カテゴリー: Trademark Opposition

Trademark Dispute: FLOW3D vs Flow360

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In a trademark dispute over the similarity between “FLOW3D” and “Flow360,” the Japan Patent Office (JPO) assessed the respective mark in its entirety and found them to be dissimilar even though they share the first word.
[Opposition case no. 2025-900008, decided on September 2, 2025]

Flow360

Flex Compute Incorporated, a US company, filed a trademark application of wordmark “Flow360” in standard character for use on SaaS in Class 42 with the JPO on February 8, 2024 [TM App no. 2024-12572].

The JPO examiner did not raise any refusal to the mark and granted protection on September 18, 2024. Upon payment of statutory registration fee, the mark was registered on October 29, 2024 [TM Reg no. 6859262], and published for a post-grant opposition on November 7, 2024.

FLOW3D

Flow Science Incorporated, an owner of earlier TM Reg no. 4284043 for wordmark consisting of “FLOW3D” and its Japanese transliteration arranged in two lines (see below) on computer programs in Class 9, filed an opposition against the mark “Flow360” on January 7, 2025, and claimed its cancellation in contravention of Article 4(1)(xi) of the Japan Trademark Law by citing the mark “FLOW3D.”

In the opposition brief, the claimant argued that both “360” and “3D” are low in distinctiveness. Therefore, the first word “FLOW” plays a dominant role in identifying the source of the goods and services in question, and relevant consumers are likely to be misled or confused because of the common word.

JPO Decision

The JPO Opposition Board found that the contested mark was not cancelled based on Article 4(1)(xi) by stating as follows.

The Board noted that there is no reasonable ground to find that the elements “360” and “3D” are immediately perceived as indicating the nature or quality of the goods and services in question. Accordingly, it is not appropriate to consider the term “FLOW” as a dominant element when comparing the marks in accordance with the claimant’s assertion.

The appearance and pronunciation of the contested mark and the cited mark are distinguishable due to a clear difference in constituent characters and sound. A conceptual comparison is neutral, as neither the contested mark nor the cited mark has any clear meaning.

Therefore, considering the overall commercial impressions, recollections, and associations that respective marks as a whole give to relevant traders and consumers through appearance, pronunciation, and concept, both marks should be regarded as dissimilar and distinguishable, with no likelihood of confusion.

JPO Decision: KATSEYE is Dissimilar to CAT’S EYE for Watches

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The Japan Patent Office (JPO) dismissed an opposition filed by Sowind S.A. against TM Reg no. 6876057 for word mark “KATSEYE” who claimed its cancellation based on earlier IR no. 1056129 for word mark “CAT’S EYE” by finding dissimilarity between the marks.
[Opposition case no. 2025-900048, decided on August 15, 2025]

KATSEYE

HYBE UMG LLC, American record company jointly founded by South Korean entertainment company, HYBE and Universal Music Group (UMG), filed a trademark application for word mark “KATSEYE” in standard character for use on various goods and services in Classes 9, 14, 16, 18, 25, 28, 41, and 42, including watches (cl. 14) with the JPO on May 15, 2024 [TM App no. 2024-51239].

https://www.universal-music.co.jp/katseye/

The JPO examiner granted registration of the mark on Decem 3, 2024, and published it for a post-grant opposition on December 23, 2024.

CAT’S EYE

Sowind S.A. filed an opposition on February 25, 2025 by citing earlier IR no. 1056129 for word mark “CAT’S EYE” in standard character for use on watches which do not contain chrysoberyl cat’s eyes in Class 14.

Sowind S.A. argued the contested mark should be cancelled in contravention of Article 4(1)(xi) of the Japan Trademark Law on the ground that the contested mark “KATSEYE” is confusingly similar to the cited mark “CAT’S EYE” from visual, phonetic and conceptual points of view, and the goods designated under the contested mark in Class 14 is identical or similar to watches.

JPO Decision

The JPO Opposition Board assessed similarity of the marks and found that the contested mark is dissimilar to the cited mark by stating that:

The term “KATSEYE” does not appear in ordinary dictionaries and no circumstances have been identified indicating that it is recognized as having a specific meaning, it shall be perceived as a coined word that does not give rise to any particular concept.

With respect to coined words that lack a specific meaning, it is customary to be pronounced in accordance with commonly accepted English or Romanized readings. Accordingly, the contested mark, consistent with its composition, will be pronounced as “KATSU-AI” or “CATS-EYE” and has no specific meaning.

As the term “CAT’S EYE” bears the meaning of “chrysoberyl (cat’s eye),” the cited mark, in accordance with its composition, will be pronounced as “CATS-EYE” and gives rise to the concept of a “cat’s eye (gemstone).”

