“OLYMPIAD vs OLYMBEER” trademark battle

The Japan IP High Court reversed a decision of the JPO that canceled the OLYMBEER mark due to its similarity to “OLYMPIAD” in contravention of Article 4(1)(vi) of the Trademark Law.

[Court case no. Reiwa4(Gyo-ke)10067, Judgment date: December 26, 2022]


SJP & Co., a Japanese company, filed a trademark application for the wordmark “OLYMBEER” with its transliteration written in Japanese Katakana character (see below) for use on beers, refreshing beverages, fruit juices, vegetable juices, extracts of hops for making beer, whey beverage in class 32 with the JPO on October 28, 2019, ahead of the opening of the Tokyo 2020 Olympic games.

The JPO examiner did not raise any objection to the OLYMBEER mark and granted protection on November 16, 2020 (TM Reg no. 6323630). Subsequently, the mark was published for opposition on December 22, 2020.

Opposition by IOC

The International Olympic Committee (IOC) filed an opposition against the OLYMBEER mark on February 22, 2021, before the lapse of a two-month statutory period counting from the publication date and claimed the OLYMBEER mark shall be canceled in contravention of Article 4(1)(vii), (xi) and (xv) of the Japan Trademark Law by citing “OLYMPIC” and “OLYMPIAN” mark.

In the course of trial proceedings, the JPO notified at their discretion that the opposed mark shall be canceled in contravention of Article 4(1)(vi) due to a similarity to “OLYMPIAD” which has become famous to represent the modern Olympic Games.

Article 4(1)(vi)  

The article is a provision to prohibit registration of any mark that is identical with, or similar to, a famous mark indicating the State, a local government, an agency thereof, a non-profit organization undertaking a business for the public interest, or a non-profit business for the public interest.

The Trademark Examination Guidelines (TEG) specify “IOC”, and “Olympic” shall be protectable under the article.

Consequently, the JPO decided to cancel the opposed mark based on Article 4(1)(vi) irrespective of no reference to the article by the IOC.

SJP & Co. brought the case to the IP High Court and argued that “OLYMPIAD” would not be such a famous mark as opposed to “Olympic” and the opposed mark is dissimilar to “OLYMPIAD” in its entirety from appearance, sound, and meaning.

IP High Court ruling

The IP High Court questioned if “OLYMPIAD” has become famous among relevant consumers and traders in relation to the goods in question from the produced evidence. If so, it is inadequate to assess the similarity of marks on the assumption that “OLYMPIAD” has acquired a substantial reputation.

The judge said in the decision a mere coincidence of “OLYM” is insufficient to find the similarity between “OLYMBEER” and “OLYMPIAD”. The judge stated that there is no reason to believe both marks are visually, phonetically, and conceptually similar when compared as a whole.

Based on the foregoing, the court found the JPO erred in applying Article 4(1)(vi) of the Trademark Law by wrongly finding the similarity of mark between “OLYMBEER” and “OLYMPIAD”, and thus the court ruled to reverse the JPO decision.

Coronavirus vs the Tokyo Olympic Games

With fewer than 80 days to go until the Tokyo Olympics, Japan just extended a state of emergency in the capital, Tokyo until May 31, 2021, to stem a surge in coronavirus cases.

Japanese trademark applications in 2020

One year has passed since Japan’s first state of emergency was declared on April 7 last year and lasted into late May.

Recent JPO statistical data, released on April 30, 2021, revealed the number of trademark applications newly filed in the Japan Patent Office (JPO) in 2020 fell by 5.1% to 181,072 compared to the previous year, 2019. When counting the total number of classes specified the trademark applications in 2020, it fell by 24.5% from the previous year.

A total of 17,924 trademarks were filed in the JPO via the Madrid Protocol in 2020. The number dropped by 7.8% from 2019.

The data also showed a 3.4% decrease in the number of international trademark applications filed with the JPO as the office of origin in 2020 to 3,033.

The Tokyo Olympic Games

The Tokyo Olympic Committee filed an initial trademark application for the “TOKYO 2020” mark (see below) in 2011, two years before the IOC decision.

In January 2012, the Committee applied for registration for the wordmark “TOKYO 2020” in standard character covering all 45 classes to which the JPO granted protection in November 2013.

However, because of the pandemic, the Tokyo 2020 Olympic and Paralympic Games have been postponed to 2021. The Olympics will now run from July 23 to August 8 2021 and the Paralympics will be held from August 24 until September 5, 2021.

On March 25, 2020, the Committee filed a trademark application for the wordmark “TOKYO 2021” for use on goods and services in 45 classes and subsequently divided the application so that the mark would remain pending the JPO examination as long as possible in fear of trademark theft.

It came to my notice that the following trademarks are filed with the JPO by other entities.

TM application no. 2020-27573 “tokyo 2022” (cl. 32)
TM application no. 2020-32238 “Tokyo 2022” (cl.18)
TM application no. 2020-35399 “TOKYO 2020+1” (cl. 41)
TM application no. 2020-14136 “TOKYO2032” (cl. 35, 41)
TM application no. 2020-125468 “Tokyo 2021 Samurai Athlete” (cl. 41)
TM application no. 2021-16249 “TOKYO 2020-2032” (cl. 41)

Who knows when and how the Tokyo Olympic Games are safely held?
Rather, I would eager to know when will the COVID-19 pandemic end.