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Bottom line: The Board found “KOMAX” not similar to “KOMACK”.

The applicant filed an international trademark application for “KOMAX” designating cable processing machines, especially machines used for cutting, stripping, marking, tinning, depositing, bundling and winding of cables, etc. in Class 7 and goods in Class 9.  The examiner cited 3 prior registered marks shown below, respectively designating metalworking machines and tools, etc. in Class 7.

<Cited mark 1>


<Cited mark 2>


<Cited mark 3>

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

The Board analyzed the marks and found as follows:

<As for the applied-for mark>
The applied-for mark is a fancy word and has no particular meaning, and is pronounced [ko-ma-kku-su].

<As for the cited marks>
- The cited mark 1 is a fancy word and has no particular meaning, and is pronounced [ko-ma-kku].
- The cited mark 2 is composed of the design of a boy wearing a hat and “komack”.  The design and “komack” will function as a source identifier independently.  Accordingly, the sound [ko-ma-kku] is evoked from the mark.  The mark has no particular meaning as “komack” is a fancy word.
- The cited mark 3 is composed of the kanji and its transliteration in katakana.  The mark is also a fancy word and has no particular meaning, and is pronounced [ko-ma-kku].

<Comparison>
- The applied-for mark and the cited marks are distinguishable visually.
- The applied-for mark and the cited marks differ in with or without the last sound [su], which will be heard clearly because the applied-for mark has relatively small numbers of sounds (i.e. 5 sounds) and the last two sounds [ku-su] will be pronounced clearly and brightly due to the glottal stop immediately before.  So, the marks are distinguishable phonetically.
- The marks are not comparable semantically as they have no particular meaning.
- The applied-for mark is not similar to the cited marks.

And so the Board reversed the refusal, and granted registration of “KOMAX”.