タグ: Famous mark

“HARIBOW” vs. “HARIBO” – German Candy Giant Fails to Block Similar Mark in Class 41

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The Japan Patent Office (JPO) dismissed an opposition filed by HARIBO Holding GmbH & Co. KG against TM Reg. No. 6904890 for wordmark “HARIBOW” in Class 41 despite finding a high degree of visual and phonetic similarity with their famous brand “HARIBO” for gummy candy.
[Opposition case no. 2025-900106, decided on July 10, 2026]

HARIBOW

The contested mark, “HARIBOW” (Reg. No. 6904890), written in standard block letters, was filed on August 8, 2024, and registered on March 6, 2025 for use on various entertainment and educational services in Class 41, including:

Providing images via the internet, movie showing/production/distribution, providing music via the internet, organization of sports events, seminars, video production, operating sound/video studios, and related entertainment services.

Opposition by HARIBO

On May 13, 2025, HARIBO Holding GmbH & Co. KG, a world-famous confectionery company founded in Germany in 1920, filed an opposition claiming that “HARIBOW” should be canceled under Article 4(1)(xv) of the Japanese Trademark Law.

HARIBO argued that the registration creates a likelihood of confusion regarding the commercial source of services, given the immense global and domestic reputation of its cited trademark “HARIBO”.

JPO Decision

The JPO Board of Opposition dismissed the opposition and decided to maintain the registration of “HARIBOW”, citing the following reasons:

1. Fame of the Cited Mark (“HARIBO”)

While the JPO acknowledged that HARIBO gummies have been sold in Japan since around 1985 and gained traction around 2021 through award-winning TV commercials, it held that the mark was not widely recognized among Japanese consumers at the time of filing and registration.

  • Lack of Historical Evidence: The opponent failed to submit objective evidence demonstrating continuous sales volume, store numbers, or market share in Japan between 2000 and 2024.
  • Brief Advertising History: Promotional activities were mostly limited to a TV commercial campaign in 2021, and the Japanese subsidiary was only established in 2023—shortly before the contested mark’s filing date.
  • Niche Product Category: HARIBO’s mark is used solely for gummy candy (a single product category) rather than a broad range of consumer goods.

2. Similarity of the Marks

The JPO determined that the degree of similarity between “HARIBOW” and “HARIBO” is HIGH.

  • Visuals: Both marks share the identical first six letters (“HARIBO”), differing only in the trailing letter “W”.
  • Pronunciation: Both generate the primary pronunciation “HA-RI-BOH”, making them phonetically confusing when spoken sequentially.

3. Relatedness of Goods/Services & Likelihood of Confusion

Despite the high similarity between the marks, the JPO concluded there is NO likelihood of confusion.

  • Unrelated Industries: “HARIBO” is used for gummy candies (Class 30), whereas “HARIBOW” covers Class 41 entertainment services. The trade channels, manufacturing processes, and target users are fundamentally distinct.
  • Even if gummy candies are sold at cinemas or entertainment venues, the JPO found no functional or economic connection between confectionery sales and entertainment service providers.
  • Since “HARIBO” was not proven to be broadly well-known across general industries, consumers would not associate “HARIBOW” in Class 41 with the German confectionery brand.

Valentino Successful in Trademark Opposition against “ITALOVALENTINO”

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The Japan Patent Office (JPO) sided with Valentino SpA in a trademark opposition against TM Reg No. 6683584 for the wordmark “ITALOVALENTINO” in Class 25, finding that the mark is confusingly similar to the prior registered famous fashion brand “VALENTINO.”
[Opposition case no. 2023-900127, decided on June 10, 2026]

The Opposed Mark: ITALOVALENTINO

On September 12, 2022, T&K Design Association Co., Ltd. filed a trademark application for the wordmark “ITALOVELANTINO” written in a casual, handwritten-style font (see below) for use on clothing, footwear, headgear, sportswear, sports shoes, belts and other goods in Class 25 with the JPO [TM App No. 2022-111238].

