Appeal decision report (SMARTFARM)
January 29, 2021
|Appeal number||Rejection 2020-6301 (JP Appl. No. 2018-121614)|
|Case summary||“SMARTFARM” is allowed to be registered because it could be a distinguishing trademark and because it is unreasonable to say that (1) consumers are unable to recognize the goods as those pertaining to a business of a particular person and that (2) the applied-for-trademark is likely to mislead consumers as to the qualities of goods.|
|Date of decision||December 15, 2020|
|Designated Goods/Services and Class(es)||
Designated Goods/Services and Class of applied-for-trademark:
Fresh herbs; raw herbs; fresh fruits and vegetables; seeds and bulbs; and seedlings in class 31
The applied-for-trademark consists of the letter string ”SMARTFARM” arranged horizontally.
It is unreasonable to say that consumers are unable to recognize the goods as those pertaining to a business of a particular person by the applied-for-trademark merely because the letters ”SMARTFARM” may be associated with the goods produced in farms where temperature, humidity, amounts of solar radiation and other conditions of crop cultivation facilities are controlled by IoT technologies and others.
The appeal examiners did not find that the letter string ”SMARTFARM” has been commonly used in trading in connection with the designated goods of the applied-for-trademark in a way that would render ”SMARTFARM” indistinguishable as a trademark in Japan. In addition, the appeal examiners did not find any circumstances to determine that traders and consumers of the above designated goods would not consider ”SMARTFARM” as a distinguishing mark.
With the above in mind, it is reasonable to say that ”SMARTFARM” could be a distinguishing trademark in connection with the designated goods. It is unreasonable to say that consumers are unable to recognize the goods as those pertaining to a business of a particular person and that the applied-for-trademark is likely to mislead consumers as to the qualities of goods.
Thus, the refusal decision in the examination stage should be withdrawn.
The applicant mentioned that “” (a trademark consisting of katakana and kanji characters and having a conceptual description of “SMARTFARM”) has been registered (Reg. No. 6156079) in the argument to the office action in connection with the website indicated in the office action.
The applied-for-trademark and the above registered trademark “” have the same concept and similarity codes of the designated goods/services in common. (Generally, similarities of goods/services are judged based on “similarity codes”.)
However, “” was not cited in the examination of the applied-for-trademark.