＜Subject Trademark＞
＜Cited Trademark＞
KANGOL (in standard characters)
January 17, 2023
Intellectual Property High Court Decision of June 16, 2021 (Case No. 2020 [Gyo-ke] 10148―Presiding Judge Toshihiko TSURUOKA)
1. Similarity of trademarks
(1) Regarding the general theory of similarity of trademarks
Similarity of trademarks should be determined based on whether or not there is a risk of confusion as to the origin of goods or services when the trademarks are used for the same or similar goods or services, and to that end, the trademark should be considered taking into account the impression, memory, associations, etc. given to the trader based on factors such as appearance, concept, pronunciation, etc. In addition, as long as it is possible to clarify the actual state of transactions pertaining to the goods or services, it would be appropriate to make a judgment based on specific transaction situation (Supreme Court Decision of February 27, 1968).
(2) Regarding the criteria for determining whether it is permitted to separate elements of a composite trademark and observe its essential parts
With regard to composite trademarks composed of two or more elements, it is not generally permissible to make a judgment on the similarity of trademarks by extracting one of these elements to be compared with another trademark in cases where the elements are combined in an inseparable manner so much so that it seems unnatural in transactions to observe such elements separately. Nevertheless, 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 pronunciation or concept as a source-identifying indicator, it should be allowed to make a judgment on the similarity of trademarks by extracting a part of the elements upon comparing the trademarks (Supreme Court Decision of September 8, 2008).
(3) Regarding whether it is permitted to separate elements of the Subject Trademark and observe its essential parts
The figure part and the word part of the Subject Trademark do not have any connection in terms of concept. Considering the Subject Trademark as a whole, each of the elements can be recognized as essential parts, as they are visually separated and are not combined in an inseparable manner so much so that it seems unnatural in transactions to observe such elements separately. As regards the word part, the pronunciation “KANGOL” is generated according to its alphabet notation, but no specific conception is generated.
(4) Regarding the similarity between the Subject Trademark and the Cited Trademark
Upon comparison of the word part “KANGOL” (which can be extracted as the essential part of the Subject Trademark) and the Cited Trademark, the appearance of the trademarks is very similar and the two trademarks share the same pronunciation. Therefore, it is acknowledged that the Subject Trademark is similar to the Cited Trademark.
(5) Regarding the conditions of transactions that may be considered in judging similarity of trademarks
The contract itself is merely an individual agreement between the plaintiff and Kangol, and therefore, the fact that the parties have entered into an agreement and that the plaintiff has continuously been using the trademark based on the said agreement should not be considered as a general and constant state of transactions (Supreme Court Decision of April 25, 1974).
2. Similarity of designated services
(1) Regarding the general theory of similarity of designated services
Whether designated services are similar or not should be judged depending on whether there is a relationship in which the use of the same or similar trademark for those services is likely to be mistakenly identified as services provided by the same proprietor, for reasons such as that those services are usually provided by the same proprietor (Supreme Court Decision of June 27, 1961).
(2) Similarity between the designated services of the Subject Trademark and those of the Cited Trademark
The designated services of the Subject Trademark and those of the Cited Trademark are common in that they both handle fashion goods, mainly clothing, and they also share the same means, purpose, and industry type for providing the services. In addition, the two services may be provided in the same places and share the same range of consumers.
Under these circumstances, if the same or similar trademarks are used for the designated services of the Subject Trademark and those of the Cited Trademark, the services are likely to be mistakenly identified as services provided by the same proprietor.
Based on the above, the designated services of the Subject Trademark and those of the Cited Trademark are acknowledged as similar services.
1. Regarding the criteria for determining whether it is permitted to separate elements of a composite trademark and observe its essential parts, the Supreme Court Decision of December 5, 1963 [LYRATAKARAZUKA Case] acknowledged essential part observation for the reason that “in actual transactions, where simplicity and speed are of high importance, empirically speaking, it is often the case that the pronunciation and concept are derived from only one part of the trademark, and thus two or more pronunciations or concepts may be generated from one trademark regarding composite trademarks whose elements are not combined in an inseparable manner so much so that it seems unnatural in transactions to observe such elements separately.”
