[Trademark] 2023 (Ne) 10011 “Undetectable Double Eyelids” Case <Hibiku Shimizu> — Dissimilar + Not Use as a Trademark
Updated: 2 days ago
Article information
Article type: Case note
Category: Trademarks
Topics: Confusion, Trademark use
First published on this website: 2026-11-01
Display and classification checked: November 2, 2026
Originally published on Ameblo: 2024-08-16 (Japan time). Full English translation.
[Trademark] 2023 (Ne) 10011 “Undetectable Double Eyelids” Case <Hibiku Shimizu>
Plaintiff's mark (two lines)
“Barenai [Undetectable; mixed katakana and hiragana]
Futae [Double eyelids; hiragana]”
Defendant's mark (two lines
“BARENAI [Undetectable; katakana]
Futae [Double eyelids; kanji]”
⇒ Dissimilar + not use as a trademark (Trademark Act Article 26(1)(vi))
⇒ Claims dismissed
(Excerpts from the court's reasoning)
<Similarity>
Even if the mark at issue and the defendant's marks perform a source-identifying function, the expressions “Barenai Futae” and “BARENAI Futae” themselves are commonplace expressions concerning the quality and efficacy of the cosmetics at issue. Their source-identifying function must therefore be said to be quite limited. …
In addition, …taking into account also the manner in which the mark at issue and the defendant's marks are used, it is appropriate to find that consumers of the cosmetics generally identify the source of the goods (the cosmetics at issue) by the specific manner of external indications capable of identifying source (visible letters, patterns, colors, and the like) on the goods or their packaging.”
“In light of these actual trading circumstances, in assessing similarity between the mark at issue and the defendant's marks, the manner of external presentation of the source identifier specifically used on the goods (the cosmetics at issue) or their packaging—namely similarities and differences in the appearance of the source identifier (trademark)—is relatively more important than similarities and differences in pronunciation and concept, as giving consumers a stronger and more dominant impression.”
Further, “while the mark at issue and the defendant's marks give rise to identical pronunciations and concepts, their appearances differ enough not to be confusable to consumers viewing the cosmetics. Considering these circumstances together as a whole, in light also of the explanation in subsection A above, even if the mark at issue and the defendant's marks are used on the same goods (the cosmetics at issue), a likelihood of misidentification or confusion as to source cannot be found. It is therefore appropriate to assess the defendant's marks as not similar to the mark at issue, at least insofar as they are used for the cosmetics at issue.”
<Trademark Act Article 26, paragraph 1, paragraph 6 (quotation from the first-instance judgment)>
(1) The evidence (as cited) and the entire purport of oral argument establish the following facts. A. Examples of “barenai,” “Barenai,” and “BARENAI.” (a) “Barenai” is formed by adding the negative auxiliary “nai” to the verb “bareru.” “Bareru” means the exposure of a secret, lie, or wrongdoing, so “barenai” means that a secret or the like is not exposed. Although “barenai,” “Barenai,” and “BARENAI” differ in writing—hiragana only, a combination of hiragana and katakana, or katakana only—the meaning does not differ with the form of writing. (b) Internet search results show that advertisements for cosmetic procedures creating double eyelids and cosmetics for forming double eyelids use expressions such as “No one will know your double eyelids are artificial,” “Hard-to-detect double eyelids,” “Natural double eyelids that no one will notice!?,” “Absolutely undetectable! How to create natural double eyelids,” “Tips for going undetected,” “How to create truly undetectable double eyelids,” “Undetectable double eyelids,” and “Undetectable, non-swelling double-eyelid surgery” (Exhibits Ko 16 and Otsu 2–5). A webpage introducing double-eyelid cosmetics and the like in a ranking format entitled “[Expert-supervised] 15 popular recommended eyelid glues [including options for students and undetectable ones!]” (Exhibit Hei 3) also states, “Many of you are probably worried that people around you will notice your eyelid glue,” and “You want to keep people from realizing you are using it! If being hard to detect matters most, we recommend fiber or film-forming eyelid glue.” Further, descriptions of double-eyelid-shaping cosmetics other than the plaintiff's and defendant's products include “Undetectable, surgery-level double eyelids” (Exhibit Hei 1-1), “Undetectable! No shine!” (Exhibits Hei 1-2 and 1-3), “Undetectable even with your eyes closed!” (Exhibit Hei 1-4), “Hard to detect even when closed!” (Exhibit Hei 1-5), “Undetectable double-eyelid shaping with ultrafine fiber” (Exhibit Hei 1-6), and “Undetectable!! Surgery-style makeup” (Exhibit Hei 1-7). In addition to double-eyelid cosmetics, “Undetectable! Easy! Natural-looking finish!” is used to describe nose-contouring cosmetics (Exhibit Hei 2-1), “undetectable artificial nails” to describe artificial nails (nail tips) (Exhibits Hei 2-2 and 2-3), and “undetectable lift” to describe cosmetic cheek procedures (Exhibit Hei 2-4). B. Manner of use of the defendant's marks on its products. According to the evidence (Exhibit Ko 5), the packaging of Defendant Product 1 has a black heart-shaped figure occupying approximately the upper half of its front. Within that figure, the top row contains the underlined words “Long-lasting hold,” and the middle contains Defendant Mark 1, both in pink, the packaging's base color. At the bottom of the figure, “Liquid type” appears in black on a green band, and a black circle attached to the left end of that band contains the word “Fine brush” and an illustration of a brush tip in green. In addition, the upper-left portion of the lower packaging has the two-line wording “Eye Catching” and “Beauty” (the “t” in “Beauty” is designed as a cross whose left and lower arms are longer than its right and upper arms); the center-left lower portion has “FUTAE” and “LIQUID” on two lines; and the