Cancellation 2022-300904 (JP Reg. No. 6174336)

Please see “Summary of Judgement.”

January 10, 2024

 (the registered mark)

SPLENDOR  (standard characters)

 (the used mark)

SPLENDOR-SAP  (written in usual font)

(JP Reg. No. 6174336)
OMITTED

  The appeal trial Examiners recognized that the term “SAP” in the used trademark could be interpreted as an abbreviation of “Single Adjustable Post”.

  However, the owner of the trademark registration failed to prove any evidences demonstrating that the term “SAP” directly conveys the quality, and efficacy, intended purpose or other characteristics of the designated goods.  That is, no evidence was submitted to support the claim that the main part of the used trademark is “SPLENDOR,” which corresponds to the registered mark.

  As a result, the appeal trial Examiners judged that the used mark “SPLENDOR-SAP,” which should be recognized as a whole, is different from the registered mark, “SPLENDOR” in terms of sounds and appearance.  Accordingly, the appeal trial Examiners allowed the cancellation of the trademark registration, reasoning that the used mark is NOT the same as the registered mark, even when considering conventional wisdom.

  We believe that the owner of “JP Reg. No. 6174336” should have used the trademark in a manner such as (or , for example, by changing the size and font of the term “SAP” to increase the likelihood that appeal trial Examiners would recognize the term “SPLENDOR” as a main part of the used trademark) to overcome the non-use cancellation.

  In particular, we believe that the owner should have added the Ⓡ symbol immediately after the registered mark.  If this has been done, we believe that the appeal trial Examiners would mostly likely have not allowed the cancellation of the trademark registration.

  Additionally, the JPO generally considers that a word consisting of more than three letters (such as “SAP”) possesses sufficient distinctiveness.  Therefore, we strongly recommended avoiding the use of such a word as a trademark (including cases where it forms part of a trademark, such as “SPLENDOR-SAP”) without securing a trademark registration.