JAPAN PATENT OFFICE

Marriott’s W Hotels Fails to Overturn Registration of “THE W Relax Garden Resort” in Japan

Posted on2026年8月22日2026年8月23日

The Japan Patent Office (JPO) dismissed an opposition filed by Marriott International’s affiliate against the trademark registration for standard characters “THE W Relax Garden Resort” (TM Reg. No. 6977166), finding it dissimilar to the famous luxury hotel brand’s “W / HOTELS” composite marks and concluding that there was no likelihood of confusion under Japanese trademark law.
[Opposition Case No. 2025-900283, Decided on July 23, 2026]

Contested Mark

The contested mark, consisting of the standard characters “THE W Relax Garden Resort”, was filed by Sokyu Co., Ltd. with the JPO on July 23, 2025 [TM App. No. 2025-83433], designating services in Class 43 (e.g., providing temporary accommodation, catering, campground facilities) and Class 44 (e.g., providing bath/sauna facilities, beauty salon services, massage, landscape design).

The applicant filed a request for accelerated examination with the JPO on the filing date based on the fact that it had already launched glamping resort facilities using the mark in Japan. Accordingly, the contested mark was registered on October 15, 2025, without facing any office action [TM Reg no. 6977166].

Opposition by Marriott / W Hotels

The Opponent (owner of the W HOTELS brand under Marriott International) filed a trademark opposition on December 15, 2025, requesting the cancellation of the contested registration under Articles 4(1)(xi) and 4(1)(xv) of the Japanese Trademark Law.

The Opponent cited four prior registrations (including TM Reg. Nos. 4965244, 5331759, 5046547, and 5294655) for composite marks featuring a prominent, styled letter “W” positioned above the smaller word “HOTELS” (see below) in Classes 35, 36, 39, 43, 44, and 45.

Main Arguments of the Opponent

Similarity of Marks (Article 4(1)(xi)):
- The prefix “THE W” forms the dominant visual and distinctive feature of the contested mark because the subsequent portion, “Relax Garden Resort,” merely indicates the characteristics and nature of hotel/resort/spa services in Class 43 and Class 44.
- Excluding the generic English definite article “THE,” consumers would focus on “W”, rendering the contested mark confusingly similar in sound and concept to the cited “W / HOTELS” marks.
Likelihood of Confusion / Reputation (Article 4(1)(xv)):
- Since the opening of W New York in 1998, the W HOTELS brand has expanded to around 70 luxury lifestyle hotel locations globally. In Japan, W OSAKA opened in March 2021 to significant media coverage and won three titles at the 2023 World Luxury Hotel Awards.
- Due to extensive promotional activities, community collaborations, and media exposure, the cited “W / HOTELS” mark and the standalone “W” logo had become widely known among Japanese traders and consumers as source indicators of the Opponent’s high-end hotel, dining, spa, and event services.
- Therefore, use of “THE W Relax Garden Resort” on identical or closely related services would lead relevant consumers to misbelieve that the services originate from or are economically connected to Marriott’s W Hotels brand.

JPO Board Decision

The JPO Opposition Board evaluated both grounds and ruled to maintain the registration.

1. Assessment of Mark Similarity (Article 4(1)(xi))

Visual Aspect: The contested mark “THE W Relax Garden Resort” is composed of plain standard characters rendered continuously with uniform font and size. Although both marks share the single letter “W,” their overall character sequences are entirely different, making them clearly distinguishable visually.
Aural Aspect: The contested mark is pronounced smoothly as a single unit: “Za-Da-Bu-Ryu-Ri-Rak-Ku-Su-Gaa-Den-Ri-Zoo-To.” In contrast, the cited mark yields the pronunciation “Da-Bu-Ryu-Ho-Te-Ru-Zu.” The sound structures, cadences, and syllable counts are distinct and easily distinguishable by ear.
Conceptual Aspect: Neither mark produces a specific, definite conceptual meaning as a whole. Thus, a conceptual comparison cannot be drawn.

