タグ: Likelihood of confusion

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

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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].

https://thew.jp/

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

  1. 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.
  2. 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

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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.

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

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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.

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

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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.

The “ZOOM” Trademark Infringement Verdict

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A landmark trademark ruling was handed down by the Tokyo District Court on April 24, 2026, ordering Zoom Communications Inc. to pay approximately JPY 166 million in monetary awards while completely dismissing the request for a service injunction.
[Court case no. Reiwa3(wa)30190, decided on April 24, 2026]

Plaintiff

Zoom Corporation, a Japanese company developing and selling electronic musical instruments and audio/video equipment, has held TM Registration No. 4940899 for the stylized mark “ZOOM” under Class 9 for “computer programs” since 2006.

Defendant

Zoom Communications, Inc., a U.S. corporation, established in 2011, has been providing the “Zoom” web conferencing service globally, including in Japan, since 2012. By 2019, the service had hosted over 8 million web conferences for more than 400,000 users across Japan.

In 2020, as COVID-19 spread and the government declared a state of emergency, the adoption of remote work skyrocketed among Japanese companies. This triggered explosive growth in the use of web conferencing systems. Japan’s overall utilization rate jumped from 44% at the end of December 2019 to 63% by the end of April 2020. During this surge, Zoom’s market share captured 35% in May 2020 and further expanded to a dominant 61% by October 2021.

Tokyo District Court decision

1. Are Free Downloadable Apps Considered “Goods”?

The Defendant argued that its free downloadable software did not constitute “goods” under the Japan Trademark Law. However, the Court rejected this, ruling that even if software is provided free of charge, it offers independent utility and commercial value to users. Thus, it is evaludated s “goods (computer programs)” under Class 9, and its distribution constitutes trademark usage.

2. The “Cut-off” Date for Confusion

The most unique aspect of this ruling is how the Court established a strict temporal boundary for “likelihood of confusion” based on shifting market realities:

  • Up to June 2020: There was a legitimate likelihood of confusion among general consumers regarding the source of the software, establishing trademark infringement.
  • From July 2020 Onward: Driven by the explosive adoption of remote work during the pandemic, the Defendant’s “Zoom” service achieved an overwhelming 74.7% recognition rate in Japan. Because the “ZOOM” mark became universally famous as the Defendant’s specific service, the Court ruled that the likelihood of confusion had entirely ceased to exist.

3. Injunction Standards: Why the App Stayed Online

Under Japanese law, a claim for an injunction is evaluated based on the market conditions at the close of oral arguments (January 19, 2026). Because the Defendant’s mark had already become too famous for consumers to confuse it with the Plaintiff’s goods or services by this date, the Court denied the Plaintiff’s request for an injunction order.

4. Calculation of Monetary Award (Unjust Enrichment)

The Court found the Defendant liable for infringement on the Plaintiff’s trademark rights from February 1, 2016, to June 30, 2020 (the period before the Defendant’s ZOOM mark became famous). While the Plaintiff’s tort-based damages claim for the period prior to October 18, 2019, had expired due to the 3-year statute of limitations, the claim for the return of unjust enrichment (based on a reasonable licensing fee) was still valid. Utilizing a standard licensing fee model, the Court awarded JPY 166,219,358 based on the Defendant’s historical revenues in Japan.

Trademark Dispute: PINGU vs pingu・pongu

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In a recent opposition decision, the Japan Patent Office (JPO) dismissed an opposition claimed by Joker, Inc. against TM Reg no. 6924753 for wordmark “pingu・pongu”, finding dissimilarity to and unlikelihood of confusion with the opponent’s earlier mark “PINGU.”
[Opposition case no. 2025-900151, decided on May 22, 2026]

Contested mark

A Japanese individual filed trademark application for wordmark “pingu・pongu” in standard character for use on several services in Class 41, including educational and instruction service, arranging seminars, providing electronic publications, and amusement with the JPO on October 3, 2024 [TM App no. 2024-106222]

The JPO granted registration of the mark on May 1, 2025, and published it for a post- grant opposition on May 13, 2025.

Opposition by Joker, Inc.

Joker, Inc., an owner of the copyright and trademark rights featuring a 5-year-old boy penguin character “Pingu”, filed an opposition on July 11, 2025 and claimed cancellation of the contested mark in contravention of Article 4(1)(vii), (xi), (xv) and (xix) of the Trademark Law based on their earlier trademark registration no. 5316898 (see below).

