ZONE

Designated goods of the applied-for-trademark:
Golf clubs in class 28 (similarity code: 24C01)

Designated goods of the cited trademark:
Climbing boots [mountaineering boots] in class 25 (similarity code: 24C01) and others.

(1) The applied-for-trademark:

The applied-for-trademark consists of the character string “ZONE” in standard characters. It is pronounced as “ZONE” and has a meaning of “an area (one that is different from the areas around it because it has different characteristics or is used for different purposes)” in accordance with the character string.

(2) The cited trademark:

The cited trademark consists of the character string “ZONE”. It is pronounced as “ZONE” and has a meaning of “an area (one that is different from the areas around it because it has different characteristics or is used for different purposes)” in accordance with the character string.

(3) Similarity of trademarks:

The applied-for-trademark and the cited trademark are similar in appearance since they would likely cause confusion because the trademarks are indicated in substantially the same font and because the character strings of both trademarks are in common.

The trademarks are similar in pronunciation because they are pronounced as “ZONE”.

The trademarks are similar in meaning because they have the meaning described above, in brief, “an area”.

With the above in mind, the applied-for-trademark and the cited trademark are similar because they would likely cause confusion in appearance and because they have common pronunciations and meanings.

(4) Similarity of designated goods:

As for similarity of the designated goods, the designated goods of the applied-for-trademark, “golf clubs” in class 28, are tools used to hit a ball when playing golf. Meanwhile, the designated goods of the cited trademark, “climbing boots [mountaineering boots]” in class 25 are shoes used when climbing mountains.

“Golf clubs” are widely sold to golf competitors and general golf enthusiasts mainly through dealers specializing in golf equipment, general sporting goods stores, department stores, large mass retailers, and the like. Meanwhile, “climbing boots [mountaineering boots]” are widely sold to mountaineering enthusiasts mainly through dealers specializing in mountain climbing equipment, general sporting goods stores, department stores, large mass retailers, and the like. Manufacturers of the above designated goods are different.

Under the circumstances, in the general and constant trading of the goods, even if the sales department may be in common, it is impossible to find circumstances that production departments, raw materials, quality, applications, and consumers of the goods are in common. In addition, the relationship between the goods does not fall under a relationship between finished products and parts.

Further, it is clear that the designated goods of the applied-for-trademark are not similar to the designated goods of the cited trademark other than climbing boots [mountaineering boots].

(5) Conclusion:

As discussed above, even if the applied-for-trademark is similar to the cited trademark, the designated goods of the applied-for-trademark are not similar to the designated goods of the cited trademark.

With respect to the similarity of the designated goods/services, in principle, the JPO judges similarities based on the similarity codes assigned to the goods/services description, as specified in the official guidelines.

The similarity code “24C01” of “golf clubs” in class 28 of the designated goods of the applied-for-trademark and “climbing boots [mountaineering boots]” in class 25 of the designated goods of the cited trademark is in common. Thus, if we conform to the above principle, the designated goods of both trademarks are considered similar.

However, the JPO appeal examiners concluded that the designated goods “golf clubs” and “climbing boots [mountaineering boots]” are dissimilar.