カテゴリー: Famous mark

Trademark Dispute: Domino’s Pizza vs Dog’s Pizza

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In a trademark opposition against TM Reg no. 6804935 for the mark “Dog’s Pizza”, the Japan Patent Office (JPO) did not side with Domino’s IP Holder LLC, which claimed similarity to and likelihood of confusion with Domino’s red and blue rectangular emblem with three white dots.
[Opposition case no. 2024-900149, decided on April 2, 2025]

Dog’s Pizza

The contested mark, consisting of the words “DOG’s PIZZA” in red and its translation written in Japanese katakana character, and rectangular device in red and dark blue with two paw prints (see below), was filed with the JPO by a Japanese individual for use on February 14, 2024 for use on pet food and dog food in Class 31 [TM App no. 2024-14656].

Upon request for accelerated examination, the JPO examiner granted registration of the mark on April 30, 2024, without raising any grounds for refusal.

https://mogmogwan.jp/ca2/22/p-r2-s/

Opposition by Domino’s Pizza

On July 23, 2024, a two-month statutory period counting from the publication date, May 23, 2024, Domino’s IP Holder LLC filed an opposition and claimed cancellation of the contested mark in contravention of Article 4(1)(x), (xv) and (xix) of the Japan Trademark Law.

Domino argued that the rectangular device of the contested mark is distinctive and dominant element to identify a specific source. Comparing the device with Domino’s red and blue rectangular emblem with three white dots, which has become famous per se as the source indicator of Domino’s Pizza in Japan, they are visually similar to a high degree. Therefore, the relevant consumers, upon seeing the contested mark used on the goods in question, would associate it with Domino’s Pizza and confuse the source with Domino’s Pizza or any business entity economically or systematically related to Domino’s Pizza.

JPO decision

The JPO Opposition Board stated that, even though Domino’s Pizza Japan, Inc., a domestic franchisee, has operated more than 1,000pizza delivery and take-away stores in Japan, unless the evidence submitted included sales figures, market share, and advertising expenditures in Japan and other countries, the Board could not find it reasonable to concede a high degree of recognition of the cited mark among the relevant consumers.

Regarding the similarity of the marks, the Board considers that the consumers are unlikely to confuse the two marks because of the clear difference in the dots and paw prints depicted in the rectangular device. Furthermore, there is no indication of similarity from an aural and conceptual point of view.

Given the lack of evidence concerning the reputation of the cited mark and the low degree of similarity between the marks, the Board found that there was no reason to find a likelihood of confusion on the part of the public.

Based on the foregoing, the Board decided to dismiss the entire allegations and, accordingly , to declare the validity of the contested mark.

HERMES Defeated with Trademark Opposition against KIMONO TWILLY

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The Japan Patent Office (JPO) dismissed an opposition filed by Hermes International against TM Reg no. 6753650 for the word mark “KIMONO TWILLY” in Class 18, claiming a likelihood of confusion with the Hermes scarves “TWILLY”.
[Opposition case no. 2024-900010 / Gazette issued date: March 28, 2025]

KIMONO TWILLY

The contested mark, consisting of word “KIMONO TWILLY” in standard character, was filed by NPO Kimono For World Heritage Promotion Committee for use on bags and pouches, purses, vanity cases in Class 18 with the JPO on April 20, 2023 [TM App no. 2023-49360].

“KIMONO” is a traditional piece of Japanese clothing like a long loose coat, worn at special ceremonies.

https://omotenashi.or.jp/

The JPO granted registration of the mark “KIMONO TWILLY” on October 13, 2024, without issuing any refusal notice, and published it for a post-grant opposition on November 22, 2023.

Hermes TWILLY

On Jan 19, 2024, Hermes International filed an opposition against “KIMONO TWILLY” based on Article 4(1)(xv) and (xix) of the Japan Trademark Law by citing an owned earlier TM Reg no. 4764732 for the word mark “TWILLY” in Classes 24, 25, and 26.

