Trademark Similarity Analysis: "PAG"
Case Number: H23 Gyo-ke 10093, Date of Judgment: October 24, 2011, Court: Intellectual Property High Court, Third Division
The Applicant filed an application with the Japan Patent Office (JPO) to register the trademark “PAG!\\\\Point AD Game” (with device, application number 2009-42622), in classes 9 and 42. The JPO trademark examiner rejected the application on the grounds that the Applicant’s mark is similar to mark no. 2713981, “PAG”, which is registered in class 9 and covers similar goods. The Applicant filed an appeal to the IP High Court.
The IP High Court reversed the JPO’s decision, finding that the marks are not similar. The court reasoned that the Applicant’s mark looks like one picture, with special font and color for the PAG and exclamation point; therefore, the two marks have very different appearances.
The court stated that the two marks sound different, because the Applicant’s mark has several different possible pronunciations, but the cited mark has only one possible pronunciation.
The court also reasoned that when consumers see the Applicant’s mark, it appears to be related to a game and animals, because of the picture of an animal. The cited mark, however, has no meaning. As a result, the two marks have different meanings.
Finally, the court stated that because the cited mark had not been used for more than three years, it was certain that there would be no risk of confusion for consumers.
Because the sounds, appearances, and meanings of the two marks are different, the court reversed the JPO’s decision, based on Article 4(1)(xi) of the Trademark Act. That provision states that no trademark will be registered if the trademark “is identical with, or similar to, another person’s registered trademark which has been filed prior to the filing date of an application for registration of the said trademark, if such a trademark is used in connection with the designated goods or designated services relating to the said registered trademark” (Article 4(1)(xi)).
Click here to view an image of the Applicants mark.
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