Porsche Successful in Registration of Composite Mark “PCA”

The Japan Patent Office (JPO) reversed the examiner’s rejection of TM App no. 2023-61383 for composite mark “PCA” filed by Porshe Japan on account of dissimilarity to earlier trademark registrations for word mark “PCA”.
[Appeal case no. 2024-3079, decided on February 17, 2025]


PREMIUM CHARGING ALLIANCE “PCA”

Porsche Japan K.K., a wholly-owned subsidiary of Porsche AG as an official distributor of Porsche vehicles in Japan, filed trademark application for composite mark “PCA” as shown below with the JPO for use on ‘compute programs’ in class 9 and ‘computer software design; computer programing; maintenance of computer software; providing computer programs on data networks’ in class 42 on June 5, 2023.

Porsche Japan has launched a project to expand the network of 150kW fast charging stations across Japan by forming an alliance with Audi in April 2022. The applied mark is used to indicate the project.


JPO examination

On November 21, 2023, the JPO examiner rejected the applied mark due to a conflict with earlier trademark registration nos. 1738222, 5762134 and 5764544 for word mark “PCA” in class 9 and 42 owned by PCA Corporation based on Article 4(1)(xi) of the Trademark Law.

In the refusal decision, the examiner stated that the element “PCA” in the upper line of the applied mark is dominant in the overall visual impression. If so, the applied mark is confusingly similar to the cited marks, even though there is a difference in appearance, since both marks give rise to the same sound.

Porsche Japan filed an appeal against the rejection on February 21, 2024, requesting that the decision be set aside.


Appeal Board decision

The JPO Appeal Board found the applied mark should not be dissected into individual parts from its overall configuration. Relevant consumers would recognize the term “PCA” in the upper line as an abbreviation of the term “PREMIUM CHARGING ALLIANCE” in the lower line. Both the term “PCA” and “PREMIUM CHARGING ALLIANCE” would not give rise to any specific meaning.

In assessing similarity of the marks, the Board held there is no clear distinction in appearance between the marks as a whole. Phonetically, the applied mark is dissimilar to the cited marks on account of the sound arising from the term “PREMIUM CHARGING ALLIANCE”. The conceptual aspect does not have impact on the assessment of similarity, since both marks are meaningless.

Based on the above findings, the Board found the examiner erroneously applied Article 4(1)(xi) and declared registration of the applied mark due to dissimilarity to the earlier mark “PCA”.

Porsche wins trademark protection for “911”

Porsche, a German sports car maker, has recently won trademark protection for its widely known three-digit code “911” in Japan.
[Appeal case no. 2018-650044]

911 – a mark composed exclusively of numerals

Dr. Ing. h.c. F. Porsche Aktiengesellschaft filed a trademark application for three-digit mark “911” in standard character to the Japan Patent Office (JPO) via the Madrid Protocol with a priority date of March 15, 2014, which is the international registration date for IR no. 1199656.

Evidently, the mark represents the famous Porsche 911, one of the greatest sportscar.  

It starts in 1963. 911 was Designed as a Rear Engined Luxury Sports Coupe from the get-go. Germans wanted to call it the 901. and that had been it’s factory code ever since it was in production. But Porsche was forced to rename the model the ‘911’ after French Automaker Peugeot claimed the name 901, having the {Number – Zero – Number}, was in violation of French copyright and trademark protection laws.

On April 5, 2018, the JPO examiner refused the 911 mark on the ground that it is descriptive for the designated goods ‘sports cars’ in class 12 based on Article 3(1)(v) of the Trademark Law.

The article prohibits any mark from registering if it consists solely of a very simple and common mark. Trademark Examination Guidelines (TEG) stipulates that a mark consisting of numerals is not eligible for registration under the article. Click here.

A mark composed exclusively of numerals is deemed uncapable of identifying the source of the goods since relevant public immediately perceives, without further thought, a description of one of the essential characteristics of the goods in question, such as their quantity or value.

The examiner had considered that since the sign 911 can be used to indicate a value, code, type, model or standard, it could be immediately perceived by the relevant public as descriptive of a characteristic of the goods in question and not of their provenance from a specific undertaking.

Numerals falling under the article are only capable for registration based on Article 3(2) if they have “acquired distinctiveness”, which means the term has taken on a meaning in the public view so that people see the term as a trademark identifying the goods rather than simply describing the goods.

In the appeal, Porsche argued the 911 mark in itself has already played a role of source indicator as a result of substantive use since 1964.

APPEAL BOARD Decision – Acquired Distinctiveness

JPO Appeal Board granted protection of the 911 mark, stating that the mark has acquired distinctiveness due to substantive and continuous use with goods in question based on following fact-findings.

  1. Appellant has used the 911 mark as a sports car brand of its high-end product since 1964 in Japan and been continuously distributing the sports car.
  2. Recent domestic sales show 1,420 cars in 2016, 1,543 cars in 2017.
  3. Press release, news articles, catalogs and advertisements on magazines and newspapers featuring Porsche count to approximately 300 per year from 2010 to 2014.
  4. From the produced evidences, it could be seen that the 911 mark has been used in a separable manner with Porsche.

Thus, the Board found the applied mark in itself has been widely known for a source indicator of the famous Porsche 911 among relevant consumers of goods in respect of which an application for registration has been filed. If so, the 911 mark is exceptionally eligible for registration in connection with sports cars of class 12 based on Article 3(2) of the Trademark Law.