カテゴリー: Trademark Opposition

“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.

Why trademark owner for popular Finnish outdoor game “MÖLKKY” couldn’t win trademark opposition againt Japan Mölkky Association

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In a trademark dispute involving “MÖLKKY”—the popular Finnish lawn bowling game, the Japan Patent Office (JPO) did not side with Tactic Games Oy, the IP owner of the game, who opposed TM Reg No. 6906850 for a composite mark “MÖLKKY WORLD CHAMPIONSHIPS – HAKODATE, JAPAN” in the name of the Japan Mölkky Association.
[Opposicion case no. 2025-900111, decided on June 23, 2026]

Contested mark

Japan Mölkky Association filed a trademark application for a composite mark consisting of a maroon double-circle design containing 12 white ovals, featuring the text “MÖLKKY WORLD CHAMPIONSHIPS / HAKODATE / JAPAN” integrated seamlessly within the circular border (see below) for use on various goods and services in Classes 9, 21, 25, and 41 with the JPO on June 21, 2024 [TM App No. 2024-6998].

The JPO granted registration of the mark on March 12, 2025 [TM Reg No. 6906850], and then published it for post-grant opposition on March 21, 2025.

Opposition by Tactic Games Oy

On May 21, 2026, just before the lapse of two-month statutory opposition period, Tactic Games Oy, the IP owner of the popular Finnish outdoor game, filed a trademark opposition against the contested mark. The opponent requested the cancellation of its registration based on Article 4(1)(xi) and 4(1)(xv) of the Japan Trademark Law, citing its own earlier registered marks in Japan.

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

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

JPO decision

1. The Pitfall of Evidentiary Shortfalls: “Well-Known” Status Denied

To succeed in a likelihood of confusion claim under Article 4(1)(xv), an opponent must demonstrate that their mark is widely recognized among Japanese consumers.

While the JPO acknowledged that the game “Mölkky” is recognized in Japan and that Tactic Games’ products are sold via local distributors, it pointed out a fatal flaw in the evidence:

The Opponent failed to provide specific figures regarding sales duration, sales volume, revenue, market share, or the scale of advertising campaigns prior to the application date.

Consequently, the JPO found that “MÖLKKY” could not be recognized as a source indicator widely known among Japanese consumers for Tactic Games’ business.

2. The Rules of Engagement: No “Separation” of Composite Marks

Under Article 4(1)(xi), Tactic Games argued that the term “MÖLKKY” constitutes a prominent element that is sepearable from the other elements of the contest mark, and therefore, it is permissible to compare this specific element with the cited marks.

The JPO rejected this dissecting approach, ruling that:

  • The text “MÖLKKY WORLD CHAMPIONSHIPS,” “HAKODATE,” and “JAPAN,” along with the graphic elements, are harmoniously and integrally represented within the circular logo.
  • Because the word “MÖLKKY” was not proven to be exceptionally well-known in Japan, consumers would not naturally focus soly on that specific textual portion.

Therefore, the JPO held that dissecting the term “MÖLKKY” for a similarity comparison was legally impermissible. Based on the foregoing, the JPO dismissed the entire opposition due to the dissimilarity of the marks when compared as a whole.

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).

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.

Trademark Dispute: PINGU vs pingu・pongu

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In a recent opposition decision, the Japan Patent Office (JPO) dismissed an opposition claimed by Joker, Inc. against TM Reg no. 6924753 for wordmark “pingu・pongu”, finding dissimilarity to and unlikelihood of confusion with the opponent’s earlier mark “PINGU.”
[Opposition case no. 2025-900151, decided on May 22, 2026]

Contested mark

A Japanese individual filed trademark application for wordmark “pingu・pongu” in standard character for use on several services in Class 41, including educational and instruction service, arranging seminars, providing electronic publications, and amusement with the JPO on October 3, 2024 [TM App no. 2024-106222]

The JPO granted registration of the mark on May 1, 2025, and published it for a post- grant opposition on May 13, 2025.

