Trademark battle: FORTNITE vs FORTNIGHT

In an invalidation trial against TM Reg no. 6389929 for word mark “FORTNIGHT” in classes 9, 16, 28, 35, 41 and 43, the Japan Patent Office (JPO) did not rule in favor of Epic Games, Inc. due to an unlikelihood of confusion with “FORTNITE”.
[Invalidation case no. 2023-890068, decided on May 9, 2024]


FORTNIGHT

A Japanese company sought registration of word mark “FORTNIGHT” in standard character for use on various goods and services in classes 9, 16, 28, 35, 41 and 43 (including games) with the JPO on June 4, 2018 (TM App no. 2028-79647).

The JPO examiner rejected the mark due to a likelihood of confusion with famous game software and distribution platform “FORTNITE” managed by Epic Games, Inc.

However, the JPO Appeal Board disaffirmed the rejection by stating that there is no reason to find “FORTNITE” has been widely recognized among relevant consumers to indicate Epic business and the applicant deleted games from designation. If so, it is unlikely that relevant consumers would not confuse the source of goods and service bearing “FORTNIGHT” with Epic’s “FORTNITE”.

The mark “FORTNIGHT” was registered on June 8, 2021.


Invalidation action by Epic Games, Inc.

Epic Games, Inc. is an American video game development and distribution company, widely known for the success of “Fortnite”, a free multiplayer online video game first released in 2017, and its game marketplace. On August 10, 2021, Epic filed a post-grant opposition against TM Reg no. 6389929 “FORTNIGHT” on August 10, 2021, but the opposition was unsuccessful (Opposition case no. 2021-900304).

On August 22, 2023, Epic filed an invalidation action and claimed that the mark “FORTNIGHT” should be invalidated in contravention of Article 4(1)(xv) and (xix) of the Japan Trademark Law.

Epic repeatedly argued “FORTNIGHT” has a high degree of similarity to “FORTNITE” from visual, phonetical and conceptual points of view. Taking account of famous online game “FORTNITE” among game users and close relation between online games and the goods and services in question, relevant consumers are likely to confuse “FORTNIGHT” with “FORTNITE”.

Given that the initial filing designated the game in question, it is presumed that the company had knowledge of the well-known online game software “FORTNITE” and aimed to benefit from its reputation.


JPO decision

The JPO Invalidation Board found that “FORTNITE” has been widely recognized to indicate video games of Epic among consumers and traders in video game industry. However, given that the launch of the video games in Japan precedes the application date of the mark “FORTNIGHT” by three months, such recognition would be limited to the industry.

With regard to the similarity of the marks, the Board stated, “Although “FORTNIGHT” and “FORTNITE” share the same sound, they are distinguishable in appearance, and the concepts are not comparable. In assessing the overall impression, the Board has a reason to find a low degree of similarity between the marks.”

In light of the aforementioned findings, the Board determined that relevant consumers are unlikely to confuse the source of the goods and services in question bearing the mark “FORTNIGHT” with “FORTNITE.”

Furthermore, there is no evidence to suggest that the applicant had any malicious intention of free-riding on or damaging Epic’s online video games “FORTNITE.”

Consequently, the Board dismissed the invalidation action and declared the validity of TM Reg. No. 6389929.

P&G Unsuccessful attempt to register 3D shape of SK-II bottle

In an attempt to register TM App no. 2020-1611 for 3D mark representing a bottle shape of the SK-II Facial Moisturizing Lotions, the Japan Patent Office (JPO) upheld the examiner’s rejection and dismissed the appeal filed by The Procter & Gamble Company (P&G).
[Appeal case no. 2022-6, decided on May 9, 2024]


SK-II

P&G filed a trademark application for 3D bottle shape of the SK-II cosmetic lotions (see below) in class 3 with the JPO on February 14, 2020 (TM App no. 2020-1611).

SK-II is a Japanese-based multinational beauty brand with premium skincare solutions sold in East Asia, North America, Europe, and Australia, launched in the early 1980s.

Allegedly, domestic sales of the “SK-II” facial treatment essence (moisturizing lotions) contained in the applied 3D mark were approximately JPY 10 billion to 16.5 billion in each of the fiscal years from 2016 to 2020.


