Likelihood of confusion

Samsung Unsuccessful in Trademark Opposition against BEAT GALAXY

Posted on2025年12月13日2025年12月31日

The Japan Patent Office (JPO) did not side with Samsung, the South Korean tech giant, in a trademark opposition against TM Reg no. 6895229 for word mark “BEAT GALAXY” in Class 9 by finding a low degree of similarity to and less likelihood of confusion with the mark “GALAXY” even when used on PDA, mobile phones.
[Opposition case no. 2025-900084, decided on December 2, 2025]

BEAT GALAXY

UMG Recordings Inc. filed a trademark application for the wordmark “BEAT GALAXY” in standard character with the JPO on November 13, 2023, for use on PDA, mobile phones, computers, computer software, audio files and other goods in Class 9 [TM App no. 2023-129205].

The JPO examiner granted protection of the mark on February 4, 2025.

Subsequently, it was published for a post-grant opposition on February 20, 2025.

Opposition by Samsung

Samsung, a South Korean tech giant, filed an opposition against the mark “BEAT GALAXY” on April 18, 2025, and claimed cancellation of the contested mark in contravention of Article 4(1)(vii), (x), (xi), (xv), and (xix) of the Japan Trademark Law by citing their earlier mark “GALAXY”.

Samsung argued the contested mark “BEAT GALAXY” is similar to the cited mark, and conveys a negative impression of defeating Samsung’s Galaxy. Thus, the contested mark detrimentally affects the goodwill of the cited mark. Relevant consumers are likely to associate the contested mark with Samsung.

JPO decision

The JPO Opposition Board found that the cited mark “GALAXY” has been widely recognised as an indicator of Samsung’s business.

In the meantime, the Board denied similarity between “BEAT GALAXY” and “GALAXY” by stating that:

The contested mark and the cited mark differ in the presence of the word “BEAT” at the beginning of the contested mark. Therefore, even when assessed in a different time and place, there is no likelihood of confusion in appearance.

Secondly, the different sound caused by the word “Beat” at the beginning of the contested mark significantly affects the overall aural impression. As both sounds are distinguishable as a whole, there is no likelihood of confusion in pronunciation.

As for concept, while the contested mark does not have any specific concept, the cited mark gives rise to a meaning of a collection of stars and planets that are held together by gravity. Accordingly, both marks are neutral in concept.

Based on the foregoing, the Board noted that, even though the goods in question are highly related to Samsung’s business, in view of a low degree of similarity and originality of the cited mark, it is reasonable to conclude that relevant consumers are unlikely to confuse a source of goods bearing the contested mark with Samsung or any undertaking economically or systematically connected with the claimant.

Consequently, the Board decided to dismiss the entire opposition.

Trademark dispute: SUNRISE vs KILLER SUNRISE

Posted on2025年11月15日2025年11月24日

In a recent trademark dispute between “SUNRISE” and “KILLER SUNRISE”, the Japan Patent Office (JPO) found both marks dissimilar and non-confusable for wines and alcoholic beverages.
[Opposition case no. 2025-900010, decided on November 4, 2025]

KILLER SUNRISE

Monster Brewing LLC filed a trademark application for the word mark “KILLER SUNRISE” in standard character with the JPO for use on alcoholic beverages, except beer of Class 33 on June 7, 2024 [TM App no. 2024-61229].

The JPO examiner, without raising any grounds for refusal, granted registration of the mark on October 16, 2024. Subsequently, it was registered on November 6, 2024, and published in the JPO official gazette on November 14, 2024, for a post-grant opposition.

Opposition by Viña Concha y Toro

On January 8, 2025, Viña Concha y Toro S.A., the main Latin American wine producer, filed an opposition against the mark “KILLER SUNRISE” by citing their earlier TM Reg no. 4208026 for the word mark “SUNRISE” that has been used on Chilean wine.

Viña Concha y Toro argued that the cited mark has become famous to indicate the origin of their Chilean wines as a result of extensive use for three decades.

Relevant consumers will recognise the contested mark be composed of “KILLER” and “SUNRISE” in appearance and concept. As the term “KILLER” has an adjective meaning of ‘strikingly impressive or effective’ that appears to be less distinctive, the literal element “SUNRISE” would be a dominant portion of the contested mark. Since the dominant portion is identical to the cited mark, the contested mark should be considered similar to the cited mark. In view of a high degree of similarity between the marks and a highly-recognised “SUNRISE” Chilean wine, relevant consumers and traders would confuse the goods in question with the contested mark comes from the same undertaking or from an economically linked undertaking. Accordingly, the contested mark should be cancelled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law.

