A word mark consisting of “Perfect” is deemed dissimilar to Spanish term “PERFECTO”

The Appeal Board of JPO (Japan Patent Office), in an appeal disputing adequacy of examiner’s decision to refuse trademark application for a word mark “Perfect” on the grounds of conflict with a senior registration for word mark “PERFECTO”, overturned examiner’s decision and admitted to grant protection of the mark “Perfect”. [Fufuku 2016-13360]

The mark in dispute was filed on June 8, 2015 designating computer program and other goods in class 9. As a result of ex-officio examination, the JPO examiner refused the mark due to conflict with senior trademark registration no. 5019378 for word mark “PERFECTO” in standard character. Cited registration has been effective since January 19, 2007 covering identical goods in class 9.

In the decision, the Appeal Board held the term “PERFECTO” is unfamiliar to relevant consumers in Japan unlike an English word “Perfect”. Besides, there finds no circumstance to suggest the term is commonly used in connection with the goods in dispute. Thus, the consumers are likely to conceive the term as a coined word.

In the assessment of mark, the Board admitted both marks give rise to same sound, however, concluded it is unlikely to happen that consumers confuse or misconceive a source of origin between the marks in view of distinction in appearance, meaning and overall impression.

Apparently, the Board considered a mere difference arising from alphabetical letter “O” at the ending of both terms is non-negligible in visual and conceptual assessment of the marks by taking into consideration of a fact that “Perfect” is much familiar English word among the public in Japan.

In my personal opinion, the decision paid less attention to Spanish language to my surprise.

MASAKI MIKAMI, Attorney at IP Law – Founder of MARKS IP LAW FIRM

RED TAB jeans position mark is subject to cancellation in association with goods not having “a back pocket of trousers”

The opposition board of JPO decided to partially cancel trademark registration no. 5807881 for RED TAB position mark (shown in below) covering goods in Class 25 owned by EDWIN KK on the grounds that the registration fails to conform to the requirements provided in the main paragraph of Article 3 (1) of the Trademark Law.

The position mark in dispute was filed on April 1, 2015 by designating the goods of “Trousers; long trousers; short trousers; jogging pants; sweat pants; ski pants; nightwear; pajamas; Japanese sleeping robes; underwear; drawers and underpants; panties, shorts and briefs; clothes for sports” in class 25 and registered on November 20, 2015 as it is.

In filing a position mark, it is mandatory to specify position of the mark in connection with goods applicant seeks to register.

Disputed registration specifies the mark as follows.

The trademark for which registration is sought (hereinafter referred to as the “trademark”) is a Position mark in which a position affixed to the trademark is specified, the trademark is affixed to the upper left part of a back pocket of trousers, and consists of a red rectangular tab figure in which Alphabetic characters of “EDWIN” are indicated. Incidentally, description of only a pocket and a tab figure is an enlarged drawing of a portion for obviously describing a mark affixed to the position. Further, broken lines represent one of the shapes of goods, and do not represent a component constituting the trademark.

The main paragraph of Article 3 (1) requires an applied trademark should be either currently in use or planned to use. Opponent, EVISU JAPAN LIMITED, did not contend this respect at an initial opposition brief, however, the Board raised the ground as a result of ex-officio examination in accordance with Article 43-9 (1) of the Trademark Law.

The Opposition Board notified the ground and ordered EDWIN to respond it if unacceptable. But EDWIN did not respond to the notification.

Based on the foregoing, the Board concluded:

it cannot be conceived the mark is used in “Night gowns; Negligees; Japanese sleeping robes; bathrobes; other nightwear of which trousers have no back pocket; undershirts; corsets; chemises; slips; brassieres; petticoats; other underwear of which trousers have no back pocket; anoraks; karate suits; sports over uniforms; kendo outfits; judo suits; headbands; wind-jackets; wristbands; other cloths for sports of which trousers have no back pocket, of the designated goods, and it cannot be recognized that the mark is a trademark to be used in connection with goods pertaining to the business of the applicant, and hence the mark does not meet the requirements of the main paragraph of Article 3(1) of the Trademark Law.

Evidently, this is a first cancellation to position mark which becomes registrable under the New Trademark Law effective from April 1, 2015.

MASAKI MIKAMI, Attorney at IP Law – Founder of MARKS IP LAW FIRM

“PIKA-Q” is unlikely to confuse with a well-known iconic mascot name, “PIKACHU”


Opposition Board of the Japan Patent Office (JPO) decided to dismiss an opposition filed by Nintendo Co., Ltd. who claimed trademark registration no. 5845409 for the word mark “ピカキュウ” (to be pronounced as “PIKA-Q”) in a standard character designating goods of “lighting apparatus for automobiles; electric lamps” in class 11 and “retail or wholesale services dealing with the goods” in class 35 should be cancelled due to a likelihood of confusion with senior trademark registrations (Citation 1 and 2) pertinent to a well-known iconic mascot name “PIKACHU”, a fictitious monster appeared in Pokémon of opponent’s commercial interest [Case No. Opposition 2016-900226].


