“MAMAS & PAPAS” failed in an opposition to invalidate trademark registration for the mark “PAPA’S&MAMA’S”.

The Opposition Board of Japan Patent Office issued a decision denying the opposition filed by MAMAS & PAPAS HOLDINGS LIMITED, a UK-based retailer and manufacturer supplying prams, pushchairs, baby products, furniture and maternity wear, and declared to sustain trademark registration no. 5853559 for the mark “PAPA’S&MAMA’S” in Class 18 and 44. [Opposition case no. 2016-900270]

Opposed mark

Opposed mark was filed by PAPA’S&MAMA’S Co. Ltd., designating goods of bags and pouches in class 18 and services of aesthetician services, beauty care and hairdressing in class 44 on March 15, 2016 and granted for protection on May 27 of the year.


MAMAS & PAPAS HOLDINGS LIMITED alleged to cancel the registration due to violation of Article 4(1)(xi) and 4(1)(xv) of the Japan Trademark Law in an opposition by citing his senior registered marks of “MAMAS & PAPAS”.


The Opposition Board dismissed an opposition based on Article 4(1)(xi) by stating the ground as follows.


Five sounds of opposed mark among 9 sounds in total are identical with opponent mark, however, overall pronunciations are clearly distinguishable due to reverse order of “PAPA” and “MAMA” so that both marks are deemed dissimilar in verbal point of view.


Admittedly, both marks may give rise to a meaning of father and mother from word of “PAPA” and “MAMA” respectively. But difference coming from possessive form and plural form inevitably causes non-negligible gap in connotation as a whole.


Likewise, both marks are deemed comparatively dissimilar in visual point of view by taking into consideration of reverse order of “PAPA” and “MAMA”, possessive form and plural form.


Taking account of fact that opponent mark has not acquired remarkable reputation as well, the Board decided to conclude both marks are unlikely to cause confusion in the mind of consumers and thus entirely dissimilar.

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

Consumers are unlikely to confuse or associate the mark “GOTHAM CITY” with Batman’s place of residence and DC Comics when used on apparels, bags and fashion accessories

The Appeal Board of Japan Patent Office (JPO) has cancelled an initial decision by JPO examiner to refuse the mark “GOTHAM CITY” with a logo, and ordered to grant protection for the mark by decision of March 14, 2017 [Appeal case no. 2016-9140].

Trademark in dispute

The mark in dispute consists of “GOTHAM CITY” written in alphabetical letters and Japanese characters as shown below.

Applicant filed the mark on April 17, 2015 to the JPO by covering goods of “key holders; fashion accessories” in class 14, “bags; pouches; vanity cases” in class 18, and “clothing; waistbands; belts” in class 25 [TM application no. 2015-37755].

Initial examination

JPO examiner initially refused the mark for confusion with DC comics, a US comic book publisher, or its affiliate pursuant to Article 4(1)(xv) of the Japanese Trademark Law since “GOTHAM CITY” is widely known as a fictitious city out of Batman from DC Comics.

Article 4(1)(xv) is a provision to prohibit any applied mark from being registered where relevant consumers or traders are likely to confuse or associate the mark with renowned sources other than applicant. It would suffice to apply the provision where consumers conceive goods or services with the mark derive from entities systematically or economically connected with the source even if relevant consumers believe the goods or services are not from the source.

It is not conditioned that renowned source indicator should be registered in advance, however, the indicator must obtain high degree of trademark awareness from the nature of things.

Article 4(1)(xv)

Article 4 Notwithstanding the preceding Article, no trademark shall be registered if the trademark:
(xv) is likely to cause confusion in connection with the goods or services pertaining to a business of another person


Applicant filed an appeal against the refusal decision by examiner on June 21, 2016 and argued for registration of the mark in dispute.

Consequently, the Appeal Board decided in favor of applicant by stating its grounds as follows.

Distinctiveness/Awareness of GOTHAM CITY

The Board considers that the word “GOTHAM” is an unfamiliar or rarely known word in our society. Thus, the applied mark with a combination of “GOTHAM” and “CITY” and its pronunciation in Japanese characters is deemed an invented word in its entirety and does not give rise to any specific meaning at all.

In the meantime, ex-officio examination during the appeal trial revealed that the term of “GOTHAM CITY” corresponds to a fictitious city out of Batman which has been published by a US publisher, DC Comics, since 1939 as a work of comic book, movies, television programs in series worldwide. In view of high movie box office ranking to Batman movies and DVD series in Japan, it is no doubt that Batman becomes famous among the general public. But, when it comes to “GOTHAM CITY”, it just appears in texts to introduce contents of these movies and DVDs. Board could not find any fact to demonstrate the term is used at advertisement or promotional materials in a manner to attract attention to the public.

