This case illustrates how the Japan Patent Office (JPO) evaluates similarity when a cited mark contains both word and device elements.
It demonstrates that similarity cannot be established by isolating a single word element unless it clearly dominates the overall impression.

1. Application Details

• Mark: PAL
• Application No.: Japanese Trademark Application No. 2024-37735
• Designated Goods: Metal materials for construction in Class 6.

2. Refusal by the JPO Examiner

The application was refused under Article 4(1)(xi) of the Japanese Trademark Act (likelihood of confusion with a prior registered trademark).

The examiner cited the following earlier trademark:

• Cited Mark: Composite mark consisting of
  • a device element (including stylized graphics and Japanese wording “ぱるちゃん”), and
  • the word “Pal” in colored letters
• Registration No.: 6810793
• Designated Services: Retail and wholesale services relating to building materials, and related services in Classes 35 and 42.

The examiner reasoned that:

• the element “Pal” could be extracted as the dominant portion of the cited mark, and
• this element is identical to the applied mark “PAL.”

Based on this reasoning, the examiner concluded that the marks were similar.

3. Appeal to the JPO Trial and Appeal Board

An appeal was filed against the refusal.

• Appeal No.: 2025-5242

The appeal challenged the examiner’s approach of isolating the word element from the composite cited mark.

4. Decision of the Appeal Board

The JPO Appeal Board reversed the refusal.

The Board found that:

• The cited mark consists of both device and word elements, arranged in a visually integrated manner.
• The device element and wording are closely arranged and balanced, creating a unified overall impression.

The Board further noted that:

• The mark can be pronounced smoothly as a single expression.
• There were no circumstances indicating that the word “Pal” alone dominates the overall impression of the cited mark.

Accordingly, the Board concluded that the cited mark must be evaluated as a whole, and that isolating “Pal” is inappropriate.

5. Outcome

Because the cited mark is a unitary composite mark, the Board rejected the examiner’s approach.

As a result, the marks “PAL” and the cited composite mark were found not similar, and the refusal was cancelled.
The application was allowed to proceed toward registration.

Key Point for Foreign Applicants

This case highlights an important principle in Japanese trademark practice.

1. Composite marks are evaluated as a whole

Even if a mark contains a recognizable word element, it will not automatically be isolated.

2. Dominant element must be clearly established

A word element is considered dominant only where there are clear supporting circumstances.

3. Visual integration matters

Device elements and layout can reinforce the perception of a mark as a single unified expression.

✅ Practical takeaway

In Japan, similarity cannot be established merely because two marks share the same word if the cited mark is perceived as a visually integrated composite mark.

The cases presented here are based on publicly available JPO decisions and are provided for informational purposes only.