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

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

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Appeal decision report (Ethical Diamond)

September 30, 2021
Noriko Yashiro

Appeal number Rejection 2020-017014 (JP Appl. No. 2019-096557)
Case summary “Ethical Diamond” is allowed to be registered because it is unreasonable to say that the mark indicates quality and other such characteristics and because it is reasonable to say that it is distinctive in fields of the designated goods.
Date of decision August 20, 2021
Demandant (Applicant) Ponte Vecchio Hotta Corporation
Trademark(s)

Ethical Diamond

Designated Goods/Services and Class(es)

Diamonds; diamond key rings; diamond jewelry boxes; diamond trophies [prize cups]; diamond commemorative shields; diamond personal ornaments, other than cuff links, in the nature of jewelry; diamond cuff links; diamond and precious metal shoe ornaments; diamond clocks and diamond watches in class 14

Judgement

The applied-for-trademark consists of the letter string “Ethical Diamond” in standard characters. It is unreasonable to say that the words contained in the mark should be perceived as indications of quality and other such characteristics directly in fields of the designated goods, even if “Ethical” means “moral” and the like and if “Diamond” is well known as meaning “diamonds; one of jewelry” and if the combination “Ethical Diamond” suggests “diamonds that are mined in consideration of the environment and society and whose origin can be identified”. Rather, it is reasonable to consider that the applied-for-trademark should be perceived as a coined word. 

The appeal examiners did not find that “Ethical Diamond” has been commonly used in trading to indicate specific quality and other such characteristics directly 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 perceive “Ethical Diamond” as indications of quality and other such characteristics of the goods.

With the above in mind, it is unreasonable to say that the applied-for-trademark indicates quality and other such characteristics in fields of the designated goods.

Thus, the refusal decision in the examination stage should be withdrawn.

Comments

The applicant argued the following in the appeal stage:

The meaning of “Ethical” varies greatly depending on the context as shown below:

  •  eco-friendly, green;
  • man-made, synthetic, laboratory grown:
  • non-blood diamond, conflict-free diamond;
  • no human rights infringement; and
  • identifiable origin 

With the above in mind, it is reasonable to say that various meanings result from “Ethical” indirectly and it is unreasonable to says that “Ethical Diamond” has a particular meaning directly and unambiguously.