カテゴリー: Similarity of service

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.

JPO found STINGER dissimilar to Stingers for clothing and sports event

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In an administrative appeal, the Appeal Board of the Japan Patent Office (JPO) overturned the examiner’s rejection, finding that the terms “STINGER” and “Stingers” were not considered confusingly similar.
[Appeal case no. 2025-000046, decided on August 5, 2025]

STINGER GC by LIV Golf

LIV Golf, a professional golf league founded in 2021, filed trademark application for the mark “STINGER GC” (see below) for use on clothing in Class 25 and golf tournaments in Cass 41 with the JPO on June 22, 2023 [TM Application no. 2023-69454].

The term “GC” is depicted in a noticeably smaller font size compared to “STINGER,” and therefore the element “STINGER” is perceived as the dominant portion of the mark.

https://shop.livgolf.com/collections/stinger-gc

Cited mark “Stingers”

On October 1, 2024, the JPO examiner rejected the mark based on Article 4(1)(xi) of the Japan Trademark Law by citing earlier trademark registration no. 6632507 for the stylized mark “Stingers” with device (see below).

The cited mark “Stingers” is used as the name of a professional badminton team managed by the cited owner.

https://www.jtekt.co.jp/sports/badminton/

On January 6, 2025, LIV Golf filed an appeal against the rejection with the JPO and disputed dissimilarity of the two marks.

JPO decision

A comparison of the applied-for mark and the cited mark shows differences in the presence of the letters “GC” in the former and the presence of a device element in the latter. When considered in their overall compositions, these differences result in a distinct visual impression, such that the two marks are dissimilar in appearance.

Further, when comparing the word element “STINGER” of the applied-for mark with the word element “Stingers” of the cited mark, several distinctions can be identified. These include the presence or absence of the terminal letter “s,” the use of all uppercase letters as opposed to a mixture of uppercase and lowercase letters, differences in typeface, and the manner of presentation—whether written in a straight horizontal line or with a slight upward inclination. Taken together, these variations further reduce the likelihood of visual confusion between the two marks.

In terms of pronunciation, the difference arising from the presence or absence of the final syllable “zu” is significant in light of the relatively short phonetic structures of the marks (five and six syllables, respectively). As a result, the two marks are unlikely to be confused phonetically.

From a conceptual standpoint, the applied-for mark conveys the idea of “something that stings,” whereas the cited mark conveys the idea of “things that sting.” The only distinction lies in the singular versus plural form of the word. Accordingly, the two marks may be considered to share a similar conceptual impression.

In summary, while the applied-for mark and the cited mark may be regarded as conceptually similar, they differ significantly in appearance and pronunciation. Taking into account the overall impressions, memories, and associations that the marks would create among relevant traders and consumers, the two marks can be regarded as dissimilar in their entirety.

JPO Found “TRITON” dissimilar to “Toriton, Inc.”

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In an administrative appeal, the Japan Patent Office (JPO) disaffirmed the examiner’s rejection to TM App no. 2024-90390 for wordmark “Toriton, Inc.” by negating similarity to earlier mark “TRITON.”
[Appeal case no. 2025-6661, decided on July 15, 2025]

Toriton, Inc.

On August 21, 2024, Toriton, Inc. filed a trademark application with the JPO for the word mark “Toriton, Inc.” in bold font with a shadow effect (see below) that designates computer software design, computer programming, or maintenance of computer software; providing computer programs on data networks and other services in Class 42 [TM App no. 2024-90390].

TRITON

The JPO examiner gave a notice of grounds for refusal based on Article 4(1)(xi) of the Japan Trademark Law by citing TM Reg no. 3221980 for stylized word mark “TORITON” (see below). The examiner considered the marks are confusingly similar and both designate the same or similar services in Class 42.

The applicant filed a response and argued dissimilarity of the marks. However, the examiner did not change his stance and decided to reject the mark on February 5, 2025.

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

JPO decision

The JPO Appeal Board observed that “Toriton, Inc.” and “TRITON” are dissimilar by stating that:

  1. From appearance, obvious are differences in the number and composition of the characters that consist of respective marks. When comparing the dominant element of the applied mark, “Toriton,” and the cited mark, “TRITON”, the differences in upper and lower case letters, as well as the presence or absence of the letter “o” after the first letter “T”, distinguish them.
  2. Aural comparison reveals that the overall pronunciations are distinguishable due to differences in the number of sounds and sound composition. However, the sound derived from the dominant element “Toriton” is identical to the cited mark. In this respect, both marks have a sound in common.
  3. Conceptually, the applied mark can evoke the meaning “a company named Toriton” as a whole, or no specific meaning from the dominant element. In contrast, the cited mark does not evoke any specific concept. Therefore, a conceptual comparison is neutral.
  4. Based on the foregoing, even though both marks share one sound, the Board believes there is no likelihood of confusion due to the clear distinction in appearance and concept. Taking into account the impressions, memories, and associations conceived by relevant traders and consumers, it is unlikely that the applied mark will cause confusion with the cited mark when used in connection with the services in question.
  5. Accordingly, the examiner’s findings are inaccurate, and the decision should be overturned.

