This case illustrates how the Japan Patent Office (JPO) evaluates similarity when two short word marks share identical pronunciation but differ in spelling.
It demonstrates that even in short marks, visual differences—especially at the beginning of the word—can outweigh phonetic similarity.

1. Application Details

• Mark: VENN
• Application No.: Japanese Trademark Application No. 2020-25316
• Designated Goods/Services:
  Goods and services across Classes 6, 7, 9, 11, 17, and 37, including valves, machinery, piping equipment, and installation/maintenance services.

2. Refusal by the JPO Examiner

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

The examiner cited the following earlier trademarks:

• Cited Mark 1:
  • Mark: BEN
  • Registration No.: 5754760
  • Designated Services: Construction-related services in Class 37
• Cited Mark 2:
  • Mark: VEN
  • Registration No.: 6127907
  • Designated Goods/Services: Software and financial-related services in Classes 9 and 36

The examiner concluded that the marks are similar, primarily based on phonetic similarity.

3. Appeal to the JPO Trial and Appeal Board

An appeal was filed against the refusal.

• Appeal No.: 2021-10952

During the appeal, the scope of designated goods/services was amended, eliminating overlap with one of the cited marks.

4. Decision of the Appeal Board

The JPO Appeal Board reversed the refusal.

(1) Comparison with “VEN” (Cited Mark 2)

• After amendment, the designated goods/services were no longer similar,
• therefore, the refusal based on this cited mark was resolved.

(2) Comparison with “BEN” (Cited Mark 1)

The Board found that:

• Both marks produce the same pronunciation (“ben”).
• Neither mark has a specific meaning (conceptually neutral).

However, the Board emphasized that:

• The marks differ clearly in appearance, including:
  • initial letter “V” vs. “B”,
  • length (four letters vs. three letters), and
  • structure (double “NN” vs. single “N”).

These differences were considered significant, particularly given the short length of the marks.

Accordingly, the Board concluded that:

• the marks are visually distinguishable, and
• the overall impression is sufficiently different despite identical pronunciation.

5. Outcome

The Board determined that the marks are not similar, and the refusal was set aside.
The trademark “VENN” was allowed to proceed toward registration.

Key Point for Foreign Applicants

This case highlights an important principle in Japanese trademark practice.

1. Visual differences are critical for short marks

In short trademarks, even small differences (e.g., one letter) can significantly affect the overall impression.

2. Initial letters carry strong weight

Differences at the beginning of the mark are particularly important.

3. Phonetic identity is not decisive

Even identical pronunciation does not automatically result in similarity.

4. Amendments can resolve conflicts

Adjusting the scope of goods/services can eliminate conflicts with certain cited marks.

✅ Practical takeaway

In Japan, trademarks may be considered dissimilar despite identical pronunciation, particularly where:

• the marks are short, and
• their visual structure and initial letters are clearly different.