タグ: Japan Trademark Law

Fashion magazine “ELLE” loses “RIELLE” trademark opposition in Japan

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The Japan Patent Office (JPO) dismissed an opposition filed by HACHETTE FILIPACCHI PRESSE, Société Anonyme (FR) against Japanese trademark registration no. 6378600 for wordmark “RIELLE riche” by finding dissimilarity to and less likelihood of confusion with French fashion magazine “ELLE”.

[Opposition case no. 2021-900263, Gazette issued date: May 27, 2022]

RIELLE

Opposed mark, consisting of the term “RIELLE” and the other term “riche” depicted below in small font (see below), was applied for registration on April 9, 2020, for various goods belonging to classes nos. 9, 14, 18, and 25 by SOLO PRODUCTS Co., Ltd., a Japanese company.

The JPO granted protection on April 13, 2021, and published for opposition on May 11, 2021.

Opposition by ELLE

On July 8, 2021, before the lapse of a two-month opposition period, HACHETTE FILIPACCHI PRESSE, Société Anonyme (hereinafter referred to as HFP), a French company responsible for the well-known women’s magazine ELLE, which had the largest readership of any fashion magazine in the world, with culturally specific editions published on six continents in the early 21st century, filed an opposition to “RIELLE”.

In the opposition, HFP contended that the opposed mark shall be canceled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law.

Article 4(1)(xi) is a provision to refrain from registering a junior mark that is identical with, or similar to, any senior 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, to the benefit of the brand owner and users.

HFP argued that the opposed mark is similar to HFP’s earlier registrations for the mark “ELLE” and relevant consumers are likely to confuse or misconceive the opposed mark with HFP or any business entity systematically or economically connected with the opponent due to the high popularity of opponent’s fashion brand “ELLE” and the close resemblance between the opposed mark and “ELLE”.

Board decision

The Board admitted the “ELLE” mark has acquired a high degree of reputation and popularity among relevant consumers and traders as a source indicator of the opponent in connection with magazines, online magazines as well as fashion and daily items.

In the meantime, the Board found that a prominent portion of the opposed mark “RIELLE” is dissimilar to the “ELLE” mark from visual, phonetical, and conceptual points of view.

Taking into consideration a quite low degree of similarity between the marks, the Board had no reason to believe that relevant consumers would mistakenly assume the opposed goods originate from the same source as or are associated with, the opponent when used on goods in question. Besides, being in mind that the term “ELLE” is a French word meaning “she” in English, the opponent mark shall not be strong.

The Board considered it is unlikely that relevant consumers would conceive of the “ELLE” mark from the term “RIELLE” because of an indivisible combination between “RI” and “ELLE” in the configuration of the opposed mark.

Based on the foregoing, the Board concluded that relevant traders or consumers would not confuse or misconceive a source of the opposed mark with HFP or any entity systematically or economically connected with the opponent when used on any goods in classes 9, 14, 18, and 25 and dismissed the opposition entirely.

JPO Rejected Colormark of Louboutin’s red soles

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On June 7, 2022, the Appeal Board of the Japan Patent Office (JPO) decided to reject a red color mark used on the soles of high heels by Christian Louboutin due to a lack of inherent and acquired distinctiveness.

[Appeal case no. 2019-29921]

Louboutin’s Red Soles

Fast on the heels of the introduction to register color marks in Japan, Christian Louboutin filed a trademark application for a color mark consisting of a red (Pantone 18-1663TP) colored in soles (see below) for use on high heels in class 25 on April 1, 2015 (TM App no. 2015-29921).

The JPO examiner refused the color mark based on Article 3(1)(iii) of the Japan Trademark Law by stating red color has been commonly used on shoes to enhance the aesthetic appearance and attract consumers of high heels. Red-colored heels and shoes have been widely distributed before the launch of Louboutin shoes in 1996 in Japan and even now. Under the circumstance and trade practice, the examiner had no reason to believe the color mark perse has acquired distinctiveness as a source indicator of Louboutin among relevant consumers in Japan. If so, the mark shall not be registrable under Article 3(2).

Louboutin filed an appeal against the refusal and disputed the inherent and acquired distinctiveness of Louboutin’s red soles as a color mark on October 29, 2019.

To bolster the acquired distinctiveness of the red soles, Louboutin conducted an online brand awareness survey to target 3,149 females, aging from 20 to 50 and having a domicile in Tokyo, Osaka, or Nagoya where Louboutin have stores. The survey demonstrated that 43.35% of the interviewees conceived of Louboutin in the answer to an unaided open-ended question (Q1). 53.99% associated the color mark with Louboutin in the answer to a closed-ended question, where it mentioned Louboutin along with other close competitors (Q2). Louboutin argued, that from the survey, it is obvious that Louboutin’s red soles have acquired distinctiveness among relevant consumers and shall be registered under Article 3(2) even though lacking inherent distinctiveness.

JPO Appeal Board decision

The Appeal Board affirmed the examiner’s findings and found the color mark perse lacks distinctiveness in relation to the goods in question by taking into account of fact that a lot of shoes with red-colored soles have been distributed by other shoemakers in Japan.

In the assessment of acquired distinctiveness, the Board pointed out a fact that more than half of the interviewees who live in the region where Louboutin stores are could not conceive of Louboutin in the answer to Q1. The survey was insufficient to admit acquired distinctiveness of the applied mark among relevant consumers nationwide, the Board found.

Even among the consumers who could associate the color mark with Louboutin, the Board had an opinion that as a matter of fact, they will be unable to distinguish Louboutin high heels from competitors’ shoes simply by means of red-colored soles without the aid of another source indicator, a wordmark “Louboutin”, used on the shoes given a lot of red-soled heels and shoes have been distributed by competitors as follows.

