Chrysler loses trademark opposition against “JEEPER” in Japan

The Japan Patent Office (JPO) dismissed an opposition filed by Fiat Chrysler Automobiles (FCA US) LLC against TM Reg no. 6317667 for the wordmark “Jeeper” to be used on hand tools in class 8 by finding the unlikelihood of confusion with “JEEP” vehicles.

[Opposition case no. 2021-900035, Gazette issued date: April 28, 2022]

Opposed mark

The wordmark “Jeeper” was filed by a Japanese individual for use on various hand tools in class 8 with the JPO on January 27, 2020 (TM App no. 2020-8907).

The JPO admitted registration on November 17, 2020, and published for opposition on December 8, 2020.


Opposition by FCA US LLC

To oppose registration within a statutory period of two months counting from the publication date, FCA US LLC filed an opposition against the opposed mark on January 26, 2021.

FCA argued the opposed mark shall be canceled in contravention of Article 4(1)(xi) and (xv) of the Trademark Law because of the remarkable reputation and popularity of the JEEP mark as a source indicator of Chrysler vehicles and a high degree of similarity between the opposed mark “Jeeper” and the opponent’s famous earlier registered mark “JEEP.”

Article 4(1)(xi) is a provision to refrain from registering a junior mark that is deemed identical with, or similar to, an earlier registered mark.

Article 4(1)(xv) provides that a mark shall not be registered where it is likely to cause confusion with other business entities’ well-known goods or services.


JPO Decision

The JPO Opposition Board admitted a certain degree of reputation and popularity of the opponent trademark “JEEP” in connection with automobiles. However, the Board questioned if relevant consumers of hand tools have the same perception.

In assessing the similarity of the mark, the Board held that “Jeeper” and “JEEP” are less likely to cause confusion from visual and phonetical points of view. Conceptually, both marks are distinctively dissimilar because the opposed mark does not give rise to any specific meaning. In the meantime, the opponent mark “JEEP” has a meaning of ‘Jeep brand 4WD vehicles.’

Given that “JEEP” has not become famous in relation to the hand tools in question, the Board has no reason to believe that relevant consumers would associate the goods bearing the mark “Jeeper” with the opponent or any business entity systematically or economically connected with Chrysler in view of a low degree of similarity between the marks.

Based on the foregoing, the Board found the opposed mark shall not be canceled in contravention of Article 4(1)(xi) and (xv), and decided to dismiss the entire opposition.

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.

Trademark Opposition: Samurai vs Samouraï

In a trademark opposition disputing the similarity between “Samurai” and “Samouraï”, the Japan Patent Office (JPO) dismissed the opposition filed by Parfums Samouraï SA against TM Reg no. 6384904 for a stylized word “Samurai” due to dissimilar to “Samouraï”.

[Opposition case no. 2021-900283, Gazette issued date: April 28, 2022]

TM Reg no. 6384904 “Samurai”

The opposed mark, consisting of a stylized word n “Samurai” (see below), was applied with the JPO on September 29, 2020, for use on cosmetics, soaps, perfumes, fragrances, and other goods in class 3 by a Japanese business entity, Yugen Kaisha Life Products.

The JPO granted protection on February 12, 2021, and published for opposition on May 25, 2021.

Apparently, the applicant promotes soaps in the name of “SAMURAI SOAP” via the internet.


Opposition by Parfums Samouraï SA

Opponent, Parfums Samouraï SA, alleged the opposed mark shall be canceled in contravention of Article 4(1)(x) and (xi) of the Japan Trademark Law by citing earlier trademark registrations for the wordmark “Samouraï” in classes 3.

The opponent argued that they have been promoting perfumes and fragrances, hair wax, and softener bearing the “Samouraï” mark since 1997, and thus the opponent mark has acquired a certain degree of reputation in the industry of perfumes. Besides, the opposed mark has the same sound and meaning as the opponent mark, namely, a member of a powerful class of fighters in Japan’. If so, both marks shall be deemed similar even though there is a difference in appearance.


JPO decision

To my surprise, the JPO Opposition Board found that it is doubtful if the opposed mark consists of the term “Samurai” from appearance. The initial letter is true “S”. But subsequent letters are illegible. If so, the opposed mark would not give rise to any specific sound and meaning.

Given the opposed mark does not have a sound and meaning relating to “Samurai”, the Board can’t find a reasonable ground to believe a certain degree of similarity between the opposed mark and the opponent mark.

Based on the foregoing, the JPO found the opposed mark shall not be canceled in contravention of Article 4(1)(x) and (xi) and dismissed the opposition entirely.

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.

Failed Opposition against “Zara Sube Mist” by ZARA

On March 25, 2022, the Japan Patent Office (JPO) dismissed an opposition filed by Industria de Diseño Textil, SA (INDITEX), owner of the fashion brand “ZARA” against trademark registration no. 6357258 for word mark “Zara Sube Mist” in class 3 by finding dissimilarity to and less likelihood of confusion with “ZARA”.

[Opposition case no. 2021-900193]

Zara Sube Mist

The opposed mark, consisting of three words, “Zara”, “Sube”, and “Mist” in standard character, was applied for registration by IBI Inc. to be used on cosmetics in class 3 on January 30, 2020.

