IP High Court

Trademark battle over ZOOM between Zoom Communications Inc and Zoom Corporation

Posted on2025年12月6日2025年12月31日

On November 26, 2025, the Japan IP High Court upheld the Japan Patent Office’s (JPO) decision not to cancel TM Reg. No. 4940899, “ZOOM,” due to the commercial use of the mark in connection with a computer program for communication between internet or network users in Class 9.
[Court case no. Reiwa 6 (Gyo-ke)10111, decided on November 26, 2025]

ZOOM

ZOOM Corporation, a Japan-based electronic device company established in 1983, registered the stylised mark “ZOOM” (see below) for various goods, including musical instruments (Class 15) and computer programs (Class 9), in Japan [TM Reg. No. 4940899].

Non-use cancellation action

In June 2022, Zoom Communications Inc., a U.S. company that provides an easy-to-use communication platform and solutions for video meetings, filed a non-use cancellation and claimed partial cancellation of the ZOOM mark in connection with computer programs for communicating with other internet or network users in Class 9 (Cancellation Case No. 2022-300478).

Since January 8, 2022, the owner has developed and provided application software for iPhones and iPads that enables users to send recorded audio files via email under the name “Handy Recorder PRO.” The ZOOM mark is represented on the application’s icon (see below).

https://apps.apple.com/tr/app/handy-recorder-pro/id1523269680

On August 30, 2024, the Japan Patent Office (JPO) Trial Board found that the owner had established actual use of the mark on the goods in question and dismissed the cancellation petition.

On December 26, 2024, Zoom Communications Inc. filed an appeal against the JPO decision at the IP High Court, and claimed cancellation of the decision.

IP High Court decision

The court observed that an email is a medium through which users can communicate via the internet and communication networks. In this respect, the defendant’s application software shall be regarded as a computer program for communication between internet or network users in Class 9.

As for the plaintiff’s argument that emails cannot be sent without the support of the other file browser app and the iOS standard sharing function, the court noted that this fact would not affect the finding that the defendant’s application is a computer program for communicating with other users on the Internet or a network, by taking into consideration the overall function and graphical interface of the defendant’s application.

Since the defendant successfully demonstrated the actual and commercial use of the mark ZOOM on the goods in question, it is reasonable for the JPO to conclude that the mark should not be cancelled based on non-use.

Japan IP High Court reversed JPO decision regarding similarity between COSME MUSEUM and Cosmetic Museum

Posted on2025年11月22日2025年12月7日

On November 17, 2025, the Japan IP High Court handed down a ruling to disaffirm the JPO Invalidation Board’s decision regarding similarity between COSME MUSEUM in Class 35 for retail services for cosmetics and Cosmetic Museum in Class 3 for cosmetics.
[Court case no. Reiwa6(Gyo-ke)10104, decided on November 17, 2025]

COSME MUSEUM

The contested mark, consisting of the word “COSME MUSEUM” in a plain letter, was filed with the JPO on February 24, 2023. It designates various services classified in class 35, including retail or wholesale services for cosmetics (TM App no. 2023-18992).

The applicant owns the domain “cosme-museum.com” and uses the contested mark on the domain’s web pages.

The JPO examiner granted registration of the contested mark on August 9, 2023, without issuing a notice of refusal. Upon payment of the statutory registration fee, the mark was registered on October 19, 2023 [TM Reg no. 6746429].

Cosmetic Museum

MOMOTANIJUNTENKAN Co., Ltd. filed a trademark application for the wordmark “Cosmetic Museum” in standard character with the JPO on February 16, 2023 (8 days prior to the contested mark) for use on breath freshening preparations, deodorants for animals, soaps and detergents, dentifrices, bath preparations, not for medical purposes, perfumes and flavor materials, incense, false nails, false eyelashes, and cosmetics in class 3 (TM App no. 2023-16082) to secure online use of the mark in connection with cosmetics on its websites under the domain “cosmeticmuseum.jp”.

