Update of Colormark in Japan – Who awarded the 9th registration?

On March 25, 2022, the Japan Patent Office (JPO) granted protection of a color mark that has been used on the package of the first and a long-selling Japanese instant ramen “Nissin Chicken Ramen”. It is the 9th case for JPO to admit registration since opening the gate to color mark in April 2015.


Nissin Chicken Ramen

In 1958, NISSIN FOODS founder Momofuku Ando invented the world’s first instant noodles: Chicken Ramen, paired with a rich broth made of chicken and vegetables.

Nissin Chicken Ramen is a long-selling Japanese instant ramen loved by many generations and considered the world’s first instant noodles. According to the company’s release, more than 5 billion packages of Chicken Ramen had been sold.


Color mark on Package

The JPO opened the gate to Non-Traditional trademarks, namely, color, sound, position, motion, and hologram, in April 2015.

On July 12, 2018, Nissin Foods sought for registration of color combination on the Chicken Ramen package on instant noodles in class 30.

JPO examiner raised his objection because of a lack of distinctiveness based on Article 3(1)(iii) of the Trademark Law. However, the examiner eventually granted protection by finding acquired distinctiveness of the color mark (TM Reg no. 6534071).


Low Success rate -1.6%

563 color marks have participated in a race for trademark registration at the JPO as of now (May 14, 2022). 9 color marks could manage to award registration.

It is noteworthy that none of them is a mark consisting of a single color.


A previous post relating to colormark is accessible from here.

Dropbox Unsuccessful in Trademark Opposition over Open Box Logo

On April 7, 2022, the Opposition Board of the Japan Patent Office (JPO) dismissed a trademark opposition filed by Dropbox, Incorporated against TM Reg no. 6385226 for an open box device mark due to dissimilar to the Dropbox logo.

[Opposition case no. 2021-900281]

TM Reg no. 6385226

The opposed mark, consisting of an open box device mark depicted in a white circle and green outline (see below), was applied with the JPO on April 8, 2020, for use on computer application software; downloadable computer programs; downloadable image files via internet in class 9 and computer software design; computer programming; providing computer programs on data networks; rental of SNS server memory space in class 42 by Jiraffe Inc.

The JPO granted protection on April 6, 2021, and published for opposition on May 25, 2021.


Opposition by Dropbox

Opponent, Dropbox, Incorporated alleged the opposed mark shall be canceled in contravention of Article 4(1)(x), (xi), and (xix) of the Japan Trademark Law by citing earlier trademark registrations for the Dropbox “open box” device in classes 9, 38, and 42.

Dropbox argued, that the basic overall configuration of the open box looks almost identical to the opponent mark. Because of it, both marks give rise to the same sound and concept. Besides, the opponent mark has acquired a certain degree of popularity and reputation as a source indicator of Dropbox. If so, relevant consumers would confuse the source of goods and services bearing the opposed mark with Dropbox due to a high degree of similarity of the marks.


JPO decision

At the outset, the JPO Opposition Board did not admit a substantial degree of reputation and popularity of the opponent mark by stating that sufficient evidence was not produced by the opponent for the Board to convince such reputation.

The Board found both the opposed mark and opponent mark would not give rise to any specific sound and meaning from the overall configuration regardless of finding that the respective box device looks like an “open box”.

In assessing the similarity of the marks, the Board did not directly compare the resemblance between open boxes. Instead, by means of overall comparison, the Board considered both marks are visually distinguishable due to the difference in color and a white circle and green outline. Being that there is no clue to find similarities in sound and concept, the Board has no reason to believe both marks are likely to cause confusion from visual, phonetic, and conceptual points of view.

Based on the foregoing, the JPO found the entire allegations of Dropbox groundless and dismissed the opposition accordingly.

SUPERMAN defeated in trademark battle by SUPER M.E.N.

On April 7, 2022, the Opposition Board of the Japan Patent Office (JPO) dismissed a trademark opposition filed by Warner Bros against TM Reg no. 6375288 for the wordmark “SUPER M.E.N.” and found the mark is dissimilar to “Superman.”

