Rejection 2025-008224 (JP Appl. No. 2024-053633)

  – The applied trademark “WebFile” (standard characters) consists of a first part comprising the letters “Web” meaning “A type of information retrieval system and client-server system used on the Internet. It can handle not only text but also audio and images, enabling information retrieval in hypertext format; Web; World Wide Web.”, and a second part comprising the letters “File” meaning “A collection of data with semantic cohesion within a computer. Also, the storage device that holds it.” Therefore, the applied trademark “WebFile” as a whole can readily be understood in the meaning such as “files related to WEB sites or WEB servers”. Additionally, in the industry dealing with the designated services of this trademark application, the letters “Web ” and the letters “WEB ”, both are understood in the same meaning as the letters “WebFile”. Further, these letters of “Web ” and “WEB ” are commonly used to indicate the meaning such as “files related to WEB sites or WEB servers”.

  Therefore, the Examiner refused the registration of the trademark application for “WebFile” on the ground that the applied mark is merely a description of the quality/characteristics of the services “files related to WEB sites or WEB servers”, in a manner commonly used, and thus lacks distinctiveness.

  However, the trial Examiners for the appeal have judged that the Examiner’s judgement is incorrect. That is, the trial Examiners for the appeal have judged that the applied mark has sufficient distinctiveness.

December 10, 2025

(Applied Mark: JP Appl. No. 2024-053633)
WebFile
(Standard Characters)

  “website traffic optimization; compilation of information into computer databases; etc.” in Class 35.

  “rental of web servers; software as a service [SaaS]; server hosting; electronic data storage; creating or maintaining web sites for others; etc.” in Class 42.

  The applied mark, consisting of “WebFile” in standard characters, is not listed in Japanese dictionaries or similar sources.

  The applied trademark “WebFile” (standard characters) consists of a first part comprising the letters “Web” meaning “World Wide Web”, and a second part comprising the letters “File” meaning “A collection of information recorded on a storage device such as a hard disk in a computer”, and thus the applied trademark “WebFile” as a whole can be understood in the meaning such as “Files (collections of information) on the (World Wide) Web”. However, this meaning of “Files (collections of information) on the (World Wide) Web” is too vague to establish a specific relationship to the services designated in this application, and it is unclear as to what specific type of file (in terms of content, nature, etc.) it would refer to. Additionally, no facts were discovered indicating that traders or consumers dealing with the designated services of the applied-for mark commonly use the mark as a descriptive indication of the quality/characteristics of the services of “Files (collections of information) on the (World Wide) Web”, as judged in the refusal decision.

  Therefore, the applied mark “WebFile” cannot be deemed to consist solely of a mark indicating the quality of the services in a manner commonly used as prescribed in Japanese Trademark Law Article 3(1)(iii), in relation to the designated services, nor can it be deemed likely to cause confusion regarding the quality of the services as prescribed in Japanese Trademark Law Article 4(1)(xvi).

  The applicant claimed in the appeal brief as follows:

  – Because the letters “Web” and “File” within the applied-for trademark each have multiple possible meanings, the applied-for trademark “WebFile”, which is a combination of the letters “Web” and “File”, when used as a whole for the designated services in Classes 35 and 42, can evoke multiple different connotations.

  – Therefore, the applied-for trademark cannot be regarded as merely indicating the quality/characteristics of the services.

  – Accordingly, the applied-for trademark should be judged to possess sufficient distinctiveness to distinguish the services of the applicant from those of others as a whole.

  As a result of these claims in the appeal brief being successful, the Examiner’s judgement in the refusal decision was deemed incorrect, and the applicant’s request was granted by the trial Examiners for the appeal.