The contested mark and the cited mark, each consisting of no more than seven or eight letters, are clearly distinguishable in appearance by reason of the difference between the initial letter “K” and “C” and the presence or absence of an apostrophe (“’”) in the middle of the word.

When the contested mark is pronounced as “CATS-EYE”, both marks are identical in sound.

In comparing the sound “KATS-EYE” of the contested mark with the sound “CATS-EYE”, since both consist of only five syllables, the difference between the initial sounds “KA” and “KYA” exerts a non-negligible influence upon the overall pronunciation, whereby the two marks can be clearly distinguished in sound.

Further, while the contested mark does not give rise to any particular concept, the cited mark gives rise to the concept of a “cat’s eye (gemstone).” Accordingly, the two marks are not likely to be confused in concept.

In consequence, even if there is a case that the two marks can be identically pronounced, they are unlikely to be confused in appearance and concept. When the contested mark is pronounced as “KATSU-AI”, the two marks are sufficiently distinguishable in appearance, pronunciation, or concept. Therefore, taking into a global consideration commercial impression, memory, and association given to traders and consumers through their appearance, concept, and pronunciation, the contested mark and the cited mark are dissimilar and unlikely to cause confusion.

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

JPO dismisses Honda’s opposition against “WONKEY” mark for motorcycles

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The Japan Patent Office (JPO) dismissed an opposition filed by Honda Motor Co., Ltd. against TM Reg No. 6852662 for the word mark “WONKEY” in Class 12, finding no similarity or likelihood of confusion with Honda’s well-known “MONKEY” bikes.
[Opposition Case No. 2024-900262, decided July 15, 2025]

The Contested Mark: “WONKEY”

The opposed mark, consisting of the stylized word “WONKEY” in bold font (see below), was filed by Diner Co., Ltd. on February 26, 2024, for use on motorcycles, electrically operated scooters, and electric bicycles in Class 12 [TM App. No. 2024-18623].

The applicant promotes “WONKEY” motorized bicycles that may be driven by persons over 16 years of age without a driver’s license.

https://wobikes.com/collections/wonkey

The JPO granted registration on October 9, 2024 [TM Reg. No. 6852662], and published it for post-grant opposition on October 18, 2024.

Honda’s Opposition

On December 17, 2024, Honda filed an opposition, seeking cancellation under Article 4(1)(vii), (x), (xi), (xv), and (xix) of the Trademark Law, relying on its earlier Trademark Registration No. 2512844 for the stylized word mark “MONKEY” in Class 12.

Honda argued that “WONKEY” is visually similar to “MONKEY,” emphasizing that:

“Of the six letters, five (‘onkey’) are identical in type, spelling, and sequence. The only difference lies in the initial letters ‘w’ and ‘m,’ which themselves share similar forms composed of two v-shaped or u-shaped strokes. At first glance, the two letters appear alike, and thus the marks as a whole create a closely similar impression, rendering them confusingly similar in appearance.”

To support its case, Honda submitted extensive evidence demonstrating the fame of its “Monkey” bikes, which have been marketed since 1961.

https://www.honda.co.jp/Monkey125/

The JPO’s Decision

The Opposition Board acknowledged the widespread recognition of Honda’s “Monkey” bikes among relevant consumers at the time of application and registration of the contested mark.

Nevertheless, the Board denied similarity between the marks. In particular, it reasoned that:

  • The contested mark “WONKEY” does not generate any specific concept.
  • The cited mark “MONKEY,” by contrast, is a well-known word in Japan with the meaning “monkey,” giving rise to both the pronunciation “monkey” and the concept of “monkey.”
  • While the two marks share all letters and sounds except for their initial characters (“w” vs. “m”; “wo” vs. “mo”), both are short (six letters and four sounds). Accordingly, the initial differences exert a significant impact on the overall appearance and pronunciation.
  • Coupled with the concept of “monkey” derived from the cited mark, these differences lead to a clear distinction in the overall impressions, memories, and associations conveyed to consumers.

The Board concluded that, given the low degree of similarity, relevant consumers were unlikely to confuse the source of the contested goods in Class 12 with Honda or any economically or organizationally related entity.

Based on the above findings, the JPO dismissed the opposition in its entirety and upheld the validity of the contested mark “WONKEY.”

