Famous mark

JPO Found Trademark Squatter Liable for Disobeying Public Order

Posted on2025年12月20日2025年12月31日

In a trademark dispute regarding the validity of TM Reg no. 6680828 “Alphacool,” the Japan Patent Office (JPO) declared invalidation of the contested mark because of disobeying the public order by a trademark squatter.
[Invalidation case no. 2025-890027, decided on December 9, 2025]

Trademark Squatting

The mark at issue, consisting of the term “Alphacool” in standard character, was filed with the JPO for use on goods in Class 9 on May 16, 2022, by a Chinese individual, and registered on March 15, 2023 [TM Reg no. 6680828].

The applicant filed 80 trademark applications from October 13, 2019, to August 6, 2024. “dyson”, “roomba”, “Xiaomi” are included among them. 48 marks are already registered. However, nine of them are subject to opposition, and seven to invalidation.

On April 21, 2025, Alphacool International GmbH requested the invalidation of TM Reg no. 6680828 “Alphacool” in contravention of Article 4(1)(vii), (x), (xv), and (xix) of the Japan Trademark Law.

JPO decision

The JPO invalidation Board observed that the applicant must have knowingly filed a lot of trademarks, including the contested mark used by other business entities. Actual use of the contested mark by the applicant rather suggests that the applicant sought to parasitize the other’s trademarks with malicious intent to disturb their business or free-ride on the reputation of their marks.

To bolster the above finding, the Board noted the fact that 16 marks out of 48 registered by the applicant are subject to opposition or invalidation actions. The ratio is approximately 33%. According to the JPO annual statistics, the average ratio is 0.5% for registered marks to be opposed or invalidated. Compared to the average ratio, 33% must be extremely high.

Accordingly, the Board found the contested mark should be invalidated based on Article 4(1)(vii) due to the likelihood of disobeying public order.

Samsung Unsuccessful in Trademark Opposition against BEAT GALAXY

Posted on2025年12月13日2025年12月31日

The Japan Patent Office (JPO) did not side with Samsung, the South Korean tech giant, in a trademark opposition against TM Reg no. 6895229 for word mark “BEAT GALAXY” in Class 9 by finding a low degree of similarity to and less likelihood of confusion with the mark “GALAXY” even when used on PDA, mobile phones.
[Opposition case no. 2025-900084, decided on December 2, 2025]

BEAT GALAXY

UMG Recordings Inc. filed a trademark application for the wordmark “BEAT GALAXY” in standard character with the JPO on November 13, 2023, for use on PDA, mobile phones, computers, computer software, audio files and other goods in Class 9 [TM App no. 2023-129205].

The JPO examiner granted protection of the mark on February 4, 2025.

Subsequently, it was published for a post-grant opposition on February 20, 2025.

Opposition by Samsung

Samsung, a South Korean tech giant, filed an opposition against the mark “BEAT GALAXY” on April 18, 2025, and claimed cancellation of the contested mark in contravention of Article 4(1)(vii), (x), (xi), (xv), and (xix) of the Japan Trademark Law by citing their earlier mark “GALAXY”.

Samsung argued the contested mark “BEAT GALAXY” is similar to the cited mark, and conveys a negative impression of defeating Samsung’s Galaxy. Thus, the contested mark detrimentally affects the goodwill of the cited mark. Relevant consumers are likely to associate the contested mark with Samsung.

JPO decision

The JPO Opposition Board found that the cited mark “GALAXY” has been widely recognised as an indicator of Samsung’s business.

In the meantime, the Board denied similarity between “BEAT GALAXY” and “GALAXY” by stating that:

The contested mark and the cited mark differ in the presence of the word “BEAT” at the beginning of the contested mark. Therefore, even when assessed in a different time and place, there is no likelihood of confusion in appearance.

Secondly, the different sound caused by the word “Beat” at the beginning of the contested mark significantly affects the overall aural impression. As both sounds are distinguishable as a whole, there is no likelihood of confusion in pronunciation.