As the JPO examiner did not find any initial grounds for refusal, the mark was registered on March 24, 2023 [TM Reg no. 6683584], and subsequently published for post-grant opposition on April 24, 2023.

Opposition by Valentino SpA

The famous fashion house Valentino SpA filed an opposition on May 30, 2023, seeking the total cancellation of the mark “ITALOVALENTINO” under Article 4(1)(xi) of the Japan Trademark Law, citing its own prior registered famous mark “VALENTINO” in Class 25.

JPO Decision

The JPO Opposition Board found that the addition of a geographical prefix was insufficient to alter the dominant impression of the famous fashion brand in connection with the goods at issue.

First, the Board observed that Italian language and design are highly familiar within the fashion industry. Since “ITALO” translates to “Italian” in Italian, Japanese consumers would merely perceive this portion as an indicator of the geographical origin or style of the goods. Thus, “ITALO” lacks a distinctive character or source-identifying function.

Conversely, the letters “VALENTINO” are immensely famous in Japan, instantly evoking the luxury fashion house founded by Valentino Garavani. Because the latter portion “VALENTINO” plays a dominant role in identifying a commercial source, the Board held that it would be permissible to dissect the literal portion and isolate “VALENTINO” as the “essential part” for similarity comparison.

Visual Similarity: The essential part “VALENTINO” of the opposed mark shares the exact same spelling as the cited mark. Therefore, despite the casual handwritten font and the presence of the prefix, the marks are visually similar.

Aural Similarity: While the opposed mark can be pronounced in its entirety as “Italo-valentino,” it also naturally gives rise to the shorter pronunciation “valentino” from its essential part. This dominant sound is phonetically identical to the pronunciation of the cited mark, leading to a high risk of aural confusion.

Conceptual Similarity: Both marks create the exact same commercial concept known for the famous luxury brand established by Valentino Garavani. Consequently, they are conceptually identical.

In conclusion, the JPO Opposition Board found that “ITALOVALENTINO” and “VALENTINO” are confusingly similar in appearance, sound, and meaning, and the goods at issue are identical or closely similar to those of the cited mark. Based on the findings, the Board decided to cancel the registration of the opposed mark entirely under Article 4(1)(xi).

The “ZOOM” Trademark Infringement Verdict

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A landmark trademark ruling was handed down by the Tokyo District Court on April 24, 2026, ordering Zoom Communications Inc. to pay approximately JPY 166 million in monetary awards while completely dismissing the request for a service injunction.
[Court case no. Reiwa3(wa)30190, decided on April 24, 2026]

Plaintiff

Zoom Corporation, a Japanese company developing and selling electronic musical instruments and audio/video equipment, has held TM Registration No. 4940899 for the stylized mark “ZOOM” under Class 9 for “computer programs” since 2006.

Defendant

Zoom Communications, Inc., a U.S. corporation, established in 2011, has been providing the “Zoom” web conferencing service globally, including in Japan, since 2012. By 2019, the service had hosted over 8 million web conferences for more than 400,000 users across Japan.

In 2020, as COVID-19 spread and the government declared a state of emergency, the adoption of remote work skyrocketed among Japanese companies. This triggered explosive growth in the use of web conferencing systems. Japan’s overall utilization rate jumped from 44% at the end of December 2019 to 63% by the end of April 2020. During this surge, Zoom’s market share captured 35% in May 2020 and further expanded to a dominant 61% by October 2021.

Tokyo District Court decision

1. Are Free Downloadable Apps Considered “Goods”?

The Defendant argued that its free downloadable software did not constitute “goods” under the Japan Trademark Law. However, the Court rejected this, ruling that even if software is provided free of charge, it offers independent utility and commercial value to users. Thus, it is evaludated s “goods (computer programs)” under Class 9, and its distribution constitutes trademark usage.