The JPO Opposition Board decision

1. Recognition of the cited mark “PINGU”

The JPO acknowledged that the name “PINGU” (ピングー), associated with the well-known penguin character, had been used in Japan since the 1990s and had achieved a certain degree of public recognition by the early 2000s.

However, the Office found that the evidence submitted by the opponent was insufficient to demonstrate that the cited mark remained widely recognized at the time the contested mark was filed and registered. While the record showed ongoing activities such as merchandise sales, social media promotions, and events involving PINGU, no evidence was provided regarding sales figures, market share, advertising expenditures, or the current level of consumer recognition.

The JPO also noted the absence of objective evidence linking those activities directly to the opponent’s business. As a result, the Office concluded that the opponent had failed to prove that the cited mark PINGU was widely recognized among consumers in Japan or abroad as indicating the opponent’s goods or services.

2. Comparison of two marks

Although the mark contains the element “pingu,” the two components are represented in the same font, size, and spacing, and are connected by a centered do, the JPO held that the contested mark “pingu・pongu” should be viewed as a single, inseparable coined term. The pronunciations, “Pingu-Pongu,” are neither awkward nor unnatural. Since neither “pingu” nor “pongu” has a recognized meaning in ordinary dictionaries, consumers would perceive the mark as a whole as an invented term without any particular meaning.

The cited mark consisted of a penguin character design incorporating the word “PINGU,” together with the wording “PINGU’S ENGLISH.”

According to the JPO, both the figurative and verbal elements of the cited mark could independently function as source identifiers. The literal elements therefore generated pronunciations such as “Pingu,” “Pingu’s English,” but conveyed no specific meaning because the elements are coined terms.

3. No Likelihood of Confusion

Comparing the marks, the JPO found significant differences in appearance. The cited mark contains a prominent penguin device and additional wording, whereas the contested mark consists solely of the standard-character expression “pingu・pongu.”

The Office also determined that the respective pronunciations are clearly distinguishable. “Pingu-Pongu” differs substantially in both syllabic structure and overall sound from “Pingu,” and “Pingu’s English.”

As neither mark conveys a particular concept, no conceptual comparison could be made.

Considering the visual and phonetic differences as a whole, the JPO concluded that the marks are dissimilar and unlikely to be confused. Consequently, the contested mark did not fall within Article 4(1)(xi) and (xv) of the Trademark Law.

ARC’TERYX Unsuccessful Trademark Opposition against “Arcsilk”

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The Japan Patent Office (JPO) dismissed an opposition filed by Amer Sports Canada Incorporated against TM Registration No. 6889980 for the wordmark “Arcsilk” in Class 25, finding it dissimilar to and unlikely to be confused with “ARC’TERYX.”
[Opposition Case No. 2025-900056, decided on April 6, 2026]

The Contested Mark: “Arcsilk”

The contested mark, consisting of the word “Arcsilk” in standard characters, was filed by NIHONWASOU HOLDINGS, Inc. on December 27, 2023 [TM App. 2023-143938]. The application designates various goods, including clothing and footwear, in Classes 24 and 25.

The JPO examiner found no grounds for refusal and granted registration of the mark on September 20, 2024. Subsequently, the mark was published for post-grant opposition on January 11, 2025.

Opposition by ARC’TERYX

Amer Sports Canada Incorporated filed an opposition on March 12, 2025, seeking cancellation of the contested mark based on Article 4(1)(xi) and (xv) of the Japan Trademark Law, citing its earlier trademark registration No. 6748891 for the wordmark “ARC’TERYX” in Class 25.

In the opposition, the claimant alleged that the cited mark has become so widely known both in Japan and overseas that the use of the characters “ARC’TERYX” on outdoor goods immediately causes traders and consumers to recognize it as referring to the claimant. Furthermore, they argued that the term “ARC” is widely recognized even among general consumers as referring to the “ARC’TERYX” brand. The claimant contended that “silk” is a descriptive term for raw materials in Class 25 and cannot function as a source indicator. Therefore, they argued that “Arc” is the dominant portion of the contested mark. Since both marks share the dominant element “ARC,” the claimant asserted they are confusingly similar in appearance, concept, and pronunciation.

Additionally, the claimant argued that because the goods and target consumers are identical, the use of “Arcsilk” would lead consumers to misidentify the goods as being from a business entity with an economic or organizational relationship with the claimant.

