The Japan Patent Office (JPO) reversed the examiner’s refusal and granted registration of the word mark “PENINSULA HILLS” written in Japanese Katakana characters in Classes 36 and 43, finding no likelihood of confusion with a world-renowned hotel “The Peninsula”.
[Appeal case no. 2023-4720, decided on July 25, 2024]
PENINSULA HILLS
CF-1 Co., Ltd. filed a trademark application with the JPO on January 7, 2022 for the word mark “PENINSULA HILLS” written in Japanese Katakana characters (see below) for use in, among other things, real estate services in Class 36 and hotel and restaurant services in Class 43 (TM App No. 2022-1353).
The Peninsula
The JPO examiner decided to reject the applied mark “PENINSULA HILLS” by finding a likelihood of confusion with a world-renowned hotel “The Peninsula” because the mark contains the term “PENINSULA”, which is highly recognized by consumers as an abbreviation of the luxury hotel, based on Article 4(1)(xv) of the Japan Trademark Law on December 6, 2022.
To contest the rejection, the applicant filed an appeal against the rejection with the JPO on March 3, 2023.
JPO Appeal Board decision
To my surprise, the JPO Appeal Board questioned a high degree of recognition of the hotel “The Peninsula” by stating that:
“The Peninsula Tokyo” is the only hotel commercially operated by The Hongkong Shanghai Hotels, Limited in Japan. If so, the number of users is quite limited. Even if there are hotels with the name “The Peninsula” operated by the company in foreign countries and then Japanese travelers may stay the hotels, it is insufficient to find a high recognition of the hotel to average consumers since there is no objective data regarding the number of users, its sales, and the ratio of Japanese users and sales.
Therefore, the Board has no reason to believe that the term “PENINSULA” is widely recognized by consumers in Japan as an abbreviation for the hotels managed by the company.
In a global assessment of the likelihood of confusion, the Board found the applied mark is dissimilar to the cited mark “The Peninsula”.
The applied mark and the cited mark differ significantly in appearance due to the difference in the number of letters and the presence of the word “HILLS”. Furthermore, the difference in the number of syllables and the presence of the sound “HILLS” make the pronunciations easily distinguishable. Therefore, the relevant consumers and traders will be able to distinguish between the two marks are will consider them to be dissimilar because of the clear difference in the overall impression.
Given no high recognition of the hotel “The Peninsula” and low degree of similarity to the applied mark, the Board finds no reason to believe the applied mark may cause confusion with the cited mark when used in relation to the services in question.
In view of the foregoing, the Board held that the examiner had errored in applying Article 4(1)(xv), and decided to grant protection to the applied mark.
Masaki MIKAMI, Attorney at IP LAW – Founder of MARKS IP LAW FIRM