[Opposition case no. 2021-900257]

“SUPER M.E.N.”

Opposed mark, consisting of the word “SUPER M.E.N.” written in alphabets and Japanese Katakana character (see below) was applied with the JPO on February 7, 2020, for use on various goods in classes 5,9,10,25,28 and services in classes 35, 45 (TM App no. 2020-14074) by Dr. Nakamatsu, a famous Japanese inventor.

The JPO granted protection on March 29, 2021, and published for opposition on April 27, 2021.

Dr. Nakamatsu promotes unique face shields bearing the SUPER M.E.N. mark to help prevent the spread of COVID-19. According to the advertisement, “M.E.N.” suggests ‘mouth, eye, and nose’ and ‘face mask; festival mask’ (The term “omen” is the exact word to mean it in Japanese).

Image credit: Dr.NakaMats.Com.

Opposition by Warner Bros

Opponent, Warner Bros. Entertainment Inc. claimed the opposed mark “SUPER M.E.N.” shall be canceled in contravention of Article 4(1)(xi) of the Japan Trademark Law by citing earlier trademark registrations for a fictional superhero “Superman” in relation to visor caps; cap peaks of class 25 and toy masks; carnival masks; costume masks; theatrical masks of class 28.

Article 4(1)(xi) is a provision to prohibit registering a junior mark that is identical with, or similar to, any senior registered mark.

There is the criterion that the examiner is checking when assessing the similarity between the marks:

  • visual similarity
  • aural similarity
  • conceptual similarity

and taking into account all these three aspects, the examiner would decide if a mark is similar (at least to some extent) to the earlier mark and if there is a likelihood of confusion for the consumers.

Warner Bros argued that the opposed mark gives rise to a meaning of ‘multiple SUPERMAN’ from its configuration. Besides, in view of resembled appearance and pronunciation between the marks, relevant consumers of the goods in question are likely to associate the opposed mark with the superhero “SUPERMAN” and confuse the source of origin of these goods.


JPO decision

The JPO Opposition Board found the opposed mark is pronounced as “super-men”, however, it does not give rise to any specific meaning at all.

By virtue of the difference between the letters “E” and “A” and the katakana character, both marks can be sufficiently distinguishable by appearance.

In phonetical comparison between “super-man” and “super-men”, relevant consumers would be unlikely to confuse each sound when pronounced in view of a few phonetic compositions of four sounds in total and distinction in the sound of “ma” and “me”.

There is no doubt both marks are dissimilar in concept because the opposed mark does not give rise to any meaning similar to ‘a fictional superhero’.

Based on the above findings, the Board held that “SUPER M.E.N.” and “SUPERMAN” are obviously dissimilar from visual, phonetic, and conceptual points of view.

In a conclusion, the JPO dismissed the entire allegations of Warner Bros and allowed registration of the opposed mark.

Trademark Opposition or Invalidation, Which Is Useful in Japan?

Opposition

A trademark opposition is a proceeding in which a third party can oppose a newly registered trademark under Article 43bis of the Japan Trademark Law. For example, once a trademark is newly registered by JPO, this fact is published in the Official Gazette of Trade Marks immediately after it is actually registered. This kicks off a two (2) month period known as the ‘opposition period’ during which other parties are then given an opportunity to ‘oppose’ the registration of the trademark.


Invalidation

Trademark invalidation is an inter-partes proceeding in which a party has a legal interest in the result that can null a trademark registration under Article 46 of the Japan Trademark Law. If the registration is less than five years old, the party challenging the trademark rights can rely on any ground that could have prevented registration initially.


Comparison

Conflict with earlier registration (similarity of mark and goods/service), a likelihood of confusion with famous mark, and descriptiveness are the most common grounds asserted both in opposition and invalidation action.

