The Japan Patent Office (JPO) overturned the examiner’s rejection to TM App no. 2023-82305 for word mark “VOLKA” in class 34 on the ground of dissimilarity to TM Reg no. 5940973 for word mark “VOLGA” in class 35.
[Appeal case no. 2025-148, decided on May 7, 2025]
VOLKA
Fukashiro Corporation filed a trademark application for word mark “VOLKA” in standard character for use on hookahs, tobacco, electronic cigarettes, smokers’ articles, and matches in class 34 with the JPO on July 25, 20223 [TM App no. 2023-82305].
VOLGA
On May 31, 2024, the JPO examiner rejected the applied mark based on Article 4(1)(xi) of the Japan Trademark Law by citing earlier TM Reg no. 5940973 for wordmark “VOLGA” in standard character that designates various services in class 35.
The applicant filed an appeal against the rejection on August 30, 2024, and requested for cancellation of the rejection by arguing dissimilarity of mark.
JPO decision
At the outset, the JPO Appeal Board found the applied mark “VOLKA” does not give rise to any specific meaning since it is not a word on English dictionary and there is no common trade practice of actual use of the word. Meanwhile, the Board found the cited mark “VOLGA” has a meaning of ‘the longest ricer in Europe, stretching through Russia and flowing into the Caspian Sea’.
In light of the aforementioned findings, the Board made a comparative analysis of two marks from the perspectives of visual, aural and conceptual similarity.
Visually, although both marks share the four letters “VOL” at the beginning and “A” at the end, the fourth letters ‘K’ and “G” are different. Given that both marks consist of only five letters, the difference cannot be negligible from the overall impression. Relevant consumers would consider the respective marks represent a distinct word. Therefore, they are visually distinguishable.
Phonetically, there is difference in the sound of the unvoiced consonant ‘ka’ and the voiced consonant “ga” at the end of the word. Since both marks consist of only three sounds, which is an extremely short sound structure, the difference at the end of respective word has a remarkable impact on the overall sound, and the entire pronunciation gives rise to distinctive tone and feel.
Conceptually, there is no likelihood of confusion between the applied mark the cited mark because the applied mark has no meaning, whereas the cited mark gives rise to a meaning of ‘the Volga River’.
Therefore, the Board has a reason to believe the applied mark is dissimilar to, and unlikely to cause confusion with the cited mark when used on the goods in question.
Masaki MIKAMI, Attorney at IP LAW – Founder of MARKS IP LAW FIRM