The Intellectual Property High Court Decision of March 19, 2020 (Case No. 2019 (Gyo-Ke) 10152 — Presiding Judge TSURUOKA)
◆ Main text of the case
【Summary of the Judgment】
- Regarding the mark “ベジバリア／塩・糖・脂” (“／” indicates a line break) , the overall mark “ベジバリア塩・糖・脂” or only part of the mark, “ベジバリア” produces a sound and concept as a sign for distinguishing its goods and services from those of others.
- When judging the similarity of the mark “ベジバリア／塩・糖・脂” and the cited trademark “塩糖脂” based on the part of the mark which has the function to distinguish its goods and services from those of others, it cannot be said that these two marks are similar to each other because the mark “ベジバリア／塩・糖・脂” and the cited mark “塩糖脂” are different in appearance, sound, and concept, or at least in appearance and sound, and if these two marks are used for the same or similar goods, such use is not likely to cause confusion as to the source of goods among traders and consumers.
- Regarding the summary of Judgment 1, in identifying the sound and concept of the mark “ベジバリア／塩・糖・脂” as the basis for the judgment of the similarity to the cited trademark, the Court recognized that the parts of “ベジバリア” and “塩・糖・脂” can be observed separately as constituent parts of a composite trademark, but the Court identified the sound and concept which are produced from the whole or a part of the mark, that is, “ベジバリア塩・糖・脂” or “ベジバリア” mainly in light of distinctiveness in the case where the mark is used for its designated goods—supplements or nutraceutical products.
- Regarding the summary of Judgment 2, the Court held, based on Judgment 1, that the mark “ベジバリア／塩・糖・脂” and the cited mark “塩糖脂” are different in appearance, sound, and concept, or at least in appearance and sound, and therefore, the mark is not similar to the cited trademark.
【Keywords】Similarity of trademarks, identification of the pronunciation of a composite trademark, identification of concept of a composite trademark, distinctiveness
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Kei IIDA (Writer)
Attorney at Law & Patent Attorney (Daini Tokyo Bar Association)
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