARBOSS” in standard character for use on beer, carbonated drinks [refreshing beverages], fruit juices, vegetable juices [beverages], extracts of hops for making beer, whey beverages in class 32 with the JPO on January 25, 2022 (TM App no. 2022-13707).

The JPO examiner granted registration of the applied mark on June 24, 2022 without issuing any office action (TM Reg no. 6595964).

The applicant promotes energy drinks bearing the applied mark.

https://kenkoman.com/products/starboss-energy-drink-240ml-per-bottle

Invalidation action by Starbucks

Starbucks Incorporation filed an application for a declaration of invalidity against the applied mark with the JPO in contravention of Article 4(1)(xi) and (xv) of the Trademark Law on April 28, 2023.

Starbucks argued that the mark “STARBOSS” is confusingly similar to earlier mark “STARBUCKS” that has been consecutively registered in class 32 since 1989 because the difference of the letter, “OS” and “UCK” in the middle of respective mark would not overwhelm the entire similarity in appearance and concept.

Besides, consumers of the goods in question mostly overlap with coffee shop. Taking into consideration a remarkable degree of popularity and reputation of the mark “STARBUCKS” among general public in Japan, relevant consumers at the sight of beverages bearing the contested mark would pay much attention to the prefix portion starring with “STARB” and associate it with STARBUCKS, and thus consider the goods originating from a business entity economically or systematically connected with Starbucks.

JPO decision

The JPO Invalidation Board did not question a high degree of recognition of the mark “STARBUCKS” to indicate a source of coffee chain provided by Starbucks.

In the meantime, the Board found evidence insufficient to establish a certain degree of recognition of the mark “STARBUCKS” in relation to coffee beverages, juices and any other drinks.

The Board found both marks dissimilar by stating that:

“Comparing with appearance, both marks start with “STARB” and end with “S”. But there is a difference between the letters “OS” and “UCK” in the middle of respective mark. This difference would have a material effect on the visual impression of two marks that consist of eight or nine alphabets. Thus, both marks are clearly distinguishable in appearance.

Aurally, relevant consumers can distinguish “STARBOSS” with “STURBUCKS” because the enunciation of “BO” and “BUCK” in the middle of respective mark are pronounced in a strong tone and accordingly have a material impact on the overall sound.

A conceptual comparison is neutral as neither “STARBOSS” nor “STARBUCKS” have any clear meaning.

Based on the above findings, the Board has a reason to believe that the contested mark “STARBOSS” is dissimilar to the mark “STARBUCKS” by considering the impression, memory and association conveyed to the consumers overall.”

Given the low degree of similarity between “STARBOSS” and “STARBUCKS”, relevant consumers with an ordinary care are unlikely to confuse a source of goods in question bearing the contested mark with Starbucks or any business entity economically or systematically connected with the claimant.

Consequently, the Invalidation Board declared validity of the contested mark and dismissed the invalidation action by Starbucks.

JPO Decision: Trademark “Dear U plus” dissimilar to “dear U”

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The Japan Patent Office (JPO) overturned the examiner’s refusal and granted registration of TM App no. 2023-99199 for wordmark “Dear U plus” by finding dissimilarity to earlier marks, “dear U” and “DEAR YOU”.
[Appeal Case no. 2024-13602, decided on December 12, 2024]

TM App no. 2023-99199

Fanplus, Inc. filled a trademark application for wordmark “Dear U plus” in standard character for use on goods and services in classes 9, 35, 41 and 42 with the JPO on September 6, 2023.

Article 4(1)(xi)

On June 3, 2024, the JPO examiner rejected the applied mark based on Article 4(1)(xi) of the Japan Trademark Law by citing earlier TM Reg nos. 6570375 “dear U” (classes 9, 38, 41, and 45) and 6756169 “DEAR YOU” (classes 20, 21, 24, 27, 29, 30, 35, and 43).

In the refusal, the examiner asserted that the word “plus” is often used in conjunction with a source indicator to represent that the quality of the goods or services offered is more advanced or improved than that of existing goods or services. Under the circumstances, relevant consumers would consider the word “plus” less distinctive in connection with the goods and services in question. Therefore, the “Dear U” element is dominant in the applied mark. If so, it is reasonable to conclude that the applied mark is aurally and conceptually similar to the cited marks.

JPO Appeal Board decision

The applicant filed an appeal against the examiner’s refusal with the JPO on August 23, 2024, and argued dissimilarity of mark.

The JPO Appeal Board found that the applied mark “Dear U plus” did not have a specific meaning and would be recognized as a whole, taking into account a visual configuration represented by the same font and a less redundant pronunciation.

