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Bottom line: The Board found “Super Magna with its transliteration in katakana” similar to “MAGNA”.

The applicant filed an application for “Super Magna with its transliteration in katakana” shown below designating chemicals for use in magnetic particle testing in Class 1.  The examiner refused the application, citing a registration for “MAGNA” designating soldering preparations, etc. in Class 1.

<Applied-for mark>

The designated goods of the applied-for mark are related to those of the cited registration.  So, the main issue is whether the applied-for mark is similar to the cited mark or not.

The Board analyzed the marks and found as follows:

<As for the applied-for mark>
- The applied-for mark is pronounced [su:-pa:-ma-gu-na].  “Super” (including its transliteration in katakana) means extremely good and is a familiar word, while “Magna” (including its transliteration in katakana) is not a familiar word and does not evoke a particular connotation.  The mark has no particular meaning.
- “Super” is a laudatory term used commonly in the chemical industries.  Accordingly, the word does not function or hardly functions as a source identifier.  “Magna” independently functions as a source identifier, and the applied-for mark will be pronounced as [ma-gu-na] as well.

<As for the cited mark>
The cited mark is pronounced as [ma-gu-na] and has no particular meaning as it is not a familiar term.

<Comparison>
- The marks are visually different as a whole.  However, the dominant part of the applied-for mark “Magna” is identical with the cited mark in spelling.  So, the marks are similar to some extent.
- The applied-for mark will be pronounced in two ways, [su:-pa:-ma-gu-na] and [ma-gu-na], and the latter is identical with the cited mark.
- The marks are not comparable in meaning.
- The marks are similar to each other due to the similarity between the cited mark and the dominant part of the applied-for mark.

<As for the applicant’s argument>
The applicant argued that traders and consumers do not shorten the mark in the market of chemical preparations.  The Board did not find any evidences to prove such fact.  Also, the applicant argued that it has used a mark substantially identical with the applied-for mark for about 50 years and did not receive any complaint from the owner of the cited mark.  The Board noted that lack of complaint from the cited mark owner does not justify the registrability.

And so the Board affirmed the refusal.