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.