If so, the Board may admit a certain degree of awareness of the term “GOTHAM CITY” to represent a fictitious city out of Batman among movie fans. But it must be insufficient to admit the term is widely known among the public in general.

Remoteness with goods in dispute

Apparels, fashion accessories and bags. These goods in dispute for general consumers with an ordinary care are distinctively different from goods or services in the field of entertainment, movie and comics in light of remoteness of manufacturers/suppliers, location of transaction, distribution channels and usage/applications.


Based on the foregoing, the Board held that it is inadmissible to find the term “GOTHAM CITY” has obtained high degree of awareness among ordinary consumers in connection with apparels, bags and fashion accessories at the time of initial application as well as the time of the trial decision.

If so, relevant consumers and traders are less likely to conceive a source of goods with the mark in dispute from entities systematically or economically connected with DC Comics. Accordingly, the Board finds that it is quite unlikely to cause confusion between applicant and DC Comics.

Therefore, the refusal decision errored in applying Article 4(1)(xv) on the case and should be cancelled.

Trademark registration of Geographical names

The Trademark Examination Manual (TEM), official criteria released by JPO, sets forth issues relating to foreign geographical names (TEM 41.103.01).
TEM 41.103.01 provides that name of a city, sightseeing spot will be refused in principle on the grounds that it indicates the location where the goods are manufactured and sold (location of transaction) or the location of service, even though these names may not be directly perceived as the location of transaction in the mind of consumers.

It is noteworthy that TEP has no reference to a name of fictitious city.

Board decision implies name of fictitious city can be registered by unrelated entity to original work of art unless the city gets popular among the public in general as well.

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

“WORLD SERIES OF FIGHTING” is less likely to cause confusion with “WORLD SERIES” owned by Major League Baseball Properties, Inc.

The Opposition Board of JPO (Japan Patent Office) dismissed an opposition claimed by Major League Baseball Properties, Inc., a US corporation managing trademark portfolio pertinent to US major league baseball, and determined to sustain trademark registration no. 5858151 for word mark “WORLD SERIES OF FIGHTING” [Opposition case no. 2016-900288].


The mark in question consists of a standard character mark “WORLD SERIES OF FIGHTING” covering the goods of apparels, shoes, caps, underwear, uniforms and sportswear (class 25) and the service of entertainment or events relating to Mixed Martial Arts (class 41).

OPPOSITION by Major League Baseball Properties, Inc.

Major League Baseball Properties, Inc. filed an opposition based on the grounds that (i)WORLD SERIES OF FIGHTING” conflicts with senior trademark registrations for the mark “WORLD SERIES” owned by the opponent due to similarity between marks, (ii) there finds a likelihood of confusion with the source between marks because of high recognition of “WORLD SERIES” to indicate the annual championship of baseball games between the champions of the two major baseball leagues in the United States, the American League and the National League.

Similarity between marks

In evaluating the similarities between marks, the Board analyzed the similarity in the sight, sound and meaning of the marks.
The Board concluded “WORLD SERIES OF FIGHTING” is easily distinguishable from “WORLD SERIES” in appearance and pronunciation as a consequence of “FIGHTING” at the end of the mark in question. Besides, “WORLD SERIES OF FIGHTING” gives rise to meaning of a series of global events pertinent to martial art match. In the meantime, “WORLD SERIES” can be conceived to mean the championship games between major baseball leagues in the United States. Evidently, both marks are dissimilar from a conceptual point of view.
Accordingly, both marks are deemed dissimilar.

Likelihood of confusion

As long as both marks are distinctively dissimilar in the sight, sound and meaning as mentioned supra, relevant consumers at an ordinary care are unlikely to confuse or associate the source of the mark in question with the opponent when used on goods and services in dispute even if “WORLD SERIES” has become well-known for a source indicator of the opponent among consumers in Japan.

Accordingly, the Board concluded the opposition should be denied since it lacks grounds to be sustained.

I have no idea why the Board denied a likelihood of confusion between marks despite admitting a widespread reputation of “WORLD SERIES”.
As long as opposed mark contains a famous mark “WORLD SERIES” entirely, it should be cancelled on the goods of class 25 at least in view of similarity between goods in dispute.