 Trademark OppositionTrademark Invalidation
Statute of limitations2 months from the publication date5 years from the registration date
Official feeJPY11,000 for 1 class
JPY19,000 for 2 classes
JPY55,000 for 1 class
JPY95,000 for 2 classes
StandingLegal interest is not requiredLegal interest is required
CounterargumentNo obligation to counterargue unless the JPO notifies a cancellation ground to a registrant.Mandatory for a registrant to counterargue, otherwise it may adversely affect.
Pendency period7.9 months11.5 months
Appeal to decisionOnly the registrant can file an appeal against an unfavorable decisionEither party can file an appeal against the JPO decision

Which action to take?

From a cost-saving point of view, opposition undoubtedly looks more attractive than invalidation, however, when you look at the success rate of opposition (see below table), it may change your mind. There has been a big gap in the success rate between opposition and invalidation for years.

YearThe success rate of the OppositionThe success rate of Invalidation
201513%32%
201616%42%
201711%33%
201811%34%
201911%56%
202011%35%

Therefore, in terms of probability theory, invalidation action is by far preferable to opposition for the purpose of removing trademark registration in Japan.

Japan IP High Court Ruling: “Designed, Quality-controlled in France” is not equivalent to “Made in France”

On March 22, 2022, in an appeal against the non-use cancellation decision by the Japan Patent Office (JPO), the Japan IP High Court affirmed the JPO’s decision and ruled it is not construed that a disputed mark “I R O PARIS” has been used on its designated goods with a limitation of the origin ‘All made in France’ because the term is not equivalent to ‘designed, or quality-controlled in France’.


Disputed mark “I R O PARIS”

A French fashion house, IRO has registered a wordmark “I R O PARIS” on various goods e.g., jewelry, watches, leather, bags, umbrella, wallets, clothing, shoes, sports shoes, headgear in classes 14, 18, and 25 with a limitation of the origin ‘all made in France’ in 2013 (TM Reg No. 5623868).


Non-Use Cancellation

Article 50 of the Japan Trademark Law provides if a trademark registered in Japan has never been used in commerce in Japan for three consecutive years or longer after registration, the trademark is vulnerable to cancellation provided that third parties file a petition for cancellation of the trademark registration.

iROO International Co., Ltd., a Taiwanese company, filed a petition for non-use cancellation against the disputed mark on every goods of three classes on October 4, 2019.

In the cancellation action, the registrant produced evidence (order form, invoice, magazines) to demonstrate the actual use of the mark “IRO” and “www.iroparis.com” on skirts, belts, and dresses in Japan. The JPO admitted these marks are equivalent to the registered mark “I R O PARIS”. However, the JPO found the goods bearing the mark are not “made in France”, but “made in China”. If so, the disputed mark has not been precisely used on designated goods. Because of it, the Cancellation Board decided to cancel the disputed mark in whole on March 24, 2021.

IRO filed an appeal against the JPO decision on July 29, 2021, and argued the mark “IRO” has been used on goods designed by employees working at the head office in Paris (France). The head office has exclusive authority to control the quality of every item, namely, selecting suitable materials, producing samples made of materials available in Paris, securing the quality of goods made by suppliers, and storing finished goods in a warehouse in Paris before delivery. In view of actual commitment to quality control of final goods made by suppliers and common industry practice in the apparel, the goods shall be construed ‘made in France’ even if it was manufactured by an overseas supplier.


IP High Court decision

The court found the JPO did not err in fact-findings. In fact, the goods bearing the mark “IRO” were manufactured by suppliers having a place of business out of France. On the plaintiff’s website “IRO FALL WINTER 21 COLLECTION”, it mentions the product was made in China.

The disputed mark designates ‘clothing made in France’. It shall be construed the clothing was made in the territory of France. If so, the clothing made out of France would never be deemed identical to the designated goods.

The court has no reason to believe “designed, quality-controlled in France” is equivalent to ‘made in France’ in the literal interpretation of Article 50 of the Japan Trademark Law.

Based on the foregoing, the IP High Court dismissed the appeal and affirmed the cancellation decision.