Hermes argued that the contested mark is confusingly similar to the earlier mark “TWILLY”, which has become famous for Hermes’ tie-like scarves, because the term “KIMONO” is less distinctive in relation to the goods in question.

Taking into consideration that the contested mark covers bags, which have a close association with Hermes, and that the “TWILLY” scarves are widely known to be used to wrap the handles of Hermes handbags, the relevant consumers are likely to confuse a source of the goods in question bearing the contested mark with Hermes. Given the significant popularity and reputation of the Hermes TWILLY scarves, the applicant would have to be in bad faith to free-ride on that reputation by deliberately adopting a similar mark.

JPO decision

The JPO Opposition Board noted the submitted evidence was inadequate to substantiate a high degree of recognition for the earlier mark “TWILLY” since Hermes failed to provide objective evidence concerning sales figures, market share, and advertising expenditures in Japan and other countries.

Additionally, the Board found that the contested mark should be assessed in its entirety even if the term “KIMONO” indicates a traditional piece of Japanese clothing, as the respective word of the contested mark is represented in the same font, size, and the whole sound is not too long.

If so, both marks are deemed dissimilar because there is a clear difference in appearance and sound even though a conceptual comparison is neutral as none of them have any clear meaning.

Based on the above findings, the Board has no reason to believe that relevant consumers of the goods in question would associate the contested mark with Hermes “TWILLY” scarves.

Consequently, the Board decided the contested mark should not be canceled in contravention of Article 4(1)(xv) and (xix).

JPO Said No to Register Kawasaki Green Color Mark

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On March 19, 2025, the Japan Patent Office (JPO) finally decided to reject a color mark application filed a decade ago by Kawasaki Heavy Industries, Ltd., which sought to register a green color used on the world-famous Kawasaki motorcycles.
[Appeal case no. 2022-11189]

Narrow gate to color mark registration

On April 1, 2015, the Japan Trademark Law has opened the door to the registration of marks consisting solely of a color or colors. To date, 589 color marks have been filed with the JPO, and only 11 have been granted registration. This represents a success rate of only 1.9%.

Kawasaki Green

On the very first day, Kawasaki Heavy Industries, Ltd., famous for sports and racing bikes, sought for registration of a color mark consisting solely of light green (R105, G190, B40) in connection with motorcycles (cl.12). [TM App no. 2015-30667]

In addition, Kawasaki filed two color mark applications for a single light green color represented on fuel tank (position) and a color combination of light green and black as shown below for use on motorcycles (cl. 12) with the JPO on the same day, but these were all withdrawn or rejected due to a lack of inherent and acquired distinctiveness. [TM App nos. 2015-30668, 2015-30696]

Allegedly, Kawasaki has been using the light green color on their Ninja, KX, KLX and other motorcycles since 1975, but, according to the catalogs, the color was used on less than 40 % of the total Kawasaki motorcycles. Besides, annual sales of the motorcycles using the light green color averaged approximately 23.4%.

On April 19, 2022, the JPO examiner rejected the color mark based on Article 3(1)(iii) of the Japan Trademark Law.

Kawasaki filed an appeal against the rejection and agued acquired distinctiveness of the light green in connection to motorcycles on July 19, 2022.

In order to demonstrate the acquired distinctiveness of the light color as a source indicator of Kawasaki motorcycles, Kawasaki conducted the market research that targeted a total of 1,000 men and women aged from 16 to 79 who has a motorcycle driver’s license, 90.5% of the interviewees who answered that they had seen the color in connection with motorcycles or motorcycle shops (66.1% of the total interviewees) could associate the color with Kawasaki.

JPO decision

The JPO Appeal Board noted the light green has acquired a certain degree of recognition among relevant consumers as a source indicator of Kawasaki motorcycles in view of substantial use for the past five decades.

However, the Board found that the market research was insufficient to objectively assess the acquired distinctiveness of the applied mark, as it was only targeted at motorcycle license holders. Moreover, competitors also manufacture many motorcycles with a similar green color.