Article 3(1)(iii)

The JPO examiner rejected the 3D mark based on Article 3(1)(iii) of the Japan Trademark Law due to a lack of inherent distinctiveness.

Article 3(1)(iii) is a provision to prohibit registration of any mark that is descriptive in relation to designated goods and service. Trademark Examination Guideline (TEG) refers to 3D bottle shape of goods as an example subject to the article.

Where trademark is merely recognized as the shapes of designated goods (including shape of packages), it is evaluated just to indicate the “shape” of the goods. Moreover, the same principle shall apply to cases where a trademark is recognized as part of the shapes of designated goods (including their packages).


Article 3(2)

P&G argued acquired distinctiveness of the 3D mark as a result of substantial use. However, the examiner rejected the argument, stating that since the applied mark has been consistently used with the word mark “SK-II” on every bottle, there is no reason to believe that the 3D shape perse has played a role in identifying the source of the cosmetics.
Therefore, the applied mark shall not be registrable based on Article 3(2) of the Trademark Law due to a lack of acquired distinctiveness.


JPO decision

The JPO Appeal Board found the applied mark should be rejected in accordance with Article 3(1)(iii) due to the prevalence of cylindrical bottles in the contexts of cosmetics and other industries.

In its decision, the Board noted that a considerable amount of sales had been made to date and that advertising and promotional activities had been conducted at a considerable expense. The SK-II cosmetics bearing the 3D mark have been extensively advertised through a variety of channels, including magazine advertisements, TV commercials, events, and other campaign activities. They have also been widely covered by the web media and other media outlets.

In the meantime, the Board pointed out the use of distinctive words, such as “SK-II”, “SECRET KEY II”, “MAX FACTOR” etc., on the bottle of the CK-II facial moisturizing lotions. In this respect, there is no sufficient evidence and material featuring the 3D mark so that consumers at the sight of advertisements can consider the bottle shape as a source indicator.

Besides, P&G did not produce evidence of brand awareness survey to demonstrate acquired distinctiveness of the bottle shape. The registration of the same mark in other jurisdictions, such as the United Arab Emirates and South Korea, does not have any binding power in Japan when it comes to evaluating distinctiveness.

Based on the above findings, the Board concluded that the 3D mark per se has not acquired distinctiveness and should not apply Article 3(2).

Trademark dispute: “SOFTWEAR” vs “SOFTWAIR”

In an appeal trial disputing similarity between wordmark “SOFTWEAR” and “SOFTWAIR”, the JPO reversed the examiner’s rejection due to the error in finding dissimilarity of two marks.
[Appeal case no. 2023-20831, decided on April 24. 2024]


SOFTWEAR

DuPont Safety & Construction, Inc., a US corporation, sought registration of wordmark “SAFTWEAR” in standard character for use on blankets, gloves, masks, protection masks, protective suits for medical use in class 10 with the JPO on August 22, 2022.


SOFTWAIR

The JPO examiner rejected the applied mark due to a conflict with TM Reg no. 6719284 for wordmark “SOFTWAIR” in standard character owned by Air Wair International Ltd based on Article 4(1)(xi) of the Japan Trademark Law.

The earlier mark covers not only shoes, sports shoes, but also clothing in class 25.

DuPont filed an appeal against the examiner’s rejection on December 7, 2023 and argued that the examiner had errored in assessing similarity between the mark “SOFTWEAR” and “SOFTWAIR”.


JPO decision

The JPO Appeal Board found the applied mark “SOFTWEAR” is not a word included in common dictionaries. Even tough respective term “SOFT” and “WEAR” has its meaning, there is no reason to believe the mark give rise to any specific meaning as a whole.

Likewise, the cited mark “SOFTWAIR” would not have a specific meaning in its entirety. But it should note that the Board found the cited mark has three pronunciations, ‘sɔft weər’, ‘sɔft waɪr ’ and  ‘sɔft ueia’.

From appearance, in spite that they consist of the same kind (alphabet) and number of characters, two marks are clearly distinguishable, because of the difference of two characters “EA” and “AI” in the middle of the eight-character composition.

Even if two marks have the same pronunciation of ‘sɔft weər’, when compared with ‘sɔft waɪr ’ and  ‘sɔft ueia’, the difference in the middle of the entire five or six sounds would result in a clear distinction in the overall tone and feeling.

