(1) Lacking distinctiveness:

The applied-for-trademark consists of the letter string “smart” in standard characters. “smart” is a familiar word meaning “bright; intelligent; clever; computer control; etc.”

There is a circumstance that efforts to increase efficiency in store operation by using IoT and AI technology actively have been seen recently in the retail industry in relation to the designated services. In fact, a transliteration of “smart” in katakana has been used broadly to indicate a retail business approach (store type) using the above AI technology, etc., such as “smart store”, “smart retail”, etc.

With the above in mind, it is natural to say that traders and consumers should recognize solely “smart” as a word explaining features of the services using IoT and AI technology actively to increase efficiency in store operation and that consumers are not able to recognize the services as those pertaining to a business of a particular person by the applied-for-trademark.

Thus, the applied-for-trademark lacks distinctiveness.

(2) Applicant’s argument:

The applicant has argued that the applied-for-trademark is a source distinguishing mark because generally “smart XX” is used to indicate a retail business approach (store type) using the above AI technology, etc. in retail industry in relation to the designated services and because there is no factual basis that “smart” is used broadly. However, considering the circumstances that efforts to increase efficiency in store operation by actively using IoT and AI technology have been seen recently in retail industry in relation to the designated services and that the transliteration of “smart” in katakana has been used broadly to indicate a retail business approach using the above AI technology, etc., such as “smart store”, “smart retail”, etc., traders and consumers should recognize solely “smart” as a word explaining features of the services actively using IoT and AI technology to increase efficiency in store operation and the applied-for-trademark would not be able to work as a distinctive service mark, even though there are few instances that “smart” is solely used.

In addition, the applicant has recited several earlier registered trademarks “smart”/ “SMART” to argue that the applied-for-trademark is registrable. However, the judgement about distinctiveness should be made individually and specifically in relation to the designated services by an examiner’s decision or an appeal decision in the application. The judgement should not depend on earlier registered trademarks. Thus, the applicant’s arguments cannot be accepted.

(3) Conclusion:

As discussed above, the applied-for-trademark should not be registered because the applied-for trademark lacks distinctiveness.

The applicant recited the following earlier registered trademarks “smart”/ “SMART” to argue that the applied-for-trademark is registrable, though the argument was not accepted.

– SMART (Standard characters, JP Reg. No. 6179305, Classes 10, 25, and 35)

– smart (stylized, JP Reg. No. 4529288, Class 08), etc.