タグ: Trademark opposition

JPO Finds trademark “yes no champagne” for wines with the protected appellation of origin “Champagne” registrable even if owned by Japanese company.

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The Japan Patent Office (JPO) dismissed an opposition filed by Comité Interprofessionnel du Vin de. Champagne (C.I.V.C.) against TM Reg no. 6843113 for wordmark “yes no champagne” in Class 33 by stating that Japanese ownership of the contested mark would neither harm the friendly relationship between Japan and France, nor public sentiment.
[Opposition case no. 2024-900238, decided on June 24, 2025]

YES NO CHAMPAGNE

ZERU Co., Ltd. filed a trademark application for word mark “yea no champagne” and its Japanese transliteration arranged in two lines (see below) for use on wines in Class 33 with the JPO on November 16, 2023. [TM App no. 2023-133081]

On May 31, 2024, the JPO examiner issued an office action based on Article 4(1)(xvi) and (xvii) of the Japan Trademark Law.

Article 4(1)(xvi) prohibits registering a mark that could mislead consumers about the quality of the goods.

Article 4(1)(xvii) prohibits the registration of any mark comprised of a mark indicating the place of origin of wines or spirits from the World Trade Organization member that has prohibited its use on wines or spirits not originating from its region.

Since, the applicant restricted the designated goods in Class 33 to wines with the protected appellation of origin “Champagne” as a response to the office action, the JPO examiner granted registration of the mark. Subsequently, the mark was published for post-grant opposition on September 20, 2024.

Opposition by C.I.V.C.

On November 21, 2024, just before a lapse of the two-month statutory opposition period, Comité Interprofessionnel du Vin de. Champagne (C.I.V.C.) filed an opposition and claimed cancelation of the contested mark based on Article 4(1)(vii) of the Trademark Law.

Article 4(1)(vii) provides that a mark shall not be registered if it is likely to cause damage to public policy.

In the opposition brief, the C.I.V.C. argued that any mark containing the term “Champagne” should not be owned by an entity with no connection to or place of business in the region. Such ownership would likely to lead to free-riding on a famous geographical indication, diluting its source-identifying value and ultimately dishonoring France and its citizens, contrary to international faith.

JPO decision

The JPO Opposition Board admitted the remarkable reputation of the geographical indication “Champagne” among the general public, which was acquired through substantive use and marketing efforts made by the C.I.V.C. and other relevant organizations. The Board also found that the term “Champagne” and Champagne wines are cultural products of France and of extremely high significance to the country and its citizens.

Meanwhile, the Board noted that champagne wines are widely distributed in Japan, and that relevant traders commonly use the term “champagne” to refer to the wines.

Taking account of long-lasting trade practice that the term “Champagne” has been commonly used among traders of the goods in question, it would not anything but disorder public policy or moral to use the contested mark that contains the term “Champagne” in connection with wines with the protected appellation of origin “Champagne.”

If so, the Board finds no reason to believe that registration and use of the contested mark by the applicant is likely to harm the friendly relationship between Japan and France or public sentiment.

Based on the above findings, the Board made a decision to dismiss the opposition entirely.

MEN IMPOSSIBLE is not IMPOSSIBLE

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The Japan Patent Office (JPO) dismissed the opposition filed by Impossible Foods Inc. against TM Reg no. 6856327 for the “men impossible” mark due to dissimilarity to earlier mark “IMPOSSIBLE”.
[Opposition case no. 2024-900260, decided on June 17, 2025]

Men impossible

The contested mark consists of the word “men impossible” and a device representing cooked noodles in a bowl with chopsticks (see below). A Japanese individual filed it with the JPO for use in relation to restaurant services in Class 43 on March 5, 2024 [TM App no. 2024-22440].

“MEN” means ‘noodles’ in Japanese.

The JPO granted registration of the mark on October 11, 2024, and published it for post-grant opposition on October 29, 2024.

Opposition by Impossible Foods

Before the lapse of a two-month statutory period counting from the publication date, Impossible Foods Inc., a U.S. corporation that develops plant-based substitutes for meat, dairy, and fish products, filed an opposition with the JPO on December 16, 2024.

Impossible Foods Inc. argued that the contested mark should be canceled in contravention of Article 4(1)(xi) of the Japan Trademark Law due to a close resemblance to its earlier TM Reg no. 6646654 for the word mark “IMPOSSIBLE” in standard character, which designates restaurant services in Class 43.

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.

JPO decision

The JPO Opposition Board found the contested mark “men impossible” is dissimilar to the cited mark “IMPOSSIBLE” by stating that:

Visually, the contested mark and the cited mark differ by virtue of the presence or absence of figurative elements and the word “men,” and therefore relevant consumers are clearly capable of distinguishing two marks in appearance.

