タグ: Famous mark

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.

Trademark Squatter Seeking to Ruin Luxury Brand with Obscene Language

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In May 2022, the Japan IP High Court ruled in favor of the plaintiff, OMEGA S.A. The case concerns cancellation of TM Reg no. 6277280 for the word mark “OMECO” in Class 14 (watches) owned by a Japanese company, OMECO Co., Ltd.

In the complaint, OMEGA S.A. argued that the contested mark is likely to cause confusion with world-famous brand “OMEGA” when used on watches. The court declared cancellation of the contested mark, however, not because of the LOC, but the likelihood of damage to public order or morality based on Article 4(1)(vii) of the Japan Trademark Law.

Do you think OMEGA S.A. is satisfied with the court’s decision?

As a matter of fact, the company continues to sell wristwatches bearing the mark “OMECO” even now.

https://omeco.buyshop.jp/

If the court ruled the case by finding a likelihood of confusion with OMEGA based on Article 4(1)(xv), the goods must be prohibited from selling because of trademark infringement or unfair competition. Ironically, the court decision encourages the company to promote watches bearing a vulgar, obscene, prurient and immoral mark by slightly changing famous luxury brands as shown below. The names have a vulgar, obscene and prurient meaning in Japanese.

https://omeco.buyshop.jp/

Not only the actual use, but the company is seeking trademark registration of these vulgar, obscene, lewd and immoral marks in Japan, which obviously intends to free-ride on famous luxury brands such as Cartier, PATEK PHILIPPE, HUBLOT, A. LANGE & SOHNE, RICHARD MILLE, BOTTEGA VENETA, ROLEX.

Recently, the Japan Patent Office (JPO) examiner issued an office action based on Article 4(1)(xi), (xv) and (xix) of the Trademark Law due to similarity to and likelihood of confusion with famous luxury brands.

It is anticipated that the company files a response to the office action and argue dissimilarity and unlikelihood of confusion by referring to the court decision since the rejection would affect their business.

Court Case: VALENTINO GARVANI vs GIANNI VALENTINO

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The Japan IP High Court affirmed the JPO decision that cancelled TM Reg no. 6550051 for the GIANNI VALENTINO mark due to a conflict with earlier IR no. 975800 for the VALENTINO GARVANI mark.
[Court case no. Reiwa6(Gyo-ke)10089, decided on February 27, 2025]

GIANNI VALENTINO

YOUNG SANGYO CO., LTD filed a trademark application with the JPO on November 10, 2021 for a mark consisting of a “V” device in a circle and the word “GIANNI VALENTINO” (see below) for use on footwear in class 25 [TM App no. 2021-140169].

The applicant, as one of the official licensees, has been distributing bags and pouches bearing the applied mark in the Japanese market.

https://shop.gianni-valentino.com/

The JPO examiner granted registration of the applied mark on April 19, 2022. The mark was published for a post-grant opposition on May 11, 2022 [TM Reg no. 6550051].

Opposition by Valentino S.p.A.

Valentino S.p.A. filed an opposition on July 6, 2022 and claimed cancellation of the GIANNI VALENTINO mark in contravention of Article 4(1)(xi) of the Japan Trademark Law on the ground that the contested mark is confusingly similar to earlier IR no. 975800 for a mark consisting of an iconic “V” device in a circle and the words “VALENTINO” and “GARAVANI” arranged in two lines (see below), which designates footwear and other goods in class 25.

Valentino argued that the literal element “VALENTINO” was dominant in the cited mark because of a high degree of recognition as a source indicator of the opponent’s business as a result of substantial and continuous use in relation to fashion industries. Therefore, relevant consumers with an ordinary care are likely to consider the term “VALENTINO” as a prominent portion of the contested mark when used on the goods in question. If so, the contested mark shall be deemed similar to the cited mark from visual, aural and conceptual points of view.

On August 23, 2024, the JPO Opposition Board decided to cancel the contested mark based on Article 4(1)(xi) of the Japan Trademark Law by stating that the dominant part of respective mark would be the literal element “VALENTINO” given famousness of the mark “VALENTINO” as a source indication for apparel of Valentino S.p.A.

To contest, the applicant filed an appeal with the IP High Court on September 30, 2024.

IP High Court decision

The IP High Court held that the JPO did not err in applying Article 4(1)(xi) to the case by stating that:

The court has no question to find that the mark “VALENTINO” is famous among relevant consumers and traders in Japan for apparel.

From appearance, the contested mark can be dissected into three parts, namely, figurative element, “GIANNI”, and “VALENTINO”. Given the mark “GIANNE VALENTINO” has not been recognized among relevant consumers as a source indicator of the applicant, it is reasonable to consider the literal element “VALENTINO” as a dominant part of the contested mark, which plays a role in identifying the source of the goods in question.

Similarly, the literal element “VALENTINO” of the cited mark can be considered as a dominant part because of its famousness to indicate the opponent’s business.

It is obvious that the dominant part of both marks has the same appearance, sound and meaning.

Therefore, the court has a reason to believe that the contested mark, even as a whole, is confusingly similar to the cited mark from a visual, aural and conceptual point of view.

As a conclusion, the court ruled to dismiss the appeal in favor of Valentino S.p.A.

Trademark dispute: SONY vs SONIMART

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The Japan Patent Office (JPO) sided with SONY in a trademark invalidation action against TM Reg no. 6162062 for word mark “SONIMARK” in classes 35 and 42 by finding a likelihood of confusion with famous mark “SONY”.
[Invalidation case no. 2024-890041, decided on January 27, 2025]

SONIMART

The contested mark, consisting of word “SONIMART” and its transliteration written in Japanese katakana character arranged in two lines (see below), was filed by Sonic Line Co., Ltd. for use on various services including retail service and providing computer programs on data networks in classes 35 and 42 with the JPO on June 14, 2018.

