The Japan Patent Office (JPO) dismissed an invalidation action initiated by VW against TM Reg No. 6623923 for a composite mark containing the term “Beecle” in Class 12, ruling that the mark is not confusingly similar to VW’s prior registered mark “Beetle.”
[Invalidation case no. 2026-890008, decided on June 15, 2026]
“Beecle” with a Bee Design (The Contested Mark)
The contested mark (shown below) is a composite mark featuring a green hexagonal device with a black border, containing three yellow counter-clockwise arrows along its corners. On the left-middle side, a prominent white-out illustration of a bee is depicted (with only its right wing visible). Immediately adjacent to the wing, the alphabetical letters “Beecle” are written horizontally in a white, cursive, script-like font.
The contested mark was filed for goods including lorries, trucks, electric cars, motorized golf carts in Class 12 with the JPO on April 12, 2022, and was registered on October 5 of the same year [TM Reg no. 6623923].
Invalidation action by Volkswagen
On January 30, 2026, Volkswagen Aktiengesellschaft filed a petition to invalidate the contested mark under Article 4(1)(xi) of the Japan Trademark Law, citing its own senior Trademark Registration No. 4095809 for wordmark “Beetle” covering automobiles and other goods in Class 12.
VW argued that the prominent literal element “Beecle” of the contested mark closely resembles the cited mark in both sound and appearance. VW contended that even if the conceptual similarity is neutral, relevant consumers are highly likely to associate the commercial source of the goods bearing the contested mark with VW’s famous automobiles.
JPO Decision
First, the Invalidation Board addressed whether a specific element of the contested mark could be isolated to assess similarity.
The Board noted that the bee’s wing could easily be perceived as a stylized letter “B”. Because this graphic seamlessly integrates with the following letters “eecle”, consumers would naturally recognize the entire central combination as the stylized word “Beecle”. Since the term “Beecle” occupies a prominent and dominant position in the center, it serves as a strong source identifier. Thus, the Board found it permissible to segregate the term “Beecle” as the “essential element” for similarity comparison.
As the term is a coined word, it gives rise to the pronunciation “Bee-ku-ru” and carries no specific conceptual meaning.
Visual Similarity: Even when comparing the essential element “Beecle” with the cited mark “Beetle,” they are visually distinct. The contested mark combines a bee device/letter “B” with a cursive font, while the cited mark uses standard character. Additionally, they differ in their fourth letters (“c” vs. “t”). Given that both marks have a relatively short six-letter structure, these visual differences significantly impact the overall impression, making them clearly distinguishable.
Aural Similarity: The contested mark is pronounced “Bee-ku-ru” and the cited mark is pronounced “Bee-to-ru”. Both share a short four-syllable structure in Japanese (including the long vowel) with identical beginnings (“Bee-“) and endings (“-ru”). However, the Board emphasized that for such short words, the difference in the middle sound (“ku” vs. “to”) heavily influences the entire tone and cadence. When spoken continuously, they sound distinct and are unlikely to cause phonetic confusion.
Conceptual Similarity: The contested mark produces no specific meaning as a coined word, whereas the cited mark evokes the concept of a “beetle/insect.” Consequently, there is no risk of conceptual confusion.
Taking all factors into account comprehensively, the JPO Invalidation Board concluded that “Beecle” and “Beetle” are mutually distinct in appearance, sound, and meaning. Because the marks are fundamentally dissimilar, the Board held that the contested mark does not fall under Article 4(1)(xi) and sustained the validity of the registration.
