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Bottom line: The Board found that “FAVORI & device” is confusingly similar to “Le FAVORI with its transliteration in katakana”.

The applicant filed an application for “FAVORI & device” shown below designating confectionery, bread, etc. in Class 30 and restaurants services in Class 43.  The examiner refused to register the mark, citing “Le FAVORI with its transliteration in katakana” also shown below designating retail / wholesale services for confectionery, bread and buns in Class 35.

<Applied-for mark>


<Cited mark>

The designated goods “confectionery and bread” of the applied-for mark are related to “retail / wholesale services for confectionery and bread” of the cited mark.  So the question is whether the marks are distinguishable or not.

The Board observed the marks and found as follows:

<As for the applied-for mark>
The applied-for mark is composed of “FAVORI” and a black device over it.  “FAVORI” is a French word meaning favorite, and is pronounced [fa-bo-ri].  In Japan, French is not so well-known that some consumers will find “FAVORI” as a fancy word.  However, French is frequently used in the industry of western-style confectionery and bread.  Thus, some consumers will understand the meaning of “FAVORI” as “favorite”.  The black device will not raise any particular meaning.

The applied-for mark is divided into “FAVORI” and the black device, and each part will function as a source identifier independently.

<As for the cited mark>
The cited mark is composed of “Le FAVORI” and its transliteration in katakana.  Consumers will easily understand “Le” is a French definite article, and regard “FAVORI” as a dominant part because the definite article “Le” has no significant meaning.  Accordingly, the mark will be pronounced as not only [ru-fa-bo-ri] and but also [fa-bo-ri], and have the meaning “favorite”.

<Comparison>
- The applied-for mark and the cited mark differ visually as a whole.  However, the dominant part of the cited mark “FAVORI” is in common with the applied-for mark.
- The sound [fa-bo-ri] of the apllied-for mark is distinguishable from the sound [ru-fa-bo-ri] of the cited mark.  However, the cited mark may also be pronounced [fa-bo-ri], which is identical with the sound of the applied-for mark.
- The marks may have the same meaning “favorite”.
- Considering the above factors comprehensively, the marks are similar to each other.

<As for the applicant’s argument>
The applicant argued that “FAVORI” of the applied-for mark will evoke an English word “favorite” and be pronounced [fe-i-va-ri] and that it has no particular meaning.  However, the Board recognized that “FAVORI” of the applied-for mark will be regarded as a French word in the industry of western confectionery and bread and have the meaning “favorite”.

And so the Board sustained the examiner’s refusal.