Consequently, considering the overall visual, aural, and conceptual differences, the Board concluded that the marks are dissimilar as a whole, rendering Article 4(1)(xi) inapplicable even though the services in question are identical or similar.

2. Lack of Concrete Evidence on Well-Known Status & No Likelihood of Confusion (Article 4(1)(xv))

Insufficient Quantitative Proof: While the Opponent established the global presence of W Hotels and the opening of W OSAKA in 2021 alongside local event participation, the Board pointed out that the Opponent failed to submit concrete, quantitative evidence—such as overall sales turnover, market share in Japan, and the specific scale/budget/reach of advertising campaigns using the cited marks.
Without objective numerical evidence, the Board could not find that the cited mark “W / HOTELS” or the standalone “W” logo had achieved a high degree of recognition (well-known status) among Japanese consumers at the time of filing or registration of the contested mark.
Low Similarity Eliminates Confusion: Furthermore, because “THE W Relax Garden Resort” and “W / HOTELS” are overall dissimilar marks, consumers encountering the contested mark on Class 43 or Class 44 services would not reasonably associate or connect it with Marriott’s W Hotels brand.

The Flash: Fame Alone Does Not Establish Likelihood of Confusion in Japan

Posted on2026年8月15日2026年8月16日

The Japan Patent Office (JPO) dismissed an opposition against a device mark featuring a stylized lightning bolt surrounded by two circular arcs, finding it dissimilar to an earlier composite mark featuring the wording “The FLASH” and a lightning-bolt device cited by DC Comics. The JPO also found that the evidence was insufficient to establish that the cited mark had become well known or famous in Japan.
[Opposition Case No. 2025-900260, decided on July 22, 2026]

Contested Mark

SPECIAL HEROES Inc., LTD. filed a trademark application for a device mark that consists of a stylized lightning-bolt design surrounded by two circular arcs (see below) in connection with apparel, sports shoes, sportswear in Class 25 and sports equipment in Class 28 with the JPO on February 18, 2025 [TM App. No. 2025-22711].

The application proceeded to registration without an office action being issued. The mark was registered on October 21, 2025, and published for a two-month post-registration opposition period on October 29, 2025.

Opposition by DC Comics

DC Comics, one of the largest and oldest American comic-book publishers, filed an opposition against the contested mark on November 28, 2025, arguing that the registration should be cancelled under Articles 4(1)(xi) and 4(1)(xv) of the Japanese Trademark Law.

The opponent cited TM Reg. No. 6701619 for a composite mark that consists of the stylized term “The FLASH” and a thin-lined lightning-bolt device with two bends surrounded by a circular arc (see below), registered in Class 25 and other classes.

The opponent argued that, in light of the high level of recognition of the American comic “The FLASH” and the close resemblance between the contested mark and the figurative element of the cited mark, relevant consumers would be likely to confuse the source of the goods bearing the contested mark with those of the opponent.

JPO Decision

1. Fame Must Be Established with Concrete Market Evidence

The opponent submitted evidence showing that “The Flash” has been used since 1940 as the title of an American comic book and as the name of its character. The character is also associated with a distinctive emblem combining a circular design and a lightning bolt.

The evidence further indicated that comic books, merchandise such as figures, DVDs, and other works featuring the character have been available in Japan. There was also evidence of a pop-up shop in Kanagawa Prefecture in 2017 and an animated film featuring the character.

Nevertheless, the JPO found this evidence insufficient to establish that the cited mark was well known or famous in Japan.

In particular, the evidence did not sufficiently establish:

when the relevant goods or services were first marketed in Japan;
sales volumes or market share;
the scale of advertising and promotional activities; or
other concrete evidence demonstrating the extent of recognition among Japanese traders and consumers.

2. Assessment of Similarity

Although both marks shared the basic concept of combining a lightning-bolt design with a circular arc, the JPO found significant differences in:

the number of bends in the lightning bolt;
the thickness of the lines;
the number of circular arcs;
the thickness of the arcs; and
whether the lightning bolt and circular arc were connected.

