JPO Prosecution

MARKS IP Law Firm represents a wide variety of cases. Regardless of the nature of your case, our attorney will represent you with professionalism and passion.
Below are examples of achievement for domestic trademark prosecution cases to what we are entrusted.

We are successful in an appeal against JPO examiner’s refusal to our client’s word mark “OHO” [Case no. 2017-7884]. Examiner refused the mark due to a conflict with senior registration for a mark consisting of the OHO device and “ORIENTAL HEALTH ORIGIN”. In an appeal, we strongly argued dissimilarity of mark on the grounds that the OHO device is apparently unreadable due to its figurative design and remaining literal elements are too distinctive to ignore in the assessment of mark similarity.
As a representative of PUMA SE (Germany), we acted in front of the Japan IP High Court for trademark cases to dispute validity of single cat device marks and successfully obtained favorable decisions to PUMA and its famous iconic jumping cat logo. See more details here.  In judicial appeals, we strongly argued likelihood of confusion as well as bad faith of applicant by citing precedent court cases, a written confession by the applicant, and an expert opinion to search result showing 40% of the interviewees conceived PUMA from the disputed mark.
We, on behalf of PUMA SE, have successfully Japanese TM Registration nos. 5661816 and 5861923 for the KUMA mark invalidate due to a likelihood of confusion with world-renowned PUMA logos. PUMA entrusted the cases to us after unfavorable decisions by the JPO to dismiss trademark opposition represented by other Japanese law firms. Regardless of making same argument – a likelihood of confusion – with the opposition, the JPO sided with PUMA and overruled the decisions. Read more details here for #5661816 and here for #5861923.