Later, in the Supreme Court Decision of September 8, 2008 [TSUTSUMI-NO-OHINAKKOYA Case], a judgment was made as if to limit the cases in which the essential part could be extracted saying that “it is not appropriate to determine the similarity of trademarks by extracting one part of the composite trademark and comparing the said part with other trademarks, except in cases where the part of the elements of the trademark can be 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 pronunciation or concept as a source-identifying indicator.”
In the judgements for the subject case (1. (2) and (3) above), the court held that each of the figure part which seems to be a motif of a kangaroo and the word part “KANGOL” should be observed as separate elements, as they are “visually isolated, and not so indivisibly combined that it would be unnatural in transactions to observe such elements separately.” This decision is in line with the IP High Court decision of January 20, 2016 [REEBOK ROYAL FLAG case], showing that the criteria of the Supreme Court’s decision of December 5, 1963 [LYRATAKARAZUKA Case] can be applied compatibly even after the Supreme Court’s decision of September 8, 2008 [TSUTSUMI-NO-OHINAKKOYA Case].
2. With respect to “confusion as to origin of a product” in judging similarity of trademarks, the view that the standard is based on abstract confusion arising under general transactional circumstances (“abstract confusion theory”) and the view that the standard is based on concrete confusion arising under specific transactional circumstances (“concrete confusion theory”) exist, and there has been some debate as to which view should be adopted. In this regard, the Supreme Court decision of February 27, 1968 [HYOZAN-JIRUSHI Case] held that “as long as the actual transactional circumstances can be clarified, the judgment shall be made based on the specific circumstances of the transaction.” Although it may seem as though the “concrete confusion theory” has been adopted, the court clarified that “local or floating circumstances” should not be taken into consideration, supporting the original judgment for the reason that the conditions which were taken into consideration upon affirming the similarity of the trademarks was “not enough to acknowledge as local or floating phenomena.”
In addition, it was judged in the Supreme Court decision of April 25, 1974 [HODOGAYA CHEMICAL INDUSTRY COMPANY MARK Case] that “the transactional circumstances which may be taken into consideration upon considering the similarity of trademarks refers to general and constant circumstances surrounding the designated goods in general and not special and limited circumstances surrounding the goods for which the trademark is currently used.” In spite of this, in the subsequent lower court rulings, it was not necessarily unambiguously clear as to which circumstances should be considered as “general and constant circumstances” and which circumstances should not be considered as “local or floating circumstances” or “special and limited circumstances”, and in many cases, quite specific and time-bound circumstances were taken into consideration.
Under these circumstances, in the judgements for the subject case (1. (5) above), citing the Supreme Court decision of April 25, 1974 [HODOGAYA CHEMICAL INDUSTRY COMPANY MARK Case], the court held that the fact that the parties have entered into an agreement and that the plaintiff has continuously been using the trademark based on the said agreement should not be considered as a general and constant state of transactions upon considering the similarity of trademarks.
3. The judgements for the subject case (2 above) cited the Supreme Court decision of June 27, 1961 [TACHIBANA-MASAMUNE Case] and judged that the designated services of the Subject Trademark are similar to those of the Cited Trademark.
【Keywords】Article 4, Paragraph 1, Item 11 of the Trademark Act, similarity of trademarks, separate observation of a composite trademark, essential part observation of a composite trademark, general and constant state of transactions, similarity of goods/services, “KANGOL”, “カンゴール”
※The contents of this article are intended to convey general information only and not to provide any legal advice.
Kaoru TAKESHITA (Writer)
Patent Attorney（Japan Patent Attorneys Association）
Kei IIDA (Supervisor)
Attorney at Law & Patent Attorney (Daini Tokyo Bar Association)
Contact information for inquiries: k_iida☆nakapat.gr.jp (Please replace ☆ by @.)