Besides, under the current trade practice, the Board considered it will inevitably cause a severe disorder and excessive restriction to competitors if it allows registration of a red color that has been freely used in the relevant industry to enhance the aesthetic appearance of shoes.

Based on the foregoing, the JPO concluded the color mark shall not be registrable under Article 3(2) as well.

Adidas Unsuccessful in Opposition over BOOST mark

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On May 18, 2022, the Japan Patent Office (JPO) dismissed an opposition filed by Adidas AG against Trademark Reg no. 6383132 for the wordmark “G-BOOST” by finding dissimilarity and unlikelihood of confusion with Adidas “BOOST”.

[Opposition case no. 2021-900273]

G-BOOST

UNI WORLD Co., Ltd. filed wordmark “G-BOOST” in standard character for use on ‘gloves for protection against accidents; clothing for protection against accidents; protective industrial shoes; dust masks’ in class 9 and ‘clothing; footwear; gloves; thermal gloves; sports shoes; sportswear; socks’ in class 25 on March 30, 2020.

The applicant promotes worker gloves bearing the mark “G-BOOST.”

The JPO granted protection of the mark on March 30, 2021, and published for opposition on May 25, 2021.

Opposition by Adidas

On July 14, 2021, Adidas AG filed an opposition and argued the opposed mark shall be canceled in contravention of Article 4(1)(vii), (x), (xi), and 4(1)(xv) of the Japan Trademark Law due to a conflict with earlier trademark registrations pertinent to Adidas BOOST shoes, namely, TM Reg nos. 5212257 “BOOST” and 5941352 “ULTRABOOST” on shoes and sports shoes in class 25.

Allegedly, Adidas introduced Boost in 2013 as its revolutionary cushioning system, which provided the highest energy return in any running sneaker. The technology was designed to provide runners with soft cushioning and long-lasting energy that more rigid sneakers couldn’t.

Adidas argued the opposed mark “G-BOOST” is confusingly similar to “BOOST” because the term “BOOST” shall be a prominent portion of the opposed mark given an alphabetical letter “G” perse lacks distinctiveness in relation to the goods in question. Besides, “BOOST” has become famous as a source indicator of Adidas in relation to running shoes. If so, relevant consumers are likely to confuse the source of goods bearing the opposed mark with Adidas.

JPO Decision

The JPO Opposition Board did not admit a certain degree of reputation and popularity of the BOOST mark as a source indicator of Adidas running shoes among relevant consumers in Japan by stating that the opponent failed to produce sufficient evidence to disclose sales figures, market share, and advertising expenditures, media space and time of the goods bearing the BOOST mark even though the opponent produced evidence to demonstrate marketing campaign for the BOOST shoes in Japan.

In addition, the Board compared “G-BOOST” with “BOOST” as a whole and negated the similarity of the marks because of a clear distinction in appearance and sound.

Given the low degree of similarity of the mark and unproved famousness of the opponent mark, the Board has no reason to believe relevant consumers would confuse a source of the goods bearing the opposed mark with Adidas.

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

Canada Goose Failed Trademark Opposition Over Roundel Logo

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On May 11, 2022, the Japan Patent Office (JPO) dismissed an opposition filed by Canada Goose International AG against TM Reg no. 6367416 for a composite mark consisting of red, white, and blue roundel logo and literal elements by finding dissimilarity to and the unlikelihood of confusion with Canada Goose roundel logo.

[Opposition case no. 2021-900228]

Opposed mark

The opposed mark consists of a silhouette of an island or region in white placed right at the center of the emblem, a navy field with twelve red lines radiating from the center, and a wide rounded white frame with the text “KITAKYU GOODS” (top) and “NORTH NINE PROGRAM” (bottom) and five five-pointed-start-like devices (on each side of the frame) in red (see below left).

A Japanese business entity applied for use on seals and stickers [stationery] in class 16 and ornamental adhesive patches for jackets and brassards in class 26 with the JPO on June 29, 2020.

The JPO examiner granted protection of the opposed mark on March 3, 2021, and published for opposition on April 13, 2021.

Opposition by Canada Goose

To oppose registration within a statutory period of two months counting from the publication date, Canada Goose International AG filed an opposition against the opposed mark on June 14, 2021.

Canada Goose argued the opposed mark shall be canceled in contravention of Article 4(1)(vii), (xi), (xv), and (xix) of the Japan Trademark Law because of the remarkable reputation and popularity of earlier trademark registrations for the Canada Goose Roundel Logo (see above right) in relation to apparels and a close resemblance between the opposed mark and the opponent mark by using “confusingly similar” red, white, and blue logo patch.

JPO Decision

The JPO Opposition Board did not find a high degree of reputation and popularity of the Canada Goose Roundel Logo as a source indicator of the opponent among relevant consumers in Japan by stating that the opponent failed to produce evidence pertinent to the sales and advertisement of goods bearing the opponent logo in Japan even though the Canada Goose ranked fourth for a must-buy down jacket in 2021.

From the totality of the evidence, the Board had no choice but to question if the opponent mark has become famous among relevant consumers in Japan as well as Canada, and other countries.

Besides, the Board negated similarity between the marks by virtue of visual distinctions caused by (i) a land-like device depicted at the center and (ii) text and devices placed in the rounded frame. Due to the distinction, both marks give rise to a dissimilar sound. Conceptually, both marks are incomparable since either mark does not have any specific meaning.

Given the low degree of similarity of the mark and unproved famousness of the opponent mark, the Board has no reason to believe relevant consumers would confuse a source of the goods bearing the opposed mark with Canada Goose.

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

Chrysler loses trademark opposition against “JEEPER” in Japan

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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?

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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

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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

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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.

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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?

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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.