We are a boutique IP firm located in Osaka, Japan, specializing in trademark, design, specific unfair competition and copyright matters.

Bottom line: The Board found 918Spyder is confusingly similar to SPYDER and that MENU199 is not confusingly similar to MENU.

We highlight two cases of confusing similarity refusal regarding marks with or without numeral.  The Board came to a different conclusion but you will find what divided the outcome in these two cases.

<Case 1> 918Spyder v. SPYDER

The applicant filed an application for 918Spyder designating sports car and their parts in Class 12.  The examiner refused to register the mark, citing SPYDER designating three-wheeled vehicles in Class 12.  The case was brought to the Appeal Board.

The Board noted that 918 in the applied-for mark does not function as a source identifier as it is simple and ordinary number.  Thus, the dominant element of the applied-for mark is Spyder, which is identical with the cited mark despite the difference of upper/lower case.

The applicant argued that “spyder” refers to convertible and thus inherently not so distinctive.  The Board did not agree to this because: 1) the term is not listed in dictionaries; 2) it is “spider” that is commonly used in that sense; and 3) more commonly used terms in Japan are “open car”, “convertible” or “road star”, all of which are listed in a dictionary.

The applicant also argued that “918” is distinctive enough in view that the applicant has traditionally adopted three-digit figure in the 900s in automobile industry.  The Board again did not find it convincing, reasoning that not all figures in the 900s becomes distinctive through use of several figures in the 900s and that the applicant’s competitors uses figures in the 900s as well for automobiles.

Finally, the applicant argued that the market for sports cars and three-wheeled vehicles do not overlap, but in vain.

The Board concluded that the marks are similar and affirmed the refusal.

<Case 2> MENU119 v. MENU and its transliteration in katakana

The applicant filed an application for MENU119 designating computer programs in Class 9.  The examiner refused to register the mark, citing MENU and its katakana also designating computer programs in Class 9.  The case was brought to the Appeal Board.

The Board noted that 119 is a three-digit figure which is often used as model or grade designation, but 119 is also understood as emergency number in Japan.  Thus, 119 is not merely a figure that indicates model or grade of goods.  The Board further noted that “menu” is used not only to refer to a list of dishes but also a list of options available to a user when used in connection with computer.

Accordingly, 119 will not be disregarded in the applied-for mark, and MENU alone is not particularly distinctive.  The applied-for mark will be recognized as a whole and is distinguishable from the cited mark.

The Board concluded that the marks are not similar and reversed the refusal.