According to the IP High Court’s decision, a mark consisting of a single color is not registrable unless it has acquired an extremely high degree of recognition as an indication of a particular source as a result of substantial use, to the extent that the exclusive use of the color would not cause detriment to the public in general.

In light of the fact that the light green color was used on less than 40 % of Kawasaki’s motorcycles, and the annual sales of the motorcycles using the light green color averaged approximately 23.4%, the Board has no reason to believe that the applied color has acquired a high degree of secondary meaning to outweigh the detrimental effect on the public at large if registered.

Based on the foregoing, the Board affirmed the examiner’s rejection and decided to refuse the applied mark based on Article 3(1)(iii) of the Japan Trademark Law.

It is appealable to the IP High Court until May 8, 2025.

End of the TOKYO 2020 Olympic emblem dispute

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On March 12, 2025, the Japan IP High Court handed down a decision regarding the validity of TM Reg no. 6008759 for the Tokyo 2020 Olympic Emblem owned by the International Olympic Committee (IOC).
[Court case no. Reiwa6(Gyo-ke)10057]

Tokyo 2020 Olympic Emblem

The official emblem of the 2020 Tokyo Olympics was scrapped in 2016 (see below left) and replaced with the new emblem (see below right) before the opening of the Olympics, as you recall.

Even after the Games closed without spectators in 2021, a year after originally scheduled to due to a global pandemic, the new official emblem was to face with another challenge at the Japan Patent Office (JPO) in 2022.

The contested new emblem was filed by the IOC for use on all goods and services in every class from 1 to 45 with the JPO on April 25, 2016. In the course of substantive examination, the mark was assigned to the Tokyo Olympic Committee (TOC). Subsequently, the JPO granted registration on December 7, 2017 (TM Reg no. 6008759). Upon the Olympic Games finalizing, it was re-assigned to the IOC in December 2021.

Invalidation action

A group of Japanese legal experts filed an application for a declaration of invalidity against the new Tokyo 2020 Olympic Emblem with the JPO on June 21, 2022. They claimed that the emblem should be invalidated in contravention of Article 4(1)(vi), (vii), (x) and (xix) of the Japan Trademark Law.

The experts argued, inter alia, that the IOC failed to comply with Article 31(1) of the Trademark Law, which prohibits the licensing of a trademark registration to a third party given the mark was registered subject to Article 4(2).

Article 4(2) provides an exception to allow the registration of a trademark applied for by a non-profit organization engaged in activities in the public interest, even if the trademark is unregistrable under Article 4(1)(vi).

In this respect, the experts considered it illegal that the IOC granted a trademark license to the TOC, other organizers and sponsors. In fact, under the license, the TOC sent C&D letters based on TM Reg no. 6008759 to entities seeking to benefit from the Tokyo 2020 Olympic Games in order to prevent ambush marketing.

In these circumstances, the contested mark should be declared invalid in contravention of Article 4(1)(vii) because the IOC had a bad faith intent to unjustifiably protect the profits of official sponsors without legal basis by harming the interests of other entities.

It should be noted that Article 31(1) was revised in 2019, one year after the registration of the contested mark. Now, the prohibition to license the registered mark under Article 4(2) no longer exists.

IP High Court decision

In its ruling, the IP High Court acknowledged the need to restrict ambush marketing, which deliberately attempts to persuade or mislead consumers into believing they are associated with a sporting mega-event, or to use their IP without permission.

The Court found that since the elimination of the restriction on granting a license for a mark registered under Article 4(2) came into effect immediately after the promulgation of the Trademark Law Revision in 2019, it would rather serve to promote the appropriate use of the famous trademark for the public interest and satisfy the intention behind the law.

Therefore, even if the IOC had licensed the contested mark to the TOC and official sponsors in order to prevent ambush marketing, it would be irrelevant to find that the contested mark should be invalidated in contravention of Article 4(1)(vii) due to the likelihood of causing damage to public order or morality.