JPO Decision

Surprisingly, the JPO Opposition Board found that the cited mark “ARC’TERYX” had not achieved a level of widespread recognition sufficient to support the claim of being a famous mark, stating:

“No evidence has been submitted that would allow for an objective and concrete assessment of facts concerning the period of use of the cited mark; sales figures, market share, and business scale; or the expenditures, methods, frequency, and duration of advertising activities. Consequently, we cannot find that the cited mark ‘ARC’TERYX’ was widely recognized among domestic dealers and consumers as an indication of the claimant’s goods at the time of the application or the registration of the contested mark.”

Regarding the similarity of the marks, the Board found that:

  • Visually: The marks are clearly distinguishable due to the presence of the apostrophe and the difference between “silk” and “TERYX.”
  • Aurally: “Arc-silk” and “Arc-teryx” differ in syllable count and constituent sounds, making them clearly distinguishable even when pronounced continuously.
  • Conceptually: The comparison is neutral as neither mark gives rise to a specific, well-defined meaning.

Based on the finding that the cited mark lacked evidence of widespread recognition and possessed a low degree of similarity to the contested mark, the Board concluded there was no risk of confusion. Consequently, the Board ruled that the contested mark should not be cancelled under Article 4(1)(xi) or (xv) of the Trademark Law.

JPO Decision: No Likelihood of Confusion with Lacoste Crocodile Logo

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In a trademark dispute arguing similarity to and likelihood of confusion with the Lacoste Crocodile logo, the Japan Patent Office (JPO) did not side with Lacoste.
[Opposition case no. 2025-90093, decided on April 6, 2026]

Contested mark

Yagyu Office Co., Ltd. filed a trademark application for a design depicting a green crocodile lying prone, facing to the right with its mouth wide open (see below) in connection with various goods, including apparel, sportswear, and footwear of classes 18 and 25 at the JPO on June 14, 2024. [TM App no. 2024-64585]

On February 14, 2025, the JPO examiner granted registration of the mark without raising any objections.

Opposition by Lacoste

On May 1, 2025, Lacoste filed an opposition against the contested mark and claimed cancellation of the contested mark in contravention of Article 4(1)(xi), (xv), and (xix) of the Japan Trademark Law by citing its well-known crocodile logos.

Lacoste argued that the contested mark consists of a design depicting a green crocodile lying prone, facing to the right with its mouth wide open, and thus creates a similar commercial impression to the cited mark due to a high degree of visual similarity in its entirety. Taking into account the remarkable reputation of the cited mark and the close resemblance between the marks, the average consumers are likely to confuse a source of the goods in question bearing the contested mark with the cited mark.

JPO decision

The JPO Opposition Board found that the cited mark has been famous among relevant consumers and traders in Japan and other jurisdictions as a source-identifier of Lacoste’s business.

However, the JPO observed the contested mark would not be recognized as a crocodile, but “a light green geometric figure formed by white linear cutouts. It depicts a right-facing creature with an open mouth, a thick body, four legs, and a long, slightly curved tail extending backward.”

While the JPO acknowledged that the contested mark could be perceived as representing some types of reptile, it found that the design was too abstract to evoke a specific animal. As such, it was held not to give rise to any specific pronunciation or concept.

In contrast, the cited mark is recognized as clearly depicting a crocodile and conveying the well-known brand identity associated with Lacoste.

Based on the differences in concept and the tail orientation (extended backward vs. raised upward), the Board found that both marks are distinguishable in appearance as well, and therefore dissimilar and unlikely to cause confusion, even if the goods in question are highly related to Lacoste’s business.

Trademark Dispute: RUBIK CUBE vs RUBiK Pi

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The Japan Patent Office (JPO) dismissed the opposition to TM Reg no. 6945136 for the stylized mark “RUBiK Pi,” claimed by SPIN MASTER TOYS UK LIMITED, the owner of the famous “RUBIK CUBE” mark for the three-dimensional puzzle cube, by finding dissimilarity and unlikelihood of confusion between the two marks.
[Opposition case no. 2025-900188, decided on March 16, 2026]

TM Reg no. 6945136

The contested mark (see below) was filed by Thunder Software Technology Co., Ltd., a leading Chinese provider of smart operating system (OS) technologies and services, for use on computer-related goods and services in Classes 9, 41, and 42 with the JPO on December 3, 2024 [TM App no. 2024-129535].

The literal element of the mark appears to be “RUBi Pi” due to a cube design placed between two terms. However, the applicant’s website indicates the contested mark in colors to be read as “RUBIK Pi”.

https://www.thundercomm.com/product/rubik-pi/

The JPO examiner did not issue a notice of grounds for refusal. The mark was registered on July 4, 2025, and then published for a post-grant opposition on July 14.