2. The “Cut-off” Date for Confusion

The most unique aspect of this ruling is how the Court established a strict temporal boundary for “likelihood of confusion” based on shifting market realities:

  • Up to June 2020: There was a legitimate likelihood of confusion among general consumers regarding the source of the software, establishing trademark infringement.
  • From July 2020 Onward: Driven by the explosive adoption of remote work during the pandemic, the Defendant’s “Zoom” service achieved an overwhelming 74.7% recognition rate in Japan. Because the “ZOOM” mark became universally famous as the Defendant’s specific service, the Court ruled that the likelihood of confusion had entirely ceased to exist.

3. Injunction Standards: Why the App Stayed Online

Under Japanese law, a claim for an injunction is evaluated based on the market conditions at the close of oral arguments (January 19, 2026). Because the Defendant’s mark had already become too famous for consumers to confuse it with the Plaintiff’s goods or services by this date, the Court denied the Plaintiff’s request for an injunction order.

4. Calculation of Monetary Award (Unjust Enrichment)

The Court found the Defendant liable for infringement on the Plaintiff’s trademark rights from February 1, 2016, to June 30, 2020 (the period before the Defendant’s ZOOM mark became famous). While the Plaintiff’s tort-based damages claim for the period prior to October 18, 2019, had expired due to the 3-year statute of limitations, the claim for the return of unjust enrichment (based on a reasonable licensing fee) was still valid. Utilizing a standard licensing fee model, the Court awarded JPY 166,219,358 based on the Defendant’s historical revenues in Japan.

Trademark Dispute: PINGU vs pingu・pongu

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In a recent opposition decision, the Japan Patent Office (JPO) dismissed an opposition claimed by Joker, Inc. against TM Reg no. 6924753 for wordmark “pingu・pongu”, finding dissimilarity to and unlikelihood of confusion with the opponent’s earlier mark “PINGU.”
[Opposition case no. 2025-900151, decided on May 22, 2026]

Contested mark

A Japanese individual filed trademark application for wordmark “pingu・pongu” in standard character for use on several services in Class 41, including educational and instruction service, arranging seminars, providing electronic publications, and amusement with the JPO on October 3, 2024 [TM App no. 2024-106222]

The JPO granted registration of the mark on May 1, 2025, and published it for a post- grant opposition on May 13, 2025.

Opposition by Joker, Inc.

Joker, Inc., an owner of the copyright and trademark rights featuring a 5-year-old boy penguin character “Pingu”, filed an opposition on July 11, 2025 and claimed cancellation of the contested mark in contravention of Article 4(1)(vii), (xi), (xv) and (xix) of the Trademark Law based on their earlier trademark registration no. 5316898 (see below).

The JPO Opposition Board decision

1. Recognition of the cited mark “PINGU”

The JPO acknowledged that the name “PINGU” (ピングー), associated with the well-known penguin character, had been used in Japan since the 1990s and had achieved a certain degree of public recognition by the early 2000s.

However, the Office found that the evidence submitted by the opponent was insufficient to demonstrate that the cited mark remained widely recognized at the time the contested mark was filed and registered. While the record showed ongoing activities such as merchandise sales, social media promotions, and events involving PINGU, no evidence was provided regarding sales figures, market share, advertising expenditures, or the current level of consumer recognition.

The JPO also noted the absence of objective evidence linking those activities directly to the opponent’s business. As a result, the Office concluded that the opponent had failed to prove that the cited mark PINGU was widely recognized among consumers in Japan or abroad as indicating the opponent’s goods or services.

2. Comparison of two marks

Although the mark contains the element “pingu,” the two components are represented in the same font, size, and spacing, and are connected by a centered do, the JPO held that the contested mark “pingu・pongu” should be viewed as a single, inseparable coined term. The pronunciations, “Pingu-Pongu,” are neither awkward nor unnatural. Since neither “pingu” nor “pongu” has a recognized meaning in ordinary dictionaries, consumers would perceive the mark as a whole as an invented term without any particular meaning.

The cited mark consisted of a penguin character design incorporating the word “PINGU,” together with the wording “PINGU’S ENGLISH.”