As for concept, while the contested mark does not have any specific concept, the cited mark gives rise to a meaning of a collection of stars and planets that are held together by gravity. Accordingly, both marks are neutral in concept.

Based on the foregoing, the Board noted that, even though the goods in question are highly related to Samsung’s business, in view of a low degree of similarity and originality of the cited mark, it is reasonable to conclude that relevant consumers are unlikely to confuse a source of goods bearing the contested mark with Samsung or any undertaking economically or systematically connected with the claimant.

Consequently, the Board decided to dismiss the entire opposition.

MONSTER STRIKE vs MONSTER ENERGY

Posted on2025年11月29日2025年12月8日

The Japan Patent Office (JPO) did not decide in favour of Monster Energy Company in its opposition to Defensive Mark Reg. No. 5673517 for the word mark “MONSTER STRIKE” in Classes 29, 30, and 32.
[Opposition case no. 2023-900135, decided on November 4, 2025]

MONSTER STRIKE

Monster Strike, a popular mobile “slingshot hunting RPG” developed by the Japanese company Mixi, is famous for its simple pull-and-release gameplay, deep co-op mode for up to four players, frequent collaborations, and immense revenue. Monster Strike essentially saved Mixi’s social network legacy, becoming a cultural phenomenon in Japan and generating billions in revenue while fostering family communication.

Since 2014, Mixi has owned trademark registration for the word mark “MONSTER STRIKE” in Classes 9 and 41 in connection with game programs [TM Reg no. 5673517].

On March 29, 2021, Mixi filed a defensive mark application for the mark to expand the scope of protection in Classes 14, 16, 18, 21, 24, 25, 26, 28, 29, 30, 32, and 33, including beverages [TM Application no. 2021-37152].

Defensive mark

Article 64 of the Japan Trademark Law provides the requirements for defensive mark registration.

“Where a registered trademark is well known among consumers as an indicator of the designated goods or service in connection with the owner’s business and confusion is likely if the mark is to be used on dissimilar goods or services by a third party, the owner is entitled to obtain a defensive mark registration for the same mark in connection with such goods or services.”

A trademark can be registered as a defensive mark for dissimilar goods or services not covered by the original registration if the owner can demonstrate that the mark has gained significant prestige for the goods or services for which it has been used. This is because relevant consumers are likely to confuse the source of the goods or services if they are remotely associated with or dissimilar to those in the original registration due to the substantial reputation of the mark.

It is noteworthy that the JPO does not examine whether a defensive mark may confuse earlier marks that have been registered on the goods and services designated in the defensive mark application.

The JPO granted registration of the mark MONSTER STRIKLE in Classes 14, 16, 18, 21, 24, 25, 26, 28, 29, 30, 32, and 33 as a defensive mark on March 24, 2023, and published it for a post-grant opposition on April 3, 2024.

Subsequently, Monster Energy Company filed an opposition against the defensive mark registration, claiming cancellation for goods, inter alia, beverages, in Classes 29, 30, and 33, in contravention of Article 64.

JPO decision

The JPO Opposition Board found that “MONSTER STRIKE” has been widely recognised among not only consumers for game programs designated under the original registration, but also relevant consumers unrelated to the game industry.

The Board noted a trade practice that, in general, there are a lot of goods, including food and beverages, distributed bearing well-known contents and characters in collaboration with other suppliers. Bearing this in mind, it is reasonable to find that the contested goods are to some extent associated with the goods and services in the original registration.

Therefore, where the contested goods bearing the term “MONSTER STRIKE” are placed in the market by a third party, relevant consumers are likely to consider that the goods originate from Mixi or economically linked undertakings, and thus confuse the source accordingly.

The opponent claimed their substantial use of the mark “MONSTER” on the energy drink. However, such facts are irrelevant to evaluate the likelihood of confusion stipulated under Article 64(1).