In assessing similarity of mark, the Board held:

The applied mark is visually distinguishable from the cited marks because of the presence of the term “plus” and the difference between the letter “U” and “YOU”. Furthermore, there are differences in the upper and lower case of the words “Dear,” “dear,” and “DEAR”.

Aurally, even though the applied mark and the cited marks contain the same sound “dɪr-juː”, the whole sounds are distinguishable because the difference in the suffix sound “plʌs” makes the overall tone and nuance of respective mark significantly different.

The conceptual aspect does not have impact on the assessment as the applied mark has no specific meaning.

Based on the foregoing, the Board found both marks dissimilar and held that the examiner erroneously applied Article 4(1)(xi). Consequently, the JPO decided to overturn the examiner’s refection.

Top 10 Trademark News in Japan, 2024

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As the year 2024 comes to an end, it is a good time to share the top 10 trademark news in Japan by counting the total number of likes on the Linkedin “Like” Button.

1: Japan IP High Court said No to registering the color of Hermes packaging

The Japan IP High Court ruled to dismiss Herme’s appeal against the JPO decision that rejected Hermes packaging color due to a lack of inherent and acquired distinctiveness.

Japan IP High Court said No to registering the color of Hermes packaging.

2: Can a ‘Letter of Consent’ guarantee successful trademark registration in Japan?

The revised Japan Trademark Law will come into effect on April 1, 2024, introducing the “Letter of Consent” as a means to overcome conflicts with earlier trademark registrations.

Can a ‘Letter of Consent’ guarantee successful trademark registration in Japan?

3: COCO vs. KOKO

In a recent administrative decision, the Japan Patent Office (JPO) found that the trademarks “CoCo” and “koko” are dissimilar and unlikely to cause confusion.

COCO vs. KOKO

4: CHANEL defeated in Trademark Opposition against “COCOCHI”

The Japan Patent Office (JPO) handed a loss to Chanel SARL in trademark opposition against TM Reg no. 6674710 for the “COCOCHI” mark by finding unlikelihood of confusion with “COCO”.

CHANEL defeated in Trademark Opposition against “COCOCHI”

5: ZARA Unsuccessful Opposition against TM “LAZARA”

On April 22, 2024, the Japan Patent Office (JPO) dismissed an opposition filed by Industria de Diseño Textil, SA (INDITEX), owner of the fashion brand “ZARA”, against TM Reg no. 6699667 for word mark “LAZARA” in classes 25 due to dissimilar marks and unlikelihood of confusion with “ZARA”.

ZARA Unsuccessful Opposition against TM “LAZARA”

6: CHANEL Lost in Trademark opposition against “COCOBABY”

The Japan Patent Office (JPO) did not side with CHANEL in an opposition against TM Reg no. 6650252 for wordmark “COCOBABY” in class 25 by finding dissimilarity of mark between “COCOBABY” and “COCO”.

CHANEL Lost in Trademark opposition against “COCOBABY”

7: Trademark Dispute: Chateau Mouton Rothschild vs MOUTON

The Japan Patent Office (JPO) declared invalidation of TM Reg no. 6090508 for wordmark “MOUTON” in classes 35 and 43 due to a likelihood of confusion with famous mark “Mouton” as a source indicator of Chateau Mouton Rothschild, one of the most famous wine estates in the world.

Trademark Dispute: Chateau Mouton Rothschild vs MOUTON

8: Hermes Victory with Invalidating Birkin Lookalike Design

The Japan IP High Court has ruled in favor of Hermes in a dispute over the validity of Design Reg no. 1606558 by finding a likelihood of confusion with Hermes.

Hermes Victory with Invalidating Birkin Lookalike Design

9: Trademark dispute: VALENTINO GARAVANI vs GIANNI VALENTINO

In a trademark opposition claimed by Valentino S.p.A. against TM Reg no. 6550051 for the GIANNI VALENTINO mark, the Japan Patent Office (JPO) decided to cancel the registration due to a conflict with earlier IR no. 975800 for the VALENTINO GARAVANI mark.

Trademark dispute: VALENTINO GARAVANI vs GIANNI VALENTINO

10: Japan IP High Court gives Green Light to 3D “Godzilla” shape as Trademark

On October 30, 2024, the Japan IP High Court disaffirmed the administrative decision by the Japan Patent Office (JPO) not to register the 3D shape of the eponymous character from the film “Shin Godzilla” as a trademark.

Japan IP High Court gives Green Light to 3D “Godzilla” shape as Trademark

Trademark dispute: UNITED vs UNITED GOLD

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

UNITED GOLD

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

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

https://unitedgold.jp/

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

Invalidation action

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

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

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

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

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

IP High Court ruling

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

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

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

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

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