According to the JPO, both the figurative and verbal elements of the cited mark could independently function as source identifiers. The literal elements therefore generated pronunciations such as “Pingu,” “Pingu’s English,” but conveyed no specific meaning because the elements are coined terms.

3. No Likelihood of Confusion

Comparing the marks, the JPO found significant differences in appearance. The cited mark contains a prominent penguin device and additional wording, whereas the contested mark consists solely of the standard-character expression “pingu・pongu.”

The Office also determined that the respective pronunciations are clearly distinguishable. “Pingu-Pongu” differs substantially in both syllabic structure and overall sound from “Pingu,” and “Pingu’s English.”

As neither mark conveys a particular concept, no conceptual comparison could be made.

Considering the visual and phonetic differences as a whole, the JPO concluded that the marks are dissimilar and unlikely to be confused. Consequently, the contested mark did not fall within Article 4(1)(xi) and (xv) of the Trademark Law.

ARC’TERYX Unsuccessful Trademark Opposition against “Arcsilk”

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The Japan Patent Office (JPO) dismissed an opposition filed by Amer Sports Canada Incorporated against TM Registration No. 6889980 for the wordmark “Arcsilk” in Class 25, finding it dissimilar to and unlikely to be confused with “ARC’TERYX.”
[Opposition Case No. 2025-900056, decided on April 6, 2026]

The Contested Mark: “Arcsilk”

The contested mark, consisting of the word “Arcsilk” in standard characters, was filed by NIHONWASOU HOLDINGS, Inc. on December 27, 2023 [TM App. 2023-143938]. The application designates various goods, including clothing and footwear, in Classes 24 and 25.

The JPO examiner found no grounds for refusal and granted registration of the mark on September 20, 2024. Subsequently, the mark was published for post-grant opposition on January 11, 2025.

Opposition by ARC’TERYX

Amer Sports Canada Incorporated filed an opposition on March 12, 2025, seeking cancellation of the contested mark based on Article 4(1)(xi) and (xv) of the Japan Trademark Law, citing its earlier trademark registration No. 6748891 for the wordmark “ARC’TERYX” in Class 25.

In the opposition, the claimant alleged that the cited mark has become so widely known both in Japan and overseas that the use of the characters “ARC’TERYX” on outdoor goods immediately causes traders and consumers to recognize it as referring to the claimant. Furthermore, they argued that the term “ARC” is widely recognized even among general consumers as referring to the “ARC’TERYX” brand. The claimant contended that “silk” is a descriptive term for raw materials in Class 25 and cannot function as a source indicator. Therefore, they argued that “Arc” is the dominant portion of the contested mark. Since both marks share the dominant element “ARC,” the claimant asserted they are confusingly similar in appearance, concept, and pronunciation.

Additionally, the claimant argued that because the goods and target consumers are identical, the use of “Arcsilk” would lead consumers to misidentify the goods as being from a business entity with an economic or organizational relationship with the claimant.

JPO Decision

Surprisingly, the JPO Opposition Board found that the cited mark “ARC’TERYX” had not achieved a level of widespread recognition sufficient to support the claim of being a famous mark, stating:

“No evidence has been submitted that would allow for an objective and concrete assessment of facts concerning the period of use of the cited mark; sales figures, market share, and business scale; or the expenditures, methods, frequency, and duration of advertising activities. Consequently, we cannot find that the cited mark ‘ARC’TERYX’ was widely recognized among domestic dealers and consumers as an indication of the claimant’s goods at the time of the application or the registration of the contested mark.”

Regarding the similarity of the marks, the Board found that:

  • Visually: The marks are clearly distinguishable due to the presence of the apostrophe and the difference between “silk” and “TERYX.”
  • Aurally: “Arc-silk” and “Arc-teryx” differ in syllable count and constituent sounds, making them clearly distinguishable even when pronounced continuously.
  • Conceptually: The comparison is neutral as neither mark gives rise to a specific, well-defined meaning.

