カテゴリー: Trademark Appeal

JPO Found Trademark “Finto” Dissimilar to “Fi.n.t”

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The Japan Patent Office (JPO) set aside rejection by the examiner to register TM App no. 2025-57051 “Finto” in Class 9 by finding dissimilarity to earlier TM Reg no. 5547097 for the wordmark “Fi.n.t” in the same class.
[Appeal case no. 2025-16841, decided on January 22, 2026]

Finto

Visional Co., Ltd. filed a trademark application for the word mark “Finto” in standard character for use on computer software and other computer-related goods in Class 9 with the JPO on May 26, 2026. [TM App no. 2025-57051]

Fi.n.t

On June 4, 2025, the JPO examiner gave the applicant a notice of ground for refusal laid down in Article 4(1)(xi) of the Japan Trademark Law by citing earlier TM Reg no. 5547097 for a word mark “Fi.n.t” with its Japanese transliteration (see below) in Class 9 that has been effectively registered since 2012.

The applicant filed a response to the office action on July 9, 2025, and argued dissimilarity of the marks. However, the examiner did not withdraw his refusal and finally decided to reject the entire application on July 25.

The applicant filed an appeal against the examiner’s rejection on October 22, 2025, and argued dissimilarity of the marks.

Appeal Board decision

The JPO Appeal Board noted that the term “Finto” is not listed in standard dictionaries. As no circumstances are confirmed to suggest its specific meaning in Japan, it will be recognized as a coined word. Therefore, the mark has a sound of “finto” and does not elicit any particular connotations.

Regarding the cited mark, the Board observed that it comprises the letters “Fi.n.t” and their Japanese katakana transliteration, arranged in two lines. It is regular to refrain from pronouncing two dots placed in the middle of the letters. From overall appearance, it is reasonable to find that the cited mark also has a sound of “finto” and no meaning in its entirety.

Due to the clear distinctions in literal configuration, the number of letters, and the presence and absence of “,” / “o,” visual impressions differ remarkably to the extent that relevant consumers can distinguish two marks in appearance. Evidently, both marks have the same sound. A conceptual comparison is neutral as neither of the concepts has a clear meaning.

Based on the foregoing, the Board found that even if the marks have common sound and the conceptual comparison is neutral, given that the marks are sufficiently distinguishable in appearance, relevant consumers will not confuse the source of goods in question bearing the mark “Finto” with the cited mark. If so, the Board has reason to believe that they are dissimilar as a whole.

Ziploc Ribbon, Ziploc, or Ribbon?

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In an appeal concerning the similarity between the registered mark “Ribbon” and a junior application containing the literal elements “Ziploc” and “Ribbon,” the Japan Patent Office (JPO) overturned the examiner’s refusal and held that the two marks were dissimilar.
(Appeal Case No. 2025-4546, decision dated January 19, 2026)

The contested mark: “Ziploc Ribbon”

SC Johnson & Son, Inc. filed a trademark application on February 14, 2024, for a composite mark comprising the literal elements “Ziploc” and “Ribbon,” with the word “Ribbon” placed below “Ziploc” within a ribbon design (see image below). The application designated plastic bags and containers in Classes 16 and 21. [TM Application No. 2024-14335]

“Ziploc” is widely known as a brand of reusable, re-sealable zipper storage bags and containers manufactured by S. C. Johnson & Son, a US-based company.

https://www.beams.co.jp/special/ziplocribbon/

JPO examination

On January 29, 2025, the JPO examiner rejected the application pursuant to Article 4(1)(xi) of the Japan Trademark Law, citing prior registered trademark No. 4873505 for the word mark “Ribbon” in standard character, which has been registered since 2005 for identical or similar goods in the same classes.

SC Johnson filed an appeal against the examiner’s decision on March 25, 2025, seeking revocation of the refusal.