Opposition by Joker, Inc.

Joker, Inc., an owner of the copyright and trademark rights featuring a 5-year-old boy penguin character “Pingu”, filed an opposition on July 11, 2025 and claimed cancellation of the contested mark in contravention of Article 4(1)(vii), (xi), (xv) and (xix) of the Trademark Law based on their earlier trademark registration no. 5316898 (see below).

The JPO Opposition Board decision

1. Recognition of the cited mark “PINGU”

The JPO acknowledged that the name “PINGU” (ピングー), associated with the well-known penguin character, had been used in Japan since the 1990s and had achieved a certain degree of public recognition by the early 2000s.

However, the Office found that the evidence submitted by the opponent was insufficient to demonstrate that the cited mark remained widely recognized at the time the contested mark was filed and registered. While the record showed ongoing activities such as merchandise sales, social media promotions, and events involving PINGU, no evidence was provided regarding sales figures, market share, advertising expenditures, or the current level of consumer recognition.

The JPO also noted the absence of objective evidence linking those activities directly to the opponent’s business. As a result, the Office concluded that the opponent had failed to prove that the cited mark PINGU was widely recognized among consumers in Japan or abroad as indicating the opponent’s goods or services.

2. Comparison of two marks

Although the mark contains the element “pingu,” the two components are represented in the same font, size, and spacing, and are connected by a centered do, the JPO held that the contested mark “pingu・pongu” should be viewed as a single, inseparable coined term. The pronunciations, “Pingu-Pongu,” are neither awkward nor unnatural. Since neither “pingu” nor “pongu” has a recognized meaning in ordinary dictionaries, consumers would perceive the mark as a whole as an invented term without any particular meaning.

The cited mark consisted of a penguin character design incorporating the word “PINGU,” together with the wording “PINGU’S ENGLISH.”

According to the JPO, both the figurative and verbal elements of the cited mark could independently function as source identifiers. The literal elements therefore generated pronunciations such as “Pingu,” “Pingu’s English,” but conveyed no specific meaning because the elements are coined terms.

3. No Likelihood of Confusion

Comparing the marks, the JPO found significant differences in appearance. The cited mark contains a prominent penguin device and additional wording, whereas the contested mark consists solely of the standard-character expression “pingu・pongu.”

The Office also determined that the respective pronunciations are clearly distinguishable. “Pingu-Pongu” differs substantially in both syllabic structure and overall sound from “Pingu,” and “Pingu’s English.”

As neither mark conveys a particular concept, no conceptual comparison could be made.

Considering the visual and phonetic differences as a whole, the JPO concluded that the marks are dissimilar and unlikely to be confused. Consequently, the contested mark did not fall within Article 4(1)(xi) and (xv) of the Trademark Law.

Revised JPO Trial and Appeal Procedures

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

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

🔹 Electronic Evidence

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

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

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

🔹 Expansion of Web Conference Procedures

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

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

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

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

🔹 Changes to Hearing Records

The revised rules also strengthen procedural transparency regarding hearing records.

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

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

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

🔹 Simplification of Witness and Expert Oaths

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

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

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

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

ARC’TERYX Unsuccessful Trademark Opposition against “Arcsilk”

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The Japan Patent Office (JPO) dismissed an opposition filed by Amer Sports Canada Incorporated against TM Registration No. 6889980 for the wordmark “Arcsilk” in Class 25, finding it dissimilar to and unlikely to be confused with “ARC’TERYX.”
[Opposition Case No. 2025-900056, decided on April 6, 2026]

The Contested Mark: “Arcsilk”

The contested mark, consisting of the word “Arcsilk” in standard characters, was filed by NIHONWASOU HOLDINGS, Inc. on December 27, 2023 [TM App. 2023-143938]. The application designates various goods, including clothing and footwear, in Classes 24 and 25.

The JPO examiner found no grounds for refusal and granted registration of the mark on September 20, 2024. Subsequently, the mark was published for post-grant opposition on January 11, 2025.

