In an appeal decision, the Japan Patent Office (JPO) overturned the examiner’s rejection and decided to register trademark “LEPS” by finding dissimilarity to senior registration for mark “LEPUS” even if both marks designate similar goods in class 12.
[Appeal case no. 2019-6626, Gazette issued date: March 27, 2020]
Applicant, GS Yuasa Corporation, filed a trademark application for term “LEPS” in standard character over solar batteries, power distribution or control machines, and apparatus, rotary converters, phase modifiers of class 12 on December 18, 2017 (TM application no. 2017-165431).
JPO examiner rejected the applied mark in contravention of Article 4(1)(xi) of the Trademark Law by citing senior trademark registration no. 3194818 for mark “LEPUS”
Article 4(1)(xi) is a provision to prohibit registering a junior mark which is identical with, or similar to, any senior registered mark.
Cited mark “LEPUS” (see below), owned by Mitsubishi Motors Corporation, has been registered since September 1996 over automobiles and their parts and fittings, two-wheeled motor vehicles, bicycles, and their parts and fittings, AC motors or DC motors for land vehicles in class 12.
On April 25, 2019, GS Yuasa filed an appeal against the rejection and argued dissimilarity of the marks.
Appeal Board decision
In the decision, the Appeal Board held that:
“From appearance, even if both marks start with “LEP” and end with “S”, with or without “U” in the middle of a short word consisting of four or five letters would be anything but negligible. Because of it, the marks as a whole give rise to a distinctive visual impression in the minds of relevant consumers. Accordingly, both marks are unlikely to cause confusion from appearance.
Applied mark “LEPS” is pronounced as “le-ps”. In the meantime, cited mark “LEPUS” shall be “le-pəs”. The difference in the 2nd sound, “p” and “pə”, would be influential in the overall pronunciation given both marks aurally consist of just three sounds. Due to the difference, both sounds can be distinguishable in tone and linguistic feeling when pronounced at a time.
Conceptually, applied mark is incomparable with cited mark since both marks would not give rise to any specific meaning at all.”
Based on the foregoing, the Board concluded: “applied mark “LEPS” would be deemed dissimilar to cited mark “LEPUS” from the global appreciation of the visual, aural and conceptual similarity of the marks in question, and based on the overall impression and association given by the marks to relevant traders and consumers with ordinary care“.
Consequently, the Board reversed the examiner’s rejection due to the dissimilarity of the marks even if the goods in question are similar and allowed registration of the applied mark (TM registration no. 6234714).
Masaki MIKAMI, Attorney at IP LAW – Founder of MARKS IP LAW FIRM