The JPO registered the earlier mark on July 13, 2023 (3 months prior to the contested mark) [TM Reg no. 6717335].

On March 28, 2024, five months after the registration of the contested mark, MOMOTANIJUNTENKAN filed an invalidation petition with the JPO requesting that the contested mark be retroactively annulled based on Article 4(1)(xi) of the Japan Trademark Law.

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.

JPO decision

The JPO Invalidation Board found the contested mark “COSME MUSEUM” is dissimilar to the cited mark “Cosme Museum” by stating that:

Firstly, comparing the appearance of the contested mark and the cited mark, there are visual distinctions in the presence or absence of the term “tic”, and the upper-case letters or lower-case letters consisting of the respective mark. Therefore, the Board has a reason to believe that two marks are clearly distinguishable, and unlikely to cause confusion in appearance.

Secondly, the pronunciation of the contested mark and that of the cited mark clearly differ in the presence or absence of a “tic” sound in the middle, and are clearly audible.

Thirdly, the two marks do not convey any particular meaning at all. In this regard, they remain conceptually neutral.

Based on the foregoing, the contested mark and the cited mark are unlikely to cause confusion due to a low degree of similarity in appearance and pronunciation. Taking a global view of the impression, memory, and association that the relevant consumers will perceive from the appearance, sound and concept of the marks, the Board has a reason to believe that the contested mark “COSME MUSEUM” should be found dissimilar to the earlier mark “Cosmetic Museum” and unlikely to cause confusion.”

On December 12, 2024, MOMOTANIJUNTENKAN filed a lawsuit with the IP High Court, claiming that the court should annul the contested decision because the JPO erroneously applied Article 4(xi) of the Japan Trademark Law and thus found “COSME MUSEUM” and “Cosmetic Museum” similar.

IP High Court ruling

The court noted that the term “COSME” is defined as an abbreviation for cosmetics in Japanese dictionaries and is widely used in the industry to refer to cosmetics. Thus, relevant consumers would associate the term with cosmetics, and the contested mark will convey the meaning of a museum for cosmetics as a whole.

Although the term “COSME” is recognized as an abbreviation for “cosmetics” or “cosmetic”, there is insufficient evidence to demonstrate that the terms have been used in trade practice to indicate different sources without causing confusion. Bearing this in mind, the court found that the two marks do not differ significantly in appearance.

Similarly, the court observed that the aural difference between “COSME” and “cosmetic” would be negligible.

Since both marks have the same meaning, it is reasonable to believe that relevant consumers may confuse the source of the contested mark with the earlier mark when used in connection with retail services for cosmetics.

Based on the foregoing, the court declared the annulment of the contested decision because the JPO errored in applying Article 4(1)(xi) and finding the relevant facts.

IP High Court ruling: STARBUCKS vs STARBOSS

Posted on2025年11月8日2025年11月16日

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

STARBOSS

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

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

The applicant promotes energy drinks bearing the applied mark.

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

JPO decision against the invalidation filed by Starbucks

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

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

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

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

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

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

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

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

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

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

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

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

IP High Court Ruling

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

1. Similarity of the marks

– Visual comparison

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

– Aural comparison

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

– Conceptual comparison

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

2. Likelihood of confusion

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

End of the TOKYO 2020 Olympic emblem dispute

Posted on2025年4月6日2025年4月7日

On March 12, 2025, the Japan IP High Court handed down a decision regarding the validity of TM Reg no. 6008759 for the Tokyo 2020 Olympic Emblem owned by the International Olympic Committee (IOC).
[Court case no. Reiwa6(Gyo-ke)10057]

Tokyo 2020 Olympic Emblem

The official emblem of the 2020 Tokyo Olympics was scrapped in 2016 (see below left) and replaced with the new emblem (see below right) before the opening of the Olympics, as you recall.

Even after the Games closed without spectators in 2021, a year after originally scheduled to due to a global pandemic, the new official emblem was to face with another challenge at the Japan Patent Office (JPO) in 2022.

