Understanding how the Japan Patent Office (JPO) evaluates similarity between trademarks is essential for foreign applicants.
The following appeal decision illustrates how a refusal based on similarity may be overturned when a cited composite mark is improperly dissected.

1. Application Details

• Mark: AURA
• Application No.: Japanese Trademark Application No. 2023-141345
• Designated Goods: Tobacco and related products in Class 34

The application covered goods such as tobacco, heated tobacco products, electronic cigarettes, smoking articles, and related goods.

2. Refusal by the JPO Examiner

The application was refused under Article 4(1)(xi) of the Japanese Trademark Act, which prohibits registration of a trademark that is identical or similar to a prior registered trademark for identical or similar goods or services.

The examiner cited the following earlier trademark:

• Cited Mark: AURA RED
• Registration No.: 6660870
• Designated Goods: Tobacco-related goods in Class 34

According to the examiner:

• the cited mark “AURA RED” could be divided into separate elements, and
• the element “AURA” should be extracted and compared with the applied mark.

Based on this reasoning, the examiner concluded that “AURA” and “AURA RED” were similar trademarks.

3. Appeal to the JPO Trial and Appeal Board

An appeal was filed against the refusal.

• Appeal No.: 2025-1651

The appeal argued that the cited trademark “AURA RED” should be evaluated as a whole and that isolating “AURA” from the composite mark was inappropriate.

4. Decision of the Appeal Board

The JPO Appeal Board reversed the refusal.

The Board held that:

• The cited mark “AURA RED” should be perceived as a single, integrated trademark.
• Although “RED” is a common English word meaning a color, there were no circumstances suggesting that consumers would ignore this element.

Accordingly, the Board rejected the examiner’s approach of extracting “AURA” from the cited mark.

When evaluated as a whole, the Board concluded that “AURA” and “AURA RED” are not similar trademarks.

5. Outcome

The refusal was set aside, and the trademark “AURA” was allowed to proceed toward registration in Japan.

Key Point for Foreign Applicants

This case illustrates an important aspect of Japanese trademark practice.

1. Whole-mark comparison is the basic principle

In Japan, trademarks are generally compared as a whole, rather than dissecting individual elements.

2. Examiners sometimes extract a “dominant element”

In practice, examiners may focus on one element of a composite mark (for example, the first word of a mark).

3. Appeals can successfully challenge this approach

If the cited mark functions as a unitary expression, the JPO Appeal Board may reject the examiner’s attempt to isolate a particular element.

✅ Practical takeaway

Even if two trademarks share the same word, they may still be considered dissimilar in Japan if the cited composite mark is perceived as a single integrated expression.

Strategic argumentation in appeal proceedings can therefore be critical when overcoming similarity refusals before the JPO.

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