These differences were considered sufficient to make the two figurative elements clearly distinguishable in appearance.

The JPO also found that the contested mark had no specific pronunciation or conceptual meaning because the lightning-bolt design did not convey a sufficiently definite meaning. By contrast, the cited mark gives rise to the pronunciations “THE FLASH” or “FLASH” and the concept of a “flash” or “sudden burst of light.”

Accordingly, the JPO found that the marks were distinguishable in appearance, pronunciation, and meaning, and that their degree of similarity was low.

3. No Likelihood of Confusion

Since the opponent had failed to establish that the cited mark was sufficiently well known or famous in Japan at the filing date of the contested mark, and the degree of similarity between the marks was low, the JPO concluded that consumers would not associate the contested mark with the cited mark or mistakenly believe that the goods originated from the opponent or an economically or organizationally related entity.

The opposition was therefore dismissed, as the contested mark did not fall under Article 4(1)(xi) and 4(1)(xv) of the Japanese Trademark Law.

JPO found “BUZZ Pay” dissimilar to “BUZZ” for cashless payment services

Posted on2026年8月8日2026年8月9日

The Japan Patent Office (JPO) Appeal Board reversed an examiner’s refusal of “BUZZ Pay,” finding that it was dissimilar to the earlier mark “BUZZ” for cashless payment services.
[Appeal case no. 2026-004207, decided on July 23, 2026]

1. BUZZ Pay (Applied Mark)

The applicant, BUZZ GROUP Co., Ltd., filed a trademark application for the word mark “BUZZ Pay” in standard character for use in connection with cashless payment services, such as cryptocurrency management/exchange, electronic funds transfer, credit/debit card payment settlement, prepaid card issuance in Class 36 with the JPO on July 14, 2025 [TM App no. 2025-79480].

2. Examiner’s Refusal / Cited Mark

The JPO Examiner refused the registration of the applied mark “BUZZ Pay” under Article 4(1)(xi) of the Japanese Trademark Law (prohibiting registration of marks similar to prior registered trademarks) by citing TM Reg no. 6346356 for a composite mark consisting of the term “BUZZ” and a device featuring two hexagonal frames with a yellow lightning bolt (see below) in Class 36.

The examiner considered the initial term “BUZZ” as the dominant/essential portion of “BUZZ Pay” and concluded that it was confusingly similar to the cited mark “BUZZ”.

To contest, the applicant appealed the examiner’s refusal to the JPO Appeal Board.

3. JPO Appeal Board Decision

The JPO Appeal Board reversed the refusal and granted registration for “BUZZ Pay”, finding that the two marks are dissimilar and unlikely to cause confusion.

(1) Integrated Perception in the Payment Sector

Although “Pay” literally means payment or expenditure, the Board recognized that the combination format of “[Brand] + Pay” (e.g., Yucho Pay, Bank Pay, au PAY, Amazon Pay, Merpay, PayPay, Rakuten Pay) is widely used as a standard service name in the cashless payment industry.

Because consumers are familiar with this naming structure, they naturally perceive “BUZZ Pay” in its entirety as an indivisible, unitary trademark, rather than focusing solely on “BUZZ”.

(2) Comparison of Similarity

Appearance (Visual): “BUZZ Pay” is a pure word mark, whereas the cited mark contains prominent graphical elements (hexagonal frames and a lightning symbol). The presence of “Pay” also creates a clear visual difference.
Pronunciation (Phonetic): “BUZZ Pay” is pronounced as “Ba-zu-pei” (4 syllables in Japanese), whereas the cited mark is pronounced as “Ba-zu” (2 syllables). The sound of “Pay” ensures clear phonetic distinction.
Concept (Conceptual): “BUZZ Pay” is recognized as a coined, unitary mark that conveys no specific conceptual meaning as a whole. Conversely, the cited mark evokes the dictionary definition of the English word “buzz” (humming or buzzing sound).