Conceptually, it is unable to compare since both marks do not give rise to a specific meaning at all.

Based on the above findings, the Board held that even if the applied mark has the same pronunciation with one of the sounds of the cited mark, other two sounds are sufficiently distinguishable to the sound of the applied mark. Besides, both marks are not comparable in conception, and clearly distinguishable in appearance. When taking into consideration the impressions and memories given in mind of consumers by two marks, there is no risk of confusion as to the origin of the goods, and thus the Board has a reason to believe “SOFTWEAR” is dissimilar to “SOFTWAIR”.

Therefore, the examiner errored in finding similarity of the marks and applying Article 4(1)(xi). Accordingly, the rejection shall be overturned.

Tennis King Roger Federer Defeated out of the Court

The Japan Patent Office (JPO) dismissed an opposition filed by Tenro AG, a Swiss company established by Tennis King Roger Federer, against Japanese TM Reg no. 6691122 for mark “Roger King” in class 28 by finding dissimilarity to IR nos. 1529136 “THE ROGER” & 1529148 “ROGER” and unlikelihood of confusion.
[Opposition case no. 2023-900151, decided on April 23, 2024]


Roger King

Hirota Gold Inc. applied trademark application for stylized word mark “Roger King” (see below) in relation to golf clubs, golf club head covers, golf bags, golf gloves, golf equipment, and sports equipment of class 28 with the JPO on February 1, 2022 (TM App no. 2022-11297).

The applicant is engaged in the business of promoting golf clubs bearing the applied mark.

The JPO granted protection of the applied mark on April 14, 2023, and then published it for post-grant opposition on April 27, 2023.


Opposition by Tenro AG

Tenro AG, a Swiss company established by Tennis King Roger Federer, filed an opposition against the applied mark “Roger King” and claimed the mark shall be canceled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law by citing their owned earlier trademark registration nos. IR 1529136 for wordmark “THE ROGER” and IR 1529148 for wordmark “ROGER” in class 25.

Tenro AG argued that when “Roger King” is used in connection with the designated goods in question (athletic equipment), relevant consumers will associate the famous Roger Federer. Since Mr. Federer is called “King Roger”, they will undoubtedly consider the opposed mark as the name of Mr. Federer. Consequently, the opposed mark and the cited marks are deemed similar because they share the same sound and appearance, and both give rise to the same meaning as the famous Roger Federer.


JPO decision

Initially, the JPO Opposition Board found that although Roger Federer is widely recognized as a prominent tennis player, he is not typically abbreviated as “Roger.” Furthermore, there is no concrete evidence indicating the scope and method of advertising and market share in Japan for goods using the cited marks. Therefore, the Board has no reason to believe that the cited marks are widely recognized as a source indicator of the claimant’s business among Japanese consumers.

Secondly, in evaluating the similarity of the marks, the Board held that, from appearance and sound, both marks are clearly distinguishable as a whole due to the presence and absence of “THE” and/or “KING”. Besides, the opposed mark does not have a specific concept. Meanwhile, the cited marks give rise to a meaning of a man’s name. If so, there is no similarity and confusion in concept.

In the absence of a convincing demonstration of the fame of the cited mark and a low degree of similarity between the opposed mark and the cited marks, it is unlikely that relevant consumers will confuse a source of goods in question bearing the opposed mark with Mr. Roger Federer or the claimant’s business.

Based on the foregoing, the Board decided that the opposed mark shall not be canceled in contravention of Article 4(1)(xi) and (xv) and dismissed the opposition entirely.

ZARA Unsuccessful Opposition against TM “LAZARA”

On April 22, 2024, the Japan Patent Office (JPO) dismissed an opposition filed by Industria de Diseño Textil, SA (INDITEX), owner of the fashion brand “ZARA”, against TM Reg no. 6699667 for word mark “LAZARA” in classes 25 due to dissimilar marks and unlikelihood of confusion with “ZARA”.
[Opposition case no. 2023-900175]


Opposed mark

Opposed mark, consisting of a wordmark “LAZARA” in standard character, was applied for registration by Japanese individual to be used on clothing in class 25 on November 20, 2022, and published for post-grant opposition on May 29, 2023.