Based on the above findings, the JPO dismissed the opposition and declared registration of the defensive mark as the status quo.

Trademark dispute: SUNRISE vs KILLER SUNRISE

Posted on2025年11月15日2025年11月24日

In a recent trademark dispute between “SUNRISE” and “KILLER SUNRISE”, the Japan Patent Office (JPO) found both marks dissimilar and non-confusable for wines and alcoholic beverages.
[Opposition case no. 2025-900010, decided on November 4, 2025]

KILLER SUNRISE

Monster Brewing LLC filed a trademark application for the word mark “KILLER SUNRISE” in standard character with the JPO for use on alcoholic beverages, except beer of Class 33 on June 7, 2024 [TM App no. 2024-61229].

The JPO examiner, without raising any grounds for refusal, granted registration of the mark on October 16, 2024. Subsequently, it was registered on November 6, 2024, and published in the JPO official gazette on November 14, 2024, for a post-grant opposition.

Opposition by Viña Concha y Toro

On January 8, 2025, Viña Concha y Toro S.A., the main Latin American wine producer, filed an opposition against the mark “KILLER SUNRISE” by citing their earlier TM Reg no. 4208026 for the word mark “SUNRISE” that has been used on Chilean wine.

Viña Concha y Toro argued that the cited mark has become famous to indicate the origin of their Chilean wines as a result of extensive use for three decades.

Relevant consumers will recognise the contested mark be composed of “KILLER” and “SUNRISE” in appearance and concept. As the term “KILLER” has an adjective meaning of ‘strikingly impressive or effective’ that appears to be less distinctive, the literal element “SUNRISE” would be a dominant portion of the contested mark. Since the dominant portion is identical to the cited mark, the contested mark should be considered similar to the cited mark. In view of a high degree of similarity between the marks and a highly-recognised “SUNRISE” Chilean wine, relevant consumers and traders would confuse the goods in question with the contested mark comes from the same undertaking or from an economically linked undertaking. Accordingly, the contested mark should be cancelled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law.

JPO Decision

The JPO Opposition Board observed that the evidence shows the cited mark was used in connection with wine and its advertising. However, it did not demonstrate the sales amount, market share, and advertising expenditure of the SUNRISE wine. Based on this finding, the Board noted that the evidence was insufficient and unpersuasive to demonstrate a high degree of recognition and reputation for the cited mark, “SUNRISE”.

Regarding the similarity of the marks, the Board stated that the marks are distinguishable in appearance and sound due to the presence of the term “KILLER.” The contested mark does not convey any specific meaning. Meanwhile, the cited mark has a concept of ‘the apparent rising of the sun above the horizon.’ Therefore, the conceptual comparison does not impact the finding of similarity between the marks.

Accordingly, the Board has a reason to believe that the contested mark is dissimilar to the cited mark.

Given that the cited mark is not famous, according to the evidence, and the low degree of similarity between the marks, relevant consumers are unlikely to confuse the source of goods in question bearing the contested mark with the cited mark.

Based on the foregoing, the Board dismissed the opposition entirely and found that the contested mark should not be subject to cancellation under Article 4(1)(xi) and (xv) of the Japan Trademark Law.

IP High Court ruling: STARBUCKS vs STARBOSS

Posted on2025年11月8日2025年11月16日

The Japan IP High Court did not side with Starbucks Corporation in a trademark dispute between “STARBUCKS” and “STARBOSS” and affirmed the JPO decision that found “STARBOSS” dissimilar to, and less likelihood of confusion with “STARBUCKS when used on beverages.
[Court case no. Reiwa7(Gyo-ke)10036, ruled on October 20, 2025]

STARBOSS

Kenkoman Co., Ltd. filed a trademark application for a wordmark “STARBOSS” in standard character for use on beer, carbonated drinks [refreshing beverages], fruit juices, vegetable juices [beverages], extracts of hops for making beer, whey beverages in class 32 with the JPO on January 25, 2022 (TM App no. 2022-13707).