The contested new emblem was filed by the IOC for use on all goods and services in every class from 1 to 45 with the JPO on April 25, 2016. In the course of substantive examination, the mark was assigned to the Tokyo Olympic Committee (TOC). Subsequently, the JPO granted registration on December 7, 2017 (TM Reg no. 6008759). Upon the Olympic Games finalizing, it was re-assigned to the IOC in December 2021.

Invalidation action

A group of Japanese legal experts filed an application for a declaration of invalidity against the new Tokyo 2020 Olympic Emblem with the JPO on June 21, 2022. They claimed that the emblem should be invalidated in contravention of Article 4(1)(vi), (vii), (x) and (xix) of the Japan Trademark Law.

The experts argued, inter alia, that the IOC failed to comply with Article 31(1) of the Trademark Law, which prohibits the licensing of a trademark registration to a third party given the mark was registered subject to Article 4(2).

Article 4(2) provides an exception to allow the registration of a trademark applied for by a non-profit organization engaged in activities in the public interest, even if the trademark is unregistrable under Article 4(1)(vi).

In this respect, the experts considered it illegal that the IOC granted a trademark license to the TOC, other organizers and sponsors. In fact, under the license, the TOC sent C&D letters based on TM Reg no. 6008759 to entities seeking to benefit from the Tokyo 2020 Olympic Games in order to prevent ambush marketing.

In these circumstances, the contested mark should be declared invalid in contravention of Article 4(1)(vii) because the IOC had a bad faith intent to unjustifiably protect the profits of official sponsors without legal basis by harming the interests of other entities.

It should be noted that Article 31(1) was revised in 2019, one year after the registration of the contested mark. Now, the prohibition to license the registered mark under Article 4(2) no longer exists.

IP High Court decision

In its ruling, the IP High Court acknowledged the need to restrict ambush marketing, which deliberately attempts to persuade or mislead consumers into believing they are associated with a sporting mega-event, or to use their IP without permission.

The Court found that since the elimination of the restriction on granting a license for a mark registered under Article 4(2) came into effect immediately after the promulgation of the Trademark Law Revision in 2019, it would rather serve to promote the appropriate use of the famous trademark for the public interest and satisfy the intention behind the law.

Therefore, even if the IOC had licensed the contested mark to the TOC and official sponsors in order to prevent ambush marketing, it would be irrelevant to find that the contested mark should be invalidated in contravention of Article 4(1)(vii) due to the likelihood of causing damage to public order or morality.

Court Case: VALENTINO GARVANI vs GIANNI VALENTINO

Posted on2025年3月1日2025年3月10日

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.

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.

Top 10 Trademark News in Japan, 2024

Posted on2024年12月29日2025年2月9日

As the year 2024 comes to an end, it is a good time to share the top 10 trademark news in Japan by counting the total number of likes on the Linkedin “Like” Button.

1: Japan IP High Court said No to registering the color of Hermes packaging

The Japan IP High Court ruled to dismiss Herme’s appeal against the JPO decision that rejected Hermes packaging color due to a lack of inherent and acquired distinctiveness.

Japan IP High Court said No to registering the color of Hermes packaging.

2: Can a ‘Letter of Consent’ guarantee successful trademark registration in Japan?

The revised Japan Trademark Law will come into effect on April 1, 2024, introducing the “Letter of Consent” as a means to overcome conflicts with earlier trademark registrations.

Can a ‘Letter of Consent’ guarantee successful trademark registration in Japan?

3: COCO vs. KOKO

In a recent administrative decision, the Japan Patent Office (JPO) found that the trademarks “CoCo” and “koko” are dissimilar and unlikely to cause confusion.

COCO vs. KOKO

4: CHANEL defeated in Trademark Opposition against “COCOCHI”

The Japan Patent Office (JPO) handed a loss to Chanel SARL in trademark opposition against TM Reg no. 6674710 for the “COCOCHI” mark by finding unlikelihood of confusion with “COCO”.

