The Examiner refused the registration of the trademark application for “hololive Indonesia” under Article 4, Paragraph 1, Item 16 of the Trademark Law in Japan.
Further, the appeal trial Examiners upheld the Examiner’s decision of refusal.
Furthermore, the IP High Court in Japan upheld the decision of the appeal trial Examiners.

< the Article 4, Paragraph 1, Item 16 of the Trademark Law in Japan >
Notwithstanding the preceding Article, no trademark shall be registered, if the trademark is likely to mislead as to the quality of the goods or services.

March 27, 2024

 (the applied mark)

 hololive Indonesia (written in standard characters)

(Applied Mark: JP Appl. No. 2021-159976)

• Cosmetics; perfume and flavour materials in Class 03,
• Computer programs; spectacles [eyeglasses and goggles]; electronic publications etc. in Class 09,
• Precious metals; personal ornaments [jewellery, jewelry (Am.)]; clocks and watches etc. in Class 14,
• Stationery; printed matter; photographs [printed]; standing photograph frames in Class 16,
• Bags; pouches; umbrellas and their parts in Class 18,
• Cleaning tools and washing utensils etc. in Class 21,
• Woven textile goods for personal use etc. in Class 24,
• Clothing; footwear [other than special footwear for sports]; masquerade costumes in Class 25,
• Hair ornaments in Class 26,
• Advertising and publicity services; retail services or wholesale services for clothing etc. in Class 35,
• Providing electronic publications; providing videos from the internet, not downloadable etc. in Class 41,
• Providing foods and beverages in Class 43.

The applied mark consists of “hololive,” a coined word with sufficient distinctiveness and “Indonesia,” a well-known country name.
Word marks that consist of a distinctive term (coined word) and “Indonesia” have been used as trademarks for goods made in Indonesia or services provided in Indonesia.
The designated goods or services in this case are aimed at general consumers in Japan.
Thus, consumers who recognize the applied mark are likely to associate the quality of the goods made in Indonesia (or the services provided there) with the term “Indonesia” in the mark.
However, the designated goods in this case include those made in countries other than Indonesia, and the designated services include those provided in countries other than Indonesia.  Therefore, the applied mark is likely to mislead consumers regarding the quality of the goods or services.
In view of this, the IP High Court in Japan has also refused the registration of the trademark application for “hololive Indonesia” under Article 4, Paragraph 1, Item 16 of the Trademark Law in Japan.

In accordance with such a decision of the IP High Court in Japan, it is unlikely that the JPO will allow the registration of a trademark application for a word mark consisting of a coined word and a country name if the designated goods or services in the application are intended for general consumers in Japan.