The Examiner has judged that the applied mark  is similar with each cited mark “hinata”.  Additionally, the Examiner has judged that some of the designated retail services of the applied mark are similar to some of the designated goods of the cited marks.  Thus, the Examiner has issued a decision of refusal against the applied mark.

The trial Examiners for the appeal have judged that the Examiner’s judgement is correct.

August 17, 2022

(the applied mark)

(each cited mark: JP Reg. Nos. 6185337 and 6227062)
hinata (standard characters)

(Applied Mark: JP Appl. No. 2020-150774)
Retail services or wholesale services for woven fabrics and beddings; retail services or wholesale services for cosmetics, toiletries, dentifrices, soaps and detergents etc. in Class 35.

(Cited Marks)
For JP Reg. No. 6185337
Cotton waddings for clothes; hammocks; Futon bags; cotton batting for Futon etc. in Class 22.

For JP Reg. No. 6227062
Deodorant for body; soaps and detergents; dentifrices; cosmetics etc. in Class 3.

The applied mark consists of:
– UPPER part, namely, “hinata” written in cursive script; and
– LOWER part, namely, “by Cosme Clinic” (not-stylized).
The character size of the UPPER part is quite larger than that of the LOWER part. Further, the UPPER part has no conceptual relationship with the LOWER part. Thus, these parts are separable from each other. Therefore, the UPPER part is the main part of the applied mark.
Additionally, the spelling of the main part of the applied mark is the same as the spelling of each cited mark. Thus, both the impression of the main part of the applied mark and the impression of each cited mark are the same in appearance. Further, both the main part of the applied mark and each cited mark are the same in sound. Furthermore, both the main part of the applied mark and each cited mark do not have any special meanings. Therefore, the applied mark is similar to each cited mark.

Shops that provide “retail services or wholesale services for woven fabrics and beddings” normally handle “cotton waddings for clothes; hammocks; Futon bags; and cotton batting for Futon”. Further, shops that provide “retail services or wholesale services for cosmetics, toiletries, dentifrices, soaps and detergents” normally handle “deodorant for body; soaps and detergents; dentifrices; and cosmetics”. Thus, the customers for such retail services are normally the same as those for such goods. Therefore, such customers might confuse the place of providing such retail services and the place of handling such goods. Therefore, some of the designated services for the applied mark are similar to some of the designated goods for the cited marks.

In view of the above, the trial Examiners for the appeal have maintained the Examiner’s judgement, namely, the decision of refusal against the applied mark based on the grounds that the applied mark is similar to each cited mark.

For the applied mark that consists of alphabets written in cursive script as ONE part and alphabets (not-stylized) as ANOTHER part, if the difference in appearance (i.e., meaning) between ONE part and ANOTHER part is significant, the JPO is likely to separate such an applied mark into ONE part and ANOTHER part in order to decide the main part of the applied mark. We believe that the same applies to other trademark offices.
Additionally, we believe that the JPO’s manner of judging the similarity between retail services and goods related thereto is similar to the manner of other trademark offices.