Appeal Board decision

The JPO Appeal Board reversed the examiner’s decision and concluded that the marks were dissimilar, reasoning as follows:

  1. Because the literal elements of the applied-for mark are depicted in a similar monochromatic color scheme and arranged in close proximity, relevant consumers are likely to perceive the mark as a single, unified whole.
  2. The term “Ribbon” possesses only a low degree of inherent distinctiveness, as it is commonly used to denote a long, narrow strip of material employed for tying or decorative purposes.
  3. Given that the element “Ziploc,” which is prominently displayed in the contested mark, is widely recognized as an indicator of origin for the applicant’s zipper storage bags and containers, there is no evidence to suggest that the term “Ribbon,” shown beneath “Ziploc” in a smaller font, plays a dominant role in identifying the commercial source of the goods.
  4. In light of the foregoing, it is unreasonable to assess similarity between the marks based solely on the shared element “Ribbon.”

Based on this analysis, the Appeal Board set aside the examiner’s refusal and granted registration of the “Ziploc Ribbon” mark.

Abercrombie & Fitch Fails to Protect Trademark “A&F” with Moose silhouette

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The Japan Patent Office (JPO) did not side with Abercrombie & Fitch in an appeal against the JPO examiner’s rejection of the mark “A&F” with an iconic moose silhouette in Class 9 due to a conflict with the earlier mark “A&F” in Class 35.
[Appeal case no. 2025-9982, decided on December 23, 2025]

Abercrombie & Fitch

Abercrombie & Fitch filed a trademark application for the mark consisting of the term “A&F” and their iconic Moose silhouette (see below) for use on eyeglasses, sunglasses, googles for sports, earphones, headphones, telecommunication machines and apparatus, personal digital assistants, cases for smartphones in class 9 with the JPO on February 26, 2024 [TM App no. 2024-18531].

Rejection laid down in Article 4(1)(xi)

On May 7, 2025, the JPO examiner rejected the mark applied for lain down in Article 4(1)(xi) of the Japan Trademark Law by citing two earlier TM Reg Nos. 5218488 and 5588154 for the mark “A&F” owned by A&F Corporation.

Article 4(1)(xi) is a provision that prohibits the registration of a junior mark that is deemed identical with, or similar to, any earlier registered mark.

The cited marks designate retail or wholesale services for telecommunication machines and apparatus, and eyeglasses in Class 35.

Under the JPO practice, goods and retail or wholesale services for the goods are deemed similar.

JPO Appeal Board decision

Abercrombie & Fitch filed an appeal to request that the examiner’s rejection be set aside on June 26, 2025.

In the appeal brief, Abercrombie & Fitch argued that the figurative element is dominant in the contested mark as the Moose silhouette has acquired a certain degree of recognition among the relevant consumers in Japan.

However, the Board observed the examiner did not err in finding facts relevantly and dismissed the appeal by stating that:

  1. The figurative element does not engender any specific meaning or sound. The literal element, “A&F,” is also recognized as a coined word, as it does not appear in ordinary dictionaries. There is no reasonable basis to consider these elements as a whole due to the significant space gap and lack of conceptual association between them. Therefore, it is appropriate to find that the literal element “A&F” of the contested mark plays an independent role in identifying the source of the goods bearing the contested mark.
  2. Even if a conceptual comparison is neutral, as neither the contested mark nor the cited marks have a clear meaning, the relevant consumers are likely to confuse the source of the goods in question with the cited owner because of the close resemblance in appearance and pronunciation.
  3. Based on the evidence submitted by Abercrombie & Fitch to demonstrate the popularity of the moose design, the Board found it unpersuasive that the design plays a dominant role as a source indicator.

