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Bottom line: The Board found that “A.R.T. / by OFUON” is confusingly similar to “ART” logo, but not similar to “ART” or “ART with its transliteration in katakana”.

Itokin Co., Ltd. filed a trademark application for “A.R.T. / by OFUON” logo shown below and was registered.  The ART Company B&S S.A. filed an opposition against the registration on the ground that the opposed mark is confusingly similar to the four marks below:

<Opposed mark>

Goods: Precious metals, keyrings, trophies, commemorative shields, unwrought and semi-wrought precious stones and their imitations, clocks and watches, etc. in Class 14 and goods in Classes 18 and 25.
Services: Retail services or wholesale services for clocks and watches, etc. in Class 35

<Cited mark 1>
Mark: ART
Goods: Shoes, boots, etc. in Class 25

<Cited mark 2>

Goods: Buckles of metal in Class 6; personal ornaments [other than “cuff links”], etc. in Class 14 and bags and pouches, etc. in Class 18

<Cited mark 3>
Mark: ART (standard character)
Goods: Eyeglasses, etc. in Class 9

<Cited mark 4>

Goods: Precious metals, keyrings, trophies, commemorative shields, unwrought and semi-wrought precious stones and their imitations, clocks and watches, etc. in Class 14

The Board observed the marks at issue and found as follows:

<As for the opposed mark>
- The opposed mark is composed of “A.R.T.”, three alphabets each followed by a small square, and “by OFUON” underneath.  “A.R.T.” may function as a source identifier independently as it is larger than “by OFUON”.
- “A.R.T.” will be recognized not as one word but as series of alphabets A-R-T due to the posture of the squares.  The mark will be pronounced [A-R-T] not [a:-to], and it has no particular meaning.

<As for the cited marks 1-3>
- These marks are pronounced [a:-to] and mean art.

<As for the cited mark 4>
- The cited mark 4 will be recognized not as one word but as series of alphabets A-R-T because the letters are not arranged even.  The mark is pronounced [A-R-T] not [a:-to], and it has no particular meaning.

<Comparison of the opposed mark and the cited marks 1-3>
- The opposed mark and the cited marks 1-3 are obviously distinguishable in appearance and sound.
- The marks are not similar in meaning, because the opposed mark has no particular meaning and the cited marks 1-3 mean art.
- Therefore, the opposed mark is not similar to the cited marks 1-3.

<Comparison of the opposed mark and the cited mark 4 >
- The opposed mark and the cited mark 4 differ in appearance.  However, the marks share the three letters, “A”, “R” and “T”.
- The marks are identical in sound.
- Thus, the marks are similar.
- Some of the designated goods of both marks are identical, i.e. precious metals, keyrings, trophies, commemorative shields, unwrought and semi-wrought precious stones and their imitations, clocks and watches.  Further, the designated services “retail services or wholesale services for clocks and watches” are related to the designated goods “clocks and watches” as sales of said goods and provision of said services are commonly performed by the same business establishment at the same place to the same consumers.

And so the Board revoked the registration for the “A.R.T. / by OFUON” with respect to the above conflicting goods and services.