【Trademark Act★★】A case in which the Intellectual Property High Court held that the defendant’s following indications 1 and 2 which consist of the words “バレナイ” and “二重” in two columns above and below on a black background are not similar to the plaintiff’s trademark 1 which consists of “バレないふたえ” in standard characters and the plaintiff’s following trademark 2 which consists of the words “バレない” and “二重” in two columns above and below. A case in which given the above, the IP High Court dismissed the appeal against the original judgement in which the district court dismissed the plaintiff’s assertion of trademark infringement on the ground that the defendant’s indications are not used as a trademark (Article 26, Paragraph 1, Item 6 of the Trademark Act).

defendant’s indications 1 and 2

plaintiff’s trademark 2

Intellectual Property High Court Decision of December 26, 2023 (Case No. 10011 [Ne] 2023―Presiding Judge Shimizu)

◆Main text of the case

【Summary of the Judgment】

1. Regarding the method of determining whether trademarks are similar or dissimilar

The similarity of trademarks should be determined by whether or not there is a likelihood of confusion as to the origin of the goods or services when both trademarks are used for the same or similar goods or services. For that matter, the impression, memory, associations, etc. that the used trademark gives the traders by its appearance, concept, phonetic perspective, etc. should be considered as a whole. Moreover, it should be appropriate to determine based on the actual circumstances of transactions pertaining to such goods or services as far as it is possible to reveal the actual circumstances. Even if one aspect of the trademark is similar in terms of appearance, concept, or phonetic perspective, it should not be interpreted as similar if the other two aspects are significantly different or if there is no risk of confusion due to mislead of the origin of the goods or services by the actual circumstances of the transaction.

 
2. Regarding whether the plaintiff’s trademarks are similar to the defendant’s indications

With respect to double eyelid cosmetics and stretch tape for blepharoplasty, the expressions “バレないふたえ” and “バレナイ二重” are descriptive expressions regarding quality and efficacy. Therefore, considering that its-source-distinguishing function is quite limited, and in addition, the manner in which the plaintiff’s trademarks and the defendant’s indications are used, it is generally recognized that consumers identify the origin of goods according to the specific manner in which the external appearance of the goods or their packaging, etc., can identify the origin of the goods.

In light of such actual circumstances of transactions, in judging whether the plaintiff’s trademarks and the defendant’s indications are similar or dissimilar, it is understood that the difference in the appearance of the source distinguishing marks (trademarks) embodied in the goods or their packaging is relatively more important in giving a stronger and more dominant impression to consumers than the difference in the phonetic perspective and conception of the marks. Since the plaintiff’s mark and the defendant’s indications differ in appearance to the extent that they are not confusable to consumers, it is reasonable to conclude that they are not similar, at least insofar as they are used for double eyelid cosmetics and stretch tapes for eyelid shaping.

【Comments】

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. In light to the fourth sentence of the Summary 1 of the judgement especially general opinion in the latter paragraph, Summary 2 of the judgement judges that the plaintiff’s trademarks and the defendant’s indications are dissimilar in consideration of the actual circumstances of the transaction, with particular emphasis on the difference in appearance. This case is in line with recent court decisions that have held that trademarks are dissimilar by emphasizing differences in appearance and/or concept in light of the actual circumstances of transactions rather than adopting the standard of judging trademarks to be similar if they have the same phonetic perspectives (Tokyo High Court Case rendered on January 26, 2000 [Qt case], Tokyo District Court Case rendered on December 1, 2004 [eサイトcase], Tokyo District Court Case rendered on December 22, 2006 [LOVEBERRY case], Osaka District Court Case rendered on January 31, 2008 [喜度利家case], Intellectual Property High Court Case rendered on March 9, 2023 [朔北カレーcase]), and in particular by emphasizing differences in appearance (Intellectual Property High Court Case rendered on November 30, 2023 [遊／VENTURE case]).

【Keywords】way of determining similarity of trademarks, appearance, phonetic perspective, overall observation, actual circumstances of transactions, risk of confusion,「バレないふたえ」,「バレナイ／二重」

※ 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 @.)