Law: Trademark Act 1959 (Japan)

JPO: PENINSULA HILLS unlikely to cause confusion with The Peninsula hotel

Contrary to the examiner, the JPO Appeal Board questioned the high degree of recognition of the hotel The Peninsula.

03 September 2024

Japan: Ensuring success under the trademark enforcement framework

Featured in Trademark Litigation Review 2025

A deep dive into litigation proceedings, available defences and damages reveals the need-to-knows for companies considering enforcement in Japan. April 2024 reforms to Japan’s Trademark Act now make it possible to confiscate counterfeit goods as trademark-infringing goods, even if they are imported for personal use.

20 August 2024

P&G fails to register 3D shape of SK-II bottle

The JPO Appeal Board notably highlighted the consistent of use of distinctive word elements on the bottles of SK-II facial moisturisers.

20 June 2024

FORTNITE owner defeated in FORTNIGHT invalidation action

Epic Games Inc, the developer of famous online game Fortnite, failed to invalidate the mark FORTNIGHT for various goods and services in Classes 9, 16, 28, 35, 41 and 43.

13 June 2024

JPO finds no similarity between SOFTWEAR and SOFTWAIR

A key factor in the JPO Appeal Board’s decision was that SOFTWAIR has three possible pronunciations.

10 June 2024

Tennis king Roger Federer defeated off the court

Tenro AG, a Swiss company established by former tennis champion Roger Federer, has failed in its opposition against the mark ROGER KING for golf equipment.

04 June 2024

ZARA owner unsuccessful in opposition against LAZARA

INDITEX, one of the world’s largest fashion retailers and owner of the brand ZARA, has failed to prevent the registration of the mark LAZARA for clothing.

29 May 2024

IP High Court rejects registration of Audemars Piguet’s ‘Royal Oak’ watch design

The court confirmed that a device mark representing the Swiss luxury watchmaker’s iconic ‘Royal Oak’ watch lacked both inherent and acquired distinctiveness.

20 May 2024

Can a letter of consent guarantee successful trademark registration in Japan?

The JPO has announced that, in addition to a consent letter, applicants must provide evidence that there is no likelihood of confusion between the earlier mark and the mark applied for - both at present and in the future.

09 May 2024

IP High Court upholds refusal to register colours of Hermès packaging

The court notably found that the market research surveys submitted by Hermès were insufficient to demonstrate the acquired distinctiveness of the mark among the general public.

03 May 2024