タグ: JAPAN PATENT OFFICE

JPO Rejected 3D shape of KitKat 2 Finger Mini Chocolate Wafers as Trademark

Posted on

The Japan Patent Office (JPO) Appeal Board upheld the examiner’s decision to reject TM App no. 2020-121513 for the 3D shape of Nestle’s KitKat 2 Finger Mini Chocolate Wafers, due to a lack of inherent and acquired distinctiveness.
[Appeal case no. 2024-75, decided on September 29, 2025]

KitKat 2 Finger Mini Chocolate Wafers

Société des Produits Nestlé S.A. filed a trademark application for the 3D shape of KitKat 2 Finger Mini Chocolate Wafers (see below) in connection with chocolate confections (Cl. 30) with the JPO on October 1, 2020. [TM App no. 2020-121513]

The JPO examiner gave Nestle a notice of grounds for refusal on August 30, 2021, based on Article 3(1)(iii) of the Japan Trademark Law due to a lack of inherent distinctiveness.

As a response, Nestle argued not only the inherent distinctiveness of the 3D shape, but also acquired distinctiveness since the shape has been used since 2011 on their world-famous chocolate wafers “KitKat 2 Finger Mini”. To demonstrate the acquired distinctiveness, Nestle conducted market research targeting 1,001 men and women aged 15 to 64 residing in Tokyo or Osaka, or these neighboring areas, and who have purchased and eaten chocolate confections more than once a month. 85% of respondents, when shown the 3D shape of the KitKat 2 Finger Mini chocolate wafers without any accompanying text, identified it as “KitKat” in response to an open-ended question.

However, the examiner considered the market research biased by excluding children aged under 15 and over 65, who are unquestionably relevant consumers, and limiting respondents who reside in the Tokyo or Osaka areas and have purchased and eaten chocolate confections more than once a month.

On October 2, 2023, the examiner decided to reject the mark based on Article 3(1)(iii), and noted that the evidence is insufficient to find 3D shape perse has already played a role in identifying the source of the KitKat 2 Finger Chocolate Wafers.

To contest, Nestle filed an appeal with the JPO on January 4, 2024.

Subsequently, Nestle conducted 2nd market research targeting 1,080 men and women aged 15 to 99 without restricting their residence and preference to chocolate confections. The result shows that 72.9% of respondents, when shown the 3D shape of the KitKat 2 Finger Mini chocolate wafers without any accompanying text, identified it as “KitKat” in response to an open-ended question.

JPO Appeal Board decision

The JPO Appeal Board recognized the high popularity and recognition of KitKats sold in Japan since 1973, which holds a 17% market share — the top ranking in Japan. Annual sales exceeded 27 billion JPY in 2019.

In the meantime, the Board questioned whether the applied 3D shape perse has acquired distinctiveness in connection with the KitKat 2 Finger Mini chocolate wafers by stating that:

  1. KitKats come in various shapes, such as spherical or stick-shaped, as well as the ‘2 Finger Mini’. Therefore, the applied 3D shape would not be identical to all KitKat chocolates.
  2. KitKats are sold in individually wrapped pieces that are then packed in boxes or bags for display and sale. This suggests that the 3D shape would not be distinctive enough to catch consumers’ attention at the time of purchase.
  3. Of the sixty KitKats, only two represent an image of the 3D mark on their packaging.
  4. There is insufficient evidence to conclude that relevant consumers can securely identify the source of KitKats by relying solely on the 3D mark in question.
  5. Advertising for KitKats has not prominently featured the 3D shape to the extent that it could be perceived as a source indicator by consumers. Even if market research shows that many consumers associate the 3D shape with KitKats, it cannot be concluded that consumers distinguish KitKats based solely on the shape of the goods.

Based on the above findings, the JPO upheld the examiner’s decision, and declared rejection of the 3D shape due to a lack of inherent and acquired distinctiveness.

The JPO’s decision is appealable until February 11, 2026.

