The Italian-based fashion house Stefano Serapian S.r.l. was successful in an appeal to overturn the examiner’s rejection of TM App no. 2022-131488 for the Serapian’s signature “Mosaico” leather pattern in Class 18.
[Appeal case no. 2023-16337, decided on December 17, 2025]
SERAPIAN MOSAICO
Stefano Serapian S.r.l. filed a trademark application for a braided pattern (see below) for use on bags, suitcases, tote bags, backpacks, key cases, porches, wallets, coin cases, and handbags in Class 18 with the JPO on November 17, 2022 [TM App no. 2022-131488].
The Serapian Mosaico pattern is known for its iconic hand-weaving technique, which dates back to 1947 and serves as an emblem of the Italian luxury brand, Serapian.
JPO Examination
On June 26, 2023, the examiner rejected the mark based on Article 3(1)(vi) of the Japan Trademark Law by finding that:
The applied-for mark represents a continuous and repetitive geometric pattern consisting of a white square with a vertical line in the middle and a black square in a diagonal position. As a whole, it will be perceived merely as a decorative background design. Besides, there is no distinctive element that identifies the source of the goods in question. Consequently, consumers are unable to recognize it as a source indicator due to its lack of inherent distinctiveness.
Serapian filed an appeal against the rejection on September 27, 2023, to dispute the inherent distinctiveness of the mark based on substantial use and advertising of the Mosaico collection in Japan since 2014.
JPO Appeal Board Decision
The JPO Appeal Board noted the following facts.
- Founded in 1928, the applicant is known for its line of bags favored by the late British actress Audrey Hepburn. The applicant’s bags, which depict the applied-for mark and were designed in 1947, have been sold nationwide in Japan for over 10 years and have been distributed in Japan since 2014.
- Major fashion magazines and online articles have featured the bags and their iconic “MOSAICO” pattern design.
- The bags are also sold in major department stores and online malls. Despite being expensive and high-end goods, annual sales exceeded JPY 50 million in 2023 and JPY 9 million in 2024.
- A discretionary survey by the Board did not reveal the actual use of a similar pattern by others.
Based on the foregoing, the Board found that relevant consumers and traders can distinguish the applicant’s goods from others based solely on the Mosaico pattern.
Therefore, since the applied-for mark is not subject to Article 3(1)(vi) of the Japan Trademark Law, the Board overturned the examiner’s rejection.