Based on the finding that the cited mark lacked evidence of widespread recognition and possessed a low degree of similarity to the contested mark, the Board concluded there was no risk of confusion. Consequently, the Board ruled that the contested mark should not be cancelled under Article 4(1)(xi) or (xv) of the Trademark Law.

JPO Decision: No Likelihood of Confusion with Lacoste Crocodile Logo

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In a trademark dispute arguing similarity to and likelihood of confusion with the Lacoste Crocodile logo, the Japan Patent Office (JPO) did not side with Lacoste.
[Opposition case no. 2025-90093, decided on April 6, 2026]

Contested mark

Yagyu Office Co., Ltd. filed a trademark application for a design depicting a green crocodile lying prone, facing to the right with its mouth wide open (see below) in connection with various goods, including apparel, sportswear, and footwear of classes 18 and 25 at the JPO on June 14, 2024. [TM App no. 2024-64585]

On February 14, 2025, the JPO examiner granted registration of the mark without raising any objections.

Opposition by Lacoste

On May 1, 2025, Lacoste filed an opposition against the contested mark and claimed cancellation of the contested mark in contravention of Article 4(1)(xi), (xv), and (xix) of the Japan Trademark Law by citing its well-known crocodile logos.

Lacoste argued that the contested mark consists of a design depicting a green crocodile lying prone, facing to the right with its mouth wide open, and thus creates a similar commercial impression to the cited mark due to a high degree of visual similarity in its entirety. Taking into account the remarkable reputation of the cited mark and the close resemblance between the marks, the average consumers are likely to confuse a source of the goods in question bearing the contested mark with the cited mark.

JPO decision

The JPO Opposition Board found that the cited mark has been famous among relevant consumers and traders in Japan and other jurisdictions as a source-identifier of Lacoste’s business.

However, the JPO observed the contested mark would not be recognized as a crocodile, but “a light green geometric figure formed by white linear cutouts. It depicts a right-facing creature with an open mouth, a thick body, four legs, and a long, slightly curved tail extending backward.”

While the JPO acknowledged that the contested mark could be perceived as representing some types of reptile, it found that the design was too abstract to evoke a specific animal. As such, it was held not to give rise to any specific pronunciation or concept.

In contrast, the cited mark is recognized as clearly depicting a crocodile and conveying the well-known brand identity associated with Lacoste.

Based on the differences in concept and the tail orientation (extended backward vs. raised upward), the Board found that both marks are distinguishable in appearance as well, and therefore dissimilar and unlikely to cause confusion, even if the goods in question are highly related to Lacoste’s business.

MARKS IP successfully assists “European Sugar Cone” with proving acquired distinctiveness as a trademark for ice cream in Japan

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In an administrative appeal, the Japan Patent Office (JPO) decided to overturn the examiner’s rejection of TM App no. 2023-14684 for the stylized wordmark “European Sugar Cone,” written in Japanese Katakana characters, by finding acquired distinctiveness of the mark in relation to the sugar cone ice cream multipack of Class 30.
[Appeal case no. 2024-14037, decided on March 16, 2026]

European Sugar Cone

Kracie, Ltd., a Japanese corporation established in 1887, operating in the business fields of toiletries & cosmetics, pharmaceuticals, and foods, filed a trademark application for the stylized wordmark “European Sugar Cone” written in Japanese Katakana character (see below) by designating several goods in Class 30, including ice cream, with the JPO on February 14, 2023. [TM App no. 2023-14684]

“European Sugar Cone” is a long-selling cone ice cream that has been manufactured and marketed by Kracie for nearly four decades (first use in 1986). Since its launch, the “European Sugar Cone” ice cream has been characterized by its distinctive three-layer combination of vanilla ice cream, chocolate coating, and a crispy sugar cone, which together create a well-balanced texture and flavor.

The name comes from the concept of bringing the experience of enjoying cone ice cream—similar to that found at European street-side ice cream shops—into Japanese households.

