2019.09.25

Vol.19 (TIMES)

AppealNo. 2018-5578

1. Conclusion

The goods and services were judged to be dissimilar while the marks were judged to be similar.  Thus, the subject mark was allowed for registration.

2. Summary

The subject software was considered dissimilar to the software of the cited mark because there are differences in use, consumers, etc.  Specifically, the differences in the use and consumers were indicated as follows.    

3. My comments

As I hoped in the article of Vol.6 (OASIS), I had been waiting for such a case for a long time.  I had wondered why any type of software is regarded as being similar to each other in examinations.  I had believed that the software differing in their consumers should be dissimilar.  So, I am very excited to see this case.

Actually, if an Office Action is issued due to a prior mark, my client asks me whether it is effective to assert dissimilarity based on the difference in the field of the software.  In that case, although I inform them that such an assertion can be made, I could not recommend doing so without advantageous precedents.  From now on, I can propose making such arguments indicating this decision.

However, it is not easy to make it in real life. Since there is a possibility of having to go to an Appeal, it may take time and cost you a lot.  In addition, the designated goods are hardly limited to “software for XXX”, but “electronic machines and apparatus” or “computer software” is often designated, and thus applicants cannot argue the similarity of the goods in many cases.  Under Japanese practice, it is basically not allowed to make assertions related to use in examinations.

If a prior mark designating “electronic machines and apparatus” is used only for the software in the field of X, the applicant of the later-filed application designating software in the field of Y has to file a non-use cancellation trial against the registration for the goods other than X.  After this registration is cancelled in that trial, the applicant of the later-filed application can start to argue the dissimilarity of the goods.  How troublesome they are.  The practice should be changed.