JPO found “is me” dissimilar to “iS.ME” as trademark

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The Japan Patent Office (JPO) reversed the examiner’s rejection of the word mark “is me” in Classes 14, 18, and 25, by finding it dissimilar to senior TM Reg No. 5006417 for the mark “iS.ME” with an oval device.
[Appeal case no. 2025-4535, decided on December 17, 2025]

“is me”

ARIGATO CO., LTD. filed a trademark application for the stylized mark “is me” (see below) in connection with personal ornaments (Cl. 14), bags (Cl. 18), and apparel products (Cl. 25) with the JPO on February 8, 2024. [TM App no. 2024-18788]

https://www.argt-ltd.com/eventlist/438/

TM Reg No. 5006417

On October 4, 2024, the JPO examiner issued a notice of ground for refusal by citing senior TM Reg No. 5006417 for the mark “IS.ME” with an oval device (see below) in Classes 12, 14, and 25.

The applicant filed a response against the refusal on November 27, 2024, to argue the dissimilarity of these marks. However, on February 4, 2025, the examiner decided to reject the entire application due to similarity to the cited mark based on Article 4(1)(xi) of the Japan Trademark Law.

On March 25, 2025, the applicant filed an appeal against the contested decision, requesting that the rejection be set aside.

JPO Appeal Board decision

The JPO Appeal Board disaffirmed the contested decision and found that the mark “is me” should not be subject to rejection under Article 4(1)(xi) by stating that:

  1. The mark in question consists of the letters “is me” written in a script font. Both terms, “is” and “me”, are English words generally familiar to Japanese consumers, meaning “to be” and “myself” respectively. Therefore, the mark has the sound of “iz-miː.” Meanwhile, as “is me” lacks a subjective term, it does not give rise to any specific meaning as a whole.
  2. The literal elements of the cited mark will not be considered inextricable from the graphical element because of a space between them, and lack of conceptual integrity as a whole. In this regard, it is reasonable to consider the literal element as dominant in the cited mark, and compare it with the mark in question to assess similarity between the marks. The literal element gives rise to various sounds, not limited to “iz-miː.”, but “ai-es-dot-emu-iː”, “iz-dot-miː.”, “ai-es-dot-miː”.
  3. From appearance, the cited mark features a distinctive combination of the initial letter “i” in lowercase and the subsequent three letters in uppercase, all written in bold Gothic and colored in red. This constitutes a prominent distinction from the mark in question, resulting in strong commercial impressions that are easily distinguishable.
  4. Aurally, even if both sounds are the same when the cited mark is pronounced as “iz-miː”, the other sounds are clearly distinguishable.
  5. A conceptual comparison is neutral as neither of them has any specific meaning.
  6. Based on the foregoing, given both marks are unlikely to cause confusion from visual and phonetic points of view, the Board has reason to believe the mark “is me” is deemed dissimilar to the cited mark as a whole.

SERAPIAN Successful in Registering iconic MOSAICO braided pattern as trademark

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The Italian-based fashion house Stefano Serapian S.r.l. was successful in an appeal to overturn the examiner’s rejection of TM App no. 2022-131488 for the Serapian’s signature “Mosaico” leather pattern in Class 18.
[Appeal case no. 2023-16337, decided on December 17, 2025]

SERAPIAN MOSAICO

Stefano Serapian S.r.l. filed a trademark application for a braided pattern (see below) for use on bags, suitcases, tote bags, backpacks, key cases, porches, wallets, coin cases, and handbags in Class 18 with the JPO on November 17, 2022 [TM App no. 2022-131488].

The Serapian Mosaico pattern is known for its iconic hand-weaving technique, which dates back to 1947 and serves as an emblem of the Italian luxury brand, Serapian.

https://www.serapian.com/

JPO Examination

On June 26, 2023, the examiner rejected the mark based on Article 3(1)(vi) of the Japan Trademark Law by finding that:

The applied-for mark represents a continuous and repetitive geometric pattern consisting of a white square with a vertical line in the middle and a black square in a diagonal position. As a whole, it will be perceived merely as a decorative background design. Besides, there is no distinctive element that identifies the source of the goods in question. Consequently, consumers are unable to recognize it as a source indicator due to its lack of inherent distinctiveness.