Trademark Squatter Seeking to Ruin Luxury Brand with Obscene Language

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

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

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

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

https://omeco.buyshop.jp/

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

https://omeco.buyshop.jp/

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

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

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

Court Case: VALENTINO GARVANI vs GIANNI VALENTINO

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The Japan IP High Court affirmed the JPO decision that cancelled TM Reg no. 6550051 for the GIANNI VALENTINO mark due to a conflict with earlier IR no. 975800 for the VALENTINO GARVANI mark.
[Court case no. Reiwa6(Gyo-ke)10089, decided on February 27, 2025]

GIANNI VALENTINO

YOUNG SANGYO CO., LTD filed a trademark application with the JPO on November 10, 2021 for a mark consisting of a “V” device in a circle and the word “GIANNI VALENTINO” (see below) for use on footwear in class 25 [TM App no. 2021-140169].

The applicant, as one of the official licensees, has been distributing bags and pouches bearing the applied mark in the Japanese market.

https://shop.gianni-valentino.com/

The JPO examiner granted registration of the applied mark on April 19, 2022. The mark was published for a post-grant opposition on May 11, 2022 [TM Reg no. 6550051].

Opposition by Valentino S.p.A.

Valentino S.p.A. filed an opposition on July 6, 2022 and claimed cancellation of the GIANNI VALENTINO mark in contravention of Article 4(1)(xi) of the Japan Trademark Law on the ground that the contested mark is confusingly similar to earlier IR no. 975800 for a mark consisting of an iconic “V” device in a circle and the words “VALENTINO” and “GARAVANI” arranged in two lines (see below), which designates footwear and other goods in class 25.

Valentino argued that the literal element “VALENTINO” was dominant in the cited mark because of a high degree of recognition as a source indicator of the opponent’s business as a result of substantial and continuous use in relation to fashion industries. Therefore, relevant consumers with an ordinary care are likely to consider the term “VALENTINO” as a prominent portion of the contested mark when used on the goods in question. If so, the contested mark shall be deemed similar to the cited mark from visual, aural and conceptual points of view.

On August 23, 2024, the JPO Opposition Board decided to cancel the contested mark based on Article 4(1)(xi) of the Japan Trademark Law by stating that the dominant part of respective mark would be the literal element “VALENTINO” given famousness of the mark “VALENTINO” as a source indication for apparel of Valentino S.p.A.

To contest, the applicant filed an appeal with the IP High Court on September 30, 2024.

IP High Court decision

The IP High Court held that the JPO did not err in applying Article 4(1)(xi) to the case by stating that:

The court has no question to find that the mark “VALENTINO” is famous among relevant consumers and traders in Japan for apparel.

From appearance, the contested mark can be dissected into three parts, namely, figurative element, “GIANNI”, and “VALENTINO”. Given the mark “GIANNE VALENTINO” has not been recognized among relevant consumers as a source indicator of the applicant, it is reasonable to consider the literal element “VALENTINO” as a dominant part of the contested mark, which plays a role in identifying the source of the goods in question.

Similarly, the literal element “VALENTINO” of the cited mark can be considered as a dominant part because of its famousness to indicate the opponent’s business.

It is obvious that the dominant part of both marks has the same appearance, sound and meaning.

Therefore, the court has a reason to believe that the contested mark, even as a whole, is confusingly similar to the cited mark from a visual, aural and conceptual point of view.

As a conclusion, the court ruled to dismiss the appeal in favor of Valentino S.p.A.

Trademark dispute: SONY vs SONIMART

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The Japan Patent Office (JPO) sided with SONY in a trademark invalidation action against TM Reg no. 6162062 for word mark “SONIMARK” in classes 35 and 42 by finding a likelihood of confusion with famous mark “SONY”.
[Invalidation case no. 2024-890041, decided on January 27, 2025]

SONIMART

The contested mark, consisting of word “SONIMART” and its transliteration written in Japanese katakana character arranged in two lines (see below), was filed by Sonic Line Co., Ltd. for use on various services including retail service and providing computer programs on data networks in classes 35 and 42 with the JPO on June 14, 2018.

