タグ: trademark squatter

JPO Found Trademark Squatter Liable for Disobeying Public Order

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In a trademark dispute regarding the validity of TM Reg no. 6680828 “Alphacool,” the Japan Patent Office (JPO) declared invalidation of the contested mark because of disobeying the public order by a trademark squatter.
[Invalidation case no. 2025-890027, decided on December 9, 2025]

Trademark Squatting

The mark at issue, consisting of the term “Alphacool” in standard character, was filed with the JPO for use on goods in Class 9 on May 16, 2022, by a Chinese individual, and registered on March 15, 2023 [TM Reg no. 6680828].

The applicant filed 80 trademark applications from October 13, 2019, to August 6, 2024. “dyson”, “roomba”, “Xiaomi” are included among them. 48 marks are already registered. However, nine of them are subject to opposition, and seven to invalidation.

On April 21, 2025, Alphacool International GmbH requested the invalidation of TM Reg no. 6680828 “Alphacool” in contravention of Article 4(1)(vii), (x), (xv), and (xix) of the Japan Trademark Law.

JPO decision

The JPO invalidation Board observed that the applicant must have knowingly filed a lot of trademarks, including the contested mark used by other business entities. Actual use of the contested mark by the applicant rather suggests that the applicant sought to parasitize the other’s trademarks with malicious intent to disturb their business or free-ride on the reputation of their marks.

To bolster the above finding, the Board noted the fact that 16 marks out of 48 registered by the applicant are subject to opposition or invalidation actions. The ratio is approximately 33%. According to the JPO annual statistics, the average ratio is 0.5% for registered marks to be opposed or invalidated. Compared to the average ratio, 33% must be extremely high.

Accordingly, the Board found the contested mark should be invalidated based on Article 4(1)(vii) due to the likelihood of disobeying public order.

Trademark Squatter Seeking to Ruin Luxury Brand with Obscene Language

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In May 2022, the Japan IP High Court ruled in favor of the plaintiff, OMEGA S.A. The case concerns cancellation of TM Reg no. 6277280 for the word mark “OMECO” in Class 14 (watches) owned by a Japanese company, OMECO Co., Ltd.

In the complaint, OMEGA S.A. argued that the contested mark is likely to cause confusion with world-famous brand “OMEGA” when used on watches. The court declared cancellation of the contested mark, however, not because of the LOC, but the likelihood of damage to public order or morality based on Article 4(1)(vii) of the Japan Trademark Law.

Do you think OMEGA S.A. is satisfied with the court’s decision?

As a matter of fact, the company continues to sell wristwatches bearing the mark “OMECO” even now.

https://omeco.buyshop.jp/

If the court ruled the case by finding a likelihood of confusion with OMEGA based on Article 4(1)(xv), the goods must be prohibited from selling because of trademark infringement or unfair competition. Ironically, the court decision encourages the company to promote watches bearing a vulgar, obscene, prurient and immoral mark by slightly changing famous luxury brands as shown below. The names have a vulgar, obscene and prurient meaning in Japanese.

https://omeco.buyshop.jp/

Not only the actual use, but the company is seeking trademark registration of these vulgar, obscene, lewd and immoral marks in Japan, which obviously intends to free-ride on famous luxury brands such as Cartier, PATEK PHILIPPE, HUBLOT, A. LANGE & SOHNE, RICHARD MILLE, BOTTEGA VENETA, ROLEX.

Recently, the Japan Patent Office (JPO) examiner issued an office action based on Article 4(1)(xi), (xv) and (xix) of the Trademark Law due to similarity to and likelihood of confusion with famous luxury brands.

It is anticipated that the company files a response to the office action and argue dissimilarity and unlikelihood of confusion by referring to the court decision since the rejection would affect their business.