Applied-for-trademark:

Cited trademark:

Educational and instruction services relating to arts, crafts, sports or general knowledge; and others in class 41

The applied-for-trademark consists of a device consisting of a fragment of a red circle, a prominent and horizontal black character string “”(corresponding to NIPPON Language Academy) on the upper right side and a very small black character string “NILA.NIPPON LANGUAGE ACADEMY” on the lower right side.

The above-described device portion and the character portions are spaced apart from each other, and do not overlapping. Further, there does not appear to be an association between the device and character portions that would indicate a relevant meaning. Thus, the device portion and the character portions are not indivisibly combined to the extent that it seems unnatural to divide them in trading.

Further, as for the device portion, it is difficult to say that the device portion is highly original. In addition, it is not possible to find that the device portion alone creates a deep impression as a source identification mark on viewers in appearance. Under the circumstances, it is natural to consider that the applied-for-trademark as a whole and the prominent and horizontal letter string “” rather than the device portion would be most indicative in trading.

With the above in mind, it is difficult to say that traders and consumers should perceive only the device portion of the applied-for-trademark, even if they perceive the character string “” in addition to the applied-for-trademark as a whole, in trading.

Thus, the refusal decision based on the grounds that the applied-for-trademark and the cited trademark are similar by extracting the device portion of the applied-for-trademark to judge similarity of the trademarks in the examination stage should be withdrawn.

In the examination stage, the Examiner concluded that the applied-for-trademark and the cited trademark are similar as a whole without considering similarity of pronunciations and meanings because it is possible to perceive the character and device portions of the trademarks separably and because the device portions (which have an appearance like a type of Japanese hand fan) are alike when rotating the device by 90 degrees. In the appeal stage, the applicant argued that the Examiner should judge the similarity of the trademarks from the same angle as consumers perceive the devices.