Appeal decision report (HIGHLAND CACAO)
October 15, 2020
|Appeal number||Rejection 2020-2227 (JP Appl. No. 2018-162268)|
|Case summary||“HIGHLAND CACAO” is allowed to be registered because “HIGHLAND CACAO” and “High Land” are considered dissimilar.|
|Date of decision||September 9, 2020|
|Demandant (Applicant)||Kabushikikaisha Yakiyamakougen|
|Designated Goods and Class(es)||
Designated Goods and Class of applied-for-trademark:
Designated Goods and Class of cited trademark:
The applied-for-trademark consists of English alphabet letters “HIGHLAND CACAO”. The fonts and sizes of the letters are the same and the letters are integrated and harmonized in appearance. The pronunciation of “HIGHLAND CACAO” is not particularly redundant and “HIGHLAND CACAO” can be easily pronounced in a single breath.
The applied-for-trademark “HIGHLAND CACAO”, a combination of the words “HIGHLAND” and “CACAO”, is not listed in dictionaries and the like, although “HIGHLAND” means “upland; plateau; mountainous land” and although “CACAO” means “cacao seeds”. Thus, it is reasonable to consider that the applied-for-trademark “HIGHLAND CACAO” does not have any specific meanings and that it would likely be considered a coined word.
With the above composition and the pronunciation of the trademark in mind, it is reasonable to say that dealers and consumers would recognize the applied-for-trademark indivisible as a whole.
In addition, we cannot find that the portion “HIGHLAND” of the applied-for-trademark gives a deep and dominant impression as a distinguishing mark of goods to dealers and consumers.
Under the circumstances, the applied-for-trademark has only one pronunciation “HIGHLAND CACAO” and has no specific meanings corresponding to the composing letters.
Thus, the refusal decision in the examination stage should be withdrawn because the decision concluded that the applied-for-trademark and the cited trademark are similar based on the assumptions that the applied-for-trademark has a pronunciation “HIGHLAND” and has meanings “upland; plateau;” corresponding to the composing letters.
The examiner believed that the portion “CACAO” of the applied-for-trademark indicated raw materials and that it is indistinctive/much less distinctive, if any, in relation to the designated goods and that the dominant element of the applied-for-trademark is “HIGHLAND”. Under the circumstances, the examiner concluded that it is allowable to extract the portion “HIGHLAND” of the applied-for-trademark in order to determine the similarity between the applied-for-trademark and the cited trademark. The examiner then determined that the applied-for-trademark and the cited trademark are similar/common in appearance, concept, and pronunciation in the examination stage.