Case Information
Appeal No. 2025-5675
Date: September 8, 2025
Trademark:
Goods: Class 3: Soap; Liquid perfumes; Perfumery; Essential oils; Eau de Cologne [colognewater]; Eau de Parfum; Eau de Toilette; Body deodorizer; Cosmetics; …
Cited Mark:
Goods: Class 3: Cosmetics; Perfume and flavour materials; Incense; Soaps and detergents; …
Decision Summary
The trademark application for “SAINT-CLAIR BY JOSEPH DUCLOS” (Application No. 2023-142233) was rejected under Article 4(1)(xi) of the Trademark Act, on the grounds that the mark is similar to a registered mark “Saint Clair / the Japanese Katakana version of ‘Saint Clair”.
The applicant filed an appeal against the decision of refusal.
The Board of Appeal (BoA) analyzed the mark “SAINT-CLAIR BY JOSEPH DUCLOS” and noted that each word - ‘SAINT’, ‘CLAIR’, ‘BY’, ‘JOSEPH’, and ‘DUCLOS’ - is presented in the same font, size, and color. Therefore, the mark is perceived as a unified whole.
The BoA conducted an ex officio search but found no evidence in the cosmetics industry suggesting that “SAINT-CLAIR” is recognized as the dominant part of the mark or serves as an identifier of goods in actual commerce.
The BOA concluded that relevant consumers would perceive the mark as a coined term; therefore, it is inappropriate to isolate “SAINT-CLAIR” for comparison with the cited mark.
Accordingly, the BOA overturned the decision and determined that the mark shall be registered.