The JPO examiner granted registration of the applied mark on June 24, 2022, without issuing any office action (TM Reg no. 6595964).

The applicant promotes energy drinks bearing the applied mark.

https://kenkoman.com/products/starboss-energy-drink-240ml-per-bottle

JPO decision against the invalidation filed by Starbucks

Starbucks Corporation requested a declaration of invalidity against the applied mark with the JPO in contravention of Article 4(1)(xi) and (xv) of the Trademark Law on April 28, 2023.

Starbucks argued that the mark “STARBOSS” is confusingly similar to the earlier mark “STARBUCKS” that has been consecutively registered in class 32 since 1989 because the difference of the letter, “OS” and “UCK” in the middle of respective marks, would not overwhelm the entire similarity in appearance and concept.

Besides, consumers of the goods in question mostly overlap with coffee shop. Taking into consideration a remarkable degree of popularity and reputation of the mark “STARBUCKS” among the general public in Japan, relevant consumers at the sight of beverages bearing the contested mark would pay much attention to the prefix portion starting with “STARB” and associate it with STARBUCKS, and thus consider the goods originating from a business entity economically or systematically connected with Starbucks.

However, the JPO Invalidation Board did not question a high degree of recognition of the mark “STARBUCKS” to indicate a source of coffee chain managed by Starbucks.

In the meantime, the Board found both marks dissimilar by stating that:

“Comparing with appearance, both marks start with “STARB” and end with “S”. But there is a difference between the letters “OS” and “UCK” in the middle of respective mark. This difference would have a material effect on the visual impression of two marks that consist of eight or nine alphabet letters. Thus, both marks are clearly distinguishable in appearance.

Aurally, relevant consumers can distinguish “STARBOSS” from “STURBUCKS” because the enunciation of “BO” and “BUCK” in the middle of respective marks is pronounced in a strong tone and accordingly has a material impact on the overall sound.

A conceptual comparison is neutral as neither “STARBOSS” nor “STARBUCKS” has any clear meaning.

Based on the above findings, the Board has a reason to believe that the contested mark “STARBOSS” is dissimilar to the mark “STARBUCKS” by considering the impression, memory, and association conveyed to the consumers overall.”

Given the low degree of similarity between “STARBOSS” and “STARBUCKS”, relevant consumers with ordinary care are unlikely to confuse a source of goods in question bearing the contested mark with Starbucks or any business entity economically or systematically connected with the claimant.

Consequently, the Board dismissed the invalidation action by Starbucks on December 17, 2024.

Starbucks filed an appeal to the IP High Court and argued that the contested mark is similar to the earlier mark “STARBUCKS”, and relevant consumers are likely to confuse the source of goods in question with Starbucks.

IP High Court Ruling

In the court decision dated October 20, 2025, the IP High Court stated as follows.

1. Similarity of the marks

– Visual comparison

Though both marks start with the letters “STARB” and end with “S” in common, they contain different letters ‘OS’ and “UCK” around the middle. Given their relatively short configuration of eight or nine alphabet letters, this difference enables the marks to be distinguishable. Considering that the letters of both marks are inextricably combined as a whole, and thus the relevant consumers would never consider the “STARB” portion as a dominant element for identifying the source of goods bearing the contested mark.

– Aural comparison

Though both marks have the same sound starting with “star” and ending with “su” in common, their pronunciations differ in the sound of ‘bo’ and “back” around the middle. Due to the difference, both sounds are sufficiently distinguishable, given a relatively short sound configuration.

– Conceptual comparison

The cited mark gives rise to a meaning of “Starbucks coffee chain.” Since the contested mark does not have any specific meaning, both marks are easily distinguishable in concept. Furthermore, there is no circumstantial evidence to support that relevant consumers would associate the terms beginning with “STARB” with Starbucks or their business. Therefore, it would be unreasonable to find that the literal portion “STARB” of the contested mark causes a conceptual connection with Starbucks.

