We are a boutique IP firm located in Osaka, Japan, specializing in trademark, design, specific unfair competition and copyright matters.

Bottom line: The Board found “UL monogram” not similar to “transliteration of UL in katakana”.

Trademark Act Section 3-1-5 provides that a trademark consists solely of a very simple and common mark is not registrable.  The JPO Examination Guidelines for Trademarks clarifies that Section 3-1-5 is applicable when a mark is composed of one or two Roman characters.  It also says Section 3-1-5 does not apply to a mark composed of Japanese katakana characters indicating the sound of two Roman characters, unless Roman characters are customarily used as the symbols or codes of goods or services.

In plain words, “AB” is not registrable but “ (transliteration of AB in katakana)” is registrable.  Some may wonder what the effect of registering the transliteration is.  Here is a case to give some idea.

The applicant filed a trademark application for “UL monogram” shown below in Class 25, which was refused on the ground of similarity with the cited mark “ (transliteration of UL in katakana)”.  The examiner’s reasoning was that both mark is pronounced identically.



Incidentally, Section 3-1-5 is not applied to a trademark with two Roman characters indicated in a monogram thus, the above mark is deemed inherently distinctive.

The applicant filed an appeal and the Board observed:

- The applied-for mark a figurative mark which does not produce any specific sound and meaning instantly;
- The cited mark is pronounced as English alphabet “UL” and has no particular meaning;
- The two marks are visually distinguishable at a glance;
- The marks are not comparable in regard to sound and meaning;
- Balancing the factors of appearance, sound and meaning, confusion is not likely.

And so the Board reversed the refusal, and the application for “UL monogram” was granted for registration.

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