CHANEL defeated in Trademark Opposition against “COCOCHI”

5: ZARA Unsuccessful Opposition against TM “LAZARA”

On April 22, 2024, the Japan Patent Office (JPO) dismissed an opposition filed by Industria de Diseño Textil, SA (INDITEX), owner of the fashion brand “ZARA”, against TM Reg no. 6699667 for word mark “LAZARA” in classes 25 due to dissimilar marks and unlikelihood of confusion with “ZARA”.

ZARA Unsuccessful Opposition against TM “LAZARA”

6: CHANEL Lost in Trademark opposition against “COCOBABY”

The Japan Patent Office (JPO) did not side with CHANEL in an opposition against TM Reg no. 6650252 for wordmark “COCOBABY” in class 25 by finding dissimilarity of mark between “COCOBABY” and “COCO”.

CHANEL Lost in Trademark opposition against “COCOBABY”

7: Trademark Dispute: Chateau Mouton Rothschild vs MOUTON

The Japan Patent Office (JPO) declared invalidation of TM Reg no. 6090508 for wordmark “MOUTON” in classes 35 and 43 due to a likelihood of confusion with famous mark “Mouton” as a source indicator of Chateau Mouton Rothschild, one of the most famous wine estates in the world.

Trademark Dispute: Chateau Mouton Rothschild vs MOUTON

8: Hermes Victory with Invalidating Birkin Lookalike Design

The Japan IP High Court has ruled in favor of Hermes in a dispute over the validity of Design Reg no. 1606558 by finding a likelihood of confusion with Hermes.

Hermes Victory with Invalidating Birkin Lookalike Design

9: Trademark dispute: VALENTINO GARAVANI vs GIANNI VALENTINO

In a trademark opposition claimed by Valentino S.p.A. against TM Reg no. 6550051 for the GIANNI VALENTINO mark, the Japan Patent Office (JPO) decided to cancel the registration due to a conflict with earlier IR no. 975800 for the VALENTINO GARAVANI mark.

Trademark dispute: VALENTINO GARAVANI vs GIANNI VALENTINO

10: Japan IP High Court gives Green Light to 3D “Godzilla” shape as Trademark

On October 30, 2024, the Japan IP High Court disaffirmed the administrative decision by the Japan Patent Office (JPO) not to register the 3D shape of the eponymous character from the film “Shin Godzilla” as a trademark.

Japan IP High Court gives Green Light to 3D “Godzilla” shape as Trademark

Trademark dispute: UNITED vs UNITED GOLD

Posted on2024年12月21日2024年12月28日

In a dispute over the similarity of the marks “UNITED” and “UNITED GOLD” in connection with apparel, the Japan IP High Court upheld the JPO decision and found that both marks were dissimilar.
[Court case no. Reiwa6(Gyo-ke)10066, decided on December 10, 2024]

UNITED GOLD

Nishitomi Shoji Co., Ltd. filed a trademark application with the Japan Patent Office (JPO) on January 17, 2022 for the word mark “UNITED GOLD” in standard character for use on apparel in class 25 and retail services for apparel in class 35.

The applicant promotes men’s suits bearing the applied mark via internet.

In accordance with a request for accelerated examination from the applicant based on the actual use of the mark on any one of the designated goods and services, the JPO carried out a substantive examination and registered the mark on March 25, 2022 [TM Reg No. 6534957].

Invalidation action

On December 15, 2023, Howard Corporation, an owner of earlier TM Reg no. 2053119 “UNITED” in class 25, filed an application for a declaration of invalidity against the mark “UNITED GOLD” with the JPO in contravention of Article 4(1)(xi) of the Japan Trademark Law due to its similarity to earlier trademark “UNITED”.

However, the JPO Invalidation Board found “UNITED GOLD” to be dissimilar to “UNITED” and therefore dismissed the invalidation action on June 17, 2024 [Invalidation Case No. 2023-890089].