2. Likelihood of confusion

Based on the low degree of similarity between “STARBOSS” and “STARBUCKS”, and the lack of evidence to demonstrate actual use of a mark starting with “STARB” other than “STARBUCKS” by Plaintiff, from the provided evidence at record, the court found no rational basis to believe that relevant consumers confuse the origin of goods in question bearing the contested mark with Starbucks.

YONEX Scored Win in Registering Color mark

Posted on2025年10月25日2025年11月9日

On October 21, 2025, the Japan Patent Office (JPO) granted registration of a color mark that consists of blue and green colors, filed by Yonex Co., Ltd. to use on badminton shuttlecocks by finding acquired distinctiveness of the color combination.
[Appeal case no. 2022-17481]

YONEX Color Mark

Yonex Co., Ltd. filed a trademark application with the Japan Patent Office on September 6, 2019, for a mark that consists of a combination of blue (Pantone 2935C) and green (Pantone 355C) (color ratio 50%:50%), designating “sports equipment; badminton equipment” and other goods in Class 28 [TM App no. 2019-118815].

Rejection by JPO examiner

On July 27, 2022, the JPO examiner rejected the mark under Article 3(1)(iii) of the Japan Trademark Law, due to a lack of inherent distinctive character. Furthermore, while acknowledging that a certain number of traders and consumers recognize the color combination perse as an indicator of the applicant’s goods in view of the applicant’s extensive use of the mark on badminton shuttlecocks for years, and its leading market share, the examiner had an opinion that a significant number of people do not recognize it as a source indicator to distinguish from others. Accordingly, the examiner concluded that the mark does not satisfy the requirements to apply Article 3(2) since the applicant failed to demonstrate acquired distinctiveness of the mark in relation to the goods in question.

Subsequently, the applicant filed an appeal against the rejection on November 1, 2022, and then restricted the designated goods to “Shuttlecocks” in Class 28.

JPO Appeal Board decision

The JPO Appeal Board observed that the evidence submitted by the applicant would sufficiently demonstrate that the color combination has played a role in identifying the specific source of Shuttlecocks by taking into account the following facts.

The mark has been used continuously for over 48 years, since at least 1976, on Yonex Badminton shuttlecocks. The color combination appears on the applicant’s website, in product catalogs, internet articles, magazines, newspapers, and television programs. The shuttlecocks bearing the mark have been officially used at numerous international badminton tournaments, including the Olympic Games and World Championships.
Yonex shuttlecocks ranked first in the domestic market for 11 consecutive years from 2009 to 2019, with a market share of approximately 70% to 80% during that period.
According to survey results targeting 1,053 men and women aged 15 to 59 who currently play or have played badminton or tennis, 57.87% of the respondents who have played both tennis (including soft tennis) and badminton could associate the color combination with the applicant in the answer to an open or closed (multiple choice) question. For those who have experienced badminton, but not tennis, 56.59% could associate it with the applicant in either question.

Based on the foregoing, the Board found that the examiner erred in applying Article 3(2), and thus decided to register the color combination as a trademark.

ALVIERO MARTINI Defeated Over World Map Mark Dispute

Posted on2025年10月11日2025年10月13日

The Japan Patent Office (JPO) dismissed an invalidation claim by ALVIERO MARTINI S.p.A., against TM Reg no. 6320074, which features an old-world map design, due to its dissimilarity and less likelihood of confusion with the claimant’s 1A CLASSE “GEO MAP” mark.
[Invalidation case no. 2024-890008, decided on September 18, 2025]

Japan TM Reg no. 6320074

Two Korean individuals filed a trademark application with the JPO for a device mark depicting an old-world map (see below) in relation to bags and other leather goods of Class 18 on December 24, 2019 [TM App no. 2019-165453].

Without raising any ground of refusal, the JPO examiner granted registration of the mark on December 24, 2020.

