JPO decision highlights (Similarity) [from July to December of 2024]
1. A case where “Takara no Chukai” and cited trademarks were found dissimilar
| Appeal No. | Present Trademark | Cited Trademark |
| 2024-3411 | タカラの仲介 (Takara no Chukai) |  Registered No. 4039420 |
| Summary of Decision: The JPO Board of Appeal overturned the refusal of registration. Although the term “タカラ” appears in both the present trademark and the cited trademarks, the present mark is expressed as a cohesive unit “タカラの仲介,” with uniform size, spacing, and font, and pronounced naturally as a single phrase. The term “仲介” directly relates to the designated services, such as real estate brokerage and management, so the mark clearly reflects the services provided. However, consumers and traders perceive the mark as a whole rather than isolating “タカラ,” and therefore, it is not confusingly similar to the cited trademarks. The refusal under Article 4(1)(xi) of the Trademark Act was properly canceled. |
||
Comment
- The present trademark is visually and phonetically cohesive as a single expression.
- The term “仲介” corresponds to the designated services. Nevertheless, the present trademark is considered as a whole, rather than with the “タカラ” portion alone.
2. A case where “SGA South Golf Academy” and cited trademarks were found similar
| Appeal No. | Present Trademark | Cited Trademark |
| T2023-19392 |  |
 Registered Nos. 5897250 |
| Summary of Decision: The JPO Board of Appeal held that the present trademark is similar to the cited trademarks. The upper portion “SGA” is visually prominent and bold, producing the pronunciation “Esu Ji Ei,” while the lower portion “South Golf Academy” conveys the meaning “southern golf specialized school.” The combination of these elements is visually separable but functionally serves as an identifier for the designated services in Class 41, such as education, training, and organization of entertainment or sports events. The cited trademarks also contain “SGA” in Roman letters, which shares the same pronunciation and gives a similar impression. Considering appearance, pronunciation, and concept, as well as the similarity of the designated services, the Board concluded that the present trademark may cause confusion among consumers and therefore falls under Article 4(1)(xi) of the Trademark Act. |
||
Comment
- The upper portion “SGA” is prominent and distinctive, and corresponds to the main element of the cited trademarks.
- The lower portion “South Golf Academy” conveys the meaning of the services but does not prevent the overall impression from being similar to the cited marks.
- Both the present and cited trademarks cover similar Class 41 services, reinforcing the likelihood of confusion.