The JPO examiner did not find similarity to and a likelihood of confusion with famous brand “SONY” and granted registration of the mark on July 12, 2019.

Invalidation action by SONY

SONY, one of the most recognized Japanese brands globally, filed an application for declaration of invalidity with the JPO on July 11, 2024, just before the lapse of five years counting from its registration date.

SONY claimed that the contested mark shall be invalidated in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law by citing its owned earlier trademark registrations for the mark “SONY”.

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.

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.

SONY argued that relevant consumers of the services in question are likely to find the contested mark consists of “SONI” and “MART”. Since the term ‘MART’ is less distinctive in relation to the services in question, the element ‘SONI’, which is visually and phonetically confusingly similar to ‘SONY’, would play a dominant role in indicating the source of the services covered by the contested mark.

JPO decision

The JPO Invalidation Board did not question the high degree of reputation and popularity of the mark “SONY” in relation to telecommunications and electronic machines and apparatus, and consumer games.

Comparing the contested mark and the cited mark “SONY”, although the marks differ in their overall structure, both marks contain the same initial three letters, “SON” and the same pronunciation. Moreover, the term “SONI” and its sound are likely to be associated with the cited mark “SONY”, which is well known and famous in the fields of telecommunications and electronic machines and apparatus, and consumer games.

Bearing in mind that SONY has plenty of group companies and stores using a name consisting of “SONY” and descriptive word, such as Sony shop, Sony music entertainment, Sony bank, Sony city, the Board has a reason to believe that there is a certain degree of similarity between the contested mark and the cited mark.

Consumers of the services in question, in particular retail services for smart phone cases, rental of computers, and providing computer programs on data networks, are overlapping with those of telecommunications and electronic machines and apparatus. In this respect, these are closely related.

Based on the foregoing, the Board decided to invalidate the contested mark in contravention of Article 4(1)(xv) because the relevant consumers are likely to confuse a source of the services in question with SONY or an entity that is systematically or economically connected to the claimant.

UNIQLO Lost in Trademark Opposition against UNIPRO

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UNIQLO lost in its attempt to oppose TM Reg no. 6746724 for the mark “UNIPRO” in class 28 due to dissimilarity and unlikelihood of confusion with a world-famous Japanese clothing brand “UNIQLO”.
[Opposition case no. 2023-900278, Gazette issued on December 27, 2024]

UNIPRO

Kabushiki Kaisha UNIQUE, a Japanese corporation, filed a trademark application for the mark “UNIPRO” in relation to pet toys and sports equipment in class 28 with the Japan Patent Office (JPO) on April 17, 2023 [TM App no. 2023-41531]. The mark has the word “UNIPRO” written in two lines inside a square (see below).

On October 10, 2023, the JPO examiner approved the registration of the applied mark without issuing an office action. Subsequently, the JPO published the mark for a post-grant opposition on October 27, 2023.

Opposition by UNIQLO

Fast Retailing Co., Ltd., a public Japanese retail holding company, is best known for its flagship brand UNIQLO. The company filed an opposition with the JPO on December 8, 2023 by citing its own earlier trademark registrations for the UNIQLO mark.

Fast Retailing claimed that the applied mark should be cancelled in contravention of Article 4(1)(xi), (xv) and (xix) of the Japan Trademark Law because of a high degree of similarity to and a likelihood of confusion with famous fashion brand UNIQLO when used on the goods in question.

Fast Retailing argued, among other things, visual and aural similarity between UNIPRO and UNIQLO. Arranging the first three letters “UNI” in the top line and the last three letters in the bottom line in a square would be anything but a coincidence. Since the mark “UNIQLO” is a coined word and has become famous to indicate Japanese clothing brand operated by Fast Retailing Group, the applicant must have intended to free-ride on the goodwill bestowed on UNIQLO and unjustifiably obtain profits by using the applied mark “UNIPRO” that is confusingly similar to the cited mark.