UNDER ARMOUR Unsuccessful Challenge in Trademark Opposition against AROUMRIN

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The Japan Patent Office (JPO) dismissed the opposition filed by Under Armour, Inc. against TM Reg no. 6839569 for the stylized mark “ARMOURIN” in Classes 25 and 28 due to dissimilarity to and unlikelihood of confusion with earlier registrations for the mark “UNDER ARMOUR”.
[Opposition case no. 2024-900229, decided on July 2, 2025]

ARMOURIN

The contested mark (see below) was filed by AMH LO INC., a U.S. company, in connection with apparel and footwear, including golf shoes, in Class 25; and sporting articles, inter alia golf clubs, golf equipment, in Class 28, with the JPO on December 26, 2023 [TM App no. 2023-143646].

The JPO examiner, as a result of substantive examination, granted protection of the mark on August 6, 2024 without issuing an office action.

https://armourin.com/

After registration, the mark was published in the gazette for a post-grant opposition on September 9, 2024.

Opposition by Under Armour

Under Armour, Inc., a U.S. sports apparel company, filed an opposition against the mark “ARMOURIN” with the JPO on November 8, 2024, and claimed cancellation based on Article 4(1)(xi) and (xv) of the Japan Trademark Law due to the similarity to and likelihood of confusion with their earlier registrations for the word mark “UNDER ARMOUR”.

Under Armour argued the contested mark contains the term “ARMOUR” that has become famous among relevant consumers of the goods in question and played a prominent role in identifying a commercial source of the goods bearing the cited mark. Therefore, the contested mark should be considered similar to the cited mark “UNDER ARMOUR” and likely to cause confusion with the opposer’s business when used on the goods in question.

The JPO decision

Article 4(1)(xi) – Similarity of mark

The JPO Opposition Board found that the contested mark does not give rise to any specific meaning as a whole.

Regarding the cited mark “UNDER ARMOUR”, the Board observed that there is reason to dissect the term “UNDER” and “ARMOUR” into individual parts from visual and conceptual points of view.

Global assessment suggests there is no similarity in appearance and sound. Besides, a conceptual comparison is neutral as neither the contested mark nor the cited mark has a clear meaning. Therefore, the marks are dissimilar, even if the goods in question are the same as those cited, by taking account of the overall impression, memory, and association created in the minds of relevant consumers.

Article 4(1)(xv) – Likelihood of confusion

The Board negated a famousness of the cited mark “UNDER ARMOUR” because the opposer failed to provide sufficient objective evidence of actual sales amount and advertising in Japan.

Bearing in mind that the contested mark has a low degree of similarity to the cited mark, there is no reason to believe that relevant consumers will confuse the source of the goods in question bearing the contested mark with Under Armour, the Board noted.

In the light of the foregoing, the Board dismissed the opposition and declared the contested mark valid as status quo.

JPO Finds trademark “yes no champagne” for wines with the protected appellation of origin “Champagne” registrable even if owned by Japanese company.

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The Japan Patent Office (JPO) dismissed an opposition filed by Comité Interprofessionnel du Vin de. Champagne (C.I.V.C.) against TM Reg no. 6843113 for wordmark “yes no champagne” in Class 33 by stating that Japanese ownership of the contested mark would neither harm the friendly relationship between Japan and France, nor public sentiment.
[Opposition case no. 2024-900238, decided on June 24, 2025]

YES NO CHAMPAGNE

ZERU Co., Ltd. filed a trademark application for word mark “yea no champagne” and its Japanese transliteration arranged in two lines (see below) for use on wines in Class 33 with the JPO on November 16, 2023. [TM App no. 2023-133081]

On May 31, 2024, the JPO examiner issued an office action based on Article 4(1)(xvi) and (xvii) of the Japan Trademark Law.

Article 4(1)(xvi) prohibits registering a mark that could mislead consumers about the quality of the goods.

Article 4(1)(xvii) prohibits the registration of any mark comprised of a mark indicating the place of origin of wines or spirits from the World Trade Organization member that has prohibited its use on wines or spirits not originating from its region.

Since, the applicant restricted the designated goods in Class 33 to wines with the protected appellation of origin “Champagne” as a response to the office action, the JPO examiner granted registration of the mark. Subsequently, the mark was published for post-grant opposition on September 20, 2024.

Opposition by C.I.V.C.

On November 21, 2024, just before a lapse of the two-month statutory opposition period, Comité Interprofessionnel du Vin de. Champagne (C.I.V.C.) filed an opposition and claimed cancelation of the contested mark based on Article 4(1)(vii) of the Trademark Law.

Article 4(1)(vii) provides that a mark shall not be registered if it is likely to cause damage to public policy.

In the opposition brief, the C.I.V.C. argued that any mark containing the term “Champagne” should not be owned by an entity with no connection to or place of business in the region. Such ownership would likely to lead to free-riding on a famous geographical indication, diluting its source-identifying value and ultimately dishonoring France and its citizens, contrary to international faith.

