Appeal decision report ()
October 29, 2021
|Appeal number||Rejection 2021-003287 (JP Appl. No. 2019-091804)|
|Case summary||“” is allowed to be registered because it is unreasonable to say that it consists solely of a mark indicating quality in the fields of the designated goods in a common manner.|
|Date of decision||September 28, 2021|
|Demandant (Applicant)||Yokoyama Pharmaceutical Co.,Ltd|
(The katakana portion “” corresponds to “microneedle”.)
|Designated Goods/Services and Class(es)||
Sheet cosmetics using microneedle technology; cosmetics using microneedle technology in class 3
The applied-for-trademark consists of the character string “” in standard characters.
The applied-for-trademark should be considered as a whole in appearance because the letters are the same size at an equal spacing interval. Further, the sound is not lengthy and it could be naturally pronounced at a breath, as a whole.
In addition, it is reasonable to say that traders and consumers should perceive the combination of “THE” and “” as a coined word, without specific meaning, as a whole, even if “THE” of the applied-for-trademark is a definite article in English and even if “” is considered a word meaning “micrometer-sized needles”; e.g. “how to apply micrometer-sized needles directly to the skin and inject pharmaceutical” in fields of the designated goods.
The appeal examiners did not find that “” 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 “” 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 consists solely of a mark indicating quality in the fields of the designated goods in a common manner.
Thus, the refusal decision in the examination stage should be withdrawn.
The applicant successfully argued that the following “THE XX” (when XX seems to be the common name/descriptive name of the designated goods/service) were considered distinctive and registered in earlier cases:
i) “THE ALOE” (Reg. No. 5988525)
ii) “THE HERBS” (Reg. No. 5885096)
Designated goods: Cosmetics containing several herbal extracts selected for optimal combination in class 3, and others
iii) “THE SKIN” (Reg. No. 6003357)
Designated goods: Cosmetics in class 3, and others
iv) “” (Reg. No. 5805597)
v) “” (Reg. No. 5807373)
vi) “” (Reg. No. 5862841)
vii) “theVR” (Reg. No. 6043778)
viii) “The house” (Reg. No. 5385665)
ix) “the room” (Reg. No. 5447732)
x) “THE MLP” (Reg. No. 5787130)