1. Regarding criteria for determining whether product trademarks are similar or dissimilar
The similarity of product trademarks should be determined based on “likelihood of confusion” as to the source of the goods when the trademark is used for the same or similar goods. The impressions, memories, associations, etc. arising from the compared marks from visual, conceptual, or phonetic perspectives should be comprehensively considered. Furthermore, it is appropriate to determine based on the specific circumstances of the transaction of the product as long as the circumstances of the transaction of the product can be clarified. In addition, even if the compared trademarks are similar in any one of visual, concept, or phonetic perspectives, they should not be considered similar as long as they are significantly different in the other two perspectives or they are unlikely to cause confusion as to the source of the goods due to the actual circumstances of the transaction. (Supreme Court Decision of February 27, 1968 (Case No. 1964 [Gyo-tu] 110))
2. Regarding criteria for determining whether it is permitted to separate elements of a composite trademark and recognizing its essential part
With regard to a composite trademark which is a trademark comprising a combination of two or more elements, it is permissible to make a judgment on the similarity of the composite trademark by extracting one of these elements to be compared with another party’s trademark, for example, if 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 if other parts cannot be acknowledged to generate any phonetic perspectives or concept as a source-identifying indicator, and thus 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 (Supreme Court Decision of December 5, 1963, by the First Petty Bench [Case No. 1962 (O) 953], Supreme Court Decision of September 10, 1993, by the Second Petty Bench [Case No. 1991 (Gyo-tsu) 103], Supreme Court decision of September 8, 2008, by the Second Petty Bench [Case No. 2007 (Gyo-hi) 223]).
3. Regarding whether it is permitted to separate and observe the elements of the trademark application in this case.
With regard to the applicant’s trademark “朔北カレー” which is a composite trademark, there is no actual circumstances of the transaction such that the “朔北” (Sakuhoku) part, which does not represent a specific region and can generate a visual and concept as a source-identifying indicator, and the “カレー” (Karē) part, which does not generate such a visual and concept, are used only as an integral part of a series. Furthermore, it cannot be acknowledged that it seems unnatural in transactions to observe such elements separately. Therefore, it is permitted to extract only the “朔北” (Sakuhoku) part and compare it with the sited trademark “サクホク” (Sakuhoku).
4. Regarding whether or not the trademark is similar to the cited trademark
According to the separation of “朔北” (Sakuhoku) part and observation of this element, this part shares the same pronunciation with the cited trademark “サクホク” (Sakuhoku), however, the visual and concept are clearly different. Furthermore, it is not recognized that there are actual circumstances of the transaction in which consumers and traders recall “サクホク” and its right holder from “朔北”, or that there are actual circumstances of the transaction in which consumers and traders discriminate the origin of goods solely by the phonetic perspectives of the trademark, and that the distinctiveness by the phonetic perspectives does not exceed the distinctiveness by the visual and concept. And thus, there is no likelihood of misidentification or confusion as to the source of goods, and the trademark and cited trademark are dissimilar.
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 product trademarks.
2. Regarding criteria for determining whether it is permitted to separate elements of a composite trademark and observe its essential part, 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]) 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. Then, the scope of this precedent was at issue. One of the subsequent lower court cases (Intellectual Property High Court Decision rendered on September 12, 2021[Case No.2019 (Gyo-ke) 10020] [“SIGNATURE” case]) 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 citing the Supreme Court Decision of December 5, 1963, by the First Petty Bench [Case No. 1962 (O) 953] [“リラタカラヅカ” case]. Under these circumstances, summary 2 of the judgement positioned the above each criteria in the Supreme Court decision rendered on September 8, 2008 [“つつみのおひなっこや” case] as examples of the criteria in the Supreme Court Decision of December 5, 1963 [“リラタカラヅカ” case] in accordance with the Intellectual Property High Court Decision rendered on September 21, 2021 [Case No. 2021 (Gyo-ke) 10029] [“HIRUDOMILD” case].
3. Summary 3 of the judgement applies the criteria for determining whether it is permitted to separate and observe the elements of composite trademarks, especially the above criteria in the Supreme Court Decision of December 5, 1963 [“リラタカラヅカ” case] to the trademark in this case, and then, affirmed to separate and observe the elements of the trademark in this case.
4. Summary 4 of the judgement denied the similarity by applying criteria for determining the similarity between the product trademarks stated in the second sentence of the summary 1 of the judgement to determining the similarity between the trademark and the cited trademark. This is consistent with court decisions (Tokyo High Court Decision rendered on January 26, 2000 [“Qt” case], Tokyo District Court Decision rendered on December 1, 2004 [“eサイト” case], Tokyo District Court December 22, 2006 [“LOVEBERRY” case], Osaka District Court January 31, 2008 [“喜度利家” case], etc.) that do not adopt the criteria for determining that trademarks are similar if they have the same phonetic perspective.
【Keywords】way of determining similarity of product trademarks, misidentification or confusion of a source, visual, concept, phonetic perspective, actual circumstances of the transaction, overall observation, composite trademarks, separate observation, element observation, 「朔北カレー」,「サクホク」
※ 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 @.)