JPO decision

The JPO Opposition Board found that the cited mark and “UNIQLO” have been widely recognized among relevant consumers in Japan to indicate a source of clothing managed by Fast Retailing Group.

In the meantime, the Board held “UNIPRO” is dissimilar to and unlikely to cause confusion with “UNIQLO” by stating:

  1. The applied mark and the cited mark both consist of white letters and a square. They also share the letters “UNI” in the top line and “O” in the bottom line. However, the difference of the letters “PR” and “QL” in the bottom line gives an impression that the marks represent different word in a square. Therefore, the applied mark is distinguishable from the cited mark in appearance.
  2. Comparing the sound of the applied mark with that of the cited mark, there is a difference in the third tone of “pu” and “ku”. This difference has anything but negligible effect on the overall tone and impression since respective sound has a short four-syllable structure. Thus, the Board finds it reasonable to conclude that there is no risk of mishearing each other.
  3. Conceptual aspect does not have impact on the assessment of likelihood of confusion, since both marks are meaningless.

Taking into consideration a low degree of similarity between the marks, even if the cited mark has become famous among relevant consumers, the Board has no reason to believe the consumers would consider an origin of the goods in question bearing the applied mark from UNIQLO or an undertaking economically or systematically linked to Fast Retailing.

Based on the foregoing, the Board decided to dismissed the entire opposition.

TOMMY HILFIGER vs TOMTOMMY

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The Japan Patent Office (JPO) did not side with Tommy Hilfiger Licensing B.V. in an opposition against TM Reg no. 6604265 “TOMTOMMY” due to dissimilarity and unlikelihood of confusion with “TOMMY” and “TOMMY HILFIGER”.
[Opposition case no. 2022-900456, gazette issued on December 27, 2024]

TOMTOMMY

The contested mark, consisting of the word “TOMTOMMY” in standard characters, was filed with the JPO by a Chinese individual on January 20, 2022 for use on shoulder bags, tote bags, sports bags, wallets, umbrellas and other goods in Class 18, and underwear, belts, shoes, caps, coats, socks and other goods in Class 25 on January 30, 2022 (TM App no. 2022-10028).

The JPO examiner made an administrative decision to grant registration of the mark on August 3, 2022. Subsequently, the mark was published in Trademark Gazette for post-grant opposition on August 31, 2022.

Opposition by Tommy Hilfiger

Tommy Hilfiger Licensing B.V. filed an opposition with the JPO on October 31, 2022 by citing its own earlier trademark registrations for the wordmark “TOMMY” or “TOMMY HILFIGER”.

Tommy Hilfiger claimed that the contested mark should be cancelled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law.

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.

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

Tommy Hilfiger contends that the contested mark is composed of two distinctive words, “TOM” and “TOMMY”. Since “TOMMY” has been widely recognized by the relevant consumers to indicate the world-famous fashion brand “TOMMY HILFIGER”, the average consumers, uppon seeing the goods in question bearing the contested mark, will consider the term “TOMMY” as a prominent part of the contested mark in order to identify its origin. If so, the contested mark is similar to the cited marks a high degree.

Moreover, Tommy Hilfiger has used not only the mark “TOMMY”, but also various marks containing “TOMMY”, such as “TOMY JEANS”, “TOMMY NOW”, “TOMMY SPORT”, “TEAM TOMMY”, “TOMMY FACTORY”. In those circumstances, the consumers are likely to mistakenly believe that the goods in question bearing the contested mark “TOMTOMMY” come from the same undertaking or from economically-linked undertaking.

JPO decision

To my surprise, the JPO Opposition Board questioned the high degree of recognition of fashion brands, “TOMMY” and “TOMMY HILFIGER”, because the claimant did not provide sufficient evidence to prove the substantial and extensive use of the cited marks in Japan.

Furthermore, the Board denied similarity even between “TOMTOMMY” and “TOMMY” by stating:

  1. The contested mark is considered to be a coined word, and therefore has no specific meaning.
  2. Visually, both marks are distinguishable due to the difference in the number of letters that constitutes respective mark (8 letters vs 5 letters).
  3. Aurally, both sounds are dissimilar because the prefix sound “TOM” has a significant impact on the overcall pronunciation.
  4. A conceptual comparison is neutral because neither “TOMTOMMY” nor “TOMMY” has any clear meaning.

