Appeal decision report (SHIRTSHIRT)
May 27, 2021
|Appeal number||Rejection 2020-002154 (JP Appl. No. 2018-89524)|
|Case summary||“SHIRTSHIRT” is allowed to be registered because it could be a distinguishable trademark on the designated goods “shirts; open-necked shirts; shirts for suits; polo shirts; sport shirts”, because it is unreasonable to say that consumers are unable to recognize the goods as those pertaining to a business of a particular person and because it is unreasonable to say that the applied-for-trademark is likely to mislead consumers as to the qualities of goods in connection with the designated goods.|
|Date of decision||April 26, 2021|
|Demandant (Applicant)||T HOUSE Co., Ltd.|
|Designated Goods/Services and Class(es)||
Jackets; suits; skirts; trousers; smocks; coats; overcoats; mantles; raincoats; sweaters; cardigans; vests and waistcoats; shirts; open-necked shirts; shirts for suits; polo shirts; sport shirts; blouses; wristbands [clothing]; detachable collars; detachable sleeves; collars [clothing]; dresses; parkas; short trousers; vest tops; leggings [trousers]; pajamas; bath robes; swimwear [bathing suits]; aprons [clothing]; neck scarves; shawls; scarves [scarfs]; gloves and mittens [clothing]; bandanas [neckerchiefs]; mufflers [clothing]; socks; headgear for wear; suspenders; belts [clothing]; leather shoes; sandal [shoes]; sneakers; boots, other than boots for sports; slippers in class 25
The applied-for-trademark consists of the letter string ”SHIRTSHIRT”. The composing letters are indicated in the same font and size. They are cohesive as a whole in appearance.
It is reasonable to consider that traders and consumer should recognize the applied-for-trademark as a coined word as a whole, without any specific meaning, rather than a repetition of “SHIRT”, even if the letter string “SHIRT” means “shirts for suits.”
The appeal examiners did not find that ”SHIRTSHIRT” has been commonly used in trading in connection with the designated goods “shirts” to say that ”SHIRTSHIRT” is indistinctive. In addition, the appeal examiners did not find any circumstances to determine that traders and consumers of the above designated goods would not consider ”SHIRTSHIRT” as a distinguishable mark.
With the above in mind, it is reasonable to say that ”SHIRTSHIRT” could be a distinguishable trademark in connection with the designated goods “shirts; open-necked shirts; shirts for suits; polo shirts; sport shirts”. 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 argued the following in the appeal stage:
– The applied-for-trademark ”SHIRTSHIRT” does not have the meaning of “shirts” and the like. Thus, it is clear that ”SHIRTSHIRT” is distinctive in connection with the designated goods “shirts” and the like as a whole.
– The applicant did not find any instances indicating contents of goods by repeating common names of the goods, e.g., “SKIRTSKIRT”, “SWEATERSWEATER”, “SHOESHOE” in order to indicate “SKIRTS”, “SWEATERS” and “SHOES” in the field of the designated goods (apparel industries).