JPO decision highlights (Similarity) [from July to December of 2022]
1 . Case in which the similarity of “AIR NECKTIE” and “AIR” is discussed
| Appeal No. | Present Trademark | Cited Trademark |
| 2020-4106 |  |
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| Summary of Decision: In this case, the Board determined that “it is permissible to observe the character part of AIR as the main part, and to judge the similarity of the trademark by comparing only that main part with the cited trademark.” 1. “NECKTIE” is not a distinctive part in the trademark. The term is a common name for “necktie”, which is the designated goods in the application. One understands the word “NECKTIE” in the trademark as indicating the goods itself. 2. “AIR” is the distinctive part in the trademark. The term is more distinctive than “NECKTIE” in relation to the designated goods of the present application, and give a strong and dominant impression. |
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Comment
- In this decision, the Board clearly decided “NECKTIE” and “AIR” can be separated and “AIR” is the main part.
- However, the Board (and the Examiners) often decides differently; they sometimes decide a trademark composed of two common terms, with one of which indicating the designated goods and the other being distinctive, as “inseparable”.
- So far we see no clear rule to decide what are separable and inseparable. So it is mostly recommended to keep in mind that both possibility exists.
2 . Case in which the similarity of “GLORY” accompanied bya figurative element and “GLORY” is discussed
| Appeal No. | Present Trademark | Cited Trademark |
| 2019-2673 |  |
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| Summary of Decision: The term “GLORY” and the figurative part in the trademark are visually identified separately, because they are arranged with a space between them without overlapping. Therefore, it can be said that the figure part and the Latin character part are the main part that can independently functions as a source identifier. In other words, it should be permissible to extract the Latin part of “GLORY” as the main part from the trademark of the application and compare it with the cited trademarks to determine the similarity of the trademarks. |
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Comment
- This decision is a quite normal, regular one. When a figure and a word are organized as a trademark without each other being overlapped or unified, the decision goes like the above.
- For note, similar decisions were made in the following recent appeals;
3 . Case in which a trademark containing a third party’s trademark is allowed for registration because a well-known mark is accompanied
| Appeal No. | Present Trademark | Cited Trademark |
| 2020-650009 |  |
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| Summary of Decision: The characters “Mercedes-Benz” and “StarParts” in the trademark of the present application have the same typeface, size, and color, and are arranged relatively close to each other in upper and lower rows. “Mercedes-Benz” is well-known as a trademark of German-made automobiles, so it gives a strong impression as a product’s source identification. On the other hand, “StarParts” is composed only of common English words, and does not give a strong and dominant impression as a commodity identification, compared to the characters “Mercedes-Benz”. Therefore, it should be said that it is not permissible to extract the character “StarParts” from the trademark in question and to judge the similarity with other trademarks. |
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Comment
- The JPO tends to decide an applied mark that contains a third party’s registered mark as registrable, if the mark is accompanied by the applicant’s well-known trademark, just like this case.
- The decision made by the Board seems reasonable; when a consumer encounters the trademark in question, one understand instantly the goods/service is sourced from “Mercedes-Benz”. “StarParts” is shadowed by “Mercedes-Benz” and most consumer will not identify the goods/service provider by “StarParts”. Therefore, the trademark in question is not confusingly similar to the cited marks “StarParts”.