ALVIERO MARTINI Defeated Over World Map Mark Dispute

Posted on

The Japan Patent Office (JPO) dismissed an invalidation claim by ALVIERO MARTINI S.p.A., against TM Reg no. 6320074, which features an old-world map design, due to its dissimilarity and less likelihood of confusion with the claimant’s 1A CLASSE “GEO MAP” mark.
[Invalidation case no. 2024-890008, decided on September 18, 2025]

Japan TM Reg no. 6320074

Two Korean individuals filed a trademark application with the JPO for a device mark depicting an old-world map (see below) in relation to bags and other leather goods of Class 18 on December 24, 2019 [TM App no. 2019-165453].

Without raising any ground of refusal, the JPO examiner granted registration of the mark on December 24, 2020.

Invalidation action by Alviero Martini

ALVIERO MARTINI S.p.A., known as an Italian heritage brand, Alviero Martini 1A Classe, filed an invalidation action with the JPO on February 13, 2024, and claimed invalidation of TM Reg no. 6320074 in contravention of Article 4(1)(vii), (xi), (xv) and (xix) of the Japan Trademark Law by citing earlier IR no. 982100 of the world map mark in Class 18.

ALVIERO MARTINI argued the contested mark is confusingly similar to the cited mark that has been widely recognized among relevant consumers to identify a source of Alviero Martini 1A CLASSE brand.

The claimant also pointed out the fact that the applicant applied for other mark containing the term “PRIMA CLASSE” (see below). Given a high degree of resemblance between the marks and close relatedness between the goods in question and the claimant’s fashion business, it is presumed that the applicant had maliciously filed the contested mark with an intention to free-ride goodwill on the cited mark.

JPO decision

The JPO Invalidation Board noted the fact that the cited mark has been used in a manner that depicts only a portion of the world map on the claimant’s goods. The produced evidence does not suggest that the cited mark is ever used in its entirety as a source indicator.

Therefore, it would be unreasonable to conclude that the cited mark has acquired a certain degree of recognition in Japan and other jurisdictions.

Regarding the similarity of the marks, the Board stated, “Although they both consist of a device that represents a world map in common, the overall impressions differ significantly due to the different arrangement of continents, the presence of country and ocean names, and sailing ships. Therefore, the contested mark is visually dissimilar to the cited mark”, and “the coincidence in the graphic element representing world map is not sufficient to counteract or outbalance these visual differences.”

Based on the foregoing, the Board found that the marks are dissimilar and relevant consumers are unlikely to confuse the source of the goods in question bearing the contested mark with the cited owner.

Given the lack of persuasive evidence demonstrating a high recognition of the cited mark, it is unclear whether the applicant has a malicious intent vulnerable to invalidation.

CHEMICAN vs CHEMI-CON

Posted on

In a trademark opposition against Japan TM Reg no. 6894070 “Chemican” in Class 9, which disputed the similarity and a likelihood of confusion with the earlier mark “CHEMI-CON”, the Japan Patent Office (JPO) did not sustain the opposition due to the marks’ low degree of similarity even though the earlier mark to be famous in relation to aluminum electrolytic capacitors.
[Opposition case no. 2025-900082, decided on September 11, 2025]

CHEMICAN

Chemican, Inc. filed a trademark application for wordmark “Chemican” in standard character for use on various electrical and electronic goods, including capacitors of Class 9 with the JPO on December 9, 2024. [TM App no. 2024-132131]

Immediately after the filing, the applicant requested for accelerated examination.

Without raising any grounds for refusal, the JPO examiner granted protection of the mark on February 3, 2025. The mark “Chemican” was subsequently registered on February 6, 2025, and published for post-grant opposition on February 17.

Opposition by Nippon Chemi-Con Corporation

Nippon Chemi-Con Corporation, the largest manufacturer and supplier of aluminum electrolytic capacitors, has owned trademark registrations for the mark “CHEMI-CON” in Class 9 since 1984.

On April 16, 2025, Nippon Chemi-Con filed an opposition, disputing that the contested mark should be canceled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law.

Nippon Chemi-Con allegedly argued that the cited mark “CHEMI-CON” has become famous among relevant consumers of the goods in question, indicating a source of their aluminum electrolytic capacitors, which hold a top market share worldwide. The contested mark “Chemican” is confusingly similar to the cited mark “CHEMI-CON” in appearance and sound.

JPO decision

The JPO Opposition Board found that the cited mark has become famous as an indicator of the claimant’s aluminum electrolytic capacitors, considering the evidence and the claimant’s top-ranked global market share.  