Based on the above findings, the Appeal Board observed that “BUZZ Pay” cannot be dissected into “BUZZ”. Viewed as a whole, it clearly differs from the cited mark in appearance, sound, and concept. Therefore, even if the services in question are deemed similar, the applied mark should not be rejected in relation to the cited mark based on Article 4(1)(xi).

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

Posted on2026年8月2日2026年8月2日

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

HARIBOW

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

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

Opposition by HARIBO

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

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

JPO Decision

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

1. Fame of the Cited Mark (“HARIBO”)

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

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

2. Similarity of the Marks

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

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

3. Relatedness of Goods/Services & Likelihood of Confusion

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

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

Trademark Dispute Over Double Diamond Symbol

Posted on2026年7月25日2026年7月25日

The Japan Patent Office (JPO) did not side with Erreà Sport S.p.A. in a trademark opposition against TM Reg. No. 6903310 for a double diamond device mark, finding clear visual differences when compared to the Erreà Sport double diamond symbol. (Opposition Case No. 2025-900101, decided on July 2, 2026)

Contested Mark

Sakagawa Co., Ltd. sought registration for a device mark consisting of two vertically oriented, thick-lined, symmetrical rhombus shapes (see below) for footwear in Class 25, and retail/wholesale services for footwear in Class 35.

The applicant promotes Japanese sandals bearing the contested mark.

As the JPO examiner did not find any absolute or relative grounds for refusal, the contested mark was granted registration on March 4, 2025 [TM Reg. No. 6903310].

Opposition by Erreà Sport

Before the lapse of the two-month statutory opposition period, Erreà Sport S.p.A., an Italian company specializing in the manufacture of technical sportswear, filed an opposition with the JPO on May 12, 2025. They requested cancellation under Article 4(1)(xi) of the Japan Trademark Law, citing their earlier registered mark (see below) featuring their double diamond symbol designating footwear in Class 25.

In the opposition, Erreà Sport argued:

“The most readily recognizable and fundamental characteristic of the figurative elements of both marks is that each consists of two diamond-shaped figures arranged side by side. Given this shared feature, consumers are likely to receive a strong visual impression of the marks, retain that impression in their memory, and recall it when encountering the marks. Accordingly, these marks are visually similar to such an extent that they are liable to be mistaken for one another.”

JPO Decision

The Opposition Board observed that both the Contested Mark and the Cited Mark consist purely of abstract geometric (rhombus/polygonal) shapes. As neither design conveys a recognized meaning or word in Japan, the JPO determined that neither mark generates a specific pronunciation or concept.

Comparing the visual features:

Contested Mark: Two separate, thick-lined rhombus figures placed side-by-side.
Cited Mark: A single solid-black polygon created by overlapping geometric shapes with an outline.

The JPO held that the visual impression between the two is markedly distinct. Since pronunciation and concept could not be compared, the clear visual difference was decisive. The JPO concluded that consumers are unlikely to confuse the two marks, rendering them dissimilar.

The Opposer further argued that the Cited Mark is widely recognized due to its sponsorship of professional sports teams and distribution of uniforms in Japan, which would amplify the risk of confusion.

However, the Opposition Board rejected this argument due to a lack of concrete evidence. The Opposer failed to submit critical data such as:

Sales figures and market share in Japan
Advertising frequency, reach, and marketing expenditure

Without objective commercial metrics, the JPO could not evaluate the degree of recognition among Japanese consumers. Consequently, the claim of an increased risk of confusion was dismissed.

Why trademark owner for popular Finnish outdoor game “MÖLKKY” couldn’t win trademark opposition againt Japan Mölkky Association

Posted on2026年7月17日2026年7月19日

In a trademark dispute involving “MÖLKKY”—the popular Finnish lawn bowling game, the Japan Patent Office (JPO) did not side with Tactic Games Oy, the IP owner of the game, who opposed TM Reg No. 6906850 for a composite mark “MÖLKKY WORLD CHAMPIONSHIPS – HAKODATE, JAPAN” in the name of the Japan Mölkky Association.
[Opposicion case no. 2025-900111, decided on June 23, 2026]

Contested mark

Japan Mölkky Association filed a trademark application for a composite mark consisting of a maroon double-circle design containing 12 white ovals, featuring the text “MÖLKKY WORLD CHAMPIONSHIPS / HAKODATE / JAPAN” integrated seamlessly within the circular border (see below) for use on various goods and services in Classes 9, 21, 25, and 41 with the JPO on June 21, 2024 [TM App No. 2024-6998].