[Judicial case no. Reiwa 3(Gyo-ke)10087]


This case teaches how important for brand owners to keep designated goods consistent with the actual business. It often happens that the goods bearing a mark containing GI are made in other countries or regions as a matter of fact. Such inconsistency may result in non-use cancellation if the designated goods limit the origin.

As an experienced trademark practitioner, I never fail to confirm the relation between goods and GI when a mark contains GI. In case a brand owner does not manufacture in the area, it is advisable to limit goods by placing more adequate terms, such as ‘designed by (area), derived from (area), using material from (area).’ Otherwise, you may lose your trademark registration in Japan as a result of non-use cancellation.

JPO Status Report 2022

According to “JPO Status Report 2022” released on March 31, 2022, by the Japan Patent Office (JPO), a total of 184,631 trademark applications were filed in 2021. This number increased 2% compared to the previous year when the number of applications amounted to 181,072.

It is astonishing to see that SM Entertainment Co., Ltd., a South Korean record label and entertainment agency, became a top-ranking foreign registrant in 2021 who could successfully register 185 trademarks in Japan, drastically increased from the previous year.

Requests for accelerated examination consecutively increased to 11,450 by 2.2% in 2021, which enables applicants to obtain trademark registration within 2months.

As a background, it should be noted that the entire trademark process for general examination at the JPO (the total time of application from filing to registration) takes 11.2 months on average, which is 0.3 months longer than the previous year.

You can access and download the full text of “JPO Status Report 2022” from here.

Lacoste Prevails in Trademark Parody Case

On February 18, 2022, the Japan Patent Office (JPO) decided in favor of Lacoste and canceled Japanese TM Registration No. 6289888 for a flipped crocodile device mark in class 25 due to a likelihood of confusion with the famous crocodile logo of Lacoste.

[Opposition case no. 2020-900312, Decision date: February 18, 2022]

Opposed mark

The opposed mark, consisting of flipped crocodile device and term “OCOSITE” (see below), was filed by a Japanese individual for use on clothing, footwear, headgear, sports shoes, and sportswear in class 25 on March 17, 2020.

T-shirts printing the opposed mark are promoted for sale with a catchphrase of “funny parody T-shirt.” As the term, “OCOSITE” means ‘wake me up, get me up’ in Japanese, the opposed mark gives rise to the meaning of a crocodile struggling to get up.

The opposed mark was registered on September 9, 2020, and published for opposition on September 29, 2020.


Opposition by Lacoste

It was anything but funny to the luxury sportswear brand, Lacoste.

Lacoste filed an opposition on November 27, 2020, within a statutory period of two months counting from the publication date.

In the opposition, Lacoste claimed the opposed mark shall be canceled in contravention of Article 4(1)(vii), (xv), and (xix) of the Japan Trademark Law on the grounds that a flipped crocodile device of the opposed mark closely resembles the world-famous Lacoste crocodile logo from its appearance.

Besides, the term “OCOSITE” is depicted in a similar font to “LACOSTE” and five letters “COS” and “TE” among seven letters are identical. Given the close resemblance between crocodile devices and the meaning of “OCOSITE”, relevant consumers at the sight of clothing and sportswear bearing the opposed mark would immediately conceive of the Lacoste crocodile struggling to get up and thus likely to confuse its souse with Lacoste.


JPO decision

The Opposition Board of JPO admitted a substantial degree of reputation and popularity of the Lacoste crocodile logo in relation to clothing, footwear, and sportswear.

The Board found a high degree of similarity between the flipped crocodile of the opposed mark and the Lacoste crocodile. Noticeably, the Board held respective element, namely, the crocodile device and the term “OCOSITE” of the opposed mark shall not be inseparably combined as a whole regardless of close adjacency.

In view of a high degree of reputation and originality of the opponent mark, and close association between the opponent business and the goods in question, the Board has reason to believe relevant consumers with an ordinary care would be likely to confuse the source of goods bearing the opposed mark with Lacoste or any business entity systematically or economically connected with the opponent.