However, the Board questioned the similarity of the marks by stating that:

  1. Although both marks have the initial element “Chemi” and “CHEMI” in common, there are several differences: (i) a hyphen; (ii) “a” in “can” and “O” in “CON”; and (iii) the contested mark consists of lowercase letters except for the initial letter “C”, whereas the cited mark is entirely uppercase. Moreover, the cited mark can be recognized as a combination of the familiar English word “CHEMI,” meaning “chemical,” and the term “CON” via a hyphen. Therefore, the cited mark gives a different commercial impression than the contested mark. Accordingly, the two marks are clearly distinguishable in appearance.
  2. The two marks’ pronunciations differ in the third sound, with “ka” and “ko,” respectively. Bearing in mind that these sounds come just before the weak sound “n” at the end and  that the overall sound structure consists of only four syllables, the two marks differ significantly in sound and appearance. Thus, the overall intonation and impression of these marks differ significantly, enabling clear distinction.
  3. A conceptual comparison is neutral, as neither mark has a clear meaning.

Based on the foregoing, the Board found that the contested mark is dissimilar to the cited mark, so it should not be vulnerable to cancellation based on Article 4(1)(xi).

Due to the low degree of similarity between the marks, the Board stated that relevant consumers are unlikely to confuse the source of the goods at question bearing the contested mark with the claimant, even if the cited mark is famous among consumers. For this reason, the Board dismissed the entire opposition.

Trademark Dispute: FLOW3D vs Flow360

Posted on

In a trademark dispute over the similarity between “FLOW3D” and “Flow360,” the Japan Patent Office (JPO) assessed the respective mark in its entirety and found them to be dissimilar even though they share the first word.
[Opposition case no. 2025-900008, decided on September 2, 2025]

Flow360

Flex Compute Incorporated, a US company, filed a trademark application of wordmark “Flow360” in standard character for use on SaaS in Class 42 with the JPO on February 8, 2024 [TM App no. 2024-12572].

The JPO examiner did not raise any refusal to the mark and granted protection on September 18, 2024. Upon payment of statutory registration fee, the mark was registered on October 29, 2024 [TM Reg no. 6859262], and published for a post-grant opposition on November 7, 2024.

FLOW3D

Flow Science Incorporated, an owner of earlier TM Reg no. 4284043 for wordmark consisting of “FLOW3D” and its Japanese transliteration arranged in two lines (see below) on computer programs in Class 9, filed an opposition against the mark “Flow360” on January 7, 2025, and claimed its cancellation in contravention of Article 4(1)(xi) of the Japan Trademark Law by citing the mark “FLOW3D.”

In the opposition brief, the claimant argued that both “360” and “3D” are low in distinctiveness. Therefore, the first word “FLOW” plays a dominant role in identifying the source of the goods and services in question, and relevant consumers are likely to be misled or confused because of the common word.

JPO Decision

The JPO Opposition Board found that the contested mark was not cancelled based on Article 4(1)(xi) by stating as follows.

The Board noted that there is no reasonable ground to find that the elements “360” and “3D” are immediately perceived as indicating the nature or quality of the goods and services in question. Accordingly, it is not appropriate to consider the term “FLOW” as a dominant element when comparing the marks in accordance with the claimant’s assertion.

The appearance and pronunciation of the contested mark and the cited mark are distinguishable due to a clear difference in constituent characters and sound. A conceptual comparison is neutral, as neither the contested mark nor the cited mark has any clear meaning.

Therefore, considering the overall commercial impressions, recollections, and associations that respective marks as a whole give to relevant traders and consumers through appearance, pronunciation, and concept, both marks should be regarded as dissimilar and distinguishable, with no likelihood of confusion.

JPO decision: Gem Queen is Not Confusable with QUEEN for gems

Posted on

The Japan Patent Office (JPO) disaffirmed the examiner’s rejection to TM App no. 2024-4744 of wordmark “Gem Queen” for use on gems, jewelry, personal ornaments in Class 14 by finding dissimilarity to earlier trademark registration of wordmark “QUEEN” on the same goods.
[Appeal case no.2024-16517, decided on September 4, 2025]

Gem Queen

A Japanese individual filed a trademark application with the JPO for wordmark “Gem Queen” in standard character by designating ‘Precious metals; Unwrought and semi-wrought precious stones and their imitations; Key rings; Jewelry boxes; Trophies [prize cups] of precious metal; Commemorative shields of precious metal; Personal ornaments [jewelry]; Shoe ornaments of precious metal; Clocks and watches’ in Class 14 on Jan 19, 2024. [TM App no. 2024-4744]

On March 1, 2024, the applicant requested the JPO to accelerate examination procedure by demonstrating actual use of the applied-for mark on any of the designated goods.