The JPO granted protection on February 16, 2021, and published for opposition on March 23, 2021.

The applicant is using the opposed mark on skin lotions. Click here.

It should be noted “zara zara” is a usual term to represent the condition of ‘rough skin’ in Japanese. Likewise, “sube sube” is often used to represent the condition of ‘smooth skin’. Because of it, we would conceive of skin conditions from the term “Zara Sube.”


Opposition by Inditex

Opponent, INDITEX, one of the world’s largest fashion retailers and owner of the fashion brand “ZARA”, claimed the opposed mark “Zara Sube Mist” shall be canceled in contravention of Article 4(1)(xi), (xv) and (xix) of the Japan Trademark Law by citing earlier IR no. 973064 for word mark “ZARA” in relation with cosmetics of class 3.

INDITEX argued, that given “ZARA” has acquired a remarkable reputation, relevant consumers of the goods in question are likely to see the literal element “Zara” as a prominent portion of the opposed mark and thus confuse or misconceive the opposed mark with “ZARA”.


JPO Decision

The JPO Opposition Board admitted that “ZARA” has become famous among relevant consumers and traders as a source indicator of the opponent in connection with clothing.

In the meantime, the Board questioned if the opponent mark “ZARA” has acquired a certain degree of reputation and popularity in relation to cosmetics from the produced evidence.

The Board found the consumers would see the opposed mark in its entirety due to a tight combination of three words and a non-redundant sound of ‘zara-sube-mist’. Being that “ZARA” failed to prove a certain degree of reputation and popularity as a source indicator of cosmetics, the Board has a reason to believe that relevant consumers would not consider the term “Zara” as a prominent portion of the opposed mark. If so, the opposed mark just gives rise to a pronunciation of ‘zara-sube-mist’ and no specific meaning.

Based on the above findings, the Board held “Zara Sube Mist” and “ZARA” are obviously dissimilar from visual, phonetic, and conceptual points of view.

If so, the opposed mark “Zara Sube Mist” is unlikely to cause confusion with “ZARA” by virtue of a low degree of similarity and remote association between apparel and cosmetics even though “ZARA” has been famous for apparel brand and coined word.

In a conclusion, the JPO dismissed the entire allegations of INDITEX and allowed “Zara Sube Mist” to survive.

Trademark Parody case: Champion Defeated by Nyanpion

On March 16, 2022, the Japan Patent Office (JPO) dismissed an opposition filed by HBI Branded Apparel Enterprises, LLC against TM Reg no. 6368388 for the mark “Nyanpion” with a device due to dissimilarity to and the unlikelihood of confusion with the famous apparel brand “Champion.”

[Opposition case no. 2021-900230]

Opposed mark

A Japanese individual applied a composite mark consisting of a stylized word “Nyanpion” and a cat device (see below) for use on apparel, headgear, footwear, sports shoes, and sportswear in class 25 with the JPO on August 25, 2020.

The JPO examiner granted protection of the opposed mark on January 29, 2021, and published for opposition on April 13, 2021.

T-shirts, sweats, hoodies, and tote bags bearing the Nyanpion mark have been promoted for sale with a catchword of “Champion” parody.

I should note that “Nyan” is the sound cats make in Japan. Because of it, “Nyanpion” easily reminds us of a combination of cat sounds and “Champion”.


Opposition by Champion

To oppose registration within a statutory period of two months counting from the publication date, HBI Branded Apparel Enterprises, LLC filed an opposition against the opposed mark on June 14, 2021.

HBI argued the opposed mark shall be canceled in contravention of Article 4(1)(vii), (x), (xi), (xv), and (xix) of the Japan Trademark Law because of the remarkable reputation and popularity of the Champion brand in relation to apparels and a high degree of similarity between the opposed mark and its owned trademark registrations (see below) to the extent that relevant consumers are likely to confuse a source of the goods in question bearing the opposed mark with “Champion”.


JPO Decision

The JPO Opposition Board admitted that the “Champion” mark has acquired a high degree of reputation as a result of substantial use in Japan for more than four decades and become famous as a source indicator of the opponent.

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

From the appearance, the difference in the prefix of literal elements, “Nyanpion” and “Champion” would suffice for relevant consumers to distinguish them. The figurative element of the opposed mark represents a cat’s face. The opponent device mark gives rise to an impression of a letter “C”. If so, both marks are sufficiently distinguishable in appearance.

Phonetically, “Nyanpion” is easily distinguishable from “Champion” because of the difference in the first sound given both marks just consist of five sounds respectively.

Conceptually, the opposed mark does not give rise to any specific meaning. Meanwhile, the opponent mark has a meaning of someone or something, especially a person or animal, that has beaten all other competitors in competition and ‘famous apparel brand.’ If so, both marks are dissimilar in concept.

By virtue of a low degree of similarity, the Board found relevant consumers are unlikely to confuse or associate the source of the goods bearing the “Nyanpion” mark with “Champion” and any entity systematically or economically connected with the opponent.

Based on the foregoing, the JPO dismissed the entire allegations and decided the opposed mark shall remain valid as the status quo.