JPO Decision

The JPO Opposition Board observed that the evidence shows the cited mark was used in connection with wine and its advertising. However, it did not demonstrate the sales amount, market share, and advertising expenditure of the SUNRISE wine. Based on this finding, the Board noted that the evidence was insufficient and unpersuasive to demonstrate a high degree of recognition and reputation for the cited mark, “SUNRISE”.

Regarding the similarity of the marks, the Board stated that the marks are distinguishable in appearance and sound due to the presence of the term “KILLER.” The contested mark does not convey any specific meaning. Meanwhile, the cited mark has a concept of ‘the apparent rising of the sun above the horizon.’ Therefore, the conceptual comparison does not impact the finding of similarity between the marks.

Accordingly, the Board has a reason to believe that the contested mark is dissimilar to the cited mark.

Given that the cited mark is not famous, according to the evidence, and the low degree of similarity between the marks, relevant consumers are unlikely to confuse the source of goods in question bearing the contested mark with the cited mark.

Based on the foregoing, the Board dismissed the opposition entirely and found that the contested mark should not be subject to cancellation under Article 4(1)(xi) and (xv) of the Japan Trademark Law.

IP High Court ruling: STARBUCKS vs STARBOSS

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.

ALVIERO MARTINI Defeated Over World Map Mark Dispute

Posted on2025年10月11日2025年10月13日

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 on2025年10月4日2025年10月9日

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:

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.
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.
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.

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

Posted on2025年8月23日2025年8月30日

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.

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.

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.”

UNDER ARMOUR Unsuccessful Challenge in Trademark Opposition against AROUMRIN

Posted on2025年7月27日2025年7月27日

The Japan Patent Office (JPO) dismissed the opposition filed by Under Armour, Inc. against TM Reg no. 6839569 for the stylized mark “ARMOURIN” in Classes 25 and 28 due to dissimilarity to and unlikelihood of confusion with earlier registrations for the mark “UNDER ARMOUR”.
[Opposition case no. 2024-900229, decided on July 2, 2025]

ARMOURIN

The contested mark (see below) was filed by AMH LO INC., a U.S. company, in connection with apparel and footwear, including golf shoes, in Class 25; and sporting articles, inter alia golf clubs, golf equipment, in Class 28, with the JPO on December 26, 2023 [TM App no. 2023-143646].

The JPO examiner, as a result of substantive examination, granted protection of the mark on August 6, 2024 without issuing an office action.

After registration, the mark was published in the gazette for a post-grant opposition on September 9, 2024.

Opposition by Under Armour

Under Armour, Inc., a U.S. sports apparel company, filed an opposition against the mark “ARMOURIN” with the JPO on November 8, 2024, and claimed cancellation based on Article 4(1)(xi) and (xv) of the Japan Trademark Law due to the similarity to and likelihood of confusion with their earlier registrations for the word mark “UNDER ARMOUR”.

Under Armour argued the contested mark contains the term “ARMOUR” that has become famous among relevant consumers of the goods in question and played a prominent role in identifying a commercial source of the goods bearing the cited mark. Therefore, the contested mark should be considered similar to the cited mark “UNDER ARMOUR” and likely to cause confusion with the opposer’s business when used on the goods in question.

The JPO decision

Article 4(1)(xi) – Similarity of mark

The JPO Opposition Board found that the contested mark does not give rise to any specific meaning as a whole.

Regarding the cited mark “UNDER ARMOUR”, the Board observed that there is reason to dissect the term “UNDER” and “ARMOUR” into individual parts from visual and conceptual points of view.

Global assessment suggests there is no similarity in appearance and sound. Besides, a conceptual comparison is neutral as neither the contested mark nor the cited mark has a clear meaning. Therefore, the marks are dissimilar, even if the goods in question are the same as those cited, by taking account of the overall impression, memory, and association created in the minds of relevant consumers.

Article 4(1)(xv) – Likelihood of confusion

The Board negated a famousness of the cited mark “UNDER ARMOUR” because the opposer failed to provide sufficient objective evidence of actual sales amount and advertising in Japan.

Bearing in mind that the contested mark has a low degree of similarity to the cited mark, there is no reason to believe that relevant consumers will confuse the source of the goods in question bearing the contested mark with Under Armour, the Board noted.

In the light of the foregoing, the Board dismissed the opposition and declared the contested mark valid as status quo.

