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

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

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Appeal decision report (adjust)

July 1, 2021
Noriko Yashiro

Appeal number Rejection 2020-014604 (JP Appl. No. 2020-15489)
Case summary “adjust” is allowed to be registered because it is unreasonable to say that it indicates quality and other such characteristics in fields of the designated goods in a common manner, and because it could be a distinguishing trademark.
Date of decision May 26, 2021
Demandant (Applicant) Nakatora Co., Ltd.
Trademark(s)

Applied-for-trademark:

Designated Goods/Services and Class(es)

Underwear [underclothing]; tee-shirts; socks and stockings other than special sportswear; leg warmers; neck warmers; arm warmers [clothing]; body warmers in class 25

Judgement

The applied-for-trademark consists of the letter string ”adjust”. It is unreasonable to consider that it should be recognized as “adjustable goods” directly in connection with the designated goods and that traders and consumer should recognize it as direct and specific indication of quality and other such characteristics in fields of the designated goods, even if “adjust” means “to change something slightly to make it fit; and the like.”

The appeal examiners did not find that ”adjust” has been commonly used in trading to indicate quality and other such characteristics in fields of the designated goods through ex-officio searches. In addition, the appeal examiners did not find any circumstances to determine that traders and consumers should recognize ”adjust” as indication of quality and other such characteristics of the goods.

With the above in mind, it is reasonable to say that ”adjust” could be a distinguishing trademark in connection with the designated goods because it is unreasonable to say that ”adjust” indicates quality and other such characteristics in fields of the designated goods in a common manner.

Thus, the refusal decision in the examination stage should be withdrawn.

Comments

The applicant argued that the applied-for-trademark should be a distinguishing trademark because of the connection between the applied-for-trademark and the designated goods and on the basis of earlier registrations for “adjust” and “adjust in katakana” at the JPO (see below) in examination and appeal stages: 

(Old Japanese Class 17) [Expired]
(International Class 24)
(International Class 25)
(Old Japanese Class 16) [Expired]
 (International Class 23) [Expired]
(International Classes 1, 5 and 10)
(International Class 1) [Expired]
(International Class 5)
(International Class 10) [Expired]
 (International Class 3)
 (International Classes 29 and 30)
(International Class 34)
(International Class 35)
(International Classes 36, 37, 39 and 42)
(International Class 42)
 (International Class 42)