To challenge the JPO decision, Howard filed an appeal with the IP High Court on July 10, 2024, claiming that the JPO erred in finding that the contested mark “UNITED GOLD” should be assessed in its entirety.

In the compliant, Howard argued that the term “GOLD” has a low degree of distinctiveness in relation to the goods and services in question. On the other hand, the term “UNITED” is highly distinctive because of its meaning. If so, the term “UNITED” plays a dominant role in identifying a source of the contested mark

IP High Court ruling

The IP High Court, at the outset, referred to the Supreme Court ruling in 2008 which established the criterion to grasp a composite mark in its entirety in the assessment of similarity of the mark.

“Where a mark in dispute is recognized as a composite mark consisting of two elements or more, it is not permissible to assess the similarity of mark simply by means of taking out an element of the composite mark and then comparing such element with the other mark, unless consumers or traders are likely to perceive the element as a dominant portion indicating its source of origin of goods/service, or remaining elements truly lack inherent distinctiveness as a source indicator in view of sound and concept.”

Based on the criteria, the court found that contested mark shall be assessed in its entirety on the following grounds:

From appearance and meaning, there is no reasonable ground to find “UNITED” and “GOLD” shall be recognized individual and separable.
In conjunction with clothing of class 25, more than 150 trademarks that contain the term “UNITED”, e.g. “UNITED ARROWS”, “UNITED COLORS OF BENETTON”, “UNITED TOKYO”, “UNITED DOORS”, are registered with the JPO in the name of third party. These facts suggest that the term “UNITED” is also lowly distinctive in relation to apparel.
Even if there are actual examples in which the term ‘GOLD’, when combined with another distinctive term, implies a high quality of the goods, it would be anything but convincing to find that the term ‘UNITED’ plays a dominant role in identifying the goods and services bearing the contested mark, given that, as stated above, the term ‘UNITED’ has a low degree of distinctiveness.

Based on the foregoing, the judges concluded that the JPO did neither err in comparing both marks as a whole nor applying Article 4(1)(xi).

IP High Court Found “Medical Equipment” Similar to “Rental of Medical Equipment”

Posted on2024年11月16日2024年11月18日

On November 11, 2024, the Japan IP High Court overturned the JPO decision that found “Medical Apparatus and Instrument” in Class 10 dissimilar to “Rental of Medical Apparatus and Instrument” in Class 44.
[Court case no. Reiwa6(Gyo-ke)10028]

Disputes

G-Wave Co., Ltd. has obtained trademark registration for word mark “AWG治療” (it means AWG treatment) over “medical apparatus and instrument” in Class 10 since Jan 17, 2020 (TM Reg no. 6217436).

Subsequently, a third party filed a trademark application for the same mark in connection with “rental of medical apparatus and instrument” and other services of Class 44 on October 21, 2019.

According to the Trademark Examination Guidelines for Similar Goods and Services, the similar group code of “medical apparatus and instrument” is 10D01. In the meantime, “rental of medical apparatus and instrument” has 42X09.

Under the JPO practice, it has been considered that the goods or services which have the same similar group codes are presumed to be similar to each other in principle even in different classes. In other words, as long as the code is different, the goods and services are presumed to be dissimilar even if they belong to the same class.

Based on the established practice, the JPO granted registration of the junior mark (TM Reg no. 6320554) on November 25, 2020, without questioning a conflict with the earlier mark.

On June 30, 2023, G-Wave CO., Ltd. filed a partial invalidation action against the junior mark with the JPO due to similarity between “rental of medical apparatus and instrument” of Class 44 and “medical apparatus and instrument” of Class 10 in contravention of Article 4(1)(xi) of the Japan Trademark Law.

JPO decision

On February 8, 2024, not surprisingly, the JPO Invalidation Board decided to dismiss the entire allegations by stating that the business entities involved in manufacturing and selling of the goods and those providing the service are fundamentally different. Moreover, the intended use and purpose, the place where the goods are sold is not the same as the place where the service is provided. Therefore, even if they may coincide in some of consumers, taking into account the general and constant practice in the course of trade, the Board has reason to believe that the goods and services in question are dissimilar [Invalidation case no. 2023-890053].

