1. Regarding method of determining whether trademarks are similar or dissimilar
The similarity of trademarks should be considered as a whole, taking into account the impression, memory, associations, etc. that a trademark used for identical or similar goods or services gives to traders and consumers through its appearance, concept, phonetic perspective, etc. and taking into account the actual circumstances of transactions pertaining to such goods or services.
2. Regarding whether it is permitted to separate and observe elements of a composite trademark and criteria for determining its essential part of the trademark.
Separate observation of an elements of a composite trademark is not permitted unless (1) the part of the composite trademark gives a strong and dominant impression to the traders or consumers as a mark identifying the origin of the goods or services, (2) no phonetic perspective or concept as a mark identifying the origin arising from other parts, or (3) the trademark as a whole has little unity in terms of composition in light of its appearance, etc., and the traders or consumers understand it separately and recognize a part of it as an abbreviation, etc., and as a result, the part functions as an independent mark identifying the origin of the goods or services. In the case of (3), not all of each separated component part is naturally an element part that is allowed to be extracted to make a similarity judgement.
3. Regarding whether it is permitted to separate and observe elements of a cited trademark and determining the essential part of the trademark.
The above composite trademark which consists of a large Chinese character “遊” in brush-style typeface at the top center and the Roman characters “VENTURE” in Gothic-style typeface at the bottom is observed separately as the above (3) type and recognized the element part is “遊” and not “VENTURE”.
4. Regarding whether or not the applied trademark is similar to the cited trademark
The cited trademark which is a composite trademark is not similar to the applied trademark, since there is the difference between having or not having the “遊” part according to overall observation, and the “遊” part is observed separately and observed as an essential according to separately and element observation.
1. Summary 1 of the judgement is based on judicial precedent (Supreme Court Decision rendered on February 27, 1968 [“氷山印”case]) concerning criteria for determining the similarity of trademarks.
2. Regarding criteria for determining whether it is permitted to separate and observe elements of a composite trademark, the scope of application of the Supreme Court (Supreme Court decision rendered on September 8, 2008, by the Second Petty Bench [Case No. 2007 (Gyo-hi) 223] [“つつみのおひなっこや” case]) in which the court held that it is not permissible to make a judgement on the similarity of the composite trademark by extracting one of these elements to be compared with another party’s trademark except in the case in which 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, or other parts can be acknowledged not to generate any phonetic perspectives or concept as a source identifying indicator was at issue. The subsequent lower court cases such as Intellectual Property High Court Decision rendered on September 21, 2021 ([Case No. 10029 (Gyo-ke) 2021] [“HIRUDOMILD” case]) and Intellectual Property High Court Decision rendered on March 9, 2023 ([Case No. 10122 (Gyo-ke) 2022] [“朔北カレー” case]) position the above each criteria of the Supreme Court decision rendered on September 8, 2008 [“つつみのおひなっこや” case] as an example of the criteria of the Supreme Court decision rendered on December 5, 1963, by the First Petty Bench [Case No. 853 (O) 1962] [“リラタカラヅカ” case] in which the Supreme Court held that it is permitted to separate and observe the elements of the trademark application 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. Furthermore, Summary 2 of the judgement held as an example that (3) in light of the appearance of the trademark, etc., there is little unity in the composition of the trademark as a whole, and as a result of which traders and consumers understand and grasp the elements of the trademark separately and recognize a part of it as an abbreviation, etc., the said constituent parts are considered to function as an independent sign to identify the source of the mark. Then, the court also held that in the case of such judgment based on criteria (3), not all the separated component parts are considered essential parts which are allowed to be judged similarity.
3. In Summary 3 of the judgement the court placed particular emphasis on the appearance of the cited trademark, affirms to separate and observe elements of the cited trademark, while finding the essential part of the cited trademark is the “遊” part and not the “VENTURE” part.
4. Summary 4 of the judgement held that the cited trademark which is a composite trademark is not similar to the applied trademark according to both overall observation and separately element observation.
【Keywords】way of determining similarity of trademarks, overall observation, composite trademarks, separate observation, element observation, 「遊／VENTURE」,「VENTURE」
※ 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 (Please replace ☆ with @.)