JPO found BYOMA and BIYŌMA dissimilar marks

Posted on2025年6月14日2025年6月21日

In an invalidation action disputing the validity of TM Reg no. 6637032 for the word mark “BIYŌMA” in class 3 due to its similarity to the earlier IR no. 1633315 for the word mark “BYOMA”, the Japan Patent Office (JPO) found BYOMA and BIYŌMA to be dissimilar.
[Invalidation case no. 2023-890015, gazette issued on May 30, 2025]

TM Reg no. 6637032

The contested mark, consisting of the word “BIYŌMA” in a plain font (see below), was filed with the JPO for use on cosmetics of class 3 in particular and various goods in classes 21, 24, 25 and 30 on March 17, 2022, by TSUKAMONO CORPORATION. [TM App no. 2022-30868]

The JPO examiner notified a refusal ground that states the mark is unregistrable due to a conflict with IR no. 1633315 for word mark “BYOMA” based on Article 4(1)(xi) of the Japan Trademark Law. The applicant filed a response in which they argued dissimilarity of mark.

Eventually, the examiner withdrew his refusal and granted protection of the mark on September 30, 2022.

The applicant promotes body cream, body soap, hand cream, and lip stick displaying the mark “BIYŌMA”.

Invalidation action by BYOMA Limited

BYOMA Limited, the owner of IR no. 1633315 “BYOMA”, filed an application for a declaration of partial invalidation to the contested mark on March 14, 2023 with the JPO in contravention of Article 4(1)(xi) of the Trademark Law, and disputed similarity between “BYOMA” and “BIYŌMA” in relation to cosmetics of class 3.

BYOMA Limited argued that the contested mark resembles the cited mark because it contains all of the letters that constitute the cited mark, and the difference in the second letter, “I,” is trivial. A conceptual comparison is neutral as both marks have any clear meaning. Besides, taking account of aural similarity, the contested mark should be considered similar to the cited mark.

JPO decision

On October 2, 2024, the JPO Invalidation Board dismissed the invalidation petition by stating that:

Visual Comparison

Although the contested mark and the cited mark contain the same letters “B,” “Y,” “O,” “M,” and “A”, there are differences in the presence or absence of the letter “I” in the second character and the hyphen in the letter “O.” These differences have a significant impact on the overall visual impression of the contested mark. Especially, when comparing the relatively short constituent characters of six and five letters. Therefore, both marks are clearly distinguishable in appearance.

Aural Comparison

There is a difference between “biyo” and “byo” in the initial sound, which is an important element in distinguishing the pronunciation. In the comparison of the short constituent sounds of four or three syllables, these differences affect the overall pronunciation of the two marks. Even when pronounced consecutively, the tone and feeling of the pronunciations differ to the extent relevant consumers can easily distinguish them phonetically.

Conceptual Comparison

The conceptual aspect does not have impact on the assessment of similarity, since both marks are meaningless.

Based on the foregoing, the Board decided that the contested mark is dissimilar to and unlikely to cause confusion with the cited mark even when used on the goods in question.

Trademark dispute over MASTER SOMMELIER

Posted on2025年6月8日2025年6月8日

The Japan Patent Office (JPO) decided to overturn the examiner’s rejection to TM App no. 2023-37634 for the mark “MASTER SOMMELIER OF SAKE” due to an unlikelihood of confusion with “The Court of Master Sommeliers” when used in connection with educational consultancy and examination services of class 41.
[Appeal case no. 2024-10027, decided on May 15, 2025]

MASTER SOMMELIER OF SAKE

Sake Sommelier Academy Limited, a UK company, filed a trademark application for the mark “MASTER SOMMELIER OF SAKE” (see below) for use on educational consultancy; educational examination; arranging, conducting and organization of seminars; providing electronic publications and other services in class 41 with the JPO on April 7, 2023.

The applicant works alongside a network of approved professional sake educators in all corners of the globe, to provide unprecedented Sake Sommelier training.

The Court of Master Sommeliers

On March 19, 2024, the JPO examiner rejected the applied mark because the term “MASTER SOMMELIER” is widely recognized by consumers as the highest-level sommelier qualification conferred by the Court of Master Sommeliers (CMS), a UK-based organization. Therefore, because of the close resemblance between the marks, using the applied mark in connection with the designated services could cause consumers to believe a source of the services in question from CMS or its association. Accordingly, the applied mark is unregistrable based on Article 4(1)(xv) of the Japan Trademark Law.

