JPO decided “Antithesis” dissimilar to a mark consisting of it and other eight terms placed in 9 rows

In an administrative appeal disputing trademark similarity between TM registration no. 5661343 for word mark “Antithesis” with its transliteration in Japanese katakana and junior application no. 2017-101730 for a mark consisting of “Antithesis” and the other eight English terms placed in 9 rows, JPO found both marks dissimilar and reversed the examiner’s rejection.
[Appeal case no. 2019-652, Gazette issued date: March 27, 20]

TM Registration no. 5661343

Cited mark, the term “Antithesis” with its transliteration in a Japanese katakana character (see below left) has been registered over clothing, footwear, and other goods in class 25 since April 4, 2014.

Junior Application no. 2017-101730  

Applied mark, consisting of nine English terms “Imitation”, “Genuine”, “Chic”, “Rudeness”, “Confusion”, “Silence”, “Gentleman”, “Lady”, and “Antithesis” placed in 9 rows inside a black rectangle (see above right), was applied for registration on August 1, 2017, over clothing, footwear, and other goods in class 25 by Element Rule Co., Ltd.

JPO examiner entirely rejected applied mark on the ground that the term “Antithesis” on the bottom row can play a role of source indicator independently because of overall configuration and space above the bottom row. If so, the applied mark as a whole shall be deemed similar to the cited mark.

The applicant filed an appeal against the rejection on May 20, 2019, and argued dissimilarity of both marks.

Appeal Board decision

In the decision, the Board found that:

“From the appearance, “Antithesis” on the bottom row shall not be separable since the term is written in the same font, color, size with other terms “Imitation”, “Genuine”, “Chic”, “Rudeness”, “Confusion”, “Silence” even if there is space in the trademark.
Besides, nine terms do not give rise to any specific meaning in its entirety.  Neither do eight terms except “Antithesis”.
If so, there is no reasonable reason to believe that relevant consumers consider the term “Antithesis” on the bottom row or any other terms a dominant part of the applied mark.
It rather does mark sense that applied mark shall be perceived as a whole displaying respective English word in a different row inside a black rectangle.”

Based on the foregoing, the Board held that the Examiner erred in finding the term “Antithesis” separable as an independent source indicator of the applied mark, and decided to reverse the examiner’s rejection.

I don’t quite agree with the Appeal Board decision. In my view, the respective term contained in a junior mark shall be considered separable unless it gives rise to different meanings in a tight combination with other distinctive terms.

Masaki MIKAMI, Attorney at IP LAW – Founder of MARKS IP LAW FIRM