Opposition by Inditex

Opponent, INDITEX, one of the world’s largest fashion retailers and owner of the fashion brand “ZARA”, filed an opposition on July 27, 2023 before the lapse of a two-month statutory period and claimed opposed mark “LAZARA” shall be cancelled in contravention of Article 4(1)(xi), (xv) and (xix) of the Japan Trademark Law by citing earlier trademark registrations (TM Reg no. 4108998 and IR no. 752502 in class25) for word mark “ZARA”.

Article 4(1)(xi) is a provision that prohibits the registration of a junior mark that is deemed identical with, or similar to, any earlier registered mark.

INDITEX contended that the opposed mark “LAZARA” is similar to its own trademark “ZARA,” a globally renowned fast-fashion brand given the suffix “LA” is a descriptive word that merely indicates the definite article in Spanish. Besides, the goods in question are identical.

Article 4(1)(xv) prohibits the registration of trademarks that are likely to cause confusion with the business of other entities.

INDITEX contended that the mark “ZARA” has become renowned among relevant consumers in connection with apparel. Given the high degree of resemblance between “LAZARA” and “ZARA” as well as the goods, it is likely that consumers will confuse or misconceive the goods bearing the opposed mark “LAZARA” with “ZARA.”

Article 4(1)(xix) proscribes the registration of a trademark that is identical with or similar to another entity’s famous mark if the trademark is intended for the purpose of gaining unfair profits or causing damage to the entity.

INDITEX contended that the applicant had filed the opposed mark with the intention of obtaining unfair profits through free-riding on the well-known trademark “ZARA”.


JPO decision

The JPO Opposition Board held that “ZARA” has acquired a certain degree of recognition among relevant consumers in Japan and foreign countries as a source indication of clothing, however, the Board denied a high degree of recognition of the mark among the consumers by taking into consideration the produced evidence. The Board criticized “INDITEX produced precedent administrative decisions as evidence that admitted famousness of the mark “ZARA” in Japan. But, famousness of trademark shall be assessed on a case-by-case basis based on relevant facts and evidence produced in each case. Therefore, the precedent decisions would not bind the ongoing case. INDITEX did not reveal sales figure and expenditure for advertisement in connection with apparel bearing the mark ZARA.

Furthermore, the Board found the consumers would perceive the opposed mark “LAZARA” as a whole, which would suggest an unfamiliar foreign word from a visual perspective. If so, “LAZARA” and “ZARA” are evidently dissimilar in appearance and pronunciation because of the distinction between the presence and absence of the letter “LA” in the suffix and the overall sound. As for the concept, it is not comparable since either mark does not give rise to any specific meaning. Consequently, both marks are unlikely to cause confusion due to their dissimilarity.

Additionally, the Board noted that INDITEX had not presented any evidence to substantiate their assertion that the applicant had filed the opposed mark for the purpose of gaining unfair profits or causing harm to INDITEX.

Based on the foregoing, the JPO dismissed the entire allegations of INDITEX and allowed “LAZARA” to survive.

IP High Court Rejected TM Registration of AP “ROYAL OAK” Watch Design

On March 28, 2024, the Japan IP High Court decided to dismiss the appeal filed by Audemars Piguet Holding SA, a Swiss luxury watchmaker, against the JPO’s decision (Appeal No. 2021-013234) to reject TM Application No. 2020-20319 for the device mark representing AP’s iconic “ROYAL OAK” watch collection for lack of both inherent and acquired distinctiveness.
[Court case no. Reiwa5(Gyo-ke)10119]


Audemars Piguet “ROYAL OAK” Watch Collection

On February 26, 2020, Audemars Piguet Holding SA (AP) filed a trademark application for the shape of the flagship watch collection “ROYAL OAK” (see below) to be used on ‘watches’ in class 14 with the Japan Patent Office (JPO) [TM application no. 2020-20319].

The mark consists of a dial with tapisserie pattern and hour markers, minute track, date window, an octagonal bezel with 8 hexagonal screws, case, a crown, and a lug of the famed “ROYAL OAK” watch collections.


JPO Refusal

On June 8, 2023, the JPO Appeal Board affirmed the examiner’s rejection and decided to refuse registration of the applied mark due to a lack of inherent distinctiveness based on Articles 3(1)(iii) of the Japan Trademark Law by stating that relevant consumers would simply recognize it as a generic shape of a wristwatch, not a specific source indication since many watchmakers have supplied with similar shape to the dial, bezel, case, crown, and lug of the applied mark (see below examples).