JPO decision

The JPO Opposition Board admitted the remarkable reputation of the geographical indication “Champagne” among the general public, which was acquired through substantive use and marketing efforts made by the C.I.V.C. and other relevant organizations. The Board also found that the term “Champagne” and Champagne wines are cultural products of France and of extremely high significance to the country and its citizens.

Meanwhile, the Board noted that champagne wines are widely distributed in Japan, and that relevant traders commonly use the term “champagne” to refer to the wines.

Taking account of long-lasting trade practice that the term “Champagne” has been commonly used among traders of the goods in question, it would not anything but disorder public policy or moral to use the contested mark that contains the term “Champagne” in connection with wines with the protected appellation of origin “Champagne.”

If so, the Board finds no reason to believe that registration and use of the contested mark by the applicant is likely to harm the friendly relationship between Japan and France or public sentiment.

Based on the above findings, the Board made a decision to dismiss the opposition entirely.

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.

TORNADO vs TORQNADO

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The Japan Patent Office (JPO) dismissed an opposition filed by GEMBALLA LIMITED against TM Reg no. 6849477 for the word mark “TORQNADO” for use on cars and motorcycles in class 12 due to dissimilarity to IR no. 1100655 for the word mark “TORNADO” that designates automobiles in class 12.
[Opposition case no. 2024-900257, decided on May 27, 2025]

TORQNADO

Suzuki Motor Corporation, a major Japanese automotive company, filed a trademark application for the word mark “TORQNADO” in standard character for use on cars and motorcycles in class 12 with the JPO on January 18, 2024. [TM App no. 2024-4189]

The JPO examiner did not issue an office action in the course of substantive examination and then granted registration of the mark on September 3, 2024.

Subsequently after registration [TM Reg no. 6849477], the mark was published for a post-grant opposition on October 9, 2024.

Opposition by GEMBALLA

Just before the lapse of two-month statutory opposition period, GEMBALLA LIMITED, a German car manufacturer with renowned experience in refining of Posche and McLaren sports cars, filed an opposition with the JPO on November 9, 2024.

In the opposition brief, GEMBALLA claimed cancellation of TM Reg no. 6849477 based on Article 4(1)(xi) of the Japan Trademark Law because of similarity to their IR no. 1100655 for the word mark “TORNADO” that designates “Automobiles and parts thereof, particularly tuned automobiles and parts thereof; accessories for the aforementioned goods as far as included in this class; all aforementioned goods excluding tires” in class 12.

GEMBALLA argued the opposed mark “TORQNADO” is confusingly similar to the cited mark “TORNADO” in appearance and sound. Besides, all goods designated by the opposed mark are deemed similar.

JPO decision

The JPO Opposition Board did not side with GEMBALLA and found both marks dissimilar by stating that:

Visual Comparison:

The presence or absence of the letter “Q” in the middle makes the respective marks distinguishable enough to reduce the likelihood of confusion.

Aural comparison:

The sounds of “TORQNADO” and “TORNADO” differ clearly in the presence or absence of the “ku” sound from the letter “Q.” This difference significantly impacts the overall pronunciation. It gives rise to a different tone and feeling of the sounds, thus making the two marks phonetically distinguishable.

Conceptual comparison:

The opposed mark does not have a specific meaning. Meanwhile, the cited mark has the meaning of “an extremely strong wind that blows in a circle.”  Therefore, both marks are unlikely to cause conceptual confusion.

Given both marks are dissimilar, the opposed mark should not be canceled based on Article 4(1)(xi) even if the goods in question are identical or similar.

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.

Trademark dispute: MINI vs. DMINI

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The Japan Patent Office (JPO) dismissed an opposition claimed by BMW against TM Reg no. 6798869 for wordmark “DMINI” in class 12 due to dissimilarity to and unlikelihood of confusion with a famous small car “MINI”.
[Opposition case no. 2024-900137, Gazette issued date: April 25, 2025]

DMINI

Mitsubishi Motors Corporation filed a trademark application for word mark “DMINI” in standard character for use on automobiles, motorcycles, bicycles, electric cars, hybrid electric cars, driverless cars and other goods in class 12 with the JPO on October 10, 2023.

The JPO examiner did not raise any objection in the course of substantive examination, and granted registration on March 29, 2024.

The mark “DMINI” was published on trademark registration gazette (TM Reg no. 6798869) for a post-grant opposition on May 7, 2024.

Opposition by BMW

Bayerische Motoren Werke GmbH (BMW) filed an opposition with the JPO on July 5, 2024 before the lapse of two-month statutory period counting from the publication date.

