Understanding how the Japan Patent Office (JPO) evaluates composite trademarks is important for foreign applicants.
This appeal decision demonstrates that a refusal may be overturned when the examiner improperly extracts one element from a composite mark.

1. Application Details

• Mark: hyphen
• Application No.: Japanese Trademark Application No. 2024-85542
• Designated Goods: Cosmetics and related products in Class 3, including cosmetics, soaps, perfumes, artificial eyelashes, artificial nails, wigs adhesives, and cosmetic adhesives.

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.

The examiner cited the following earlier trademark:

• Cited Mark: HYPHEN TOKYO
• Registration No.: 6805260
• Designated Services: Retail and wholesale services relating to goods such as cosmetics and fragrance products in Class 35.

The examiner reasoned that:

• the cited mark “HYPHEN TOKYO” contains the element “HYPHEN”, and
• this element could be extracted as the dominant portion of the mark.

Based on this reasoning, the examiner concluded that “hyphen” and “HYPHEN TOKYO” were similar trademarks.

3. Appeal to the JPO Trial and Appeal Board

An appeal was filed against the refusal.

• Appeal No.: 2025-15519

The appeal argued that the cited trademark should be evaluated as a whole and that isolating the word “HYPHEN” was inappropriate.

4. Decision of the Appeal Board

The JPO Appeal Board reversed the refusal.

The Board held that:

• The cited mark “HYPHEN TOKYO” appears visually integrated as a single expression, since all letters are written in the same style and size and the spacing between the words is minimal.
• The pronunciation “HYPHEN TOKYO” consists of eight syllables and can be pronounced smoothly as a single phrase.

Although “TOKYO” may be recognized as a geographical term referring to Japan’s capital, the Board found no circumstances indicating that the element “HYPHEN” alone would dominate the overall impression of the mark.

Therefore, consumers are likely to perceive the cited mark as a unified mark rather than focusing solely on the word “HYPHEN.”

5. Outcome

Because the cited mark must be evaluated as a whole, the Board concluded that “hyphen” and “HYPHEN TOKYO” are not similar trademarks.

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

Key Point for Foreign Applicants

This decision illustrates an important principle in Japanese trademark practice.

1. Whole-mark comparison remains the basic rule

Japanese trademark examination generally evaluates marks as a whole, rather than isolating individual elements.

2. Geographic terms do not automatically weaken the rest of the mark

Even when a composite mark contains a geographic term such as “TOKYO,” the remaining element is not automatically treated as the dominant part.

3. Appeals can successfully challenge element-extraction reasoning

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

✅ Practical takeaway

Even if a cited mark contains a geographic term (e.g., “TOKYO”), the JPO may still treat the mark as a single integrated expression, preventing similarity from being established based on only one shared word.

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