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


Famous hotel brand “RITZ” successful in invalidating “RITZ MARCHE”

Invalidation trial

The Japan Trademark Law contains provision for invalidation of trademark registration by means of inter partes trial in Article 46 as a remedy to questionable ex-officio examination of the Japan Patent Office (JPO).
Statistically, approximately 100 invalidation petitions were filed to the JPO in each of the past five years. Nearly 40 percentages of them ended successfully in an invalidation of registered mark in question on average.

[Trademark invalidation trial]

Year Number of cases Disposition of trial
Invalidation Dismissal Withdrawal
2015 100 37 58 19
2014 115 38 32 15
2013 96 37 53 10
2012 118 44 76 16
2011 112 38 57 9


Ritz Hotel Ltd., a world famous hotel management company, petitioned for invalidation of trademark registration no. 5594878 for a word mark “RITZMARCHE” (written in Katakana letter) covering “retail services or wholesale services for foods and beverages” in class 35 pursuant to Article 46 of the Trademark Law on the following grounds.

  1. Consumers are likely to confuse or associate the mark in dispute with Ritz Hotel due to remarkable reputation bestowed on famous hotel brand, “RITZ”.
  2. “RITZMARCHE” is deemed confusingly similar to senior trademark registrations owned by Ritz Hotel Ltd.

[Marks in dispute]

Ground 1 corresponds to on Article 4(1)(xv) of the Trademark Law to prohibit any mark likely to cause confusion with a business of another entity from being registered.

Ground 2 rests on Article 4(1)(xi) to bar registration of a junior mark which conflicts with any senior trademark registration due to similarity of both marks and goods/services.

It becomes a common practice to raise several grounds in an invalidation petition. Combination of Article 4(1)(xv) and 4(1)(xi) is a standard tactic in trademark dispute involving a famous brand. Theoretically, Article 4(1)(xv) can’t be applied unless Article 4(1)(x) is inapplicable to the case. Article 4(1)(xi) is useful to the extent the marks as well as goods/services in question are identical or similar. In the meantime, Article 4(1)(xv)   targets a wider territory where consumers are likely to confuse the source of origin between marks. In other words, Article 4(1)(xv) becomes helpful only where both marks are dissimilar, or goods/services in question are deemed dissimilar. Due to a wider protection to Article 4(1)(xv), a petitioner who claims the article is required to prove high recognition and substantial use of an opposing mark accordingly.

It is of no matter that JPO renders an invalidation decision simply based on Article 4(1)(xi) without reference to Article 4(1)(xv).

On the Ritz case, the JPO Trial Board held to invalidate registered mark “RITZMARCHE” on the grounds of Article 4(1)(xi).

Board decision

In the assessment of similarity, the Board considered a term “MARCHE” is less distinctive or inherently descriptive in connection with “retail services or wholesale services for foods and beverages” of class 35 since the term itself means “market” in French. Besides it can be seen often as a sign to indicate a place where merchants provide foods or beverages directly to consumers in Japan. Meanwhile, average consumers with an ordinary care are unlikely to perceive any descriptive meaning from the term of “RITZ”. Therefore, in the configuration of disputed mark “RITZMARCHE”, it should be allowed to extract the term “RITZ” as a prominent part of the mark.

In comparing the Katakana letter of “Ritz” with alphabetical term “RITZ” of cited marks, both have same sound. Their meaning is incomparable since both don’t give rise to specific meaning. Both terms are different in appearance, however, it becomes commercially routine to write alphabetical names in Katakana letters for purpose of representing pronunciation of the terms in fact. Based on the foregoing, the Board concluded that “RITZMARCHE” and Ritz Hotel registered marks containing a term of “RITZ” are confusingly similar as a whole, by taking into consideration of relevant factors in commerce relevant to disputed goods/services. The Board also held that “retail services or wholesale services for foods and beverages” in class 35 is considered similar to food products in class 30 designated under the citations.
[Invalidation case no. 2016-890033]

The Board didn’t refer to Article 4(1)(xv) although Ritz Hotel argued famousness of cited mark “RITZ” with enormous amount of evidential materials as mentioned reason.
If Ritz Hotel has filed the invalidation action solely based on Article 4(1)(xv), the JPO must have admitted famousness of the mark “RITZ” and invalidated “RITZMARCHE” likewise.


In April 2017, the JPO announced new trademark examination guideline [Revision 13].
The guideline aims to reflect recent judicial decisions and non-traditional trademarks. Inter alia, Article 4(1)(xi) is hot topic due to its significance as a key provision pertinent to assessment of mark similarity. From now on, it is more likely that the JPO admits an argument of prominent part of trademark than before, even if the mark consists of other words or figurative elements.
I suppose, the RITZ case is timely ruled in line with New Guideline.

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