This case illustrates how the Japan Patent Office (JPO) evaluates the relationship between goods and services under Article 4(1)(xi) of the Trademark Act.
It demonstrates that even identical trademarks may coexist if the respective goods are considered dissimilar.

1. Application Details

• Mark: ZONE
• Application No.: Japanese Trademark Application No. 2020-10798
• Designated Goods: Golf clubs in Class 28 (after amendment).

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: ZONE
• Registration No.: 6286018
• Designated Goods:
  • Class 25: Mountaineering shoes
  • Class 28: Mountaineering harnesses

Because the marks are identical in appearance, pronunciation, and meaning, the examiner concluded that the marks are similar.

3. Appeal to the JPO Trial and Appeal Board

An appeal was filed against the refusal.

• Appeal No.: 不服2021-7095

During the appeal, the designated goods were amended and limited to golf clubs.

4. Decision of the Appeal Board

The JPO Appeal Board agreed that:

• the applied mark and the cited mark are identical in appearance,
• both are pronounced as “ZONE,”
• and both convey the same concept (“zone” or “area”).

Therefore, the Board found that the marks themselves are similar.

However, the Board focused on the relationship between the goods.

The Board noted that:

• golf clubs are used in golf and are primarily sold to golfers through golf equipment stores and sporting goods stores;
• mountaineering shoes are used in mountaineering and are mainly sold to mountaineers through mountaineering equipment stores and sporting goods stores; and
• the manufacturers, materials, functions, and consumer groups are different.

Although both products may occasionally be sold through general sporting goods retailers, the Board found that they are commercially distinct.

Accordingly, the goods were considered dissimilar.

5. Outcome

Although the trademarks themselves were found to be similar, the designated goods were considered dissimilar.

Therefore, the refusal was set aside, and the trademark “ZONE” was allowed to proceed toward registration.

Key Point for Foreign Applicants

This case highlights an important aspect of Japanese trademark practice.

1. Similar marks do not automatically result in refusal

Article 4(1)(xi) requires both:

• similar trademarks, and
• identical or similar goods/services.

2. Goods similarity is determined from actual trade circumstances

The JPO considers factors such as:

• manufacturers,
• sales channels,
• consumers,
• purpose and function of the goods.

3. Shared retail channels alone are insufficient

Even if products are sold in the same stores, they may still be regarded as dissimilar if their commercial origins and consumer groups differ.

✅ Practical takeaway

In Japan, even identical trademarks may coexist when the respective goods or services are commercially distinct.

This case demonstrates that careful limitation or amendment of the specification can sometimes overcome a refusal, even where the marks themselves are identical.