JPO: Trademark “BORMIO” Registrable

Appeal Number

Rejection 2023-000826 (JP Appl. No. 2022-040333)

Case Summary

BORMIO is not perceived as a place of origin or sale of the designated goods of the applied-for-trademark. “BORMIO” or similar letter strings have not been used to indicate a place of origin, sale or others in trading in the fields of the designated goods. The appeal examiners were unable to find any circumstances to support assertions that traders or consumers should perceive “BORMIO” as directly indicating a place of origin, sale, etc. Thus, the applied-for-trademark should be registered.

Date of Decision

September 26, 2023

Demandant (Applicant)

Banya Kabushiki Kaisha

Trademark(s)

BORMIO (Standard characters)

Designated Goods/Services and Class(es)

Waistbands; garters; sports shoes; boots; sock suspenders; masquerade costumes; braces [suspenders] for clothing; climbing boots [mountaineering boots]; shoes; leather shoes; belts [clothing]; footwear; clothes for sports; footwear [other than special footwear for sports]; special footwear for sports; clothing; in class 25.

Judgement

The applied-for-trademark consists of letter string “BORMIO” in standard characters. “BORMIO” is a health resort in the northeast of the Province of Sondrio, in the north Lombardy region of northern Italy. It is famous as a summer resort and a winter sports resort, and for its mineral springs.

Even though BORMIO has been introduced as a sightseeing resort in Italy on websites with sightseeing information as the Examiner pointed out, it is not a familiar sightseeing resort where a lot of general consumers from Japan visit. Thus, it is difficult to say that BORMIO is a famous place name for people in Japan. Thus, BORMIO is not perceived as a place of origin or sale of the designated goods of the applied-for-trademark.

In addition, the appeal examiners were unable to find that “BORMIO” or similar letter strings have been used in the past to indicate a place of origin, sale, etc. in trading in the fields of the designated goods through ex-officio searches. Furthermore, the appeal examiners were unable to find any circumstances to say that traders or consumers should perceive that “BORMIO” directly indicates a place of origin, sale, etc. of the goods.

With the above in mind, it is not possible to say that the applied-for-trademark directly indicates a place of origin or sale of the goods.

Thus, the applied-for-trademark should be registered.

Comments

The applicant recited registered trademarks indicating place or city names to support their argument and appeal, including “PATAGONIA”, “BELLAGIO”, and others to show that the subject trademark and the registered trademarks are similarly known and that thus the subject trademark should be registerable.