Aurally, the sound of “Men Impossible” arising from the contested mark and the sound “Impossible” from the cited mark differ in the presence or absence of the prefix sound “men,” so they are clearly distinguishable in terms of pronunciation.

Conceptually, the contested mark does not give rise to any specific meaning. In the meantime, the cited mark has a meaning of ‘not possible’. There is no risk of confusion in concept.

Therefore, the contested mark and the cited mark are obviously distinguishable in appearance and sound, and there is no risk of confusion in concept.

When considering the overall impression, memory, and associations evoked in the mind of relevant traders and consumers by means of the appearance, pronunciation, and concept of two marks, the Board has a reason to believe that the contested mark is dissimilar to and unlikely to cause confusion with the cited mark.

Based on the foregoing, the Board decided that the contested mark is not subject to cancellation based on Article 4(1)(xi) even if the designated service of both marks are identical or similar.

TORNADO vs TORQNADO

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The Japan Patent Office (JPO) dismissed an opposition filed by GEMBALLA LIMITED against TM Reg no. 6849477 for the word mark “TORQNADO” for use on cars and motorcycles in class 12 due to dissimilarity to IR no. 1100655 for the word mark “TORNADO” that designates automobiles in class 12.
[Opposition case no. 2024-900257, decided on May 27, 2025]

TORQNADO

Suzuki Motor Corporation, a major Japanese automotive company, filed a trademark application for the word mark “TORQNADO” in standard character for use on cars and motorcycles in class 12 with the JPO on January 18, 2024. [TM App no. 2024-4189]

The JPO examiner did not issue an office action in the course of substantive examination and then granted registration of the mark on September 3, 2024.

Subsequently after registration [TM Reg no. 6849477], the mark was published for a post-grant opposition on October 9, 2024.

Opposition by GEMBALLA

Just before the lapse of two-month statutory opposition period, GEMBALLA LIMITED, a German car manufacturer with renowned experience in refining of Posche and McLaren sports cars, filed an opposition with the JPO on November 9, 2024.

In the opposition brief, GEMBALLA claimed cancellation of TM Reg no. 6849477 based on Article 4(1)(xi) of the Japan Trademark Law because of similarity to their IR no. 1100655 for the word mark “TORNADO” that designates “Automobiles and parts thereof, particularly tuned automobiles and parts thereof; accessories for the aforementioned goods as far as included in this class; all aforementioned goods excluding tires” in class 12.

GEMBALLA argued the opposed mark “TORQNADO” is confusingly similar to the cited mark “TORNADO” in appearance and sound. Besides, all goods designated by the opposed mark are deemed similar.

JPO decision

The JPO Opposition Board did not side with GEMBALLA and found both marks dissimilar by stating that:

Visual Comparison:

The presence or absence of the letter “Q” in the middle makes the respective marks distinguishable enough to reduce the likelihood of confusion.

Aural comparison:

The sounds of “TORQNADO” and “TORNADO” differ clearly in the presence or absence of the “ku” sound from the letter “Q.” This difference significantly impacts the overall pronunciation. It gives rise to a different tone and feeling of the sounds, thus making the two marks phonetically distinguishable.

Conceptual comparison:

The opposed mark does not have a specific meaning. Meanwhile, the cited mark has the meaning of “an extremely strong wind that blows in a circle.”  Therefore, both marks are unlikely to cause conceptual confusion.

Given both marks are dissimilar, the opposed mark should not be canceled based on Article 4(1)(xi) even if the goods in question are identical or similar.

JPO found “ARIS” dissimilar to “arivis” in trademark opposition

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The Japan Patent Office (JPO) dismissed an opposition claimed by Carl Zeiss Microscopy GmbH against TM Reg no. 6846031 for word mark “AIRIS” due to dissimilarity to earlier IR no. 1566263 for word mark “arivis”.
[Opposition case no. 2024-900248, decided on May 13, 2025]

AIRIS

Appier Private Limited, a Singapore company, filed a trademark application for word mark “AIRIS” in connection with SaaS, computer programming and other computer software-related services in class 42 with the JPO on February 6, 2024 [TM App no. 2024-11487].

The JPO examiner granted protection of the applied mark and published it for a post-grant opposition on September 30, 2024 after registration [TM Reg no. 6846031].

Opposition by Carl Zeiss

On November 29, 2024, Carl Zeiss Microscopy GmbH, an owner of IR no. 1566263 for word mark “arivis” in standard that designates computer software-related goods and services in classes 9, 42, and 45, filed an opposition with the JPO and claimed cancellation of the mark “AIRIS” in contravention of Article 4(1)(xi) 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.

