JPO: Trademark “AI chip removal” Registrable – Distinctive and Not Misleading
May 9, 2023
|Appeal Number||Rejection 2022-008731 (JP Appl. No. 2020-127192)|
“AI chip removal” is recognized as a coined word without a specific meaning.
|Date of Decision||
March 22, 2023
DMG MORI Co.,Ltd.
AI chip removal (Standard characters)
|Designated Goods/Services and Class(es)||
Metalworking machines and their parts and fittings in class 7
Electronic machines, apparatus and parts and fittings; computers; and computer software in class 9
The applied-for-trademark consists of letter string “AI chip removal” in standard characters. It is recognized that “AI” means “artificial intelligence”, that “chip” means “a small piece of semiconductor on which an integrated circuit is formed” or “scraps, shavings”, and that “removal” means “elimination, evacuation”.
The appeal examiners were unable to find that “AI chip removal” has been used in trading to indicate “goods capable of removing chips using artificial intelligence” in the fields of the designated goods “metalworking machines and their parts and fittings” in class 7 in Japan through ex-officio searches. In addition, it is difficult to say that “AI chip”, “AI removal”, or “chip removal”, combinations of the elements of the applied-for trademark, are commonly used to indicate a specific meaning.
Similarly, the appeal examiners were unable to find that “AI chip removal” has been used in trading in the fields of the designated goods “electronic machines, apparatus and parts and fittings; computers; and computer software” in class 9. In addition, although it can be seen that “AI chip”, a combination of “AI” and “chip” of the composing words of the applied-for-trademark, means “semiconductor chips specialized for AI (Artificial Intelligence)” and “semiconductors to accelerate AI (Artificial Intelligence) computational processing”, the appeal examiners were unable to find any special circumstances to conclude that consumers should perceive that “AI chip removal” means “goods removing AI chips”.
With the above in mind, the applied-for-trademark is not a set phrase with a specific meaning. It is not reasonable to say that the applied-for-trademark has a meaning as the examiner indicated in the examination stage and that the meaning of the applied-for-trademark is recognized as indication of specific qualities of the designated goods readily. Rather it is reasonable to conclude that the applied-for-trademark is recognized as a coined word without a specific meaning.
Thus, it is unreasonable to say that the applied-for-trademark indicates a quality of the designated goods in a common manner and that it misleads as to quality of the goods.
Thus, the applied-for-trademark should be registered.
The applicant argued that the applied-for-trademark should be recognized/understood as a kind of coined word without specific meaning, though it implies a certain relationship to “chip removal by using AI”.