Formula One Successful in Registering “F1”

In a recent decision, the Appeal Board of Japan Patent Office (JPO) overturned the examiner’s rejection and decided to register the wordmark “F1” in standard character by finding acquired distinctiveness as a source indicator in relation to automobile races in class 41.

[Appeal case no. 2021-1819, Decision date: November 5, 2021]


Formula One Licensing BV, managing the trademarks for the FIA Formula One World Championship, applied wordmark “F1” in standard character for use on ‘organization, arranging and conducting of automobile races; providing information relating to automobile races’ in class 41 on May 7, 2018 (TM App no. 2018-58985).

Article 3(1)(v)

The JPO examiner rejected the mark “F1” because of lack of inherent distinctiveness based on Article 3(1)(v) of the Japan Trademark Law on the grounds that a sign consisting of a digit and an alphabet is commonly used in transactions to represent article number, model number or standards. If so, the applied mark shall not play a role in a specific source indicator.

Article 3(1)(v) prohibits any mark from registering if it solely consists of a very simple and common sign.

Trademark Examination Guidelines (TEG) sets forth that a mark consisting of one or two alphabetical letters followed by a numeral, e.g. “A2”, “AB2”, is unregistrable under the article.

Followings are also enumerated as unregistrable marks under the article.


One or two alphabetical letters, e.g. “AA”

Two alphabetical letters combined with “-” or “&”, e.g. “A-B”, “C&D”

One or two alphabetical letters accompanied by “Co.”, e.g. “AB Co.”

A numeral followed by one or two alphabetical letters, e.g. “2A”

The applicant filed an appeal against the refusal and argued the distinctiveness of the “FS12” mark.

Formula One Licensing BV filed an appeal against the refusal and argued acquired distinctiveness of the “F1” mark on February 9, 2021.

JPO Appeal Board decision

The Appeal Board affirmed the examiner’s finding that the applied mark “F1” inherently lacks distinctiveness as a source indicator and shall not be registered under Article 3(1)(v).

In the meantime, the Board found the mark has acquired distinctiveness as a result of substantial use in relation to automobile races to indicate Formula One for more than seven decades. The Board could not find a single fact that the term “F1” has been used in relation to the services in question by any entity unrelated to the applicant. If so, the Board has a reasonable ground to believe that relevant consumers and traders would conceive the mark “F1” as a source indicator of Formula One and shall be exceptionally registered under Article 3(2).

Article 3(2)

Notwithstanding the preceding paragraph, a trademark that falls under any of items (iii) to (v) of the preceding paragraph may be registered if, as a result of the use of the trademark, consumers are able to recognize the goods or services as those pertaining to a business of a particular person.

Based on the above findings, the Board overturned the examiner’s rejection and granted protection of the wordmark “F1” in standard character for use on services relating to automobile races in class 41.

Nintendo loses trademark fight over “Switch” name in Japan

The Japan Patent Office (JPO) rendered advisory opinion in a trademark fight over “Switch” name unfavorable to Japanese video game giant Nintendo.
[Case no. 2018-600008, Gazette issue date: May 31, 2019]

Nintendo Switch

Nintendo released The Switch, a home video game system that can also be used as a handheld, in March 2017. The Switch has become the fastest-selling home game console ever in the United States. By the end of 2017, more than 14 million consoles were sold worldwide.

Nintendo owned trademark registration no. 3274643 for the SWITCH mark (see below) on home games in class 9 since 1997.

Japan TM Registration no. 3274643 for SWITCH by Nintendo

Switch Carrying Case (Hard Pouch Bag)

On November 22, 2017, Nintendo found ALLONE CO., Ltd., a Japanese merchant for game accessories, distributes hard pouch bag for home games (see below) via websites and electronics retail stores.

It is obvious that a word “SWITCH” is indicated in prominent manner with a larger font size on package of the pouch bag, however, pictures of the Nintendo Switch and the console in the bag are printed on the package.

In order to settle the trademark dispute, Nintendo requested advisory opinion to the JPO on March 15, 2018.

Advisory Opinion (Hantei)

The Japan Trademark Law allows the Japan Patent Office to provide advisory opinions with respect to the scope of trademark right upon request under Article 28.

Proceedings of the advisory opinion system is almost the same as invalidation trial. Upon a request of advisory opinion from either party, the JPO appoints three examiners to constitute a trial board and orders other party to answer the request for subsequent trial. Board seldomly holds an oral hearing to investigate the case. In general, all proceedings are based on written statements and documentary evidences.

From a legal point of view, the advisory opinion by JPO does not have a binding effect, unlike the judicial decision. Accordingly, less than 10 trademark cases have been lodged with the JPO to seek the advisory opinion annually.

JPO Opinion

On April 11, 2019, the JPO released its advisory opinion to the case by stating that:

  1. As an undisputed fact, the Nintendo Switch has acquired a certain degree of reputation and popularity as a source indicator of Nintendo’s home video games among relevant consumers by the time ALLONE started to promote Switch pouch bag.
  2. It has become common practices that game accessories made by unrelated entities to the game maker have been provided with an explicit indication of its usage or purpose, “FOR” or “(専)用” on package.
  3. ALLONE indicates “FOR SWITCH” with a smaller font size on upper right of the package as well.
  4. Based on the foregoing, the board considers that relevant consumers with an ordinary care would perceive “SWITCH” on the package as a mere indication to suggest its usage, namely, suitable pouch bag for the Nintendo Switch. If so, it is unlikely that the “SWITCH” mark in dispute on the package plays a role of source indicator, but rather a mere description to indicate quality , usage or purpose of the goods.

Consequently, the Board decided the “SWITCH” mark in dispute would not conflict with Nintendo’s trademark right since Article 26 (1)(ii) of the Trademark Law provides trademark right shall be unenforceable against a mark simply indicating quality or usage of goods to the extent that the mark is used in an ordinary manner.