Invalidation action by Alviero Martini

ALVIERO MARTINI S.p.A., known as an Italian heritage brand, Alviero Martini 1A Classe, filed an invalidation action with the JPO on February 13, 2024, and claimed invalidation of TM Reg no. 6320074 in contravention of Article 4(1)(vii), (xi), (xv) and (xix) of the Japan Trademark Law by citing earlier IR no. 982100 of the world map mark in Class 18.

ALVIERO MARTINI argued the contested mark is confusingly similar to the cited mark that has been widely recognized among relevant consumers to identify a source of Alviero Martini 1A CLASSE brand.

The claimant also pointed out the fact that the applicant applied for other mark containing the term “PRIMA CLASSE” (see below). Given a high degree of resemblance between the marks and close relatedness between the goods in question and the claimant’s fashion business, it is presumed that the applicant had maliciously filed the contested mark with an intention to free-ride goodwill on the cited mark.

JPO decision

The JPO Invalidation Board noted the fact that the cited mark has been used in a manner that depicts only a portion of the world map on the claimant’s goods. The produced evidence does not suggest that the cited mark is ever used in its entirety as a source indicator.

Therefore, it would be unreasonable to conclude that the cited mark has acquired a certain degree of recognition in Japan and other jurisdictions.

Regarding the similarity of the marks, the Board stated, “Although they both consist of a device that represents a world map in common, the overall impressions differ significantly due to the different arrangement of continents, the presence of country and ocean names, and sailing ships. Therefore, the contested mark is visually dissimilar to the cited mark”, and “the coincidence in the graphic element representing world map is not sufficient to counteract or outbalance these visual differences.”

Based on the foregoing, the Board found that the marks are dissimilar and relevant consumers are unlikely to confuse the source of the goods in question bearing the contested mark with the cited owner.

Given the lack of persuasive evidence demonstrating a high recognition of the cited mark, it is unclear whether the applicant has a malicious intent vulnerable to invalidation.

CHEMICAN vs CHEMI-CON

Posted on2025年10月4日2025年10月9日

In a trademark opposition against Japan TM Reg no. 6894070 “Chemican” in Class 9, which disputed the similarity and a likelihood of confusion with the earlier mark “CHEMI-CON”, the Japan Patent Office (JPO) did not sustain the opposition due to the marks’ low degree of similarity even though the earlier mark to be famous in relation to aluminum electrolytic capacitors.
[Opposition case no. 2025-900082, decided on September 11, 2025]

CHEMICAN

Chemican, Inc. filed a trademark application for wordmark “Chemican” in standard character for use on various electrical and electronic goods, including capacitors of Class 9 with the JPO on December 9, 2024. [TM App no. 2024-132131]

Immediately after the filing, the applicant requested for accelerated examination.

Without raising any grounds for refusal, the JPO examiner granted protection of the mark on February 3, 2025. The mark “Chemican” was subsequently registered on February 6, 2025, and published for post-grant opposition on February 17.

Opposition by Nippon Chemi-Con Corporation

Nippon Chemi-Con Corporation, the largest manufacturer and supplier of aluminum electrolytic capacitors, has owned trademark registrations for the mark “CHEMI-CON” in Class 9 since 1984.

On April 16, 2025, Nippon Chemi-Con filed an opposition, disputing that the contested mark should be canceled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law.

Nippon Chemi-Con allegedly argued that the cited mark “CHEMI-CON” has become famous among relevant consumers of the goods in question, indicating a source of their aluminum electrolytic capacitors, which hold a top market share worldwide. The contested mark “Chemican” is confusingly similar to the cited mark “CHEMI-CON” in appearance and sound.

JPO decision

The JPO Opposition Board found that the cited mark has become famous as an indicator of the claimant’s aluminum electrolytic capacitors, considering the evidence and the claimant’s top-ranked global market share.

