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Bottom line: The Board found IDEALWINE for wine is similar to Ideal for western liquors etc.

Filing in standard character is often preferred to logo filing, but here is a good reason why it is recommended to file a trademark application in the exact form as used in commerce.

IDEALWINE.COM S.A. filed an application for IDEALWINE in standard character designating wine in Classes 33, 35 and 43.  The application matured into registration without any citation, but Takara Holdings K.K. filed a partial invalidation action for Class 33 on the ground that IDEALWINE is similar to its prior mark Ideal and its transliteration in katakana for sake, western liquors, etc. in Class 33. 

Plaintiff, Takara Holdings argued that WINE in the alleged mark IDEALWINE refers to the goods and thus the dominant element of the alleged mark is IDEAL.  The alleged mark and the cited mark shares sound and connotation in common, and thus confusingly similar.

Registrant, IDEALWINE.COM explained that the alleged mark derives from a sentence “I deal wine”.  In fact, IDEALWINE.COM uses the alleged mark in the representation shown below on its website, which can be understood as “I deal wine” rather than “ideal wine”.  IDEALWINE.COM argued that it is always using IDEALWINE as a whole and has never used it in the form that IDEAL is separated from WINE.  Therefore, the alleged mark has sound and connotation corresponding to “I deal wine” and not to “ideal wine”, and is not confusingly similar to the cited mark.

<the alleged mark in use on website>

The Board observed the alleged mark IDEALWINE in standard character and found that it consists of two words IDEAL and WINE, both words are commonly known to general consumer in Japan, and the mark as a whole has sound and connotation corresponding to “ideal wine”.  Further, WINE is a generic name of the designated goods and not distinctive, so the remaining element IDEAL will solely function as a source identifier, having sound and connotation corresponding to IDEAL.

The alleged mark as a whole is different from the cited mark in appearance, but the dominant element of the alleged mark IDEAL and the cited mark Ideal are similar in appearance, sound and connotation.

The Board did not accept the argument of IDEALWINE.COM since the alleged mark is represented in standard character and does not reflect their intention that the mark derives from “I deal wine”.

And so the Board decided in favor of Plaintiff and that registration for IDEALWINE should be invalidated due to the similarity with Ideal.