Serapian filed an appeal against the rejection on September 27, 2023, to dispute the inherent distinctiveness of the mark based on substantial use and advertising of the Mosaico collection in Japan since 2014.

JPO Appeal Board Decision

The JPO Appeal Board noted the following facts.

  • Founded in 1928, the applicant is known for its line of bags favored by the late British actress Audrey Hepburn. The applicant’s bags, which depict the applied-for mark and were designed in 1947, have been sold nationwide in Japan for over 10 years and have been distributed in Japan since 2014.
  • Major fashion magazines and online articles have featured the bags and their iconic “MOSAICO” pattern design.
  • The bags are also sold in major department stores and online malls. Despite being expensive and high-end goods, annual sales exceeded JPY 50 million in 2023 and JPY 9 million in 2024.
  • A discretionary survey by the Board did not reveal the actual use of a similar pattern by others.

Based on the foregoing, the Board found that relevant consumers and traders can distinguish the applicant’s goods from others based solely on the Mosaico pattern.

Therefore, since the applied-for mark is not subject to Article 3(1)(vi) of the Japan Trademark Law, the Board overturned the examiner’s rejection.

JPO found “@knowledge” dissimilar to “KNOWLEDGE”

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In an administrative appeal, the Japan Patent Office (JPO) overturned the examiner’s rejection of TM App no. 2024-8041 for the mark “@knowledge” due to dissimilarity between “@knowledge” and “KNOWLEDGE”.
[Appeal case no. 2024-19449, decided on October 21, 2025]

@knowledge

Property Data Bank, Inc. filed a trademark application with the JPO for the mark “@knowledge” (see below) in connection with several services in Classes 35, 36, and 42, including “Business management analysis or business consultancy; Marketing research; Providing information concerning commercial sales”, “Management of buildings and real estate; Agency services for the leasing or rental of buildings and real estate”, “Computer software design, computer programming, or maintenance of computer software; Technological advice relating to computers, automobiles and industrial machines” on January 29, 2024. [TM App no. 2024-8041]

KNOWLEDGE

On July 24,2024, the JPO examiner issued a refusal notice based on Article 4(1)(xi) of the Japan Trademark Law, citing senior TM Reg nos. 4522262, 4697986, and 5033530 for the wordmark “KNOWLEDGE” in Classes 35, 41, and 42.

The examiner noted that the mark consists of the “@” symbol with circle decorations and the term “knowledge.” There is no visual or conceptual connection between the symbol and the term, so they can’t be considered inextricable. Since the term “knowledge” is identical to the cited marks, it is confusingly similar to them as a whole.

The applicant counterargued that the mark should be taken as a whole and thus be deemed dissimilar from the cited marks from an aural, visual, and conceptual point of view due to the presence of the @ symbol. However, the examiner decided to reject the trademark application under the aforementioned article on October 30, 2024.

On December 4, 2024, the applicant filed an appeal and requested the cancellation of the examiner’s rejection.

JPO Appeal Board decision

The JPO Appeal Board considered the fact that “@” is widely recognized as a symbol representing “unit price” or “email address.” Nowadays, it is used commercially in trade as part of a company, website, or business name in conjunction with various words placed afterward.

Under these circumstances, consumers are unlikely to dissect the mark “@knowledge” into its individual parts. Rather, they will consider it as a whole. The sound of the mark is not so redundant that consumers cannot pronounce it as a whole. Additionally, there is no reason to conclude that the literal element “knowledge” alone identifies the source of the services in question.

Based on these findings, the Board concluded that the examiner erred in applying Article 4(1)(xi) by dissecting the mark into two parts. Consequently, the Board canceled the rejection and granted registration of the mark due to its dissimilarity to the cited marks.

