Registered Trademark
Cited Trademark
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 the trademarks are used for the same or similar goods or services. For this purpose, the impression, memory, association, etc. that the trademark used in such a manner gives to traders and consumers through its appearance, concept, phonetic perspective, etc. should be considered as a whole, taking into account the actual state of transactions pertaining to the goods or services. Moreover, as long as the actual transaction of the goods or services can be clarified, it is appropriate to make a decision based on the specific circumstances of those transactions (Supreme Court Decision of February 27, 1968, Case No.110 [Gyo-tsu] 1964).
2. Regarding criteria for determining whether it is permitted to separate and observe main elements of a composite trademark
With regard to a composite trademark consisting of several constituent parts, extracting a part of the constituent parts of a trademark and using only said extracted part for comparison with another person’s trademark in order to determine the similarity of the trademarks themselves should be permitted if the components of the trademark are not found to be combined inseparably to the extent that it may be unnatural in transactions to observe them separately, such as when said extracted part is acknowledged to give a strong and dominant impression to traders and consumers as a source-identifying indicator of goods or services, or when other parts cannot be acknowledged to generate any phonetic perspective or concept as a source-identifying indicator (Supreme Court Decision of December 5, 1963, Case No.953 [O] 1964, Supreme Court Decision of September 10, 1991, Case No.103 [Gyo-tsu] 1991, Supreme Court Decision of September 8, 2008, Case No.223 [Gyo-hi] 2007).
3. Regarding whether it is permitted to separate and observe the main elements of the registered trademark
The word “by” in the above composition of the registered trademark is written in lower case letter, and is widely used and familiar in Japan as an English preposition indicating that the source of goods or services is “XYZ” in the usage of “by XYZ”. Therefore, the registered trademark as a whole can be said to be constructed in such a way that the “Ｏ！Ｏｉ” part after “by” independently draws the viewer’s attention. Moreover, the “5252” part is merely a series of numbers and has no special distinctiveness, whereas “Ｏ！Ｏｉ” is not a word found in dictionaries, etc., the use of an exclamation mark makes the pronunciation of the word non-standard, and the use of alternating circles and vertical lines gives a distinctive visual impression, in that it can be understood as either a coined word or a figure. In addition, given that the usage of “by XYZ” to indicate that the source of goods or services is “XYZ” is widely used and familiar in Japan, the “Ｏ！Ｏｉ” part after “by” should give a strong and dominant impression as a source-distinguishing mark. Therefore, it is permissible to extract the “Ｏ！Ｏｉ” part as the essential part and compare it with the cited trademark to determine whether the trademarks are similar.
4. Regarding whether the registered trademark is similar to the cited trademark
The above essential parts of the registered trademark do not give rise to any particular concept, whereas the cited trademark gives rise to the concept of “Marui’s logo mark,” so it is difficult to say that the concept of the two marks is identical. Next, the essential parts could give rise to the pronunciations “o-oi” /o oi/ or “o-o-ai” /o o ai/; on the other hand, the cited trademark could give rise to the pronunciations “o-ai o-ai” /o ai o ai/, “oi-oi” /oi oi/, or “maru-i” /maɾɯi/. Both sets of pronunciations share many phonetic features in common and are reasonably similar. Moreover, the appearance of the essential parts in both trademarks includes four letters or symbols written in a Gothic-style typeface, with the first and third letters sharing the same character “O” and the second and fourth letters being similar in shape in that they consist of one vertical line, or one vertical line with a point after its termination, and has similar letter spacing and alignment of each letter. Therefore, when seen in isolation, the essential parts are confusable with each other.
In addition to the above, the respective designated products of the registered trademark and cited trademarks are fashion- and apparel-related products and items worn by general consumers, and the traders and consumers of these products and items include general consumers. It is considered that such traders and consumers will mainly focus on the appearance of the product or logo mark, etc., as they are unlikely to regard the aforementioned pronunciation as a distinguishing mark with respect to the origin of the product. Taking all of the above factors together, including the impression, memory, associations, etc. given to traders and consumers, and when considering the situation as a whole based on the actual circumstances pertaining to the goods in question, the registered trademark is similar to the cited trademark.
1. Summary 1 of the judgment 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 main elements of a composite trademark, at issue was the scope of application of the Supreme Court case (Supreme Court decision rendered on September 8, 2008 [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 judgment on the similarity of a composite trademark by extracting one of these elements to be compared with another party’s trademark, except in a case in which 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 the other parts can be acknowledged as not generating any pronunciation or concept as a source-identifying indicator.”
In subsequent lower court cases, there was a ruling (Intellectual Property High Court Decision rendered on September 12, 2019 [Case No. 10020 (Gyo-ke) 2019] [“SIGNATURE” case]) in which it is permitted to separate and observe main elements of a composite trademark if “it cannot be acknowledged that the elements are combined in an inseparable manner to the extent that it would be unnatural in transactions to observe such elements separately,” citing 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 Summary 2 of the judgment, the court follows the foregoing court cases in the Intellectual Property High Court Decision rendered on September 21, 2021 ([Case No. 10029 (Gyo-ke) 2021] [“HIRUDOMILD” case]) and in the Intellectual Property High Court Decision rendered on March 9, 2023 ([Case No. 10122 (Gyo-ke) 2022] [“朔北カレー” case]) and positioned the criteria in the Supreme Court case (Supreme Court decision rendered on September 8, 2008 [Case No. 2007 (Gyo-hi) 223] [“つつみのおひなっこや” case]) as an example of the above criteria in the Supreme Court decision rendered on December 5, 1963 [Case No. 853 (O) 1962] [“リラタカラヅカ” case].
3. In Summary 3 of the judgment, the court affirmed separating and observing main elements of a registered trademark by applying to said registered trademark the criteria for determining whether or not to permit to separate and observe the elements of the composite trademark as set out in Summary 2 of the judgment, and in particular the criteria for determining the Supreme Court Decision rendered on September 8, 2008 [Case No. 2007 (Gyo-hi) 223] [“つつみのおひなっこや” case]).
4. The contents of Summary 4 of the judgment are in line with the trend in recent court cases, in which particular emphasis is placed on the similarity or dissimilarity in the appearance of trademarks when judging the similarity of the trademarks pertaining to goods whose consumers are general consumers.
【Keywords】way of determining similarity of trademarks; likelihood of confusion as to the origin, appearance, concept, phonetic perspective,; actual circumstances of transactions; overall observation; composite trademark; separate observation; observation of main elements; ５２５２ｂｙＯ！Ｏｉ; ＯＩＯＩ
※ 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 @.)