Trademark dispute: “SOFTWEAR” vs “SOFTWAIR”

In an appeal trial disputing similarity between wordmark “SOFTWEAR” and “SOFTWAIR”, the JPO reversed the examiner’s rejection due to the error in finding dissimilarity of two marks.
[Appeal case no. 2023-20831, decided on April 24. 2024]


DuPont Safety & Construction, Inc., a US corporation, sought registration of wordmark “SAFTWEAR” in standard character for use on blankets, gloves, masks, protection masks, protective suits for medical use in class 10 with the JPO on August 22, 2022.


The JPO examiner rejected the applied mark due to a conflict with TM Reg no. 6719284 for wordmark “SOFTWAIR” in standard character owned by Air Wair International Ltd based on Article 4(1)(xi) of the Japan Trademark Law.

The earlier mark covers not only shoes, sports shoes, but also clothing in class 25.

DuPont filed an appeal against the examiner’s rejection on December 7, 2023 and argued that the examiner had errored in assessing similarity between the mark “SOFTWEAR” and “SOFTWAIR”.

JPO decision

The JPO Appeal Board found the applied mark “SOFTWEAR” is not a word included in common dictionaries. Even tough respective term “SOFT” and “WEAR” has its meaning, there is no reason to believe the mark give rise to any specific meaning as a whole.

Likewise, the cited mark “SOFTWAIR” would not have a specific meaning in its entirety. But it should note that the Board found the cited mark has three pronunciations, ‘sɔft weər’, ‘sɔft waɪr ’ and  ‘sɔft ueia’.

From appearance, in spite that they consist of the same kind (alphabet) and number of characters, two marks are clearly distinguishable, because of the difference of two characters “EA” and “AI” in the middle of the eight-character composition.

Even if two marks have the same pronunciation of ‘sɔft weər’, when compared with ‘sɔft waɪr ’ and  ‘sɔft ueia’, the difference in the middle of the entire five or six sounds would result in a clear distinction in the overall tone and feeling.

Conceptually, it is unable to compare since both marks do not give rise to a specific meaning at all.

Based on the above findings, the Board held that even if the applied mark has the same pronunciation with one of the sounds of the cited mark, other two sounds are sufficiently distinguishable to the sound of the applied mark. Besides, both marks are not comparable in conception, and clearly distinguishable in appearance. When taking into consideration the impressions and memories given in mind of consumers by two marks, there is no risk of confusion as to the origin of the goods, and thus the Board has a reason to believe “SOFTWEAR” is dissimilar to “SOFTWAIR”.

Therefore, the examiner errored in finding similarity of the marks and applying Article 4(1)(xi). Accordingly, the rejection shall be overturned.

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