YONEX Scored Win in Registering Color mark

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On October 21, 2025, the Japan Patent Office (JPO) granted registration of a color mark that consists of blue and green colors, filed by Yonex Co., Ltd. to use on badminton shuttlecocks by finding acquired distinctiveness of the color combination.
[Appeal case no. 2022-17481]

YONEX Color Mark

Yonex Co., Ltd. filed a trademark application with the Japan Patent Office on September 6, 2019, for a mark that consists of a combination of blue (Pantone 2935C) and green (Pantone 355C) (color ratio 50%:50%), designating “sports equipment; badminton equipment” and other goods in Class 28 [TM App no. 2019-118815].

Rejection by JPO examiner

On July 27, 2022, the JPO examiner rejected the mark under Article 3(1)(iii) of the Japan Trademark Law, due to a lack of inherent distinctive character. Furthermore, while acknowledging that a certain number of traders and consumers recognize the color combination perse as an indicator of the applicant’s goods in view of the applicant’s extensive use of the mark on badminton shuttlecocks for years, and its leading market share, the examiner had an opinion that a significant number of people do not recognize it as a source indicator to distinguish from others. Accordingly, the examiner concluded that the mark does not satisfy the requirements to apply Article 3(2) since the applicant failed to demonstrate acquired distinctiveness of the mark in relation to the goods in question.

Subsequently, the applicant filed an appeal against the rejection on November 1, 2022, and then restricted the designated goods to “Shuttlecocks” in Class 28.

JPO Appeal Board decision

The JPO Appeal Board observed that the evidence submitted by the applicant would sufficiently demonstrate that the color combination has played a role in identifying the specific source of Shuttlecocks by taking into account the following facts.

  1. The mark has been used continuously for over 48 years, since at least 1976, on Yonex Badminton shuttlecocks. The color combination appears on the applicant’s website, in product catalogs, internet articles, magazines, newspapers, and television programs. The shuttlecocks bearing the mark have been officially used at numerous international badminton tournaments, including the Olympic Games and World Championships.
  2. Yonex shuttlecocks ranked first in the domestic market for 11 consecutive years from 2009 to 2019, with a market share of approximately 70% to 80% during that period.
  3. According to survey results targeting 1,053 men and women aged 15 to 59 who currently play or have played badminton or tennis, 57.87% of the respondents who have played both tennis (including soft tennis) and badminton could associate the color combination with the applicant in the answer to an open or closed (multiple choice) question. For those who have experienced badminton, but not tennis, 56.59% could associate it with the applicant in either question.

Based on the foregoing, the Board found that the examiner erred in applying Article 3(2), and thus decided to register the color combination as a trademark.

JPO Rejected 3D shape of KitKat 2 Finger Mini Chocolate Wafers as Trademark

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The Japan Patent Office (JPO) Appeal Board upheld the examiner’s decision to reject TM App no. 2020-121513 for the 3D shape of Nestle’s KitKat 2 Finger Mini Chocolate Wafers, due to a lack of inherent and acquired distinctiveness.
[Appeal case no. 2024-75, decided on September 29, 2025]

KitKat 2 Finger Mini Chocolate Wafers

Société des Produits Nestlé S.A. filed a trademark application for the 3D shape of KitKat 2 Finger Mini Chocolate Wafers (see below) in connection with chocolate confections (Cl. 30) with the JPO on October 1, 2020. [TM App no. 2020-121513]

The JPO examiner gave Nestle a notice of grounds for refusal on August 30, 2021, based on Article 3(1)(iii) of the Japan Trademark Law due to a lack of inherent distinctiveness.

As a response, Nestle argued not only the inherent distinctiveness of the 3D shape, but also acquired distinctiveness since the shape has been used since 2011 on their world-famous chocolate wafers “KitKat 2 Finger Mini”. To demonstrate the acquired distinctiveness, Nestle conducted market research targeting 1,001 men and women aged 15 to 64 residing in Tokyo or Osaka, or these neighboring areas, and who have purchased and eaten chocolate confections more than once a month. 85% of respondents, when shown the 3D shape of the KitKat 2 Finger Mini chocolate wafers without any accompanying text, identified it as “KitKat” in response to an open-ended question.