Opposition by ARC’TERYX

Amer Sports Canada Incorporated filed an opposition on March 12, 2025, seeking cancellation of the contested mark based on Article 4(1)(xi) and (xv) of the Japan Trademark Law, citing its earlier trademark registration No. 6748891 for the wordmark “ARC’TERYX” in Class 25.

In the opposition, the claimant alleged that the cited mark has become so widely known both in Japan and overseas that the use of the characters “ARC’TERYX” on outdoor goods immediately causes traders and consumers to recognize it as referring to the claimant. Furthermore, they argued that the term “ARC” is widely recognized even among general consumers as referring to the “ARC’TERYX” brand. The claimant contended that “silk” is a descriptive term for raw materials in Class 25 and cannot function as a source indicator. Therefore, they argued that “Arc” is the dominant portion of the contested mark. Since both marks share the dominant element “ARC,” the claimant asserted they are confusingly similar in appearance, concept, and pronunciation.

Additionally, the claimant argued that because the goods and target consumers are identical, the use of “Arcsilk” would lead consumers to misidentify the goods as being from a business entity with an economic or organizational relationship with the claimant.

JPO Decision

Surprisingly, the JPO Opposition Board found that the cited mark “ARC’TERYX” had not achieved a level of widespread recognition sufficient to support the claim of being a famous mark, stating:

“No evidence has been submitted that would allow for an objective and concrete assessment of facts concerning the period of use of the cited mark; sales figures, market share, and business scale; or the expenditures, methods, frequency, and duration of advertising activities. Consequently, we cannot find that the cited mark ‘ARC’TERYX’ was widely recognized among domestic dealers and consumers as an indication of the claimant’s goods at the time of the application or the registration of the contested mark.”

Regarding the similarity of the marks, the Board found that:

  • Visually: The marks are clearly distinguishable due to the presence of the apostrophe and the difference between “silk” and “TERYX.”
  • Aurally: “Arc-silk” and “Arc-teryx” differ in syllable count and constituent sounds, making them clearly distinguishable even when pronounced continuously.
  • Conceptually: The comparison is neutral as neither mark gives rise to a specific, well-defined meaning.

Based on the finding that the cited mark lacked evidence of widespread recognition and possessed a low degree of similarity to the contested mark, the Board concluded there was no risk of confusion. Consequently, the Board ruled that the contested mark should not be cancelled under Article 4(1)(xi) or (xv) of the Trademark Law.

JPO Decision: No Likelihood of Confusion with Lacoste Crocodile Logo

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In a trademark dispute arguing similarity to and likelihood of confusion with the Lacoste Crocodile logo, the Japan Patent Office (JPO) did not side with Lacoste.
[Opposition case no. 2025-90093, decided on April 6, 2026]

Contested mark

Yagyu Office Co., Ltd. filed a trademark application for a design depicting a green crocodile lying prone, facing to the right with its mouth wide open (see below) in connection with various goods, including apparel, sportswear, and footwear of classes 18 and 25 at the JPO on June 14, 2024. [TM App no. 2024-64585]

On February 14, 2025, the JPO examiner granted registration of the mark without raising any objections.

Opposition by Lacoste

On May 1, 2025, Lacoste filed an opposition against the contested mark and claimed cancellation of the contested mark in contravention of Article 4(1)(xi), (xv), and (xix) of the Japan Trademark Law by citing its well-known crocodile logos.

Lacoste argued that the contested mark consists of a design depicting a green crocodile lying prone, facing to the right with its mouth wide open, and thus creates a similar commercial impression to the cited mark due to a high degree of visual similarity in its entirety. Taking into account the remarkable reputation of the cited mark and the close resemblance between the marks, the average consumers are likely to confuse a source of the goods in question bearing the contested mark with the cited mark.

JPO decision

The JPO Opposition Board found that the cited mark has been famous among relevant consumers and traders in Japan and other jurisdictions as a source-identifier of Lacoste’s business.