Based on the foregoing, the JPO sided with Lacoste and decided to cancel the opposed mark in contravention of Article 4(1)(xv).

Letter of Consent in Japanese Trademark Practice

When trademark applicants receive a refusal of their trademark applications due to a conflict with a prior similar registered mark cited by the JPO examiner, how can the applicants overcome the refusal?


In some jurisdictions, it has become a routine to submit a letter of consent (LOC) issued in the name of the owner of the cited mark agreeing on the use and registration of the applied mark for the purpose of overcoming the refusal, apart from arguing against the similarities between the respective marks.


However, the Japan Patent Office (JPO) is negative to withdraw refusals arising from a conflict with a senior registered mark under Article 4(1)(xi) of the Trademark Law simply by means of LOC.


Trademark Examination Guideline (TEG) 42.111.03 in relation to Article 4(1)(xi) provides special conditions where the JPO accepts LOC and withdraws refusals as follows.

Where an applicant claims that he/she is in any of the relationships (1) and (2) with the owner of a cited trademark right and submits evidence (3), the case shall be handled as if Article 4(1)(xi) does not apply.

(1) The owner of a cited trademark right is under the control of the applicant.

(2) The applicant is under the control of the owner of a cited trademark right.

(3) Evidence to the effect that the owner of a cited trademark right agrees that the trademark as applied is to be registered.

Condition (1) and (2) – “Under the control” relation between cited owner and applicant will be satisfied if:

(a) Business of the owner of a cited trademark right of which the majority of voting rights of all shareholders are owned by the applicant;

(b) Business of the owner of a cited trademark right which has a capital alliance with the applicant and whose corporate activities are substantially under the control of the applicant, although the requirement specified in (a) above is not satisfied.


Therefore, LOC is useful only where either party has a controlling interest in the other entity, the so-called parent-child relationship between companies.

Due to the restriction, LOC would not be available in most cases to overcome the refusal based on Article 4(1)(xi).

Under the circumstance, practically, we are able to select three options.

  1. Arguing dissimilarity of mark or goods/ services 
  2. Filing a non-use cancellation against the cited mark 
  3. Transferring an applied mark to an owner of the cited mark and assigning it back after registration, vice versa.

Samsung Failed in TM Opposition against “Funky Galaxy”

The Japan Patent Office (JPO) dismissed an opposition filed by Samsung, the world’s largest smartphone maker, against TM Reg no. 6263685 for wordmark “Funky Galaxy” by stating the opposed mark would not cause confusion with Samsung “Galaxy” even when used on smartphones.

[Opposition case no. 2020-900229, Gazette issued date: November 11, 2021]

Opposed mark

On April 12, 2019, KING Entertainment Co., Ltd. applied for registration of wordmark “Funky Galaxy” in standard character for use on goods and services in classes 9, 16, 35, and 41. The goods in class 9 covers ‘telecommunication machines and apparatus; personal digital assistants; smartphones; electronic machines, and apparatus and their parts.’

JPO granted protection of the “Funky Galaxy” mark and published for opposition on July 14, 2020.


Opposition by Samsung

On September 11, 2020, Samsung, the world’s largest smartphone maker famous for Galaxy series mobiles, filed an opposition and claimed the Opposed mark shall be canceled in relation to goods and services in class 9, 35, and 41 in contravention of Article 4(1)(vii), (x), (xi), (xv) and (xix) of the Trademark Law by citing its own senior TM Reg nos. 4498554 “Galaxy”, IR1335923 “GALAXY STUDIO”, and 6309820 “Galaxy Harajuku”.

Article 4(1)(xv) is a provision to prohibit any mark from registering if it is likely to cause confusion with other business entities’ well-known goods or services.

Samsung argued the Opposed mark shall cause confusion with Samsung “Galaxy” especially when used on smartphones and related goods and services, given a remarkable reputation of “Galaxy” holding 3rd market share (7.4% in 2018, 8.0% in 2019, 9,0% in 2020) in Japan and the close resemblance between “Galaxy” and “Funky Galaxy”.


