Opposed-for-trademark JP Reg. No. 6746724

Opposer’s trademark JP Reg. No. 5548834

Toys for domestic pets; sports equipment in class 28

(1) Famousness of the opposer’s mark
The opposer operates numerous UNIQLO stores both in Japan and internationally. The cited trademark is prominently displayed on the exteriors of these stores, as well as on the product tags of clothing and other merchandise sold within. From 2013 to 2022, UNIQLO’s sales figures have been significantly high. It is also ranked between 6th and 8th in Japan’s brand rankings. Given these facts, the cited trademark is widely recognized among consumers in Japan as being associated with the opposer’s clothing at the time of the subject trademark application.

(2) Similarity of the subject trademark and the opposer’s trademark
Both trademarks feature white letters inside a square. While they share the same “UNI” in the upper line and the letter “O” in the lower line, the letters “PR” and “QL” in the lower line differ, which affects their visual appearance and overall pronunciation. Consequently, the two marks are considered dissimilar.

(3) Likelihood of Confusion
As mentioned above, the opponent’s trademark is widely recognized by consumers in Japan. However, since the subject trademark is dissimilar to the opposer’s trademark, it is unlikely that consumers will associate the opposer’s trademark with the subject trademark, and it will not cause confusion as to the source of the goods.

The trademark in question seems to have been inspired by the well-known “UNIQLO” trademark of the opposing party. However, the JPO Trial Board ruled that the two trademarks are dissimilar because the letters “PR” and “QL” are distinct based on appearance and sound. Despite this ruling, it appears that the trademark in question could be capitalizing on the fame of the opponent’s trademark. Currently, the current Japan Trademark Act lacks provisions to address this type of freeriding without a finding of similarity causing confusion, which makes this outcome unavoidable.
(Tatsuya Kimura)