The JPO granted registration of the mark on March 12, 2025 [TM Reg No. 6906850], and then published it for post-grant opposition on March 21, 2025.

Opposition by Tactic Games Oy

On May 21, 2026, just before the lapse of two-month statutory opposition period, Tactic Games Oy, the IP owner of the popular Finnish outdoor game, filed a trademark opposition against the contested mark. The opponent requested the cancellation of its registration based on Article 4(1)(xi) and 4(1)(xv) of the Japan Trademark Law, citing its own earlier registered marks in Japan.

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

Article 4(1)(xv) prohibits the registration of trademarks that are likely to cause confusion with the business of another entity.

JPO decision

1. The Pitfall of Evidentiary Shortfalls: “Well-Known” Status Denied

To succeed in a likelihood of confusion claim under Article 4(1)(xv), an opponent must demonstrate that their mark is widely recognized among Japanese consumers.

While the JPO acknowledged that the game “Mölkky” is recognized in Japan and that Tactic Games’ products are sold via local distributors, it pointed out a fatal flaw in the evidence:

The Opponent failed to provide specific figures regarding sales duration, sales volume, revenue, market share, or the scale of advertising campaigns prior to the application date.

Consequently, the JPO found that “MÖLKKY” could not be recognized as a source indicator widely known among Japanese consumers for Tactic Games’ business.

2. The Rules of Engagement: No “Separation” of Composite Marks

Under Article 4(1)(xi), Tactic Games argued that the term “MÖLKKY” constitutes a prominent element that is sepearable from the other elements of the contest mark, and therefore, it is permissible to compare this specific element with the cited marks.

The JPO rejected this dissecting approach, ruling that:

The text “MÖLKKY WORLD CHAMPIONSHIPS,” “HAKODATE,” and “JAPAN,” along with the graphic elements, are harmoniously and integrally represented within the circular logo.
Because the word “MÖLKKY” was not proven to be exceptionally well-known in Japan, consumers would not naturally focus soly on that specific textual portion.

Therefore, the JPO held that dissecting the term “MÖLKKY” for a similarity comparison was legally impermissible. Based on the foregoing, the JPO dismissed the entire opposition due to the dissimilarity of the marks when compared as a whole.

Valentino Successful in Trademark Opposition against “ITALOVALENTINO”

Posted on2026年7月10日2026年7月12日

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

The Opposed Mark: ITALOVALENTINO

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

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

Opposition by Valentino SpA

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

JPO Decision

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

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

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

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

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

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

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

VW Unsuccessful Trademark Invalidation Action against “Beecle”

Posted on2026年7月3日2026年7月12日

The Japan Patent Office (JPO) dismissed an invalidation action initiated by VW against TM Reg No. 6623923 for a composite mark containing the term “Beecle” in Class 12, ruling that the mark is not confusingly similar to VW’s prior registered mark “Beetle.”
[Invalidation case no. 2026-890008, decided on June 15, 2026]

“Beecle” with a Bee Design (The Contested Mark)

The contested mark (shown below) is a composite mark featuring a green hexagonal device with a black border, containing three yellow counter-clockwise arrows along its corners. On the left-middle side, a prominent white-out illustration of a bee is depicted (with only its right wing visible). Immediately adjacent to the wing, the alphabetical letters “Beecle” are written horizontally in a white, cursive, script-like font.

The contested mark was filed for goods including lorries, trucks, electric cars, motorized golf carts in Class 12 with the JPO on April 12, 2022, and was registered on October 5 of the same year [TM Reg no. 6623923].