Besides, the Board found the produced evidence is insufficient to determine whether the shape per se has acquired nationwide recognition as a source indicator of AP’s watches.

Audemars Piguet Holding SA filed a lawsuit with the Japan IP High Court on October 20, 2023, and disputed inherent and acquired distinctiveness of the applied mark.


IP High Court ruling

  • Inherent distinctiveness: Article 3(1)(iii)

In the decision, the judge said “There is no particular circumstance in which the shape represented by the applied mark is taken novel in comparison with the shapes of other wristwatches. If so, it is considered within the range of shapes normally required to achieve basic function of the goods. Even supposing that the shape is unique as a whole, the shape of each component is made in a form suitable for use as a wristwatch, and selected from the viewpoint to achieve the function of the goods. Therefore, the applied mark lacks distinctiveness since it remains within the scope of expected selection of the shape for functional reasons of a wristwatch.”

AP claimed the JPO finding is inadequate because none of competitors watches have the same combination of three unique features, namely, (i) an octagonal bezel, (ii) 8 hexagonal screws, and (iii) tapisserie pattern on the surface of a dial. Visual similarity in one or two components are insufficient to deny inherent distinctiveness of the applied mark.

However, the court did not agree with this allegation and said “It is sufficient to assess whether each shape of components is distinctive as part of the shape of wristwatch”.

  • Acquired distinctiveness: Article 3(2)

AP argued acquired distinctiveness of the applied mark as a result of substantial use since 1972. Allegedly, annual sales of the “ROYAL OAK” luxury watches exceed JPY 8 billion on average in the past six years. Each year, AP spent more than JPY400 million on advertisement and promotion in Japan.

In this respect, the court pointed out the “ROYAL OAK” watches have some collections that do not represent three unique features, such as, “Royal Oak Offshore” and “Royal Oak Concept” (see below). If so, the annual sales and expenditures on advertisement and promotion would not all attribute to watches representing the applied mark.

Besides, AP has not produced the result of market research to demonstrate a certain degree of recognition of the applied mark. Accordingly, the court has no reason to believe the applied mark per se has played a role in identifying the source of famous luxury watch, Audemas Piguet.

Based on the foregoing, the court determined that the JPO did not err in its findings and that the application of Article 3(1)(iii) and 3(2) was appropriate. As a result, the court decided to dismiss the appeal in its entirely.

Japan IP High Court said No to registering the color of Hermes packaging.

The Japan IP High Court ruled to dismiss Herme’s appeal against the JPO decision that rejected Hermes packaging color due to a lack of inherent and acquired distinctiveness.
[Court case no. Reiwa5 (Gyo-ke) 10095, ruled on March 11, 2024]


Color mark of Hermes box

On August 23, 2023, HERMES INTERNARTIONAL filed an appeal with the Japan IP High Court to seek the cancellation of the JPO refusal decision (Appeal case no. 2021-13743) that denied registration of TM App no. 2018-133223 for a color mark consisting of orange on the entire box and brown on the upper outline of the box. (see below)

The application designates various goods in classes 3, 14, 16, 18, and retail services for the goods in class 35.


Second Market Research

HERMES conducted a second market research study in August 2023 to demonstrate acquired distinctiveness of its packaging color. The study targeted men and women in their 30s to 50s residing in nine prefectures who expressed interest in bags, accessories, watches, cosmetics, or perfume and had purchased either of these items within the past six months.

According to the second research report, 39.2% of respondents (2,060 in total) answered Hermes when shown three Hermes boxes in different shapes. 44.4% chose Hermes from the ten options (It is notable that 27.2% of respondents selected “Louis Vuitton” as their answer).


IP High Court decision

In their ruling, the judges pointed out the applied mark is classified into a mark consisting of colors, but from descriptions of mark, it is considered a two-color mark combined with a three-dimensional shape (a box).

The judges also noted the submitted evidence did not demonstrate the actual use of the applied mark in relation to perfumery of class 3 and paper boxes, paper bags, paper packages and wrapping papers of class 16, nor did it substantiate the use of the mark in relation to retail services for these goods in class 35.

