The Appeal Board of the JPO decided a word mark “POYAL PRESTIGE NEO” covering the goods of “Schoolchildren’s backpacks” in class 18 is confusingly similar to senior registrations for mark consisting of, or containing the term “ROYAL PRESTIGE” in the same class.
JPO examiner refused to register an applied mark “ROYAL PRESTIGE NEO” by citing senior registrations for the mark “ROYAL PRESTIGE”.
Applicant filed an appeal against examiner’s decision and argued that
“In evaluating similarity of mark, the term “PRESTIGE NEO”, having a meaning of “new fame”, in configuration of the applied mark should be considered predominant since the word “ROYAL” is used to suggest quality with the highest grade in the Schoolchildren’s backpacks industry.”
However, the Board rejected such arguments on the grounds that:
“in consideration of configuration and meaning of respective word constituting the applied mark, “ROYAL PRESTIGE” is easily recognized as an implication of “fame of king. Meanwhile, it is difficult to consider that “NEO” (new) at the end modifies “ROYAL” and “PRESTIGE” immediately, and thus three words are hardly recognized as an implication of ” new king’s(fame)” and “new fame (king’s)”
“NEO (new) is a word which generally indicates the quality of goods, and it is assumed that “NEO” does not have the function for distinguishing relevant products from others, namely a weak term as source indicator. In the industry for dealing with Schoolchildren’s backpacks, bags, and the like, the word “NEO” coming after product name or series trade name is commonly used to indicate a goods is different from traditional ones or the latest product. As a consequence, where the applied mark is used on the designated goods, traders and consumers at the sight of applied mark are likely to perceive the portion of “ROYAL PRESTIGE” having a meaning of “fame of king” as a source indicator, and remaining term of “NEO” as a mere indication of quality of the goods in dispute. Even though a term “ROYAL” is occasionally used to suggest quality of goods, it is not applicable to the subject case by taking into consideration of a whole configuration of the applied mark.”
Applicant counterargued by referring to coexisting registrations in order to bolster and demonstrate dissimilarity of mark admitted by JPO previously notwithstanding a mere difference of term “NEO”.
The Board dismissed the allegation on following grounds as well.
“similarity of mark should be specifically and individually determined by considering configuration and aspect of respective mark, actual state of transaction of goods, and by comparing both marks in dispute at a time of decision or appeal decision. It is not mandatory to be bound by precedent decisions or coexisting registrations in the past”