It is recognized that, at the end of March 2011, the Cited Trademark specified below was well known among consumers as that indicating goods or service in connection with the plaintiff’s business, and the circular ring parts in elements of the Cited Trademark as a whole gave a strong impression to consumers. However, it cannot be acknowledged, from the foregoing fact, and an online survey result which indicated that a high ratio of people who saw the subject mark specified below recalled the plaintiff, that two green-colored circular rings in elements of the Cited Trademark, and letters and figures displayed in white and arranged on the inner side green-colored thick circular ring (the “arrangement of green-colored circular rings”), were well known among consumers as that indicating goods or services in connection with the plaintiff’s business at the time of filing an application for registration of, and the decision to register, the Trademark in question.
【Cited Trademark: Cited from Exhibit 2 attached to Written Judgment】
【Subject Mark: Cited from Exhibit 3 attached to Written Judgment】
With respect to the Trademark in question specified below and the Cited Trademark, it is acceptable to make a judgment on the similarity of trademarks themselves by extracting and comparing their respective elements, that is, the letter parts “BULLPULU” and “STARBUCKS” as essential parts, and these letter parts differ in every respect―appearance, sound, and concept. Accordingly, even if the Trademark in question and the Cited Trademark are used for the designated goods or services of the Trademark in question, it is impossible to consider that the Trademark in question and the Cited Trademark are likely to cause confusion and misunderstanding about the source of the goods or services; therefore, it cannot be acknowledged that the Trademark in question and the Cited Trademark are similar in their entireties.
【Trademark in question: Cited from Exhibit 1 attached to Written Judgment】
(i) It cannot be acknowledged that the arrangement of green-colored circular rings of the Cited Trademark was widely known among consumers as that indicating goods or services in connection with the plaintiff’s business at the time of filing the application for registration of, and the decision to register, the Trademark in question, and (ii) the letter parts “BULLPULU” and “STARBUCKS” in the respective elements of the Trademark in question and the Cited Trademark differ in every respect―appearance, sound, and concept; therefore, it cannot be considered that the Trademark in question and the Cited Trademark are likely to cause confusion and misunderstanding about the source of the goods or services when they are used for the designated goods or services of the Trademark in question, and it cannot be acknowledged that the Trademark in question and the Cited Trademark are similar in their entireties. In light of the foregoing, when the Trademark in question is used for its designated goods or services, it cannot be acknowledged that consumers would focus on the arrangement of green-colored circular rings and associate the same with the Cited Trademark and would be likely to mistake said goods or services as those pertaining to the business of the plaintiff or any entity that has a relationship, financial or organizational, to the plaintiff.
【Keywords】Article 4, Paragraph 1, Item 11 of the Trademark Act, the similarity of composite trademarks, questionnaire survey, well-knownness and fame of elements of a composite trademark, separate observation of a composite trademark, essential part observation of a composite mark, extraction of an essential part of a composite trademark, Article 4, Paragraph 1, Item 15 of the Trademark Act, likelihood of confusion, confusion in the narrow sense, confusion in the broad sense, BULLPULU, STARBUCKS
※ 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