The judge recognized that the “Hermes” brand has gained significant recognition in Japan, and its degree of renown is considered to be one of the most prominent among all fashion brands. From the submitted advertisement and publications, the applied mark evidently has been used as a symbolic color to indicate “Hermes” in a marketing tactic designed to enhance brand value. It is clear that the Hermes box is a well-known and important identifier for consumers interested in or who have purchased luxury fashion items.

The issue is whether relevant consumers can identify Hermes from the colors per se on Hermes box, without the word “Hermes” and the horse and carriage emblem. In this respect, the court said it useful to review brand recognition research especially in a case for color mark. The judges said the result of two market researches are sufficient (Recognition rate: approximately 40%) to admit acquired distinctiveness in general. However, two researches do not target general consumers by excluding age under 29 and over 60, and limiting their incomes JPY10,000,000 and above (1st research) or those who expressed interest in bags, accessories, watches, cosmetics, or perfume and had purchased either of these items within the past six months (2nd research).

Given the applied mark covers various goods that are regularly consumed by the general public, the researches with such limitations are inadequate and insufficient as evidence to demonstrate acquired distinctiveness of the color mark in question.

Therefore, the court has a reason to believe the JPO did not make an error in denying inherent and acquired distinctiveness of the applied mark and rejecting it based on Article 3(1)(iii) and 3(2) of the Trademark Law.

Based on the foregoing, the court decided to dismiss the entire appeal by Hermes.

Acceptable goods and services for Metaverse and NFTs

On March 29, 2024, the Japan Patent Office (JPO) released a new Trademark Examination Manual 46.02 regarding adequate goods and services in connection with the Metaverse and NFTs.


Virtual goods

  1. “Virtual goods” is unacceptable as a goods because of broad and vague description.
  2. Acceptable description (examples in virtual clothing) [similarity code]
    • Cl. 9: Downloadable virtual clothing [11C01, 24E02, 26D01]
    • Cl. 9: Downloadable computer programs for displaying clothing in virtual environments [24E02, 26D01]
    • Cl. 9: Downloadable image files for displaying clothing in virtual environments [24E02, 26D01]
    • Cl. 35: Online retail services for downloadable virtual clothing [11C01, 24E02, 26D01, 35K08, 35K15, 35K99]
    • Cl. 41: Providing online images for displaying clothing in virtual environment [41E02]
    • Cl. 42: Providing computer programs on data networks for displaying clothing in virtual environments [42X11]
  3. Unacceptable description
    • Cl. 9: virtual goods (clothing)
    • Cl. 9: downloadable virtual goods
    • Cl. 9: downloadable virtual living ware
    • Cl. 9: downloadable computer programs for displaying goods in virtual environments
    • Cl. 9: downloadable image files for displaying goods in virtual environments
    • Cl. 35: retail services for downloadable virtual goods
    • Cl. 35: retail services for downloadable virtual foods and beverages
    • Cl. 41: providing online images for displaying goods in virtual environment
    • Cl. 42: Providing computer programs on data networks for displaying goods in virtual environments
  4. Inappropriate class
    • Cl. 25: downloadable virtual clothing
    • Cl. 25: virtual clothing

Services in connection with the Metaverse

  1. Acceptable description (examples)
    • Metaverse Platformers
      • Cl. 38: providing chatrooms in virtual environments [42X11]
      • Cl. 42: hosting software platforms for virtual environment-based work collaboration [42X11]
    • Service provider on the Metaverse
      • Cl. 35: marketing through product placement for others in virtual environments [35A01, 35A02, 35B01]
      • Cl. 36: online banking services renders in virtual environments [36A01]
      • Cl. 41: simulated travel services provided in virtual environments for entertainment purposes [41F06]
      • Cl. 41: online game services provided via virtual environments [41K01, 41Z99]
  2. Similarity code
    • Identical code is used when a service provided in the Metaverse achieves the same purpose and outcome as a service in the real world
      • Cl. 35: advertising for other in virtual environments [35A01]
      • Cl. 41: presentation of music concerts in virtual environments [41E03]
    • Different code is used when a service provided in the Metaverse does not achieve the same purpose and outcome as a service in real world
      • Cl. 41: simulated restaurant services provided in virtual environments for entertainment purposes [41K01, 41Z99] (cf. Cl. 43: restaurant services [42B01])