However, the examiner considered the market research biased by excluding children aged under 15 and over 65, who are unquestionably relevant consumers, and limiting respondents who reside in the Tokyo or Osaka areas and have purchased and eaten chocolate confections more than once a month.

On October 2, 2023, the examiner decided to reject the mark based on Article 3(1)(iii), and noted that the evidence is insufficient to find 3D shape perse has already played a role in identifying the source of the KitKat 2 Finger Chocolate Wafers.

To contest, Nestle filed an appeal with the JPO on January 4, 2024.

Subsequently, Nestle conducted 2nd market research targeting 1,080 men and women aged 15 to 99 without restricting their residence and preference to chocolate confections. The result shows that 72.9% of respondents, when shown the 3D shape of the KitKat 2 Finger Mini chocolate wafers without any accompanying text, identified it as “KitKat” in response to an open-ended question.

JPO Appeal Board decision

The JPO Appeal Board recognized the high popularity and recognition of KitKats sold in Japan since 1973, which holds a 17% market share — the top ranking in Japan. Annual sales exceeded 27 billion JPY in 2019.

In the meantime, the Board questioned whether the applied 3D shape perse has acquired distinctiveness in connection with the KitKat 2 Finger Mini chocolate wafers by stating that:

  1. KitKats come in various shapes, such as spherical or stick-shaped, as well as the ‘2 Finger Mini’. Therefore, the applied 3D shape would not be identical to all KitKat chocolates.
  2. KitKats are sold in individually wrapped pieces that are then packed in boxes or bags for display and sale. This suggests that the 3D shape would not be distinctive enough to catch consumers’ attention at the time of purchase.
  3. Of the sixty KitKats, only two represent an image of the 3D mark on their packaging.
  4. There is insufficient evidence to conclude that relevant consumers can securely identify the source of KitKats by relying solely on the 3D mark in question.
  5. Advertising for KitKats has not prominently featured the 3D shape to the extent that it could be perceived as a source indicator by consumers. Even if market research shows that many consumers associate the 3D shape with KitKats, it cannot be concluded that consumers distinguish KitKats based solely on the shape of the goods.

Based on the above findings, the JPO upheld the examiner’s decision, and declared rejection of the 3D shape due to a lack of inherent and acquired distinctiveness.

The JPO’s decision is appealable until February 11, 2026.

JPO decision: Gem Queen is Not Confusable with QUEEN for gems

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The Japan Patent Office (JPO) disaffirmed the examiner’s rejection to TM App no. 2024-4744 of wordmark “Gem Queen” for use on gems, jewelry, personal ornaments in Class 14 by finding dissimilarity to earlier trademark registration of wordmark “QUEEN” on the same goods.
[Appeal case no.2024-16517, decided on September 4, 2025]

Gem Queen

A Japanese individual filed a trademark application with the JPO for wordmark “Gem Queen” in standard character by designating ‘Precious metals; Unwrought and semi-wrought precious stones and their imitations; Key rings; Jewelry boxes; Trophies [prize cups] of precious metal; Commemorative shields of precious metal; Personal ornaments [jewelry]; Shoe ornaments of precious metal; Clocks and watches’ in Class 14 on Jan 19, 2024. [TM App no. 2024-4744]

On March 1, 2024, the applicant requested the JPO to accelerate examination procedure by demonstrating actual use of the applied-for mark on any of the designated goods.

QUEEN

The JPO examiner rejected the mark due to a conflict with earlier TM Reg no. 3332881 of wordmark “QUEEN” in Class 14 based on Article 4(1)(xi) of the Japan Trademark Law.

In her refusal decision, the examiner stated that the element “Gem” in the mark merely corresponds to a generic term of the designated goods and therefore lacks, or possesses only very weak, distinctiveness as a source indicator. Accordingly, the “Queen” element is dominant in the mark as an indication of the origin. Therefore, in assessing the similarity between “Gem Queen” and “QUEEN”, it is permissible to focus the comparison on the “Queen” element. Consequently, the applied-for mark gives rise to the same pronunciation and concept with the cited mark.