JPO decision

The JPO Opposition Board assessed similarity between “AIRIS” and “arivis” from visual, aural and conceptual points of view.

  • Visual similarity

Even if the alphabets that constitute the contested mark are included in the cited mark, the terms “AIRIS” and ‘arivis’ differ in the order and the number of the letters, and the presence or absence of the letter “v”. These differences have a significant impact on the overall visual impression of two marks, given both have relatively short character structures. Therefore, the marks are visually distinguishable.

  • Aural similarity

A comparison of the pronunciation of “AIRIS” and “arivis” reveals clear distinctions in the second and third sounds. Despite the presence of the vowel sound (i) in both sounds, the distinction between the second and third sounds has a substantial impact on the overall tone and feel. Consequently, when pronounced as a whole, there is no risk of confusion between the sounds, ensuring their clear distinction.

  • Conceptual similarity

A conceptual comparison is neutral because neither “AIRIS” nor “arivis” has any clear meaning.

Based on the foregoing, the Opposition Board noted:

Even if the contested mark and the cited mark cannot be compared in concept, there is no likelihood of confusion in appearance and sound. Therefore, taking into consideration the overall impression, memory, and associations given to traders and consumers by means of the appearance, pronunciation, and concept of both marks, the Board found a reason to believe that two marks are dissimilar and unlikely to cause confusion when used on the services in question.

Consequently, the JPO decided to dismiss the opposition and declared validity of the contested mark as the status quo.

Trademark dispute: MINI vs. DMINI

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The Japan Patent Office (JPO) dismissed an opposition claimed by BMW against TM Reg no. 6798869 for wordmark “DMINI” in class 12 due to dissimilarity to and unlikelihood of confusion with a famous small car “MINI”.
[Opposition case no. 2024-900137, Gazette issued date: April 25, 2025]

DMINI

Mitsubishi Motors Corporation filed a trademark application for word mark “DMINI” in standard character for use on automobiles, motorcycles, bicycles, electric cars, hybrid electric cars, driverless cars and other goods in class 12 with the JPO on October 10, 2023.

The JPO examiner did not raise any objection in the course of substantive examination, and granted registration on March 29, 2024.

The mark “DMINI” was published on trademark registration gazette (TM Reg no. 6798869) for a post-grant opposition on May 7, 2024.

Opposition by BMW

Bayerische Motoren Werke GmbH (BMW) filed an opposition with the JPO on July 5, 2024 before the lapse of two-month statutory period counting from the publication date.

BMW requested the cancellation of the mark “DMINI” based on Article 4(1)(vii), (xi), and (xv) of the Japan Trademark Law by citing its owned earlier trademark registrations for wordmark “MINI” in class 12.

Allegedly, the cited mark has become famous among the relevant consumers to indicate a source of the world-famous small cars “MINI” that have been imported into Japan for more than the past six decades. BMW argued that the literal element “MINI” would be dominant in the opposed mark, taking into account the high degree of recognition of the cited mark “MINI” among the consumers. If so, both marks should be considered similar, or likely to cause confusion in relation to the goods in question.

JPO decision

From the produced evidence, the JPO Opposition Board found the cited mark “MINI” has acquired a remarkable degree of popularity and reputation among consumers to indicate the automobiles (small cars) manufactured by BMW.

However, the Opposition Board question similarity of the marks by stating that:

“There is a difference in the presence or absence of the letter “D” at the beginning of each mark. The difference has a strong visual impact and is likely to create a different impression given the relatively short character structure of five and four letters respectively. Therefore, there is a low degree of visual similarity between the marks.

Secondly, there is a difference between in the overall sound of “DMINI” and “MINI” due to the presence or absence of the sound “D” at the beginning. It has a significant impact on the overall sound, given the short phonetic structure of four or two sounds, and thus the overall tone and aural impression are clearly different to the extent that a risk of confusion in pronunciation is not conceivable.

Thirdly, the opposed mark does not give rise to a specific meaning, whereas the cited mark has a meaning of “famous automobile brand owned by BMW”. If so, there will be any conceptual confusion.”

Even if the cited mark “MINI” has become famous and the goods in question are highly related to the goods bearing the cited mark administered by BMW, given the facts that the term “MINI” is not a coined word and the low degree of similarity between “MINI” and “DMINI”, the Board has no reason to believe that the consumers are likely to confuse a source of goods bearing the opposed mark “DMINI” with BMW.

Based on the foregoing, the Board decided to dismiss the entire opposition and declared the validity of the mark “DMINI” as status quo.

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).

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.

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).