タグ: Famous mark

ALVIERO MARTINI Defeated Over World Map Mark Dispute

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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

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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:

  1. 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.
  2. 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.
  3. 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

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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.”

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

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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.

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.

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.

HERMES Defeated with Trademark Opposition against KIMONO TWILLY

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The Japan Patent Office (JPO) dismissed an opposition filed by Hermes International against TM Reg no. 6753650 for the word mark “KIMONO TWILLY” in Class 18, claiming a likelihood of confusion with the Hermes scarves “TWILLY”.
[Opposition case no. 2024-900010 / Gazette issued date: March 28, 2025]

KIMONO TWILLY

The contested mark, consisting of word “KIMONO TWILLY” in standard character, was filed by NPO Kimono For World Heritage Promotion Committee for use on bags and pouches, purses, vanity cases in Class 18 with the JPO on April 20, 2023 [TM App no. 2023-49360].

“KIMONO” is a traditional piece of Japanese clothing like a long loose coat, worn at special ceremonies.

https://omotenashi.or.jp/

The JPO granted registration of the mark “KIMONO TWILLY” on October 13, 2024, without issuing any refusal notice, and published it for a post-grant opposition on November 22, 2023.

Hermes TWILLY

On Jan 19, 2024, Hermes International filed an opposition against “KIMONO TWILLY” based on Article 4(1)(xv) and (xix) of the Japan Trademark Law by citing an owned earlier TM Reg no. 4764732 for the word mark “TWILLY” in Classes 24, 25, and 26.

Hermes argued that the contested mark is confusingly similar to the earlier mark “TWILLY”, which has become famous for Hermes’ tie-like scarves, because the term “KIMONO” is less distinctive in relation to the goods in question.

Taking into consideration that the contested mark covers bags, which have a close association with Hermes, and that the “TWILLY” scarves are widely known to be used to wrap the handles of Hermes handbags, the relevant consumers are likely to confuse a source of the goods in question bearing the contested mark with Hermes. Given the significant popularity and reputation of the Hermes TWILLY scarves, the applicant would have to be in bad faith to free-ride on that reputation by deliberately adopting a similar mark.

JPO decision

The JPO Opposition Board noted the submitted evidence was inadequate to substantiate a high degree of recognition for the earlier mark “TWILLY” since Hermes failed to provide objective evidence concerning sales figures, market share, and advertising expenditures in Japan and other countries.

Additionally, the Board found that the contested mark should be assessed in its entirety even if the term “KIMONO” indicates a traditional piece of Japanese clothing, as the respective word of the contested mark is represented in the same font, size, and the whole sound is not too long.

If so, both marks are deemed dissimilar because there is a clear difference in appearance and sound even though a conceptual comparison is neutral as none of them have any clear meaning.

Based on the above findings, the Board has no reason to believe that relevant consumers of the goods in question would associate the contested mark with Hermes “TWILLY” scarves.

Consequently, the Board decided the contested mark should not be canceled in contravention of Article 4(1)(xv) and (xix).

JPO Said No to Register Kawasaki Green Color Mark

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On March 19, 2025, the Japan Patent Office (JPO) finally decided to reject a color mark application filed a decade ago by Kawasaki Heavy Industries, Ltd., which sought to register a green color used on the world-famous Kawasaki motorcycles.
[Appeal case no. 2022-11189]

Narrow gate to color mark registration

On April 1, 2015, the Japan Trademark Law has opened the door to the registration of marks consisting solely of a color or colors. To date, 589 color marks have been filed with the JPO, and only 11 have been granted registration. This represents a success rate of only 1.9%.

Kawasaki Green

On the very first day, Kawasaki Heavy Industries, Ltd., famous for sports and racing bikes, sought for registration of a color mark consisting solely of light green (R105, G190, B40) in connection with motorcycles (cl.12). [TM App no. 2015-30667]

In addition, Kawasaki filed two color mark applications for a single light green color represented on fuel tank (position) and a color combination of light green and black as shown below for use on motorcycles (cl. 12) with the JPO on the same day, but these were all withdrawn or rejected due to a lack of inherent and acquired distinctiveness. [TM App nos. 2015-30668, 2015-30696]

Allegedly, Kawasaki has been using the light green color on their Ninja, KX, KLX and other motorcycles since 1975, but, according to the catalogs, the color was used on less than 40 % of the total Kawasaki motorcycles. Besides, annual sales of the motorcycles using the light green color averaged approximately 23.4%.

On April 19, 2022, the JPO examiner rejected the color mark based on Article 3(1)(iii) of the Japan Trademark Law.

Kawasaki filed an appeal against the rejection and agued acquired distinctiveness of the light green in connection to motorcycles on July 19, 2022.

In order to demonstrate the acquired distinctiveness of the light color as a source indicator of Kawasaki motorcycles, Kawasaki conducted the market research that targeted a total of 1,000 men and women aged from 16 to 79 who has a motorcycle driver’s license, 90.5% of the interviewees who answered that they had seen the color in connection with motorcycles or motorcycle shops (66.1% of the total interviewees) could associate the color with Kawasaki.

JPO decision

The JPO Appeal Board noted the light green has acquired a certain degree of recognition among relevant consumers as a source indicator of Kawasaki motorcycles in view of substantial use for the past five decades.

However, the Board found that the market research was insufficient to objectively assess the acquired distinctiveness of the applied mark, as it was only targeted at motorcycle license holders. Moreover, competitors also manufacture many motorcycles with a similar green color.

According to the IP High Court’s decision, a mark consisting of a single color is not registrable unless it has acquired an extremely high degree of recognition as an indication of a particular source as a result of substantial use, to the extent that the exclusive use of the color would not cause detriment to the public in general.

In light of the fact that the light green color was used on less than 40 % of Kawasaki’s motorcycles, and the annual sales of the motorcycles using the light green color averaged approximately 23.4%, the Board has no reason to believe that the applied color has acquired a high degree of secondary meaning to outweigh the detrimental effect on the public at large if registered.

Based on the foregoing, the Board affirmed the examiner’s rejection and decided to refuse the applied mark based on Article 3(1)(iii) of the Japan Trademark Law.

It is appealable to the IP High Court until May 8, 2025.