Rejection 2023-6307 (JP Appl. No. 2021-119641)

The Examiner has judged that the applied mark  is similar to the cited mark “MONO” written in standard characters.  Additionally, the designated goods of the cited mark are similar to the designated services (the provision of benefits for customers conducted in the course of retail and wholesale business) of the applied mark.  Thus, the Examiner has issued a decision of refusal against the applied mark.

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 is NOT similar to the cited mark.

November 1, 2023

(the applied mark)

(the cited mark: JP Reg. No. 4533103)
MONO　(written in standard characters)

(Applied Mark: JP Appl. No. 2021-119641)
Retail services or wholesale services for kitchen equipment, cleaning tools and washing utensils in Class 35.

(Cited Mark: JP Reg. No. 4533103)
Food wrapping plastic film for household use; garbage bags of paper for household purposes in Class 16.

For the applied mark

Even though the size of “+” is not the same as the sizes of all other characters, all characters are integrally arranged in a single horizontal line.  Thus, the applied mark cannot be separated, and its sound (pronunciation) is “MONOPURASU.”  That is, the main part of the applied mark is not “MONO.”  Further, the meanings of “MONO” and “+” are different, and the combination of “MONO” and “+” does not form an idiomatic word.  Furthermore, the meaning derived from the applied mark as a whole is not clear.

In view of the above, the applied mark is a coined word, and its sound is “MONOPURASU.”

For the cited mark

The cited mark is not a well-known foreign word in Japan.  Thus, the cited mark does not have a specific meaning, and its sound (pronunciation) is “MONO.”

Comparison of the applied mark and the cited mark

 – In appearance
  At the end of both marks, the applied mark has “+” while the cited mark does not.  Thus, the applied mark is clearly different from the cited mark in appearance.

 – In sound
  Because of the presence or absence of the sound of “+”, nobody will confuse the applied mark with the cited mark in sound.

 – In concept
  Both marks do not have a specific concept.  Thus, nobody will confuse the applied mark with the cited mark in concept.

 In view of the above, the applied mark is not similar to the cited mark.  Therefore, the appeal trial Examiners have withdrawn the Examiner’s judgement, namely, the decision of refusal against the applied mark based on the grounds that the applied mark is similar to the cited mark.

According to the applied mark, the size of “+” is about 25% of the size of “MONO.”  That is, “+” is significantly smaller than “MONO.”  Thus, we think that the main part of the applied mark might be “MONO.”  That is, we believe that the Examiner’s decision would be more reasonable than the decision of the appeal trial Examiners.

It will be necessary to monitor future decisions of the appeal trial Examiners to verify whether the above-mentioned decision of the appeal trial Examiners will be standard in the JPO.