QUEEN

The JPO examiner rejected the mark due to a conflict with earlier TM Reg no. 3332881 of wordmark “QUEEN” in Class 14 based on Article 4(1)(xi) of the Japan Trademark Law.

In her refusal decision, the examiner stated that the element “Gem” in the mark merely corresponds to a generic term of the designated goods and therefore lacks, or possesses only very weak, distinctiveness as a source indicator. Accordingly, the “Queen” element is dominant in the mark as an indication of the origin. Therefore, in assessing the similarity between “Gem Queen” and “QUEEN”, it is permissible to focus the comparison on the “Queen” element. Consequently, the applied-for mark gives rise to the same pronunciation and concept with the cited mark.

On October 16, 2024, the applicant filed an appeal against the rejection and argued dissimilarity of the marks.

JPO decision

The JPO Appeal Board observed that the examiner erred in applying Article 4(1)(xi) by incorrectly finding the term “Queen” as a dominant element of the applied-for mark.

The Board noted that the constituent characters are presented in the same font, size, and spacing, and appear well-balanced and unified. The pronunciation “Gem Queen” can also be articulated smoothly in a single breath. Furthermore, the applied-for mark as a whole evokes the concept of a “queen of gems” or “jewel queen.” Additionally, no specific circumstances have been identified in the relevant industry dealing with the designated goods, such as “Gem” being widely used to indicate the quality (e.g., “jewel”) of the goods, or brand names in the form of “Gem ○○” being customarily abbreviated in trade by omitting “Gem” and using only the “○○” portion. Therefore, when the mark is presented as a whole, it is difficult to conclude that the element “Gem” would be disregarded, and the mark would be traded based on “Queen” alone. Rather, it is reasonable to consider the applied-for mark as an inseparable whole.

Based on the foregoing, the Board held that it is not permissible to separate the “Queen” portion from the applied-for mark and determine the similarity between the applied-for mark and the cited mark on that basis. In this respect, the examiner’s rejection should be overturned.

SAINT-CLAIR BY JOSEPH DUCLOS vs Saint Clair

Posted on

The Japan Patent Office (JPO) overturned the examiner’s refusal of the word mark “SAINT-CLAIR BY JOSEPH DUCLOS,” finding it dissimilar to the cited mark “Saint Clair.”
[Appeal Case No. 2025-5675, Decision rendered September 8, 2025]

SAINT-CLAIR BY JOSEPH DUCLOS

MANUFACTURE JD (JOSEPH DUCLOS) filed an application for the word mark “SAINT-CLAIR BY JOSEPH DUCLOS” on December 22, 2023, designating perfumes, fragrances, cosmetics, and other goods in Class 3 [TM App. No. 2023-142233].

Saint Clair

On January 14, 2025, the JPO examiner refused the application under Article 4(1)(xi) of the Trademark Law, citing earlier Reg. No. 6295331 for the word mark “Saint Clair” (together with its Japanese transliteration, arranged in two lines), which also covers the same goods in Class 3.


On April 14, 2025, JOSEPH DUCLOS filed an appeal against the refusal, arguing that the applied-for mark is dissimilar to the cited mark.

JPO Decision

The Board noted that the applied-for mark consists of five elements: “SAINT,” “CLAIR,” “BY,” “JOSEPH,” and “DUCLOS.” “SAINT” is a French word meaning “holy” or “sacred,” and “CLAIR” means “bright” or “light.” “BY” is a common English preposition, and “JOSEPH” is a male given name in English. “DUCLOS” is neither listed in dictionaries and nor widely recognized in Japan as a word with any specific meaning. Consequently, the Board found no significant difference in distinctiveness among the constituent terms in relation to the designated goods.