The applicant filed an appeal with the JPO to contest the rejection on June 17, 2024, and argued that there is no likelihood of confusion with CMS.

JPO decision

In global assessment of a likelihood of confusion, the JPO Appeal Board compared similarity of mark as one of the factors.

“When comparing the appearance of the applied mark with that of the cited mark, notable differences are evident. The applied mark contains a figurative element that represents a small sake cup (ochoko). The literal element of the applied mark contains the phrase “of Sake” at the end, which is not present in the cited mark. These differences have a significant impact on the overall visual impression, and the marks are therefore unlikely to be confused in appearance.

Secondly, with respect to pronunciation, “Master Sommelier of Sake” differs from “Master Sommelier” due to “of Sake” at the end. The distinction substantially alters the whole sound of respective marks, making the two marks clearly distinguishable.

Finally, a conceptual comparison is neural as neither the applied mark nor the cited mark has any clear meaning”.

In light of the foregoing, the Board found that two marks are deemed dissimilar overall, and the degree of similarity between them is low.

Given that it is unclear whether the cited mark is widely recognized among consumers in Japan as an indicator of services associated with CMS, using the applied mark by the applicant in connection with the services in class 41 is unlikely to cause traders or consumers to associate or recall the cited mark, the Board held.

Based on the foregoing, the JPO Appeal Board overturned the examiner’s rejection and granted protection of the applied mark accordingly.

Trademark dispute: MINI vs. DMINI

Posted on2025年5月3日2025年5月10日

The Japan Patent Office (JPO) dismissed an opposition claimed by BMW against TM Reg no. 6798869 for wordmark “DMINI” in class 12 due to dissimilarity to and unlikelihood of confusion with a famous small car “MINI”.
[Opposition case no. 2024-900137, Gazette issued date: April 25, 2025]

DMINI

Mitsubishi Motors Corporation filed a trademark application for word mark “DMINI” in standard character for use on automobiles, motorcycles, bicycles, electric cars, hybrid electric cars, driverless cars and other goods in class 12 with the JPO on October 10, 2023.

The JPO examiner did not raise any objection in the course of substantive examination, and granted registration on March 29, 2024.

The mark “DMINI” was published on trademark registration gazette (TM Reg no. 6798869) for a post-grant opposition on May 7, 2024.

Opposition by BMW

Bayerische Motoren Werke GmbH (BMW) filed an opposition with the JPO on July 5, 2024 before the lapse of two-month statutory period counting from the publication date.

BMW requested the cancellation of the mark “DMINI” based on Article 4(1)(vii), (xi), and (xv) of the Japan Trademark Law by citing its owned earlier trademark registrations for wordmark “MINI” in class 12.

Allegedly, the cited mark has become famous among the relevant consumers to indicate a source of the world-famous small cars “MINI” that have been imported into Japan for more than the past six decades. BMW argued that the literal element “MINI” would be dominant in the opposed mark, taking into account the high degree of recognition of the cited mark “MINI” among the consumers. If so, both marks should be considered similar, or likely to cause confusion in relation to the goods in question.

JPO decision

From the produced evidence, the JPO Opposition Board found the cited mark “MINI” has acquired a remarkable degree of popularity and reputation among consumers to indicate the automobiles (small cars) manufactured by BMW.

However, the Opposition Board question similarity of the marks by stating that:

“There is a difference in the presence or absence of the letter “D” at the beginning of each mark. The difference has a strong visual impact and is likely to create a different impression given the relatively short character structure of five and four letters respectively. Therefore, there is a low degree of visual similarity between the marks.

Secondly, there is a difference between in the overall sound of “DMINI” and “MINI” due to the presence or absence of the sound “D” at the beginning. It has a significant impact on the overall sound, given the short phonetic structure of four or two sounds, and thus the overall tone and aural impression are clearly different to the extent that a risk of confusion in pronunciation is not conceivable.

Thirdly, the opposed mark does not give rise to a specific meaning, whereas the cited mark has a meaning of “famous automobile brand owned by BMW”. If so, there will be any conceptual confusion.”

Even if the cited mark “MINI” has become famous and the goods in question are highly related to the goods bearing the cited mark administered by BMW, given the facts that the term “MINI” is not a coined word and the low degree of similarity between “MINI” and “DMINI”, the Board has no reason to believe that the consumers are likely to confuse a source of goods bearing the opposed mark “DMINI” with BMW.

Based on the foregoing, the Board decided to dismiss the entire opposition and declared the validity of the mark “DMINI” as status quo.