BMW requested the cancellation of the mark “DMINI” based on Article 4(1)(vii), (xi), and (xv) of the Japan Trademark Law by citing its owned earlier trademark registrations for wordmark “MINI” in class 12.

Allegedly, the cited mark has become famous among the relevant consumers to indicate a source of the world-famous small cars “MINI” that have been imported into Japan for more than the past six decades. BMW argued that the literal element “MINI” would be dominant in the opposed mark, taking into account the high degree of recognition of the cited mark “MINI” among the consumers. If so, both marks should be considered similar, or likely to cause confusion in relation to the goods in question.

JPO decision

From the produced evidence, the JPO Opposition Board found the cited mark “MINI” has acquired a remarkable degree of popularity and reputation among consumers to indicate the automobiles (small cars) manufactured by BMW.

However, the Opposition Board question similarity of the marks by stating that:

“There is a difference in the presence or absence of the letter “D” at the beginning of each mark. The difference has a strong visual impact and is likely to create a different impression given the relatively short character structure of five and four letters respectively. Therefore, there is a low degree of visual similarity between the marks.

Secondly, there is a difference between in the overall sound of “DMINI” and “MINI” due to the presence or absence of the sound “D” at the beginning. It has a significant impact on the overall sound, given the short phonetic structure of four or two sounds, and thus the overall tone and aural impression are clearly different to the extent that a risk of confusion in pronunciation is not conceivable.

Thirdly, the opposed mark does not give rise to a specific meaning, whereas the cited mark has a meaning of “famous automobile brand owned by BMW”. If so, there will be any conceptual confusion.”

Even if the cited mark “MINI” has become famous and the goods in question are highly related to the goods bearing the cited mark administered by BMW, given the facts that the term “MINI” is not a coined word and the low degree of similarity between “MINI” and “DMINI”, the Board has no reason to believe that the consumers are likely to confuse a source of goods bearing the opposed mark “DMINI” with BMW.

Based on the foregoing, the Board decided to dismiss the entire opposition and declared the validity of the mark “DMINI” as status quo.

Trademark Dispute: Domino’s Pizza vs Dog’s Pizza

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In a trademark opposition against TM Reg no. 6804935 for the mark “Dog’s Pizza”, the Japan Patent Office (JPO) did not side with Domino’s IP Holder LLC, which claimed similarity to and likelihood of confusion with Domino’s red and blue rectangular emblem with three white dots.
[Opposition case no. 2024-900149, decided on April 2, 2025]

Dog’s Pizza

The contested mark, consisting of the words “DOG’s PIZZA” in red and its translation written in Japanese katakana character, and rectangular device in red and dark blue with two paw prints (see below), was filed with the JPO by a Japanese individual for use on February 14, 2024 for use on pet food and dog food in Class 31 [TM App no. 2024-14656].

Upon request for accelerated examination, the JPO examiner granted registration of the mark on April 30, 2024, without raising any grounds for refusal.

https://mogmogwan.jp/ca2/22/p-r2-s/

Opposition by Domino’s Pizza

On July 23, 2024, a two-month statutory period counting from the publication date, May 23, 2024, Domino’s IP Holder LLC filed an opposition and claimed cancellation of the contested mark in contravention of Article 4(1)(x), (xv) and (xix) of the Japan Trademark Law.

Domino argued that the rectangular device of the contested mark is distinctive and dominant element to identify a specific source. Comparing the device with Domino’s red and blue rectangular emblem with three white dots, which has become famous per se as the source indicator of Domino’s Pizza in Japan, they are visually similar to a high degree. Therefore, the relevant consumers, upon seeing the contested mark used on the goods in question, would associate it with Domino’s Pizza and confuse the source with Domino’s Pizza or any business entity economically or systematically related to Domino’s Pizza.

JPO decision

The JPO Opposition Board stated that, even though Domino’s Pizza Japan, Inc., a domestic franchisee, has operated more than 1,000pizza delivery and take-away stores in Japan, unless the evidence submitted included sales figures, market share, and advertising expenditures in Japan and other countries, the Board could not find it reasonable to concede a high degree of recognition of the cited mark among the relevant consumers.

Regarding the similarity of the marks, the Board considers that the consumers are unlikely to confuse the two marks because of the clear difference in the dots and paw prints depicted in the rectangular device. Furthermore, there is no indication of similarity from an aural and conceptual point of view.

Given the lack of evidence concerning the reputation of the cited mark and the low degree of similarity between the marks, the Board found that there was no reason to find a likelihood of confusion on the part of the public.

Based on the foregoing, the Board decided to dismiss the entire allegations and, accordingly , to declare the validity of the contested mark.