MEN IMPOSSIBLE is not IMPOSSIBLE

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The Japan Patent Office (JPO) dismissed the opposition filed by Impossible Foods Inc. against TM Reg no. 6856327 for the “men impossible” mark due to dissimilarity to earlier mark “IMPOSSIBLE”.
[Opposition case no. 2024-900260, decided on June 17, 2025]

Men impossible

The contested mark consists of the word “men impossible” and a device representing cooked noodles in a bowl with chopsticks (see below). A Japanese individual filed it with the JPO for use in relation to restaurant services in Class 43 on March 5, 2024 [TM App no. 2024-22440].

“MEN” means ‘noodles’ in Japanese.

The JPO granted registration of the mark on October 11, 2024, and published it for post-grant opposition on October 29, 2024.

Opposition by Impossible Foods

Before the lapse of a two-month statutory period counting from the publication date, Impossible Foods Inc., a U.S. corporation that develops plant-based substitutes for meat, dairy, and fish products, filed an opposition with the JPO on December 16, 2024.

Impossible Foods Inc. argued that the contested mark should be canceled in contravention of Article 4(1)(xi) of the Japan Trademark Law due to a close resemblance to its earlier TM Reg no. 6646654 for the word mark “IMPOSSIBLE” in standard character, which designates restaurant services in Class 43.

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 Opposition Board found the contested mark “men impossible” is dissimilar to the cited mark “IMPOSSIBLE” by stating that:

Visually, the contested mark and the cited mark differ by virtue of the presence or absence of figurative elements and the word “men,” and therefore relevant consumers are clearly capable of distinguishing two marks in appearance.

Aurally, the sound of “Men Impossible” arising from the contested mark and the sound “Impossible” from the cited mark differ in the presence or absence of the prefix sound “men,” so they are clearly distinguishable in terms of pronunciation.

Conceptually, the contested mark does not give rise to any specific meaning. In the meantime, the cited mark has a meaning of ‘not possible’. There is no risk of confusion in concept.

Therefore, the contested mark and the cited mark are obviously distinguishable in appearance and sound, and there is no risk of confusion in concept.

When considering the overall impression, memory, and associations evoked in the mind of relevant traders and consumers by means of the appearance, pronunciation, and concept of two marks, the Board has a reason to believe that the contested mark is dissimilar to and unlikely to cause confusion with the cited mark.

Based on the foregoing, the Board decided that the contested mark is not subject to cancellation based on Article 4(1)(xi) even if the designated service of both marks are identical or similar.

Trademark dispute over MASTER SOMMELIER

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

MASTER SOMMELIER OF SAKE

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

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

https://sakesommelieracademy.com/

The Court of Master Sommeliers

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

https://courtofmastersommeliers.org/

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

JPO decision

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

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

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

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

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

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

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

JPO found “ARIS” dissimilar to “arivis” in trademark opposition

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The Japan Patent Office (JPO) dismissed an opposition claimed by Carl Zeiss Microscopy GmbH against TM Reg no. 6846031 for word mark “AIRIS” due to dissimilarity to earlier IR no. 1566263 for word mark “arivis”.
[Opposition case no. 2024-900248, decided on May 13, 2025]

AIRIS

Appier Private Limited, a Singapore company, filed a trademark application for word mark “AIRIS” in connection with SaaS, computer programming and other computer software-related services in class 42 with the JPO on February 6, 2024 [TM App no. 2024-11487].

The JPO examiner granted protection of the applied mark and published it for a post-grant opposition on September 30, 2024 after registration [TM Reg no. 6846031].

Opposition by Carl Zeiss

On November 29, 2024, Carl Zeiss Microscopy GmbH, an owner of IR no. 1566263 for word mark “arivis” in standard that designates computer software-related goods and services in classes 9, 42, and 45, filed an opposition with the JPO and claimed cancellation of the mark “AIRIS” in contravention of 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 Opposition Board assessed similarity between “AIRIS” and “arivis” from visual, aural and conceptual points of view.