Further, although the entire pronunciation of the applied-for mark is somewhat long, it can nevertheless be articulated smoothly in a single utterance without difficulty.

An ex officio investigation did not reveal any circumstances suggesting that relevant traders or consumers would focus solely on the element “SAINT-CLAIR” when dealing with the goods at issue.

Accordingly, the Board held that consumers and traders would perceive the applied-for mark as an indivisible coined word in its entirety. It is therefore inappropriate to dissect and compare only the element “SAINT-CLAIR” with the cited mark when assessing similarity. In this respect, the examiner’s refusal was erroneous in its application of Article 4(1)(xi), having improperly isolated the element “SAINT-CLAIR.” The decision of refusal was therefore reversed.

JPO Found Tissa Fontaneda’s Bubble Pattern Descriptive of Bags

Posted on

The Japan Patent Office (JPO) sustained the examiner’s decision rejecting International Registration No. 1599413 for a three-dimensional, rounded “bubble” pattern in Class 18, known as the Tissa Fontaneda “Bubble Bag,” on the ground that the mark lacks inherent distinctiveness.
[Appeal Case no. 2023-650049, decided on August 26, 2025]

Tissa Fontaneda “Bubble Bag”

TISSA FONTANEDA, S.L. sought protection in Japan, via the Madrid Protocol, for a mark consisting of a repetitive pattern formed by the arrangement of a plurality of three-dimensional elements placed in a staggered manner on the surface of goods, in respect of “bags; tote bags; handbags; shoulder bags; clutch bags; traveling bags; pouches; trunks; suitcases; hip bags; rucksacks; purses; pocket wallets; wallets; credit card sleeves; traveling sets [leatherware]; credit card cases [wallets]; vanity cases, not fitted; tie cases,” in Class 18. [IR No. 1599413, filed on April 19, 2021]

Examiner’s Decision

On February 24, 2023, the examiner rejected the application under Article 3(1)(vi) of the Japan Trademark Law, on the following grounds:

A pattern can be perceived as an indication of origin only when it has acquired a certain degree of recognition among consumers. Although it appears that goods bearing the applied-for mark have been used by certain celebrities, the applicant did not establish the scale of sales, the duration of use, or the market share of such goods. Accordingly, it cannot be concluded that the applied-for mark has, through use, acquired nationwide recognition or come to be recognized by consumers as an indication of origin.

The applicant filed an appeal on June 20, 2023, asserting that the applied-for mark is inherently distinctive.

Appeal Board’s Findings

The Board finds as follows:

(1) In the representation of the applied-for mark, no distinctive element can be identified beyond the form of the pattern that would enable the mark to function as an indication of origin. Accordingly, the applied-for mark is perceived merely as a decorative background pattern.

(2) Even if competitors have not produced bags decorated with a three-dimensional rounded “bubble” pattern, this fact is insufficient to establish inherent distinctiveness, since bags bearing repetitive patterns formed by regularly arranging three-dimensional elements on their surfaces are commonly distributed.

(3) The fact that the applied-for mark is registered in other jurisdictions, such as the United States, Spain, Ireland, the Benelux, Brazil, Italy, and Mexico, is irrelevant, as distinctiveness must be assessed based on consumers and trade practices in Japan.

Consequently, the Board finds the examiner made no error in applying Article 3(1)(vi) of the Trademark Law.

JPO Decision: KATSEYE is Dissimilar to CAT’S EYE for Watches

Posted on

The Japan Patent Office (JPO) dismissed an opposition filed by Sowind S.A. against TM Reg no. 6876057 for word mark “KATSEYE” who claimed its cancellation based on earlier IR no. 1056129 for word mark “CAT’S EYE” by finding dissimilarity between the marks.
[Opposition case no. 2025-900048, decided on August 15, 2025]

KATSEYE

HYBE UMG LLC, American record company jointly founded by South Korean entertainment company, HYBE and Universal Music Group (UMG), filed a trademark application for word mark “KATSEYE” in standard character for use on various goods and services in Classes 9, 14, 16, 18, 25, 28, 41, and 42, including watches (cl. 14) with the JPO on May 15, 2024 [TM App no. 2024-51239].

https://www.universal-music.co.jp/katseye/

The JPO examiner granted registration of the mark on Decem 3, 2024, and published it for a post-grant opposition on December 23, 2024.