However, the Board questioned the similarity of the marks by stating that:

Although both marks have the initial element “Chemi” and “CHEMI” in common, there are several differences: (i) a hyphen; (ii) “a” in “can” and “O” in “CON”; and (iii) the contested mark consists of lowercase letters except for the initial letter “C”, whereas the cited mark is entirely uppercase. Moreover, the cited mark can be recognized as a combination of the familiar English word “CHEMI,” meaning “chemical,” and the term “CON” via a hyphen. Therefore, the cited mark gives a different commercial impression than the contested mark. Accordingly, the two marks are clearly distinguishable in appearance.
The two marks’ pronunciations differ in the third sound, with “ka” and “ko,” respectively. Bearing in mind that these sounds come just before the weak sound “n” at the end and that the overall sound structure consists of only four syllables, the two marks differ significantly in sound and appearance. Thus, the overall intonation and impression of these marks differ significantly, enabling clear distinction.
A conceptual comparison is neutral, as neither mark has a clear meaning.

Based on the foregoing, the Board found that the contested mark is dissimilar to the cited mark, so it should not be vulnerable to cancellation based on Article 4(1)(xi).

Due to the low degree of similarity between the marks, the Board stated that relevant consumers are unlikely to confuse the source of the goods at question bearing the contested mark with the claimant, even if the cited mark is famous among consumers. For this reason, the Board dismissed the entire opposition.

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

Posted on2025年8月23日2025年8月30日

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.

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.

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.”

JPO Grants TM Registration for 3D Shape of the Popular Pocky Cookie

Posted on2025年8月8日2025年8月8日

On July 25, 2025, the Japan Patent Office (JPO) granted trademark registration for the three-dimensional (3D) shape of Ezaki Glico’s iconic “Pocky” cookie, recognizing that the shape had acquired distinctiveness in relation to chocolate confections in Class 30 [TM Reg. No. 6951539].

Ezaki Glico’s Pocky

Pocky, first introduced in 1966 by Ezaki Glico—one of Japan’s leading confectionery manufacturers—is a slender biscuit stick coated in chocolate, with the lower end intentionally left bare to allow for easy handling without getting chocolate on the fingers.

On March 13, 2024, MARKS IP LAW FIRM, acting as trademark counsel to Ezaki Glico, filed a 3D trademark application with the JPO for the shape of the Pocky cookie, covering confectionery in Class 30 [TM App. No. 2024-26132].

Acquired Distinctiveness

During the substantive examination, as anticipated, the JPO issued a Notification of Reasons for Refusal pursuant to Article 3(1)(iii) of the Japan Trademark Law. This provision bars registration of marks that consist solely of indications commonly used to designate, inter alia, the place of origin, quality, raw materials, intended purpose, shape (including packaging), price, or method/time of production or use.

In response, we submitted that the Pocky cookie’s 3D shape had, through long-standing and widespread use, come to function as a source identifier. Accordingly, it should qualify for exception under Article 3(2) of the Japan Trademark Law, which permits registration of marks otherwise barred under Article 3(1)(iii)–(v), provided that the mark has acquired distinctiveness among relevant consumers.

To substantiate the claim of acquired distinctiveness, we submitted extensive evidence, including market research targeting 1,036 men and women aged 16 to 79. Remarkably, 91.6% of respondents, when shown the 3D shape of the Pocky cookie without any accompanying text, identified it as “Pocky” or “Pocky chocolate” in response to an open-ended question.

JPO Decision

Following the submission of evidence and subsequent restriction of the designated goods to “chocolate confections” in Class 30, the JPO approved the registration on June 24, 2025 by admitting acquired distinctiveness of the 3D mark.

To date, the JPO has granted a total of eight registrations for the 3D shape of confectionery products. Of these, only two—prior to Pocky—were registered on the basis of acquired distinctiveness under Article 3(2). The Pocky case therefore represents only the third such registration in Japan and is particularly noteworthy given the simplicity and lack of ornamentation in the claimed product shape.