1. Regarding the criteria of the trademark which “is likely to cause confusion in connection with the goods … pertaining to a business of another person” as prescribed in Article 4, para.1, item 15 of the Trademark Act
The trademark as prescribed in this item does not only include the trademark which, when used on the designated goods, is likely to mislead the consumers into believing that the said goods are goods pertaining to the business of another person, but also includes a trademark which is likely to mislead the consumers into believing that the said goods are goods pertaining to the business of a proprietor having a close business relationship with the said another person or belonging to a group engaged in a merchandizing business with the same indication. In addition, the likelihood of confusion should be determined comprehensively based on the attention normally paid by traders and consumers in light of the degree of similarity between the trademark and the indications of others, the degree of well-knownness, fame and originality of the indications of others, the degree of relevance between the designated goods of the trademark and the goods pertaining to the business of others, the commonality of traders and consumers, and the actual conditions of transactions, etc.
2. Regarding whether or not the trademark in question corresponds to Article 4, para.1, item 15 of the Trademark Act
If an ordinary consumer, who is not very attentive, comes into contact with goods bearing the trademark in question which is similar to the cited trademark to a considerable extent which is extremely well known and famous as indicating the goods and services pertaining to the business of the defendant’s supporting intervenors and their group companies, and closely relating to the goods handled by the defendant’s supporting intervenors and their group companies, there is a risk of confusion that the said goods are the goods pertaining to the business of the defendant’s supporting intervenors and their group companies.
1. Regarding the summary of the Judgment 1, with respect to criteria for determining “a trademark that is likely to cause confusion with the goods … pertaining to the business of another person” under Article 4, para.1, item 15 of the Trademark Act, the Intellectual Property High Court determined the same as in a previous court case (Supreme Court, July 11, 2000, Minshu No.54-6, p1848 [L’AIR DU TEMPS Case]) that (1) the likelihood of confusion includes not only confusion in the so-called narrow sense, but also confusion in the broad sense, and (2) the likelihood of confusion should be determined comprehensively based on the attention normally paid by traders and consumers in light of the degree of similarity between the trademark and the indications of others, the degree of well-knownness, fame and originality of the indications of others, the degree of relevance between the designated goods of the trademark and the goods pertaining to the business of others, the commonality of traders and consumers, and the actual conditions of transactions, etc.
2. Regarding the summary of the Judgment 2, the Intellectual Property Hight Court applied the summary of Judgment 1 especially (2) to the present case and concluded that the trademark in question cause the likelihood of confusion in the narrow sense.
【Keywords】Article 4, Paragraph 1, item 15 of the Trademark Act, a trademark which is likely to cause confusion in connection with the goods pertaining to a business of another person, likelihood of confusion in the narrow sense, likelihood of confusion in the broad sense, hihachi, HITACHI
※ 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 @.)