Invalidation action by Volkswagen

On January 30, 2026, Volkswagen Aktiengesellschaft filed a petition to invalidate the contested mark under Article 4(1)(xi) of the Japan Trademark Law, citing its own senior Trademark Registration No. 4095809 for wordmark “Beetle” covering automobiles and other goods in Class 12.

VW argued that the prominent literal element “Beecle” of the contested mark closely resembles the cited mark in both sound and appearance. VW contended that even if the conceptual similarity is neutral, relevant consumers are highly likely to associate the commercial source of the goods bearing the contested mark with VW’s famous automobiles.

JPO Decision

First, the Invalidation Board addressed whether a specific element of the contested mark could be isolated to assess similarity.

The Board noted that the bee’s wing could easily be perceived as a stylized letter “B”. Because this graphic seamlessly integrates with the following letters “eecle”, consumers would naturally recognize the entire central combination as the stylized word “Beecle”. Since the term “Beecle” occupies a prominent and dominant position in the center, it serves as a strong source identifier. Thus, the Board found it permissible to segregate the term “Beecle” as the “essential element” for similarity comparison.

As the term is a coined word, it gives rise to the pronunciation “Bee-ku-ru” and carries no specific conceptual meaning.

Visual Similarity: Even when comparing the essential element “Beecle” with the cited mark “Beetle,” they are visually distinct. The contested mark combines a bee device/letter “B” with a cursive font, while the cited mark uses standard character. Additionally, they differ in their fourth letters (“c” vs. “t”). Given that both marks have a relatively short six-letter structure, these visual differences significantly impact the overall impression, making them clearly distinguishable.

Aural Similarity: The contested mark is pronounced “Bee-ku-ru” and the cited mark is pronounced “Bee-to-ru”. Both share a short four-syllable structure in Japanese (including the long vowel) with identical beginnings (“Bee-“) and endings (“-ru”). However, the Board emphasized that for such short words, the difference in the middle sound (“ku” vs. “to”) heavily influences the entire tone and cadence. When spoken continuously, they sound distinct and are unlikely to cause phonetic confusion.

Conceptual Similarity: The contested mark produces no specific meaning as a coined word, whereas the cited mark evokes the concept of a “beetle/insect.” Consequently, there is no risk of conceptual confusion.

Taking all factors into account comprehensively, the JPO Invalidation Board concluded that “Beecle” and “Beetle” are mutually distinct in appearance, sound, and meaning. Because the marks are fundamentally dissimilar, the Board held that the contested mark does not fall under Article 4(1)(xi) and sustained the validity of the registration.

Rolex “Deepsea” Couldn’t Block “DeepSeek” Trademark Registration for Smartwatches

Posted on2026年6月20日2026年6月28日

The Japan Patent Office (JPO) dismissed an opposition filed by ROLEX SA against TM Reg No. 6959836 for the stylized mark “deepseek” in Class 9 (covering smartwatches, etc.), finding the mark dissimilar to Rolex’s earlier mark “DEEP SEA.”
[Opposition Case No. 2025-900224, decided on June 1, 2026]

DeepSeek’s Trademark Application

Hangzhou DeepSeek Artificial Intelligence General Technology Research Co., Ltd., a Chinese artificial intelligence startup known for its cost-efficient and lightweight model, “DeepSeek,” filed a trademark application for the stylized word mark “deepseek” (as shown below) in Classes 9, 35, and 42 with the JPO on March 3, 2025 [TM App. No. 2025-021716].

The applicant designated various goods in Class 9, including smartwatches, time recording apparatus, wearable computers, and wearable activity trackers.

The JPO granted registration of the mark on August 21, 2025 [TM Reg No. 6959836], and subsequently published it for post-grant opposition on August 29, 2025.

Opposition by ROLEX

On October 23, 2025, ROLEX SA, the owner of the earlier TM Reg. No. 4146855 for the word mark “DEEP SEA” in Class 14, filed an opposition with the JPO. Rolex sought a partial cancellation of the contested mark with respect to smartwatches, time recording apparatus, wearable computers, and wearable activity trackers, alleging a violation of Article 4(1)(xi) of the Japan Trademark Law.

