The Japan Patent Office (JPO) reversed examiner’s rejection to TM App no. 2023-100274 “Arounds” in classes 9, 35, 41 and 42 by finding dissimilarity of mark to earlier IR no. 873694 “AROUND” in class 9.
[Appeal case no. 2024-7308, decided on August 13, 2024]
Arounds
Funny Side Up, Inc. filed a trademark application for wordmark “Arounds” in standard character for use on goods in class 9 and services in classes 35, 41, and 42 with the JPO on September 7, 2023.
The applicant uses the mark to indicate an online platform for a lifestyle exchange community.
AROUND
On February 14, 2024, the JPO examiner rejected the mark “Arounds” in contravention of Article 4(1)(xi) of the Japan Trademark Law due to a conflict with earlier IR no. 873694 for wordmark “AROUND” in class 9.
Article 4(1)(xi) is a provision that prohibits the registration of a junior mark that is deemed identical with, or similar to, any earlier registered mark.
The applicant filed an appeal against the rejection with the JPO on April 30, 2024 and argued dissimilarity of mark between “Arounds” and “AROUND”.
JPO decision
The JPO Appeal Board found the examiner errored in finding similarity of mark and decided to reverse the rejection.
- Assessment of the applied mark
The term “Arounds” is neither present in dictionaries nor immediately recognizable as a specific word. Therefore, the mark “Arounds” just has a sound of “Arounds”, but not any specific meaning from its component letters.
- Assessment of the earlier mark
It is obvious that the average consumers will recognize the cited mark, comprised of the English word “AROUND”, has a sound of “AROUND” and a meaning of ‘positioned or moving in or near a place’ from its constituent letters.
- Comparison of two marks
From appearance, two marks share the same term “Around” at the beginning. However, the term “AROUND”, a commonly known English word among consumers, has been rarely represented or used in the plural form. If so, the Board has a reason to believe that, on account of the presence of a letter “s” at the end of the applied mark, relevant consumers will consider two marks represent different words and thus it is possible for the consumers to visually distinguish them.
Because of aural difference in the bottom sound of “z” or “d”, it causes a discernible distinction in the overall tone and nuance so that the consumers can distinguish the sound of two marks.
Regarding conceptual comparison, the cited mark gives rise to a clear meaning, whereas the applied mark does not have any specific meaning. Therefore, there is no risk of confusion from a conceptual point of view.
Given relevant consumers can distinguish both marks from appearance and sound, and there is no likelihood of confusion in concept, the Board has a reason to believe that the applied mark “Arounds” is dissimilar to the cited mark “AROUNDS” even if when used on the same or similar goods in class 9.
- Conclusion
Based on the foregoing, the Board decided to overturn the examiner’s rejection and granted registration of the applied mark.
Masaki MIKAMI, Attorney at IP LAW – Founder of MARKS IP LAW FIRM