Appeal decision report (cawaii) | ONDA TECHNO Intl. Patent Attys.[Japan Patent Firm] | Gifu City

Appeal decision report (cawaii) | ONDA TECHNO Intl. Patent Attys.[Japan Patent Firm] | Gifu City

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Appeal decision report (cawaii)

March 30, 2021
Noriko Yashiro

Appeal number Rejection 2020-7842 (JP Appl. No. 2018-147178)
Case summary “cawaii” is allowed to be registered because “cawaii” and the cited trademark “” are considered dissimilar.
Date of decision February 15, 2021
Demandant (Applicant) onepeace.Ltd
Trademark(s)

Applied-for-trademark: cawaii

Cited trademark:

Designated Goods/Services and Class(es)

Designated Goods/Services and Class of applied-for-trademark:

Clothing; collars [clothing]; garters; sock suspenders; suspenders [braces]; waistbands; belts [clothing]; footwear [other than special footwear for sports]; masquerade costumes; clothes for sports; special footwear for sports in class 25

Judgement

(1) Applied-for-trademark:

The applied-for-trademark consists of Roman letters “cawaii” as standard characters. The letters “cawaii” do not form a word listed in dictionaries and the like. The appeal examiners did not find that the letters have a specific meaning. Thus, it is reasonable to say that the letters should be considered as a coined word and that the letters should be pronounced as “ca-wa-i-i ” according to how to commonly read Roman letters in Japan or how to read letters in English and that the letters do not have any specific meaning.

(2) Cited trademark:

The cited trademark is a justified and tri-level trademark consisting of “KAWAII in hiragana”, “KAWAII in katakana” and “KAWAII in Roman letters”. The portion “KAWAII in hiragana” has a meaning of “adorable; little and pretty”. It is reasonable to say that the portions “KAWAII in katakana” and “KAWAII in Roman letters” would be naturally recognized as representations, in different letter types, of “KAWAII in hiragana”. As such, the cited trademark should have a pronunciation of “KA-WA-I-I” and a meaning of “adorable; little and pretty” because it is reasonable to say that traders and consumers should merely recognize that the portions “KAWAII in katakana” of the second line and “KAWAII in Roman letters” of the third line are representations, in different letter types, of “KAWAII in hiragana” of the first line of the cited trademark.

(3) Similarity of the applied-for-trademark and the cited trademark:

As we discussed the compositions of the applied-for-trademark and the cited trademark (1) and (2) above, the trademarks are clearly different in appearance as a whole.
As for appearances of “cawaii” of the applied-for-trademark and the portion “KAWAII in Roman letters” of the cited trademark, “cawaii” of the applied-for-trademark are lowercase letters and “KAWAII in Roman letters” of the cited trademark are uppercase letters. Further, the most impressive initial letters of “c” of the applied-for-trademark and “K” of the portion “KAWAII in Roman letters” of the cited trademark are different. As such, it is unreasonable to say that the above differences in appearance are small to judge similarity of comparatively short trademarks consisting of six letters. Thus, the applied-for-trademark and the cited trademark are clearly distinguishable in appearance. As for sound, the applied-for-trademark and the cited trademark have the same pronunciation “ca-wa-i-I”/“KA-WA-I-I”. Further, the applied-for-trademark does not have a specific meaning. On the other hand, the cited trademark has a meaning of “adorable; little and pretty”. Thus, there is no likelihood of confusion between the trademarks in concept. With comprehensive impressions, memories and associations of the trademarks provided to traders and consumers in mind, it is reasonable to say that the trademarks are dissimilar because there is no likelihood of confusion between the trademarks in appearance and concept although the trademarks have the same pronunciation in common. Furthermore, there are no other reasons to consider that the trademarks are similar. 

(4) Conclusion:

As we discussed above, the applied-for-trademark and the cited trademark are dissimilar regardless of whether the designated goods of the trademarks are similar. Thus, the refusal decision in the examination stage should be withdrawn.

Comments

In addition to the citation above, the applied-for-trademark was judged indistinctive in examination stage because traders and consumers would merely recognize “adorable, little and pretty goods” when the applied-for-trademark is used on the designated goods. However, the judgement was withdrawn because the applicant argued that traders and consumers should recognize that the applied-for-trademark is a kind of coined word having a special spelling and that the applied-for-trademark is well-distinguished.