Examiner’s rejection

The JPO examiner rejected the mark laid down in Article 3(1)(iii) and 4(1)(xvi) of the Japan Trademark Law, because the word “European” suggests that the goods in question come from, or are associated with European countries. The term “Sugar Cone” is commonly used in connection with ice cream to indicate sugar cone ice cream. Therefore, relevant consumers would merely perceive the mark as a descriptive indication of ice cream.

Furthermore, when the mark is used in connection with goods other than ice cream, it may misrepresent the quality of such goods.

Acquired Distinctiveness

On September 2, 2024, Marks IP, on behalf of Kracie, filed an appeal against the examiner’s rejection and requested registration by arguing acquired distinctiveness of the mark “European Sugar Cone” with sufficient evidence based on Article 3(2).

For the purpose of demonstrating acquired distinctiveness of the mark as a commercial origin, we proposed to conduct the brand awareness survey that targets a total of 1,000 men and women aged from 15 to 79 who had purchased an ice cream multipack for the past three months (summer season), and to restrict the designated goods in Class 30 to sugar cone ice cream multipack.

The survey, conducted from October 7 to 9, 2025, revealed 74.9% of the interviewees answered that they knew an ice cream multipack bearing the mark “European Sugar Cone”.

JPO Appeal Board Decision

The JPO Appeal Board noted that the evidence is sufficient to find the mark has acquired distinctiveness for relevant consumers to identify a specific commercial origin of the amended goods (sugar cone ice cream multipack) by stating:

Since its launch in 1986, the goods using the mark have been continuously sold nationwide for nearly 40 years, achieving cumulative sales of over 342 million units and stable annual revenues of JPY 2.5 – 5.4 billion. Since 2020, it has held a market share exceeding 40% in the categories of cone ice cream multipack.

The ice cream has been extensively promoted through television commercials since 1987, including over 1,000 nationwide broadcasts in 2022 alone. It has also ranked highly in consumer preference surveys and gained recognition through third-party media coverage and collaborations across various product fields.

Furthermore, a consumer survey revealed that 74.6% of respondents recognized the goods from the mark itself, indicating a high level of public awareness.

Based on the foregoing, the Board has a reason to believe that the mark has become widely recognized by consumers as identifying the applicant’s cone-type ice cream multipack.

Accordingly, the Board decided to overturn the examiner’s rejection and granted registration of the mark “European Sugar Cone” by applying Article 3(2).

Trademark Dispute: RUBIK CUBE vs RUBiK Pi

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The Japan Patent Office (JPO) dismissed the opposition to TM Reg no. 6945136 for the stylized mark “RUBiK Pi,” claimed by SPIN MASTER TOYS UK LIMITED, the owner of the famous “RUBIK CUBE” mark for the three-dimensional puzzle cube, by finding dissimilarity and unlikelihood of confusion between the two marks.
[Opposition case no. 2025-900188, decided on March 16, 2026]

TM Reg no. 6945136

The contested mark (see below) was filed by Thunder Software Technology Co., Ltd., a leading Chinese provider of smart operating system (OS) technologies and services, for use on computer-related goods and services in Classes 9, 41, and 42 with the JPO on December 3, 2024 [TM App no. 2024-129535].

The literal element of the mark appears to be “RUBi Pi” due to a cube design placed between two terms. However, the applicant’s website indicates the contested mark in colors to be read as “RUBIK Pi”.

https://www.thundercomm.com/product/rubik-pi/

The JPO examiner did not issue a notice of grounds for refusal. The mark was registered on July 4, 2025, and then published for a post-grant opposition on July 14.

Opposition by SPIN MASTER TOYS UK LIMITED

On September 16, 2025, just before the lapse of statutory opposition period for two months, SPIN MASTER TOYS UK LIMITED filed an opposition against the contested mark and claimed cancellation of its entire registration in contravention of Article 4(1)(vii), (xi), (xv) and (xix) of the Japan Trademark Law by citing the earlier marks in connection with the world-famous three-dimensional puzzle cube (Cited mark No. 1 – 6), “RUBIK CUBE”.