CAT’S EYE

Sowind S.A. filed an opposition on February 25, 2025 by citing earlier IR no. 1056129 for word mark “CAT’S EYE” in standard character for use on watches which do not contain chrysoberyl cat’s eyes in Class 14.

Sowind S.A. argued the contested mark should be cancelled in contravention of Article 4(1)(xi) of the Japan Trademark Law on the ground that the contested mark “KATSEYE” is confusingly similar to the cited mark “CAT’S EYE” from visual, phonetic and conceptual points of view, and the goods designated under the contested mark in Class 14 is identical or similar to watches.

JPO Decision

The JPO Opposition Board assessed similarity of the marks and found that the contested mark is dissimilar to the cited mark by stating that:

The term “KATSEYE” does not appear in ordinary dictionaries and no circumstances have been identified indicating that it is recognized as having a specific meaning, it shall be perceived as a coined word that does not give rise to any particular concept.

With respect to coined words that lack a specific meaning, it is customary to be pronounced in accordance with commonly accepted English or Romanized readings. Accordingly, the contested mark, consistent with its composition, will be pronounced as “KATSU-AI” or “CATS-EYE” and has no specific meaning.

As the term “CAT’S EYE” bears the meaning of “chrysoberyl (cat’s eye),” the cited mark, in accordance with its composition, will be pronounced as “CATS-EYE” and gives rise to the concept of a “cat’s eye (gemstone).”

The contested mark and the cited mark, each consisting of no more than seven or eight letters, are clearly distinguishable in appearance by reason of the difference between the initial letter “K” and “C” and the presence or absence of an apostrophe (“’”) in the middle of the word.

When the contested mark is pronounced as “CATS-EYE”, both marks are identical in sound.

In comparing the sound “KATS-EYE” of the contested mark with the sound “CATS-EYE”, since both consist of only five syllables, the difference between the initial sounds “KA” and “KYA” exerts a non-negligible influence upon the overall pronunciation, whereby the two marks can be clearly distinguished in sound.

Further, while the contested mark does not give rise to any particular concept, the cited mark gives rise to the concept of a “cat’s eye (gemstone).” Accordingly, the two marks are not likely to be confused in concept.

In consequence, even if there is a case that the two marks can be identically pronounced, they are unlikely to be confused in appearance and concept. When the contested mark is pronounced as “KATSU-AI”, the two marks are sufficiently distinguishable in appearance, pronunciation, or concept. Therefore, taking into a global consideration commercial impression, memory, and association given to traders and consumers through their appearance, concept, and pronunciation, the contested mark and the cited mark are dissimilar and unlikely to cause confusion.

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

JPO dismisses Honda’s opposition against “WONKEY” mark for motorcycles

Posted on

The Japan Patent Office (JPO) dismissed an opposition filed by Honda Motor Co., Ltd. against TM Reg No. 6852662 for the word mark “WONKEY” in Class 12, finding no similarity or likelihood of confusion with Honda’s well-known “MONKEY” bikes.
[Opposition Case No. 2024-900262, decided July 15, 2025]

The Contested Mark: “WONKEY”

The opposed mark, consisting of the stylized word “WONKEY” in bold font (see below), was filed by Diner Co., Ltd. on February 26, 2024, for use on motorcycles, electrically operated scooters, and electric bicycles in Class 12 [TM App. No. 2024-18623].

The applicant promotes “WONKEY” motorized bicycles that may be driven by persons over 16 years of age without a driver’s license.

https://wobikes.com/collections/wonkey

The JPO granted registration on October 9, 2024 [TM Reg. No. 6852662], and published it for post-grant opposition on October 18, 2024.

Honda’s Opposition

On December 17, 2024, Honda filed an opposition, seeking cancellation under Article 4(1)(vii), (x), (xi), (xv), and (xix) of the Trademark Law, relying on its earlier Trademark Registration No. 2512844 for the stylized word mark “MONKEY” in Class 12.

Honda argued that “WONKEY” is visually similar to “MONKEY,” emphasizing that:

“Of the six letters, five (‘onkey’) are identical in type, spelling, and sequence. The only difference lies in the initial letters ‘w’ and ‘m,’ which themselves share similar forms composed of two v-shaped or u-shaped strokes. At first glance, the two letters appear alike, and thus the marks as a whole create a closely similar impression, rendering them confusingly similar in appearance.”

