The Examiner has judged that the main part of the applied mark is , and such part consists of 3 letters of the alphabet, namely, “nop”.  Thus, the Examiner has judged that the applied mark is similar with the cited mark  in sound and appearance.  Additionally, the Examiner has judged that some of the designated goods of the applied mark and the cited mark are the same or similar.  Thus, the Examiner has issued a decision of refusal against the applied mark.

 However, the trial Examiners for the appeal have judged that the Examiner’s judgement about the similarity of the marks is wrong.

March 04, 2022

(the applied mark)

(the cited mark: JP Reg. 5570399)

(Applied Mark)
 Measuring or testing machines and instruments; telecommunication machines and apparatus; electronic machines, apparatus and their parts etc. in Class 9.

(Cited Mark)
  Measuring or testing machines and instruments; telecommunication machines and apparatus; electronic machines, apparatus and their parts etc. in Class 9.

 The applied mark consists of:

– UPPER part, namely, gray-colored and arch-shaped figure, gray-colored letter of alphabet “o” and blue-colored letter of alphabet “p”;
– MIDDLE part, namely, gray colored letters of alphabet “net one”; and
– LOWER part, namely, blue colored letters of alphabet “Partners”.

These parts are arranged close to each other.  Thus, these parts are inseparable from each other in order to recognize one part as the main part of the applied mark.

  Further, it is impossible to recognize any special sounds and concepts based on the gray colored and arch shaped figure.
  Furthermore, it is impossible to find any reasons that the Examiner has to eliminate the MIDDLE part and the LOWER part, namely, lack of distinctiveness about these parts etc.
  In view of the above, the Examiner’s judgement that the UPPER part is the main part of the applied mark is wrong.
  Therefore, the Examiner’s decision of refusal against the applied mark based on the grounds that the applied mark is similar with the cited mark must be cancelled.

 The applied mark includes the MIDDLE part “net one” and the LOWER part “Partners”.  Thus, we believe that the trademark offices other than the JPO could judge that the UPPER part is a coined word of first letters of “net”, “one” and “Partners”.
 However, even if the applied mark contains a coined word (letters of alphabet) and an expression that suggests the origin of that word, “Stylization of Word Mark” might lead the JPO to ignore such suggestion.