The claimant argued that relevant consumers and traders will consider the cube design representing the letter “K,” and thus the contested mark, to be read as “RUBIK” or “RUBIK Pi” in the course of actual business, given that the applicant’s product (a lightweight development board for AI platforms) using the contested mark is offered for sale in the name of “RUBIK Pi” on their website.

Considering that the Cited marks are famous worldwide as an indicator of the claimant’s 3D puzzle cubes, consumers would mistakenly recognize the commercial source of the goods and services in question as being from the claimant or other economically linked undertakings at the sight of the contested mark.

JPO decision

The JPO Opposition Board admitted the remarkable degree of recognition and popularity of the Cited mark Nos. 3, 5, and 6 as source indicators of the claimant’s business based on the evidence submitted by the claimant. However, the Board questioned whether the other Cited marks, which mainly consist of the term “RUBIK,” have also become famous for identifying the claimant’s source.

Regarding the contested mark, the Board found that its overall configuration would not create the sound of “RUBIK” or “RUBIK Pi.” Instead, the contested mark gives rise to the sound of “RUBi Pi,” but has no clear meaning.

Even if the Cited mark 3 “RUBIK CUBE” has become famous, relevant consumers are unlikely to associate the goods and services in question bearing the contested mark with the Cited marks due to the marks’ low degree of similarity. Therefore, the Board held that the contested mark should not be vulnerable to cancellation based on Article 4(1)(xv) of the Trademark Law.

Ziploc Ribbon, Ziploc, or Ribbon?

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In an appeal concerning the similarity between the registered mark “Ribbon” and a junior application containing the literal elements “Ziploc” and “Ribbon,” the Japan Patent Office (JPO) overturned the examiner’s refusal and held that the two marks were dissimilar.
(Appeal Case No. 2025-4546, decision dated January 19, 2026)

The contested mark: “Ziploc Ribbon”

SC Johnson & Son, Inc. filed a trademark application on February 14, 2024, for a composite mark comprising the literal elements “Ziploc” and “Ribbon,” with the word “Ribbon” placed below “Ziploc” within a ribbon design (see image below). The application designated plastic bags and containers in Classes 16 and 21. [TM Application No. 2024-14335]

“Ziploc” is widely known as a brand of reusable, re-sealable zipper storage bags and containers manufactured by S. C. Johnson & Son, a US-based company.

https://www.beams.co.jp/special/ziplocribbon/

JPO examination

On January 29, 2025, the JPO examiner rejected the application pursuant to Article 4(1)(xi) of the Japan Trademark Law, citing prior registered trademark No. 4873505 for the word mark “Ribbon” in standard character, which has been registered since 2005 for identical or similar goods in the same classes.

SC Johnson filed an appeal against the examiner’s decision on March 25, 2025, seeking revocation of the refusal.

Appeal Board decision

The JPO Appeal Board reversed the examiner’s decision and concluded that the marks were dissimilar, reasoning as follows:

  1. Because the literal elements of the applied-for mark are depicted in a similar monochromatic color scheme and arranged in close proximity, relevant consumers are likely to perceive the mark as a single, unified whole.
  2. The term “Ribbon” possesses only a low degree of inherent distinctiveness, as it is commonly used to denote a long, narrow strip of material employed for tying or decorative purposes.
  3. Given that the element “Ziploc,” which is prominently displayed in the contested mark, is widely recognized as an indicator of origin for the applicant’s zipper storage bags and containers, there is no evidence to suggest that the term “Ribbon,” shown beneath “Ziploc” in a smaller font, plays a dominant role in identifying the commercial source of the goods.
  4. In light of the foregoing, it is unreasonable to assess similarity between the marks based solely on the shared element “Ribbon.”

Based on this analysis, the Appeal Board set aside the examiner’s refusal and granted registration of the “Ziploc Ribbon” mark.

JPO Found Trademark Squatter Liable for Disobeying Public Order

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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.