In a recent appeal decision, the Japan Patent Office (JPO) disaffirmed the examiner’s rejection and found “LAPPI” is dissimilar to and unlikely to cause confusion with “LAPPY” when used on computer-related goods in class 9.
[Appeal case no. 2022-6493, decided on August 24, 2022]
Kabushiki Kaisha LAPPI filed a trademark application for the wordmark “Lappi” in standard character for use on various goods and services in classes 9, 35, 41, and 42 with the JPO on October 15, 2020.
On March 15, 2022, the JPO examiner rejected the LAPPI mark due to a conflict with earlier trademark registration no. 6360979 for the word mark “Lappy” in standard character in connection with computer-related goods and software of class 9 based on Article 4(1)(xi) of the Japan Trademark Law.
Article 4(1)(xi) is a provision to prohibit the registration of a junior mark that is identical with, or similar to, any senior registered mark.
The applicant filed an appeal and argued the dissimilarity of mark between “Lappi” and “Lappy” on April 28, 2022.
JPO Appeal decision
The JPO Appeal Board assessed the similarity between the marks from three aspects (visual similarity, aural similarity, and conceptual similarity) and stated:
“Although the applied mark and the cited mark share the letter “Lapp” from the beginning of the respective word, they differ in the letters “i” and “y” at the end of the word. In a mark consisting of five letters, the difference at the end of the word shall be easily noticeable, visually impressive, and memorable. Therefore, both marks are sufficiently distinguishable from appearance.”
The difference between the pronunciation of “Lappi” and “Lappy” rests on the presence or absence of a long vowel at the end of the word. The plosive sound in between makes the sound “pi” and “pi:” be pronounced strongly and clearly. In the short three- or four-note configuration, such differences have a significant impact on the overall pronunciation. Therefore, both marks are sufficiently distinguishable aurally.
Being that either mark does not give rise to a specific meaning, the applied mark “Lappi” is incomparable with the cited mark “Lappy” in concept.
Based on the foregoing, the Board held both marks are dissimilar from the totality of the circumstances and decided to disaffirm the examiner’s rejection and grant protection of the applied mark.
Masaki MIKAMI, Attorney at IP LAW – Founder of MARKS IP LAW FIRM