JPO Decision

The Opposition Board did not question a remarkable degree of reputation and popularity of trademark “Galaxy” as a source indicator of the opponent smartphones.

In the meantime, the Board did not consider the term “Galaxy” as a prominent portion of the opposed mark from visual and conceptual points of view. If so, the opposed mark shall be assessed in its entirety.

In the assessment of similarity of the mark, the Board found “Funky Galaxy” is visually and phonetically distinguishable from “Galaxy” due to the presence of “Funky.” From concept, both marks are less similar because the opposed mark does not give rise to a specific meaning and the opponent mark “Galaxy” means an extremely large group of stars and planets. Both marks have a low degree of similarity accordingly.

Even though “Galaxy” has been well-known as a source indicator of Samsung smartphones, and the goods and services in question are closely associated with smartphones, given a low degree of similarity between “Funky Galaxy” and “Galaxy”, the Board has a reasonable ground to believe that relevant consumers would not confuse a source of goods and services bearing the opposed mark “Funky Galaxy” with Samsung and any business entity economically or systematically connected with the opponent.

Based on the foregoing, the Board decided the allegations are groundless and the Opposed mark shall remain valid as the status quo.

Failed trademark opposition by Disney over a 3-circle silhouette

In a recent decision, the Japan Patent Office (JPO) dismissed an opposition filed by Disney Enterprises, Inc. against TM Reg no. 6303837 for a composite mark containing a three-round device due to a low degree of similarity to famous Mickey’s 3-circle silhouette.

[Opposition case no. 2021-900006, Gazette issued date: September 24, 2021]

Opposed mark

Aoki shofuan Co., Ltd., a Japanese confectionery maker, applied a composite mark consisting of words “TSUKIGESHO”, “FACTORY”, its Japanese language and a three-round device (see below) for use on retail or wholesales service in relation to confectionery, processed foods and beverage (tea, coffee, cocoa) in class 35 with the JPO on October 21, 2019.

The JPO examiner granted protection of the opposed mark on September 23, 2020, and published for opposition on November 4, 2020.


Opposition by Disney

To oppose against registration within a statutory period of two months counting from the publication date, Disney Enterprises, Inc. filed an opposition against the opposed mark on January 4, 2021.

Disney argued the opposed mark shall be canceled in contravention of Article 4(1)(x), (xi), (xv), and (xix) of the Trademark Law because of the remarkable reputation and popularity of Mickey’s 3-circle silhouette (see below) as a source indicator of Disney and a high degree of similarity between the opposed mark and the opponent’s famous mark.


JPO decision

The JPO Opposition Board did not question the famousness of Mickey’s 30-circle silhouette as a source indicator of Disney and their business since most consumers would conceive a world-famous iconic character “Mickey Mouse” at the sight of the silhouette.

In the meantime, the Board negated similarity between the marks by stating that:

  1. From appearance, both marks are easily distinguishable because the opposed mark contains distinctive literal elements “TSUKIGESHO” and its Japanese language written in a conspicuous manner, and the figurative element (three round silhouette) is depicted upside down.
  2. Phonetically, both marks are quite dissimilar because the opponent mark does not give rise to a pronunciation contrary to the opposed mark.
  3. Conceptually, although the opposed mark does not give rise to any specific meaning, both marks are dissimilar given the opponent mark is well-known for an indication of Mickey Mouse.
  4. In view of different configuration of the figurative element by depicting three circles upside down, relevant consumers are unlikely to associate the three-round device of the opposed mark with Mickey Mouse. If so, the figurative element would not be considered as a prominent portion to play a source indicator of the opposed mark.

Based on the foregoing, the JPO found both marks are too dissimilar to cause a likelihood of confusion. If so, the Board can’t find reasonable grounds to believe the opposed mark shall be canceled under Article 4(1)(x), (xi), (xv), and (xix) and decided to dismiss the opposition.