Appeal decision report (THE KANSAI)
September 1, 2020
|Appeal number||Rejection 2019-14356（JP. Appl. No. 2019-18418）|
|Case summary||A case in which a trademark consisting of “THE KANSAI” in Latin characters is judged to be dissimilar to a trademark consisting of “KANSAI/KANSAI YAMAMOTO” and “KANSAI” consisting of a logo designing Latin characters.|
|Date of decision||May 18, 2020|
|Demandant (Applicant)||K.K. Collaboration|
Cited mark No. 1
Cited mark No. 2
|Designated Goods and Class(es)||Frozen okonomiyaki [Japanese-style pancake containing vegetables and other foodstuffs], sauces for frozen okonomiyaki, sauces for stir-fried noodles, sauces for barbecued meat in class 30|
In the trademark of the present application, the characters of “THE KANSAI” are written in a line. Although there is a space between “THE” and “KANSAI”, the constituent characters are collectively and integrally represented by the same typeface, and the wording is not redundant, so it can be pronounced in a series without stagnation.
The term “THE” has the meaning of “you have already mentioned or identified”, and the term “KANSAI” is “a geographic name in the part of western Japan” that is rather descriptive and this part does not immediately give rise to any distinctiveness.
In light of the above, the trademark of the present application is inseparable and it should be recognized as a coined word as a whole.
Therefore, the applied-for-trademark and the cited trademark are distinguishable and not confusingly similar to each other.
In the examination stage, since the term “THE” is an English definite article that merely indicates that the noun following it is known, the examiner separately recognizes the term “KANSAI” as a dominant part which is identical in spelling with the cited marks.
On the other hand, the appeal board judges that “THE KANSAI” is recognized as an inseparable coined word as a whole, and that it is not similar to the logo consisting of the letters “KANSAI”.
The term “KANSAI” is the region name in western Japan, and the distinctiveness of this part is weak as well. In addition,
the cited marks consist of a stylized or designed logo and those logos are well-known clothing which is significantly different from the designated goods of the present application. Such circumstances may have been taken into consideration in this particular case.
had a characteristic design, and it was judged that the word “KANSAI” itself did not give a dominant impression.
Even if the combined trademark is judged to be similar by sharing the essential parts, depending on the strength of the distinctiveness of the combined words and the specific circumstances, there is room that the mark should be viewed as a whole.