JPO admitted “PIKACHU” has attained a certain level of recognition amongst consumers as Pokémon characters name in association with opponent’s game and toy businesses, however, concluded that opposed mark is distinguishable from and distinctively dissimilar to the citations on the following grounds.

– In appearance, the word “ピカキュウ” of opposed mark written in Katakana characters looks similar to “ピカチュウ” in the citations since visual difference in a middle letter of “キ” and “チ” is trivial in light of resembled configuration of respective letter consisting of two horizontal lines and a vertical line.

– But, “PIKA-Q” and “PIKACHU” are phonetically distinguishable as a whole since both terms are different in overall nuance and tone by taking into consideration of a non-negligible effect caused by difference in the third sound of “kyu” and “chu”, and a few phonetic composition of four sounds in total.

– Both marks are deemed incomparably dissimilar in concept on the condition that opposed mark does not give rise to any specific meaning, but the citations are perceived as PIKACHU in Pokémon.

Besides, the Board held that relevant consumers are not only unlikely to associate or misconceive opposed mark used on the goods/services supra with the citations but also connect or confuse a source of the goods/services with opponent or related entities with commercial or organizational interest should it remain unclear whether opponent does or will expand business in association with the goods/services of opposed mark. Finding that any goods licensed by opponent is remotely associated with the opposed goods/services and the citations representing Pokémon characters do not correspond to a so-called “house mark” in opponent business, JPO concluded as mentioned above.

“PIKA-Q” appears a trademark parody originated from well-known iconic mascot name, “PIKACHU”. It is presumed that actual use on LED lamp for automobiles implying a meaning of quality of the lamp (PIKA is an imitative word to describe sudden brightness of lamp in Japanese) may affect to the Board decision.

MASAKI MIKAMI, Attorney at IP Law (Japan)

MASAKI MIKAMI, Attorney at IP Law (Japan) – Founder of MARKS IP LAW FIRM

Nintendo sues go-kart company over copyright infringement and disputes over “MariCar” trademark


Copyright infringement lawsuit

On February 24, 2017, Nintendo Co., the Kyoto-based video game giant filed a lawsuit with the Tokyo District Court against a Tokyo-based go-kart service operator, MariCar, for alleged copyright violations.

MariCar rents out go-karts that have been modified to run on public roads.

The go-kart service is exceedingly popular with foreign tourists, with many of the participants donning costumes that look similar to Nintendo game characters such as Super Mario.

In the suit, Nintendo claims MariCar violated copyright by renting unauthorized costumes of Nintendo game characters such as Super Mario to its customers and using pictures of them to promote its business.

Nintendo is seeking ¥10 million in damages from the company and an end to the alleged copyright infringement.

Dispute over the MariCar trademark  

Nintendo also alleged in an opposition over the MariCar trademark registration No. 5860284 covering goods and services in class 12 ,35 and 39 that MariCar is an abbreviation of “Mario Kart,” one of its blockbuster game titles, however, the JPO rules against Nintendo to admit go-kart company keep MariCar trademark in a decision dated Jan. 26, 2017 [Opposition No. 2016-900309].

In the opposition, Nintendo claimed that MariCar was widely interpreted by the public as short for “Mario Kart,” citing other examples of popular video games that go by abbreviated nicknames in Japanese, such as “Pokemon” for “Pocket Monsters,” “Pazudora” for “Puzzle & Dragons” and “Sumabura” for “Super Smash Bros.”
Consequently, the Opposition Board of JPO denied it and held the trademark MariCar was neither widely used nor recognized by game users as an abbreviation of Nintendo’s blockbuster video game title “Mario Kart,” adding that it was “an unassociated trademark.”



MASAKI MIKAMI, Attorney at IP Law (Japan) – Founder of MARKS IP LAW FIRM

JPO eventually allowed registration of color marks since commencement of Non-Traditional trademark application in 2015

On March 1st, 2017, the JPO announced to allow registration of color marks for the first time ever since commencement of Non-Traditional trademark application in April, 2015.

The trademark law of Japan protects sound marks, motion marks, position marks, hologram and color marks as well as traditional marks provided they meet all the other criteria for a valid trademark.

First color marks registration

The honor of first color marks registration went to (i) a three-color-combination mark in blue, white and black for goods of “erasers” in class 16 owned by Tombow Pencil Co., Ltd. and (ii) a seven-color-combination mark in white, orange, white, green, white, red and white for retail services in class 35 owned by Seven-Eleven Japan Co., Ltd..

Tombow Pencil Co., Ltd. has used the three-color-marks on erasers and other stationery.


The seven-color-marks is a symbolic design representing well-known convenience store of Seven-Eleven Japan Co., Ltd.


According to the announcement from the JPO, 492 applications for color marks were filed since April, 2015 so far. Above color marks were both filed on the very beginning day of Non-Traditional trademark application. Taking into consideration of a six-month examination period on average for traditional marks, it has obviously spent substantial time even when it compares with other Non-Traditional marks. As of February 20, 2017, 110 sound marks are registered among 517 applications. 23 position marks are registered among 345 applications. 65 motion marks are registered among 123 applications.

It is anticipated that the JPO expedites to terminate examination for color marks in the months ahead.