Applied-for-trademark:

Cited trademark: BLING

Designated goods of the applied-for-trademark: Clothes for sports, other than clothes for golf; special footwear for sports, other than horse-riding boots and golf shoes; uniforms, other than uniforms for golf in class 25

Designated goods of the cited trademark: Golf balls; other golf equipment in class 28

(1) Applied-for-trademark:

The applied-for-trademark consists of the letter string “BRING” and a horizontal line of the same width. The English word “BRING” meaning “take or go with (someone or something) to a place” is familiar in Japan.

Thus, the applied-for-trademark is represented by the Japanese phonetic expression “bu ri n gu”, and has a meaning “take or go with (someone or something) to a place”.

(2) Cited trademark:

The cited trademark consists of the letter string “BLING” in standard Roman characters. The English word “BLING” meaning “(wearing) flashy and expensive jewelry” is not familiar in Japan.

Thus, the cited trademark is also represented by the Japanese phonetic expression “bu ri n gu”, but has no specific meaning associated with it.

(3) Similarity of the applied-for-trademark and the cited trademark:

As for appearance, the applied-for-trademark and the cited trademark are distinguishable due to the horizontal line of the applied-for-trademark and the difference of the second letters of “R” and “L”. The applied-for-trademark and the cited trademark have identical Japanese phonetic expressions – “bu ri n gu”. There is no likelihood of confusion between the meanings of both trademarks because the applied-for-trademark has the meaning “take or go with (someone or something) to a place” and because the cited trademark has no specific meaning associated with it.

With comprehensive impressions, memories and the like of the trademarks in mind, it is unreasonable to say that the applied-for-trademark and the cited trademark are similar because both trademarks are distinguishable in appearance and because there is no likelihood of confusion between both trademarks in meaning, even if both trademarks have the Japanese phonetic expression “bu ri n gu” in common. 

(4) Conclusion:

As we discussed above, the applied-for-trademark and the cited trademark are dissimilar without considering whether the designated goods of the trademarks are similar and other requirements.Thus, the refusal decision in the examination stage should be withdrawn.

The applicant limited the designated goods from “clothes for sports; special footwear for sports, other than horse-riding boots; uniforms” to “clothes for sports, other than clothes for golf; special footwear for sports, other than horse-riding boots and golf shoes; uniforms, other than uniforms for golf” in class 25 and argued that the designated goods of the applied-for-trademark and the designated goods of the cited trademark (“golf balls; other golf equipment” in class 28) are considered dissimilar against the office action in the examination stage. 

The applicant explained that a cancellation request based on non-use against the cited trademark should be filed by the applicant soon and that the grounds of refusal would be overcome if the cited trademark is cancelled by the cancellation request in the appeal request. However, the appeal examiners concluded that the applied-for-trademark and the cited trademark are dissimilar without considering whether the designated goods of the trademarks are similar and other requirements.