In a recent administrative decision, the Appeal Board of Japan Patent Office (JPO) disaffirmed the examiner’s refusal and held a composite mark, consisting of words “PERFECT GEAR AGENCY” and a monogram “PGA”, is dissimilar to the senior registered word mark “PGA”.
[Appeal case no. 2019-10638, Gazette issued date: September 25, 2020]
“PGA/ PERFECT GEAR AGENCY”
Disputed mark, see below, was applied for registration in relation to retail or wholesale services for various goods, e.g. foods and beverages, footwear, bags, automobiles in class 35 on January 24, 2018.
The disputed mark consists of the “PGA” monogram and the words “PERFECT GEAR AGENCY” on the right. The initial letter of the respective term is colored in red. Apparently, the monogram comes from an initial letter of each word “PERFECT”, “GEAR” and “AGENCY”.
JPO Examiner rejected the disputed mark by citing several senior trademark registrations for a wordmark “PGA” in various classes owned by Professional Golf Association.
In Japan, retail or wholesale service in respect of specific goods is deemed similar to the goods or its equivalent. For example, retail service in respect of sporting goods (class 35) and sporting goods (class 28) is deemed similar.
That being the case, the applicant filed an appeal against the refusal and contended dissimilarity of the mark.
The Appeal Board found that the “PGA” monogram and words “PERFECT GEAR AGENCY” can be separably seen from a visual point of view. Besides, the “PGA” monogram per se does not give rise to any specific meaning. It is unknown whether relevant Japanese consumers have been familiar with the words “PERFECT GEAR AGENCY” as a whole. If so, the words do not give rise to a specific meaning as well.
By taking account of the above, the Board pointed out the disputed mark shall be pronounced as “PERFECT GEAR AGENCY”, but has no meaning.
Based on the foregoing, the Board concluded the refusal shall be disaffirmed since the examiner erroneously found that the disputed mark gives rise to a pronunciation of “PGA” from the “PGA” monogram.
Masaki MIKAMI, Attorney at IP LAW – Founder of MARKS IP LAW FIRM