G-Wave Co., Ltd. filed an appeal with the IP High Court on March 19, 2024, seeking invalidation of the junior mark in connection with “rental of medical apparatus and instrument” in Class 44.

IP High Court ruling

In determining the similarity of goods and services, the court considered factors such as related business entities, purpose, distribution channel, and consumers.

Relatedness of business entities
- The judges paid great attention to the fact that 68.8% of the companies that are members of the Japan Medical Industry Association (JMIA) and are licensed to manufacture, sell or rent medical equipment have both licenses. This means that about two-thirds of the companies that manufacture or sell medical equipment can engage in the rental business as well.
Purpose
- The rental of medical equipment aims to provide the goods for medical purposes. If so, the purpose of the service will be common to the use of medical equipment.
Distribution channel
- The sale and rental of medical equipment both take place at the company’s place of business or on its internet website. Therefore, it is reasonable to assume that the distribution channel of the goods and services in question is in many cases the same.
Consumers
- Respective consumers are substantially overlapping since both include medical institutions and general consumers.

In light of the foregoing, the court found that relevant traders and consumers are likely to confuse a source of the service “rental of medical equipment” using the mark “AWG治療” with the goods “medical equipment” bearing the same mark. Accordingly, the JPO errored in evaluating similarity between “medical apparatus and instrument” in Class 10 and “rental of medical apparatus and instrument” in Class 44, and decided to cancel the decision.

Japan IP High Court gives Green Light to 3D “Godzilla” shape as Trademark

Posted on2024年11月10日2024年11月10日

GODZILLA

Godzilla, a science-fiction monster spawned from the waste of nuclear tests that resembles an enormous bipedal lizard was released in Japanese film in 1954. The character has since become an international pop culture icon. After the original 1954 cinematic masterpiece, Godzilla has appeared in more than 30 films spanning seven decades and several eras produced by Toho Co., Ltd.

On July 29, 2016, the film “Shin Godzilla (Godzilla Resurgence)” produced by Toho was theatrically released as a 31st film of Godzilla trilogy. The film grossed $79 million worldwide, making it the highest-grossing live-action Japanese film of 2016. It received 11 Japan Academy Prize nominations and won seven, including Picture of the Year and Director of the Year.

Toho Co. filed a trademark application with the JPO for the 3D shape of Godzilla’s fourth form in the film “Shin Godzilla”, the final evolutionary form of the character appearing in the film, as a trademark for use in stuffed toys, figures, dolls and toys of class 28 on September 29, 2020 (TM App no. 2020-120003).

The JPO examiner, however, rejected the 3D mark based on Article 3(1)(iii) of the Trademark Law due to a lack of distinctiveness in relation to the goods. The JPO Appeal Board also dismissed an appeal on the same ground and held that the 3D shape has not acquired distinctiveness because of insufficient use of the 3D mark in relation to the goods in question (Appeal case no. 2021-11555).

On May 10, 2024, Toho filed an appeal to the IP High Court and called for the JPO decision to be revoked.

IP High Court decision

The IP High Court affirmed the findings of the JPO to reject the 3D shape due to a lack of inherent distinctiveness in relation to the goods in question.

In the meantime, the court found that the JPO errored in applying Article 3(2) and assessing the acquired distinctiveness of the 3D mark by stating that:

