The Japan Patent Office (JPO) affirmed the examiner’s rejection to TM App no. 2023-54018 for word mark “by MERZY” in class 3 due to a conflict with TM Reg no. 6704955 for word mark “MARZY” in the same class 3.
[Appeal case no. 2025-148, decided on May 7, 2025]
TM App no. 2023-54018
MEFACTORY Co., Ltd., a South Korean cosmetic company, filed a trademark application for word mark “by MERZY” for use on cosmetics in class 3 with the JPO on May 18, 20223.
The cosmetic brand “MERZY,” which was born in South Korea, now attempts to attract Japanese consumers as well. The South Korean beauty market is valued at $25 billion, and ranked 5th in global cosmetic exports.
TM Reg no. 670495
On October 18, 2024, the JPO examiner rejected the applied mark based on Article 4(1)(xi) of the Japan Trademark Law by citing earlier TM Reg no. 6704955 for wordmark “MARZY” in standard character that designates cosmetics in class 3 owned by Yugen Kaisha LIMPIO.
The applicant filed an appeal against the rejection on January 7, 2025, and requested for cancellation of the rejection by arguing dissimilarity of mark.
In the appeal, the applicant argued inter alia the dissimilarity of sound between “MERZY” and “MARZY”.
JPO decision
The JPO Appeal Board found that relevant consumers would consider the literal element “MERZY” as a dominant portion of the applied mark, given the common usage of the English word “by”.
Therefore, it is permissible to dissect into individual parts and assess similarity to the cited mark focusing on the word element “MERZY” of the applied mark.
The Board stated that the applied mark is likely to give rise to two sounds, ‘mɜː zi’ or ‘merzi’, based on the fact that the term “MERZY” is not a word on English dictionary. Regarding the cited mark “MARZY”, the Board found that it just gives rise to a sound of ‘mɜː zi’.
Based on the foregoing, the Board assessed both marks visually give a substantially similar impression because the term “MERZY” and “MARZY” consist of five letters and a difference in the second letter is trivial.
Even though both marks are neutral in concept, they give a substantially similar impression in appearance and share the same pronunciation. Taking into account the comprehensive impression, memory, and associations of both marks conceived in the mind of relevant traders and consumers, the Board has a reason to believe that both marks are similar to a high degree and likely to cause confusion when used in relation to the goods in question.