  • Visual similarity

Even if the alphabets that constitute the contested mark are included in the cited mark, the terms “AIRIS” and ‘arivis’ differ in the order and the number of the letters, and the presence or absence of the letter “v”. These differences have a significant impact on the overall visual impression of two marks, given both have relatively short character structures. Therefore, the marks are visually distinguishable.

  • Aural similarity

A comparison of the pronunciation of “AIRIS” and “arivis” reveals clear distinctions in the second and third sounds. Despite the presence of the vowel sound (i) in both sounds, the distinction between the second and third sounds has a substantial impact on the overall tone and feel. Consequently, when pronounced as a whole, there is no risk of confusion between the sounds, ensuring their clear distinction.

  • Conceptual similarity

A conceptual comparison is neutral because neither “AIRIS” nor “arivis” has any clear meaning.

Based on the foregoing, the Opposition Board noted:

Even if the contested mark and the cited mark cannot be compared in concept, there is no likelihood of confusion in appearance and sound. Therefore, taking into consideration the overall impression, memory, and associations given to traders and consumers by means of the appearance, pronunciation, and concept of both marks, the Board found a reason to believe that two marks are dissimilar and unlikely to cause confusion when used on the services in question.

Consequently, the JPO decided to dismiss the opposition and declared validity of the contested mark as the status quo.

Porsche Successful in Registration of Composite Mark “PCA”

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The Japan Patent Office (JPO) reversed the examiner’s rejection of TM App no. 2023-61383 for composite mark “PCA” filed by Porshe Japan on account of dissimilarity to earlier trademark registrations for word mark “PCA”.
[Appeal case no. 2024-3079, decided on February 17, 2025]

PREMIUM CHARGING ALLIANCE “PCA”

Porsche Japan K.K., a wholly-owned subsidiary of Porsche AG as an official distributor of Porsche vehicles in Japan, filed trademark application for composite mark “PCA” as shown below with the JPO for use on ‘compute programs’ in class 9 and ‘computer software design; computer programing; maintenance of computer software; providing computer programs on data networks’ in class 42 on June 5, 2023.

Porsche Japan has launched a project to expand the network of 150kW fast charging stations across Japan by forming an alliance with Audi in April 2022. The applied mark is used to indicate the project.

JPO examination

On November 21, 2023, the JPO examiner rejected the applied mark due to a conflict with earlier trademark registration nos. 1738222, 5762134 and 5764544 for word mark “PCA” in class 9 and 42 owned by PCA Corporation based on Article 4(1)(xi) of the Trademark Law.

In the refusal decision, the examiner stated that the element “PCA” in the upper line of the applied mark is dominant in the overall visual impression. If so, the applied mark is confusingly similar to the cited marks, even though there is a difference in appearance, since both marks give rise to the same sound.

Porsche Japan filed an appeal against the rejection on February 21, 2024, requesting that the decision be set aside.

Appeal Board decision

The JPO Appeal Board found the applied mark should not be dissected into individual parts from its overall configuration. Relevant consumers would recognize the term “PCA” in the upper line as an abbreviation of the term “PREMIUM CHARGING ALLIANCE” in the lower line. Both the term “PCA” and “PREMIUM CHARGING ALLIANCE” would not give rise to any specific meaning.

In assessing similarity of the marks, the Board held there is no clear distinction in appearance between the marks as a whole. Phonetically, the applied mark is dissimilar to the cited marks on account of the sound arising from the term “PREMIUM CHARGING ALLIANCE”. The conceptual aspect does not have impact on the assessment of similarity, since both marks are meaningless.

Based on the above findings, the Board found the examiner erroneously applied Article 4(1)(xi) and declared registration of the applied mark due to dissimilarity to the earlier mark “PCA”.

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).

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.

COSME MUSEUM vs Cosmetic Museum

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In a trademark invalidation action disputing similarity between “COSME MUSEUM” and “Cosmetic Museum”, the Japan Patent Office (JPO) found both marks dissimilar and unlikely to cause confusion when used in relation to cosmetics.
[Invalidation case no. 2024-890015, decided on November 6, 2024]

COSME MUSEUM

CEL-ENA Co., Ltd. filed a trademark application for the wordmark “COSME MUSEUM” (Contested mark) 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) in order 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, MONOTANIJUNTENKAN 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 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, both marks do not give rise to any specific meaning at all. In this regard, they are not comparable in conception.

Based on the foregoing, even if the contested mark and the cited mark are conceptually incomparable, they 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 have 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.”

Accordingly, the Board decided to dismiss the invalidation action and declared the contested mark valid.