right lower portion has “#Eye-area illusion makeup.” Through a transparent window between these lower indications, the body of Defendant Product 1 is visible, bearing “Eye Catching” and “Beauty” in the same arrangement as in the upper-left portion of the lower packaging (however, the evidence is insufficient to establish that this indication is visible through the window for all Defendant Product 1 items). On the back, there are “Eye Catching” and “Beauty” in the same arrangement as on the front, “FUTAE LIQUID” in a single continuous line, and wording including “Eye Catching Beauty Futae Liquid (double-eyelid cosmetics),” but no Defendant Mark 1. Next, the evidence (Exhibit Ko 6) shows that the packaging of Defendant Product 2 has a black heart-shaped figure occupying approximately the upper half of its front. Within it, the top row contains the underlined words “Long-lasting hold,” and the middle contains Defendant Mark 2, both in yellow, the packaging's base color. At the bottom, “Tape type” appears in black on a blue-violet band, and a black circle attached to the band's left end contains a water-drop illustration in its upper portion, with the word “Water” in black inside it and “Apply with” in blue-violet below it. In addition, the upper-left portion of the lower packaging has “Eye Catching” and “Beauty” in the same arrangement as on Defendant Product 1; the center-left lower portion has “FUTAE” and “MESH TAPE” in the same arrangement as on Defendant Product 1; and the right lower portion has “#Eye-area illusion makeup.” (No lettering is visible on the body of Defendant Product 2 through the transparent window between these lower indications.) On the back are “Eye Catching” and “Beauty” in the same arrangement as on the front, “FUTAE MESH TAPE” in a single continuous line, and wording including “Eye Catching Beauty Futae Mesh Tape (single-sided double-eyelid-forming tape),” but no Defendant Mark 2. (2) Manner of use of the defendant's marks, etc. A. Given the products' functions and sales channels (the parties do not dispute that these are physical stores and online retail), the relevant consumers are appropriately regarded as consumers generally, not limited to young women. The defendant's argument on this point cannot be accepted. B. Considering together the indications on the fronts and backs of the packaging found in (1)B above, ordinary consumers appear to recognize the product names as “Eye Catching Beauty FUTAE LIQUID” and its Japanese rendering “Eye Catching Beauty Futae Liquid” (Defendant Product 1), and “Eye Catching Beauty FUTAE MESH TAPE” and its Japanese rendering “Eye Catching Beauty Futae Mesh Tape” (Defendant Product 2). By contrast, based on the findings in (1), the defendant's marks are understood as follows. “Barenai,” “Barenai” in mixed scripts, and “BARENAI” all mean that a secret or the like is not exposed, regardless of their written form. In advertising double-eyelid cosmetics of the kind to which the defendant's products belong, and cosmetic procedures for forming double eyelids, many combinations of “barenai” or similar wording with “double eyelids” are used as expressions understood to describe the efficacy of the cosmetics or procedures, or the nature of the services—namely that others will not readily notice that single eyelids have been made into double eyelids—or as catchphrases promoting such efficacy. Furthermore, for beauty-related goods and services other than double-eyelid cosmetics, such as other cosmetics and cosmetic surgery, “barenai” and similar words are also used not infrequently as explanations that others will not notice the use of the cosmetics or procedures, or as catchphrases promoting that effect. This is understood as an attempt by providers to promote effects meeting the desire of many consumers of beauty-related goods and services that others not readily realize that the condition has been created artificially and intentionally using those goods or services, and that the resulting appearance be viewed as natural. Given the widespread use of “barenai” and similar words in beauty-related goods and services, ordinary consumers of double-eyelid cosmetics would normally recognize and understand the defendant's marks, combining “BARENAI” and “double eyelids,” as explanations of the products' efficacy—cosmetics whose use to form double eyelids is not readily exposed to others—or as catchphrases promoting that efficacy. This is all the more so considering that, on the packaging, the defendant's marks are positioned between wording such as “Long-lasting hold” and “Liquid type” (Defendant Product 1) or “Tape type” (Defendant Product 2), and that other indications recognizable as the product names are present. This remains true even allowing for the stylization of the lower part of the character for “two” in “double” in the defendant's marks, which appears to have two upward hooks at its left end. For these reasons, ordinary consumers of the defendant's products understand the defendant's marks as descriptions or catchphrases concerning the products' efficacy, and the marks are not found to function as identifiers distinguishing goods or indicating source.
https://www.nakapat.gr.jp/ja/legal_updates_jp/【商標法★★】黒色の背景に「バレナイ」及び「/
Translator’s notes (editorial)
The source heading says Article 26, paragraph 1, paragraph 6 rather than item 6; this anomalous wording is preserved. The source omits a closing parenthesis after the defendant-mark two-line label; retained. Japanese orthographic distinctions in the marks are identified in bracketed English glosses to preserve their relevance.
Update history
The first-published date remains unchanged. Display maintenance, classification changes, related-article updates, and text corrections are recorded separately.
November 1, 2026: First published on this website.
November 2, 2026: Added article information, classification, topics, language navigation, related articles where the same case was confirmed, consultation guidance, and SEO. The original text and first-published date were preserved.
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