On October 16, 2024, the applicant filed an appeal against the rejection and argued dissimilarity of the marks.

JPO decision

The JPO Appeal Board observed that the examiner erred in applying Article 4(1)(xi) by incorrectly finding the term “Queen” as a dominant element of the applied-for mark.

The Board noted that the constituent characters are presented in the same font, size, and spacing, and appear well-balanced and unified. The pronunciation “Gem Queen” can also be articulated smoothly in a single breath. Furthermore, the applied-for mark as a whole evokes the concept of a “queen of gems” or “jewel queen.” Additionally, no specific circumstances have been identified in the relevant industry dealing with the designated goods, such as “Gem” being widely used to indicate the quality (e.g., “jewel”) of the goods, or brand names in the form of “Gem ○○” being customarily abbreviated in trade by omitting “Gem” and using only the “○○” portion. Therefore, when the mark is presented as a whole, it is difficult to conclude that the element “Gem” would be disregarded, and the mark would be traded based on “Queen” alone. Rather, it is reasonable to consider the applied-for mark as an inseparable whole.

Based on the foregoing, the Board held that it is not permissible to separate the “Queen” portion from the applied-for mark and determine the similarity between the applied-for mark and the cited mark on that basis. In this respect, the examiner’s rejection should be overturned.

SAINT-CLAIR BY JOSEPH DUCLOS vs Saint Clair

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The Japan Patent Office (JPO) overturned the examiner’s refusal of the word mark “SAINT-CLAIR BY JOSEPH DUCLOS,” finding it dissimilar to the cited mark “Saint Clair.”
[Appeal Case No. 2025-5675, Decision rendered September 8, 2025]

SAINT-CLAIR BY JOSEPH DUCLOS

MANUFACTURE JD (JOSEPH DUCLOS) filed an application for the word mark “SAINT-CLAIR BY JOSEPH DUCLOS” on December 22, 2023, designating perfumes, fragrances, cosmetics, and other goods in Class 3 [TM App. No. 2023-142233].

Saint Clair

On January 14, 2025, the JPO examiner refused the application under Article 4(1)(xi) of the Trademark Law, citing earlier Reg. No. 6295331 for the word mark “Saint Clair” (together with its Japanese transliteration, arranged in two lines), which also covers the same goods in Class 3.


On April 14, 2025, JOSEPH DUCLOS filed an appeal against the refusal, arguing that the applied-for mark is dissimilar to the cited mark.

JPO Decision

The Board noted that the applied-for mark consists of five elements: “SAINT,” “CLAIR,” “BY,” “JOSEPH,” and “DUCLOS.” “SAINT” is a French word meaning “holy” or “sacred,” and “CLAIR” means “bright” or “light.” “BY” is a common English preposition, and “JOSEPH” is a male given name in English. “DUCLOS” is neither listed in dictionaries and nor widely recognized in Japan as a word with any specific meaning. Consequently, the Board found no significant difference in distinctiveness among the constituent terms in relation to the designated goods.

Further, although the entire pronunciation of the applied-for mark is somewhat long, it can nevertheless be articulated smoothly in a single utterance without difficulty.

An ex officio investigation did not reveal any circumstances suggesting that relevant traders or consumers would focus solely on the element “SAINT-CLAIR” when dealing with the goods at issue.

Accordingly, the Board held that consumers and traders would perceive the applied-for mark as an indivisible coined word in its entirety. It is therefore inappropriate to dissect and compare only the element “SAINT-CLAIR” with the cited mark when assessing similarity. In this respect, the examiner’s refusal was erroneous in its application of Article 4(1)(xi), having improperly isolated the element “SAINT-CLAIR.” The decision of refusal was therefore reversed.