Toho has produced and distributed 30 films in the “Godzilla” series over a 69-year period from 1954 to 2023, and although the shape of the “Godzilla” character in these films changed slightly, the basic shape of the character was largely the same, and the form of the Godzilla character with its countless folds and complex rocklike texture is distinctive among other monster characters of the same type.
The applied mark represents the 3D shape of Godzilla’s fourth form in the film “Shin Godzilla”, the final evolutionary form of the character appearing in the film. It has the same features with the monster appeared in the previous “Godzilla” films. It is obvious that the basic shape of the “Godzilla” character has been widely recognized among general public to indicate a monster character produced by Toho even before the release of the film “Shin Godzilla”.
Even if the term “use” under Article 3(2) of the Trademark Law should be limited to actual use of a sign strictly identical with the applied mark, in determining whether a consumer has come to “recognize the goods bearing the applied mark to indicate a specific source” under the article, it should be reasonable or rather necessary to consider the influence of the entire “Godzilla” films including “Shin Godzilla” on consumers’ recognition to the applied 3D mark.
The interview conducted in September, 2021, targeting 1,000 interviewees of men and women aged 15 to 69 nationwide, showed an extremely high level of recognition, namely, 64.4% answered “Godzilla” or “Shin Godzilla” to the open-ended responses (70.8% among men).

Japan IP High Court Decision: 3D shape of Stokke “TRIPP TRAPP” high chair Unprotectable under Copyright Law

Posted on2024年10月19日2024年10月27日

On September 25, 2024, the Japan IP High Court dismissed an appeal by Peter Opsvik AS and Stokke AS who had claimed copyright protection for their award-winning, best-selling children’s chair, “TRIPP TRAPP.”

[Court case no. Reiwa5(ne)10111]

TRIPP TRAPP

In 2021, Peter Opsvik AS and Stokke AS, as co-plaintiffs, initiated legal proceedings against Noz Corporation at the Tokyo District Court on the grounds of copyright infringement and the Unfair Competition Prevention Law.

The plaintiffs have asserted that Noz Hopple’s “Choice Kids” and “Choice Baby” chairs (see below right) are liable for copyright infringement and prohibited under the Unfair Competition Prevention Law in relation to their iconic “TRIPP TRAPP” high chair (see below left), and sought damages in the amount of 14 million JPY (approximately 98,000USD) in the complaint.

However, the Tokyo District Court did not rule in favor of the plaintiffs in a decision on the merits, rendered on September 28, 2023 [Reiwa3(wa)31529].

To contest, the plaintiffs filed an appeal with the IP High Court, requesting the cancellation of the District Court decision.

IP High Court decision

The IP High Court found that the distinctive shape of “TRIPP TRAPP” perse has played a significant role in identifying the source of the plaintiff’s chair. However, the court questioned resemblance between the “TRIPP TRAPP” chair and the defendant chairs by globally taking account of their respective appearances and overall impressions.

Pertinent to a legal protection to the “TRIPP TRAPP” chair under the Copyright Law, the court held that:

In determining appropriate protection for creative works on the shape of utility articles, it is necessary to pay due attention to the purposes, nature, and content of rights provided by the Copyright Law and the Design Law in Japan.

To the extent that creative expression on utility articles is visible and causes aesthetical effect in the mind of consumers, it will not require protection under the Copyright Law since the Design Law takes an initiative to provide sufficient protection for such expression.

Based on these points, it is reasonable to conclude that creative shape of utility articles is protectable under the Copyright Law only where it contains an independent part that is an object of aesthetic appreciation apart from its practical function or when the entire article is deemed to have been created exclusively for the purpose of aesthetic appreciation.

The court has an opinion that the unique features of the “TRIPP TRAPP” chair are mainly serving to realize the practical function as a height adjustable children’s chair and aim to achieve basic function of chair as a whole. Therefore, it is difficult to separate the features apart from basic function of the plaintiff’s product as a chair. In other words, even if the plaintiff’s chair gives rise to an aesthetic effect in the mind of consumers as a whole, the unique feature of the chair is not an object of independent aesthetic appreciation apart from its practical function as a chair.

Obviously, there is no evidence to find that the plaintiff’s chair was made exclusively for the purpose of aesthetic appreciation.

Besides, the defendant’s chairs do not have the unique function of the plaintiff’s product. Due to a clear distinction in overall impression of respective products, the IP High Court believes the defendant was not liable for copyright infringement consequently.