To support its case, Honda submitted extensive evidence demonstrating the fame of its “Monkey” bikes, which have been marketed since 1961.

https://www.honda.co.jp/Monkey125/

The JPO’s Decision

The Opposition Board acknowledged the widespread recognition of Honda’s “Monkey” bikes among relevant consumers at the time of application and registration of the contested mark.

Nevertheless, the Board denied similarity between the marks. In particular, it reasoned that:

  • The contested mark “WONKEY” does not generate any specific concept.
  • The cited mark “MONKEY,” by contrast, is a well-known word in Japan with the meaning “monkey,” giving rise to both the pronunciation “monkey” and the concept of “monkey.”
  • While the two marks share all letters and sounds except for their initial characters (“w” vs. “m”; “wo” vs. “mo”), both are short (six letters and four sounds). Accordingly, the initial differences exert a significant impact on the overall appearance and pronunciation.
  • Coupled with the concept of “monkey” derived from the cited mark, these differences lead to a clear distinction in the overall impressions, memories, and associations conveyed to consumers.

The Board concluded that, given the low degree of similarity, relevant consumers were unlikely to confuse the source of the contested goods in Class 12 with Honda or any economically or organizationally related entity.

Based on the above findings, the JPO dismissed the opposition in its entirety and upheld the validity of the contested mark “WONKEY.”

JPO found STINGER dissimilar to Stingers for clothing and sports event

Posted on

In an administrative appeal, the Appeal Board of the Japan Patent Office (JPO) overturned the examiner’s rejection, finding that the terms “STINGER” and “Stingers” were not considered confusingly similar.
[Appeal case no. 2025-000046, decided on August 5, 2025]

STINGER GC by LIV Golf

LIV Golf, a professional golf league founded in 2021, filed trademark application for the mark “STINGER GC” (see below) for use on clothing in Class 25 and golf tournaments in Cass 41 with the JPO on June 22, 2023 [TM Application no. 2023-69454].

The term “GC” is depicted in a noticeably smaller font size compared to “STINGER,” and therefore the element “STINGER” is perceived as the dominant portion of the mark.

https://shop.livgolf.com/collections/stinger-gc

Cited mark “Stingers”

On October 1, 2024, the JPO examiner rejected the mark based on Article 4(1)(xi) of the Japan Trademark Law by citing earlier trademark registration no. 6632507 for the stylized mark “Stingers” with device (see below).

The cited mark “Stingers” is used as the name of a professional badminton team managed by the cited owner.

https://www.jtekt.co.jp/sports/badminton/

On January 6, 2025, LIV Golf filed an appeal against the rejection with the JPO and disputed dissimilarity of the two marks.

JPO decision

A comparison of the applied-for mark and the cited mark shows differences in the presence of the letters “GC” in the former and the presence of a device element in the latter. When considered in their overall compositions, these differences result in a distinct visual impression, such that the two marks are dissimilar in appearance.

Further, when comparing the word element “STINGER” of the applied-for mark with the word element “Stingers” of the cited mark, several distinctions can be identified. These include the presence or absence of the terminal letter “s,” the use of all uppercase letters as opposed to a mixture of uppercase and lowercase letters, differences in typeface, and the manner of presentation—whether written in a straight horizontal line or with a slight upward inclination. Taken together, these variations further reduce the likelihood of visual confusion between the two marks.

In terms of pronunciation, the difference arising from the presence or absence of the final syllable “zu” is significant in light of the relatively short phonetic structures of the marks (five and six syllables, respectively). As a result, the two marks are unlikely to be confused phonetically.

From a conceptual standpoint, the applied-for mark conveys the idea of “something that stings,” whereas the cited mark conveys the idea of “things that sting.” The only distinction lies in the singular versus plural form of the word. Accordingly, the two marks may be considered to share a similar conceptual impression.

In summary, while the applied-for mark and the cited mark may be regarded as conceptually similar, they differ significantly in appearance and pronunciation. Taking into account the overall impressions, memories, and associations that the marks would create among relevant traders and consumers, the two marks can be regarded as dissimilar in their entirety.