Rolex argued that the contested mark is confusingly similar to its cited mark, asserting that the mere difference of the final letter “k” is insufficient for relevant consumers to distinguish the commercial origin of the goods from a visual and aural standpoint. Furthermore, Rolex maintained that the goods at issue share the same functions as watches in Class 14.

The JPO Decision

The JPO Opposition Board conducted a comprehensive assessment of the marks based on the three traditional pillars of trademark comparison:

Visual Similarity (外観): Dissimilar. The marks are clearly distinguishable due to structural differences, including font styling, capitalization (lowercase vs. uppercase), word spacing, total letter count, and the critical difference in their endings (“ek” vs. “A”).
Phonetic Similarity (称呼): Dissimilar. Comparing ” diːpsiːk” against ” diːpsiː”, the JPO ruled that the difference in the total number of syllables and the presence/absence of the trailing “k” sound alters the overall tone and cadence. Thus, there is no risk of oral confusion or mishearing.
Conceptual Similarity (観念): Dissimilar. Because the contested mark is a meaningless coined word while the cited mark directly evokes “deep sea” (深海), there is no risk of conceptual confusion in the minds of consumers.

Based on the foregoing, the JPO concluded that the contested mark “deepseek” and the cited mark “DEEP SEA” are overall dissimilar, and subsequently dismissed the opposition in its entirety without any reference to the similarity of goods.

Does Pictogram Play a Role in Identifying Commercial Origin?

Posted on2026年6月12日2026年6月22日

While the examiner found a lack of inherent distinctiveness in the pictogram depicting a claw crane game machine and a player in relation to amusement arcade services, the JPO Appeal Board reversed the rejection, finding that the mark possesses a distinctive character capable of identifying commercial origin.
[Appeal Case No. 2025-11695, decided on June 4, 2026]

The Disputed Mark

TAITO Corporation, a Japanese video game and entertainment company, filed a trademark application for a device mark representing a claw crane game machine and a player (see below) for use in connection with amusement arcade services in Class 41 on May 1, 2024. [TM App. No. 2024-046625]

The mark is currently used at four “TAITO Station” game centers in Japan (located in Tokyo, Hokkaido, and Nagoya).

JPO Examiner’s Rejection

On April 21, 2025, the JPO examiner issued a decision to reject the mark under Article 3(1)(vi) of the Japan Trademark Law.

Article 3(1)(vi) is a catch-all provision that prohibits the registration of any mark lacking inherent distinctiveness:

Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered, unless the trademark:
(vi) is, in addition to those listed in each of the preceding items, a trademark by which consumers are not able to recognize the goods or services as those pertaining to a business of a particular person.

In the refusal, the examiner determined that:

The applied-for mark would be easily recognized as a simplified, abstract figure of a person playing on a gaming machine.
Relevant traders and consumers in the amusement arcade service industry would perceive it merely as a “pictogram” indicating amusement/gaming services, rather than a specific commercial origin.

JPO Appeal Board Decision

However, the Appeal Board reversed the examiner’s decision based on the following crucial points:

1. Lack of Industry-Wide Descriptive Use:

While the disputed mark appears to depict a claw crane game machine and a player, it is not a realistic depiction. More importantly, the Board’s ex officio investigation found no evidence that the relevant industry uses this specific mark—or any similar abstract figures of individuals operating machinery—as a standard descriptive tool to indicate the provision of such services.

2. No Evidentiary Basis for Lack of Distinctiveness:

There were no surrounding circumstances or market evidence to suggest that relevant traders and consumers would fail to recognize the disputed mark as a source identifier.

Based on the above findings, the JPO Appeal Board observed that the disputed mark does not solely indicate a “venue to play arcade games.” Instead, it is fully capable of functioning as a distinctive source identifier.

Accordingly, the Board held that the disputed mark does not fall under Article 3(1)(vi) and revoked the examiner’s refusal.