Opposition by SPIN MASTER TOYS UK LIMITED

On September 16, 2025, just before the lapse of statutory opposition period for two months, SPIN MASTER TOYS UK LIMITED filed an opposition against the contested mark and claimed cancellation of its entire registration in contravention of Article 4(1)(vii), (xi), (xv) and (xix) of the Japan Trademark Law by citing the earlier marks in connection with the world-famous three-dimensional puzzle cube (Cited mark No. 1 – 6), “RUBIK CUBE”.

The claimant argued that relevant consumers and traders will consider the cube design representing the letter “K,” and thus the contested mark, to be read as “RUBIK” or “RUBIK Pi” in the course of actual business, given that the applicant’s product (a lightweight development board for AI platforms) using the contested mark is offered for sale in the name of “RUBIK Pi” on their website.

Considering that the Cited marks are famous worldwide as an indicator of the claimant’s 3D puzzle cubes, consumers would mistakenly recognize the commercial source of the goods and services in question as being from the claimant or other economically linked undertakings at the sight of the contested mark.

JPO decision

The JPO Opposition Board admitted the remarkable degree of recognition and popularity of the Cited mark Nos. 3, 5, and 6 as source indicators of the claimant’s business based on the evidence submitted by the claimant. However, the Board questioned whether the other Cited marks, which mainly consist of the term “RUBIK,” have also become famous for identifying the claimant’s source.

Regarding the contested mark, the Board found that its overall configuration would not create the sound of “RUBIK” or “RUBIK Pi.” Instead, the contested mark gives rise to the sound of “RUBi Pi,” but has no clear meaning.

Even if the Cited mark 3 “RUBIK CUBE” has become famous, relevant consumers are unlikely to associate the goods and services in question bearing the contested mark with the Cited marks due to the marks’ low degree of similarity. Therefore, the Board held that the contested mark should not be vulnerable to cancellation based on Article 4(1)(xv) of the Trademark Law.

ALCOTT Unsuccessful in Trademark Opposition against ACLOTT

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In a trademark dispute regarding similarity between “ACLOTT” and “ALCOTT”, the Japan Patent Office (JPO) found both marks dissimilar and dismissed the opposition claimed by Capri S.r.l.
[Opposition case no. 2025-900047, decided on January 26, 2026]

ACLOTT

HARIZURY Co., Ltd. filed a trademark application for the word mark “ACLOTT” with its Japanese transliteration arranged in two lines (see below) for use on school bags, bags, pouches, leathercloth, and leather items in Class 18 with the JPO on March 1, 2024 [TM App no. 2024-20955].

The mark was registered without any refusal from the JPO examiner [TM Reg no. 6875775]. On December 23, 2024, it was published for a post-grant opposition.

Opposition by Capri

On February 20, 2025, Capri S.r.l., an Italian Fashion House, filed an opposition against the mark “ACLOTT” by citing IR no. 878382 for wordmark “ALCOTT” in Classes 3,14,18, and 25, and claimed the contested mark should be cancelled in contravention of Article 4(1)(xi) of the Japan Trademark Law because of close resemblance to the cited mark “ALCOTT”.

Capri argued that the contested mark looks and sounds similar to the cited mark, since the difference in the second and third letters will not outweigh the commonality of the remaining four letters. Even if a conceptual comparison is neutral since neither mark has any clear meaning, in view of a similar commercial impression of the marks when used on the goods in Class 18, relevant consumers are likely to confuse a source of the goods bearing the contested mark with the cited mark.

JPO decision

The JPO Opposition Board assessed the similarity of the marks in aspects of appearance, sound, and concept.

  • Appearance

The contested mark and the cited mark are sufficiently distinguishable in appearance due to the distinction arising from the reversed order of the second and third letter, “C” and “L,” of a relatively short six-letter composition.

  • Sound

Comparing respective sounds, the difference in the second and third syllables of a short five-syllable configuration significantly affects the overall phonetic impression. Relevant consumers will be able to distinguish these sounds with ordinary care.

  • Concept

As both marks have no specific meaning, a conceptual comparison is neutral.

Based on the foregoing, the Board found that relevant consumers are unlikely to confuse the source of the goods in question with the cited mark, and thus both marks are deemed dissimilar. Consequently, the Board dismissed the entire opposition.