NFTs

  1. “NFT” is unacceptable as a goods and service because of broad and vague description.
  2. Acceptable description (examples) [similarity code]
    • Cl. 9: Downloadable computer software applications for minting non-fungible tokens [NFTs] [11C01]
    • Cl. 9: Downloadable digital image files authenticated by non-fungible tokens [NFTs] [24E02, 26D01]
    • Cl. 25: clothing authenticated by non-fungible tokens [NFTs] [17A01, 17A02, 17A03, 17A04, 17A07]
    • Cl. 35: purchasing of digital image files authenticated by non-fungible tokens [NFTs] [35B01]
    • Cl. 36: management of crypto assets authenticated by non-fungible tokens [NFTs] [36A01]
    • Cl. 42: Providing online non-downloadable computer software for minting non-fungible tokens [NFTs] [42X11]
  3. Unacceptable description
    • Non-fungible tokens [NFTs]
    • Online retail services for non-fungible tokens [NFTs]
    • Provision of an online marketplace for buyers and sellers of non-fungible tokens [NFTs]

COCO vs. KOKO

In a recent administrative decision, the Japan Patent Office (JPO) found that the trademarks “CoCo” and “koko” are dissimilar and unlikely to cause confusion.
[Opposition case no. 2023-900250, decided on March 25, 2024]


“koko”

A wordmark “koko” in standard character was applied for registration with the JPO by a Japanese individual in relation to services of class 35, 41 and 42 including educational and instruction services relating to arts, crafts, sports or general knowledge (cl. 41) on October 7, 2022 (TM App no. 2022-115511).

The JPO examiner issued an office action due to a conflict with TM Reg nos. 6327674 and 6327645 for the mark “KOKO HOTELS” and IR no. 950884-A for the mark “KOKO”.

The applicant was successful in a partial non-use cancellation action to IR no. 950884-A and argued in a response dissimilarity of the mark between “KOKO HOTELS” and “koko”.

Consequently, the examiner withdrew her rejection and granted protection of the mark “koko” on September 8, 2023. After registration (TM Reg no. 6737526), the mark was published for a post-grand opposition on September 28, 2023.


Trademark Opposition

The owner of earlier TM Reg no. 6167547 for wordmark “CoCo” filed a partial opposition on November 6, 2023, and claimed cancellation of the mark “koko” in relation to educational and instruction services relating to arts, crafts, sports or general knowledge of class 41 based on Article 4(1)(xi) of the Japan Trademark Law.

Article 4(1)(xi) is a provision to prohibit registration of a junior mark that is deemed identical with, or similar to, an earlier registered mark.

The claimant argued that the opposed mark “koko” shall be deemed similar to “CoCo” since both marks have the same sound. Besides, the service “educational and instruction services relating to arts, crafts, sports or general knowledge” is similar to ballet school services in class 41 designated by the cited mark. Therefore, the opposed mark is subject to cancellation in contravention of Article 4(1)(xi).


JPO decision

The JPO Opposition Board found the opposed mark “koko” is a coined word without any specific meaning. In the meantime, the cited mark “CoCo” has a meaning of the coconut palm as described in English dictionary.

The Board stated when comparing visual aspect of respective mark, overall impressions are different and unlikely to cause confusion because as they differ in the first and third letters “k” and “C” among four letters in total.

Although both marks share the same sound, the Board believes that they are sufficiently distinguishable in terms of concept and appearance regardless of similarity in respective service. Therefore, it is unlikely that relevant consumers will confuse the source of the service in question based on a global assessment of visual, phonetic, and conceptual factors.

Based on the foregoing, the JPO dismissed the entire opposition and decided the opposed mark shall not be subject to Article 4(1)(xi).

JPO Status Report 2024

According to “JPO Status Report 2024” released on March 28, 2024, by the Japan Patent Office (JPO), a total of 164,061 trademark applications were filed in 2023. This number decreased 3.6% compared to the previous year when the number of applications amounted to 170,275.

Pfizer Inc. became a top-ranking foreign registrant in 2023 who could successfully register 86 trademarks in Japan, drastically decreased from the previous year.

Requests for accelerated examination decreased to 7.532 by 17.2% in 2023, 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 6.9 months on average, which gets 4.3 months shorter in two years.

You can access and download the full text of “JPO Status Report 2024” from here.