The Appeal Board of JPO (Japan Patent Office), in an appeal disputing adequacy of examiner’s decision to refuse trademark application for a word mark “Perfect” on the grounds of conflict with a senior registration for word mark “PERFECTO”, overturned examiner’s decision and admitted to grant protection of the mark “Perfect”. [Fufuku 2016-13360]
The mark in dispute was filed on June 8, 2015 designating computer program and other goods in class 9. As a result of ex-officio examination, the JPO examiner refused the mark due to conflict with senior trademark registration no. 5019378 for word mark “PERFECTO” in standard character. Cited registration has been effective since January 19, 2007 covering identical goods in class 9.
In the decision, the Appeal Board held the term “PERFECTO” is unfamiliar to relevant consumers in Japan unlike an English word “Perfect”. Besides, there finds no circumstance to suggest the term is commonly used in connection with the goods in dispute. Thus, the consumers are likely to conceive the term as a coined word.
In the assessment of mark, the Board admitted both marks give rise to same sound, however, concluded it is unlikely to happen that consumers confuse or misconceive a source of origin between the marks in view of distinction in appearance, meaning and overall impression.
Apparently, the Board considered a mere difference arising from alphabetical letter “O” at the ending of both terms is non-negligible in visual and conceptual assessment of the marks by taking into consideration of a fact that “Perfect” is much familiar English word among the public in Japan.
In my personal opinion, the decision paid less attention to Spanish language to my surprise.
MASAKI MIKAMI, Attorney at IP Law – Founder of MARKS IP LAW FIRM