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Bottom line: The Board found that “wrapping paper” in Class 16 is not related to “reagent paper” in Class 1.

The applicant filed an application for a mark in katakana phonetically equivalent to RAPPA, designating wrapping paper in Class 16.

The examiner cited a prior mark identical to the applied-for mark and designating reagent paper and other goods in Class 1.  According to the JPO’s Examination Guidelines of Goods and Services, “wrapping paper” and “reagent paper” are presumed related under similarity code 25A01.

The marks are literally identical, so the question is whether the goods are related to each other.

The Board noted that the goods should be deemed related where there is likelihood of confusion as to the origin of goods when identical or similar marks are used.  In evaluating likelihood of confusion, various factors in actual state of transaction will be taken into consideration, such as whether the goods are generally manufactured by the same entity, whether the use of goods, place of sales, or target consumers are the same.

In view of the above, the Board compared “wrapping paper” and “reagent paper”.  The Board refer to Glossary of Technical Terms in Japanese Industrial Standards and noted that “wrapping paper” is a paper used for wrapping object for the purpose of protection, decoration, etc., which requires certain strength and property for wrapping.  And “reagent paper” is a strip of paper impregnated with a reagent and dried, used in testing chemical component or nature of substance.  These goods are clearly different in its purpose, use and nature.

Further, “wrapping paper” is made from wood pulp, mostly manufactured by paper manufacturers and sold to secondary processor, such as packaging manufacturers, whereas “reagent paper” is made from linter pulp, mostly manufactured by chemicals manufacturers or medical products manufacturers, and sold to drug manufacturers, schools, medical institutes, hospitals, and so on.  Thus, these goods are different in their manufacturer, distribution channel, consumers, etc.

Accordingly, comparing these goods specifically and concretely, it is not appropriate to conclude that the goods are related just because they are “paper”.

The marks at issue are identical, but the goods are not related in this case.

And so the Board reversed the refusal.