The JPO examiner did not find similarity to and a likelihood of confusion with famous brand “SONY” and granted registration of the mark on July 12, 2019.

Invalidation action by SONY

SONY, one of the most recognized Japanese brands globally, filed an application for declaration of invalidity with the JPO on July 11, 2024, just before the lapse of five years counting from its registration date.

SONY claimed that the contested mark shall be invalidated in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law by citing its owned earlier trademark registrations for the mark “SONY”.

Article 4(1)(xi) is a provision that prohibits the registration of a junior mark that is deemed identical with, or similar to, any earlier registered mark.

Article 4(1)(xv) is a provision to prohibit any mark from registering if it is likely to cause confusion with other business entities’ well-known goods or services.

SONY argued that relevant consumers of the services in question are likely to find the contested mark consists of “SONI” and “MART”. Since the term ‘MART’ is less distinctive in relation to the services in question, the element ‘SONI’, which is visually and phonetically confusingly similar to ‘SONY’, would play a dominant role in indicating the source of the services covered by the contested mark.

JPO decision

The JPO Invalidation Board did not question the high degree of reputation and popularity of the mark “SONY” in relation to telecommunications and electronic machines and apparatus, and consumer games.

Comparing the contested mark and the cited mark “SONY”, although the marks differ in their overall structure, both marks contain the same initial three letters, “SON” and the same pronunciation. Moreover, the term “SONI” and its sound are likely to be associated with the cited mark “SONY”, which is well known and famous in the fields of telecommunications and electronic machines and apparatus, and consumer games.

Bearing in mind that SONY has plenty of group companies and stores using a name consisting of “SONY” and descriptive word, such as Sony shop, Sony music entertainment, Sony bank, Sony city, the Board has a reason to believe that there is a certain degree of similarity between the contested mark and the cited mark.

Consumers of the services in question, in particular retail services for smart phone cases, rental of computers, and providing computer programs on data networks, are overlapping with those of telecommunications and electronic machines and apparatus. In this respect, these are closely related.

Based on the foregoing, the Board decided to invalidate the contested mark in contravention of Article 4(1)(xv) because the relevant consumers are likely to confuse a source of the services in question with SONY or an entity that is systematically or economically connected to the claimant.

UNIQLO Lost in Trademark Opposition against UNIPRO

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UNIQLO lost in its attempt to oppose TM Reg no. 6746724 for the mark “UNIPRO” in class 28 due to dissimilarity and unlikelihood of confusion with a world-famous Japanese clothing brand “UNIQLO”.
[Opposition case no. 2023-900278, Gazette issued on December 27, 2024]

UNIPRO

Kabushiki Kaisha UNIQUE, a Japanese corporation, filed a trademark application for the mark “UNIPRO” in relation to pet toys and sports equipment in class 28 with the Japan Patent Office (JPO) on April 17, 2023 [TM App no. 2023-41531]. The mark has the word “UNIPRO” written in two lines inside a square (see below).

On October 10, 2023, the JPO examiner approved the registration of the applied mark without issuing an office action. Subsequently, the JPO published the mark for a post-grant opposition on October 27, 2023.

Opposition by UNIQLO

Fast Retailing Co., Ltd., a public Japanese retail holding company, is best known for its flagship brand UNIQLO. The company filed an opposition with the JPO on December 8, 2023 by citing its own earlier trademark registrations for the UNIQLO mark.

Fast Retailing claimed that the applied mark should be cancelled in contravention of Article 4(1)(xi), (xv) and (xix) of the Japan Trademark Law because of a high degree of similarity to and a likelihood of confusion with famous fashion brand UNIQLO when used on the goods in question.

Fast Retailing argued, among other things, visual and aural similarity between UNIPRO and UNIQLO. Arranging the first three letters “UNI” in the top line and the last three letters in the bottom line in a square would be anything but a coincidence. Since the mark “UNIQLO” is a coined word and has become famous to indicate Japanese clothing brand operated by Fast Retailing Group, the applicant must have intended to free-ride on the goodwill bestowed on UNIQLO and unjustifiably obtain profits by using the applied mark “UNIPRO” that is confusingly similar to the cited mark.

JPO decision

The JPO Opposition Board found that the cited mark and “UNIQLO” have been widely recognized among relevant consumers in Japan to indicate a source of clothing managed by Fast Retailing Group.

In the meantime, the Board held “UNIPRO” is dissimilar to and unlikely to cause confusion with “UNIQLO” by stating:

  1. The applied mark and the cited mark both consist of white letters and a square. They also share the letters “UNI” in the top line and “O” in the bottom line. However, the difference of the letters “PR” and “QL” in the bottom line gives an impression that the marks represent different word in a square. Therefore, the applied mark is distinguishable from the cited mark in appearance.
  2. Comparing the sound of the applied mark with that of the cited mark, there is a difference in the third tone of “pu” and “ku”. This difference has anything but negligible effect on the overall tone and impression since respective sound has a short four-syllable structure. Thus, the Board finds it reasonable to conclude that there is no risk of mishearing each other.
  3. Conceptual aspect does not have impact on the assessment of likelihood of confusion, since both marks are meaningless.

Taking into consideration a low degree of similarity between the marks, even if the cited mark has become famous among relevant consumers, the Board has no reason to believe the consumers would consider an origin of the goods in question bearing the applied mark from UNIQLO or an undertaking economically or systematically linked to Fast Retailing.

Based on the foregoing, the Board decided to dismissed the entire opposition.