タグ: Famous mark

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.

Samsung Unsuccessful in Trademark Opposition against BEAT GALAXY

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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].

https://www.universalmusic.com/universal-music-group-and-supersocial-announce-beat-galaxy-on-roblox-a-groundbreaking-music-hub-featuring-artists-and-music-from-umg/

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

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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.

https://www.monster-strike.com/

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

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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].

https://beastunleashed.com/beast-unleashed/killer-sunrise/

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

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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

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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.

  1. 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.
  2. 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.
  3. 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.