However, the JPO observed the contested mark would not be recognized as a crocodile, but “a light green geometric figure formed by white linear cutouts. It depicts a right-facing creature with an open mouth, a thick body, four legs, and a long, slightly curved tail extending backward.”

While the JPO acknowledged that the contested mark could be perceived as representing some types of reptile, it found that the design was too abstract to evoke a specific animal. As such, it was held not to give rise to any specific pronunciation or concept.

In contrast, the cited mark is recognized as clearly depicting a crocodile and conveying the well-known brand identity associated with Lacoste.

Based on the differences in concept and the tail orientation (extended backward vs. raised upward), the Board found that both marks are distinguishable in appearance as well, and therefore dissimilar and unlikely to cause confusion, even if the goods in question are highly related to Lacoste’s business.

Trademark Dispute: RUBIK CUBE vs RUBiK Pi

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The Japan Patent Office (JPO) dismissed the opposition to TM Reg no. 6945136 for the stylized mark “RUBiK Pi,” claimed by SPIN MASTER TOYS UK LIMITED, the owner of the famous “RUBIK CUBE” mark for the three-dimensional puzzle cube, by finding dissimilarity and unlikelihood of confusion between the two marks.
[Opposition case no. 2025-900188, decided on March 16, 2026]

TM Reg no. 6945136

The contested mark (see below) was filed by Thunder Software Technology Co., Ltd., a leading Chinese provider of smart operating system (OS) technologies and services, for use on computer-related goods and services in Classes 9, 41, and 42 with the JPO on December 3, 2024 [TM App no. 2024-129535].

The literal element of the mark appears to be “RUBi Pi” due to a cube design placed between two terms. However, the applicant’s website indicates the contested mark in colors to be read as “RUBIK Pi”.

https://www.thundercomm.com/product/rubik-pi/

The JPO examiner did not issue a notice of grounds for refusal. The mark was registered on July 4, 2025, and then published for a post-grant opposition on July 14.

Opposition by SPIN MASTER TOYS UK LIMITED

On September 16, 2025, just before the lapse of statutory opposition period for two months, SPIN MASTER TOYS UK LIMITED filed an opposition against the contested mark and claimed cancellation of its entire registration in contravention of Article 4(1)(vii), (xi), (xv) and (xix) of the Japan Trademark Law by citing the earlier marks in connection with the world-famous three-dimensional puzzle cube (Cited mark No. 1 – 6), “RUBIK CUBE”.

The claimant argued that relevant consumers and traders will consider the cube design representing the letter “K,” and thus the contested mark, to be read as “RUBIK” or “RUBIK Pi” in the course of actual business, given that the applicant’s product (a lightweight development board for AI platforms) using the contested mark is offered for sale in the name of “RUBIK Pi” on their website.

Considering that the Cited marks are famous worldwide as an indicator of the claimant’s 3D puzzle cubes, consumers would mistakenly recognize the commercial source of the goods and services in question as being from the claimant or other economically linked undertakings at the sight of the contested mark.

JPO decision

The JPO Opposition Board admitted the remarkable degree of recognition and popularity of the Cited mark Nos. 3, 5, and 6 as source indicators of the claimant’s business based on the evidence submitted by the claimant. However, the Board questioned whether the other Cited marks, which mainly consist of the term “RUBIK,” have also become famous for identifying the claimant’s source.

Regarding the contested mark, the Board found that its overall configuration would not create the sound of “RUBIK” or “RUBIK Pi.” Instead, the contested mark gives rise to the sound of “RUBi Pi,” but has no clear meaning.

Even if the Cited mark 3 “RUBIK CUBE” has become famous, relevant consumers are unlikely to associate the goods and services in question bearing the contested mark with the Cited marks due to the marks’ low degree of similarity. Therefore, the Board held that the contested mark should not be vulnerable to cancellation based on Article 4(1)(xv) of the Trademark Law.