Because Tommy Hilfiger failed to demonstrate a high degree of popularity of the cited marks, the Board found that there was no reason to believe that the relevant consumer would confuse the source of the goods at issue bearing the contested mark with Tommy Hilfiger or an economically-linked undertaking due to a low degree of similarity between the marks.

Based on the foregoing, the Board decided the contested mark shall not be canceled and dismissed the oppositions entirely.

Trademark dispute: MONSTER EVERGY vs POCKET MONSTERS

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In a trademark opposition disputed between “MONSTER ENERGY” and “POCKET MONSTERS”, the Japan Patent Office (JPO) did not side with Monster Energy Company and decided in favor of Nintendo.
[Opposition case no. 2023-900162, decided on December 19, 2024]

POCKET MONSTERS

Nintendo / Creatures Inc. / Game Freak Inc., the IP owners of “Pocket Monsters”, widely known as its abbreviation, “Pokémon” as well, filed a trademark application for wordmark “POCKET MONSTRERS” in standard character for use on various categories of goods and services in classes 3, 9, 14, 16, 18, 20, 21, 24, 25, 28, 30 and 41 with the JPO on September 1, 2022 (TM App no. 2022-101055).

Pokémon, a blend of the words “Pocket Monsters”, means not only fictional creatures that inhabit the fictional Pokémon World, but also a Japanese media franchise that includes video games, animated series, films, and a trading card game.

The JPO granted protection of the applied mark without issuing any office action on April 3, 2023. Subsequently, the mark was published for post-grant opposition on May 12, 2023.

Opposition by Monster Energy

Monster Energy Company, the parent company of Monster Energy Drink, filed an opposition against “POCKET MONSTERS” with the JPO on July 10, 2023 before the lapse of a two-month statutory period counting from the publication date.

Monster Energy claimed a partial cancellation of the applied mark in relation to the designated goods of class 30 including tea, tea-based beverages, coffee, coffee beverages, cocoa based on Article 4(1)(vii) and (xv) of the Japan Trademark Law by citing its owned earlier marks that consist of “MONSTER ENERGY” or “MONSTER” in class 32.

Monster Energy alleged that the mark “MONSTER” has become famous among consumers to indicate energy drinks originating from the claimant. There was no dispute that the applied mark contains the term “MONSTER”. Therefore, relevant consumers would mistakenly associate the opposed mark with the claimant and consider a source of the beverages bearing the mark “POCKET MONSTERS” from a licensee of the claimant.

JPO decision

The JPO Opposition Board found evidence sufficient to establish a high degree of recognition of the mark “MONSTER ENERGY” to indicate energy drinks from the claimant. However, the Board questioned whether the cited marks have been widely recognized even among general consumers of carbonated beverages and juices other than energy drinks.

In addition, the Board found evidence insufficient to find a certain degree of recognition of the mar “MONSTER” per se.

Based on the above findings, the Board assessed similarity of mark by comparing overall appearance, sound and meaning between “MONSTER ENERGY” and “POCKET MONSTERS”.

From appearance and sound, the difference of words, “ENERGY” and “POCKET” has a material effect on overall visual and aural impression to the extent that relevant consumers can easily distinguish. Conceptually, the marks are unlikely to cause confusion because the opposed mark does not give rise to any specific meaning contrary to the cited marks. Therefore, the opposed mark is deemed dissimilar to the cited mark “MONSTER ENERGY”.

Given the low degree of similarity between “MONSTER ENERGY” and “POCKET MONSTERS”, the Board has no reason to believe that relevant consumers are likely to associate the opposed mark used on the goods in class 30 with Monster Energy or its licensee.

If so, the opposed mark should not be cancelled in contravention of Article 4(1)(vii) and (xv).