September 16,2021
The Intellectual Property High Court Decision of July 29, 2021 (Case No. 2021 [Gyo-Ke] 10026―Presiding Judge Yoshiyuki MORI)
◆Main text of the case
【Summary of the Judgment】
- Regarding criteria etc. for determining whether it is permitted to separate elements of a composite trademark and observe its essential part
With regard to a composite trademark which is a trademark comprising a combination of two or more elements, in the case where it cannot be acknowledged that such elements are combined in an inseparable manner, so much so that it seems unnatural in transactions to observe such elements separately, even if one of the pronunciations and concepts generated from the composite trademark cannot be considered identical or similar to pronunciation and concept of another person’s trademark, if other pronunciation and concept generated from the composite trademark are similar to those of another person’s trademark, it is appropriate to consider that the two trademarks are similar to each other (Supreme Court Decision rendered on December 5, 1963, by the First Petty Bench [Case No. 1962 (O) 953]).
In this regard, it is reasonable to interpret that elements of a composite trademark are permitted to be observed separately, not only “if a part of the elements of the trademark is acknowledged to give a strong and dominant impression to traders and consumers as a source-identifying indicator of goods or services”, and “if other parts cannot be acknowledged to generate any pronunciation or concept as a source-identifying indicator”, but also “if it cannot be acknowledged that the elements are combined in an inseparable manner, so much so that it seems unnatural in transactions to observe such elements separately”. The Supreme Court Decision rendered on September 8, 2008, by the Second Petty Bench (Case No. 2007 [Gyo-hi] 223), is not construed as denying the foregoing interpretation.
- Regarding whether it is permitted to separate elements of the composite trademark in question and observe its essential part
Considering the fact that the elements of the composite trademark in question (the “Applied Trademark”) are different in nature, the upper part of the figure is arranged to slightly project higher than the upper part of the word, and the word part can be easily understood to be pronounced as “sanko” or “sankō”, the figure part and the word part of the Applied Trademark can be clearly perceived separately in appearance. Therefore, it cannot be said that the figure part and the word part are combined in an inseparable manner, so much so that it seems unnatural in transactions to observe such parts separately.
In addition, the word part which is easily understood as generating a specific pronunciation constitutes a large part (more than 70%) of the Applied Trademark. Further, the word “SANKO” is not in dictionaries etc., and thus does not generate any specific concept. Therefore, it can be said that the word part is impressive and gives a strong and dominant impression to traders and consumers.
Further, regarding the figure part, it is hard to say that it has a specific pronunciation which is immediately and clearly understood at a glance; however, if the figure part is understood as a design made in the shape of an “S” and as generating the pronunciation “esu”, the figure part may be often understood from the fact that the word part starts with the letter “S”, that meaning of the figure part is not independent from the word part.
Accordingly, for the Applied Trademark, it is permitted to determine the similarity only by the word part.
【Cited from Exhibit 1 “List of Trademark” attached to Written Judgment】
- The similarity between the Applied Trademark and the Cited Trademarks
Comparing the word part of the Applied Trademark and each cited trademark which consists of the word “SANCO”, or the word “SANCO” and a figure in combination, they are similar in appearance, even though their concepts cannot be compared, and have the same pronunciation. Taking those facts into consideration in a comprehensive manner, it should be said that the Applied Trademark and the cited trademarks are similar to each other and likely to cause confusion.
【Cited Trademark 1】
【Cited Trademark 2】
【Cited Trademark 4】
【Cited from Exhibit 2 “List of Cited Trademarks” attached to Written Judgment】
【Comments】
- Regarding criteria for determining whether it is permitted to separate elements of a composite trademark and observe its essential part, in the TSUTSUMI-NO-OHINAKKOYA Case (Supreme Court Decision of September 8, 2008, rendered by the Second Petty Bench; Saibanshu-Minji No. 228, p. 561), the Supreme Court held to the effect that it is not acceptable to make a judgment on the similarity of a composite trademark composed of two or more elements by extracting one of these elements to be compared with another party’s trademark, except for the case where the said element is found to give a strong and dominant impression to traders and consumers as a source-identifying indicator of goods or services, or the case where the remaining elements are not found to generate a pronunciation or concept as a source-identifying indicator”, and applicable scope thereof became an issue. In some subsequent lower court cases (IP High Court Decision of September 12, 2019, Case No. 2019 [Gyo-ke] 10020; SIGNATURE Case, etc.), the court found, citing Supreme Court Decision of December 5, 1963, rendered by the First Petty Bench (Minshu Vol. 17, No. 12, p.1621 [LYRATAKARAZUKA Case]), to the effect that it is permitted to separate elements of a composite trademark and observe its essential part if “it is not acknowledged that the elements are combined in an inseparable manner, so much so that it seems unnatural in transactions to observe such elements separately”. Regarding the summary of Judgment 1, the Court directly and expressly indicated to the effect that the criterion for determining whether it is permitted to separate elements of a composite trademark and observe its essential part which was indicated in the decision rendered by the First Petty Bench of the Supreme Court on December 5, 1963 (LYRATAKARAZUKA Case) still exists and applicable even after the decision of the Second Petty Bench of the Supreme Court on September 8, 2008 (TSUTSUMI-NO-OHINAKKOYA Case).
The Court further held with regard to a composite trademark, citing the decision rendered by the First Petty Bench of the Supreme Court on December 5, 1963 (LYRATAKARAZUKA Case), to the effect that even if one of the pronunciations and concepts generated from the composite trademark cannot be considered identical or similar to pronunciation and concept of another person’s trademark, if another pronunciation and concept generated from the composite trademark are found to be similar to those of another person’s trademark after separating the elements of the composite trademark and observing its essential part, the two trademarks are similar to each other.
- Regarding the summary of Judgment 2, the Court applied the criterion for determining whether it is permitted to separate elements of a composite trademark and observe its essential part as mentioned in the summary of Judgment 1 to the Applied Trademark and determined that such observation is permissible. However, the Court determined the same not based on a single criterion only, but considering each of three criteria indicated in Judgment 1. In light of such Judgment 2, it may be considered that three criteria indicated in Judgment 1 are not separate and independent requirements, but rather important factors, which may be cumulative and correlated, to be comprehensively considered, in order to separate elements of a composite trademark and observe its essential part.
- Regarding the summary of Judgment 3, by applying the summary of Judgment 1 which held to the effect that if pronunciation and concept generated from the composite trademark are found to be similar to those of another person’s trademark after separating the elements of the composite trademark and observing its essential part, the two trademarks are considered as similar, the Court separated the parts of the trademarks, observed the word parts, and found the word parts to be similar in appearance and generate the same pronunciation, and then acknowledged the similarity of the Applied Trademark and the cited trademarks.
【Keywords】a method for determining similarity of trademarks, observations as a whole, a composite trademark, separate observation, essential part observation
※ The contents of this article are intended to convey general information only and not to provide any legal advice.
Kei IIDA (Writer)
Attorney at Law & Patent Attorney (Daini Tokyo Bar Association)
Contact information for inquiries: k_iida@nakapat.gr.jp