【Trademark Act★】A case in which the Intellectual Property High Court revoked the JPO’s decision to maintain registration of a trademark, holding that none of the items of Article 4, Paragraph 1, Item 11, 10 or 15 of the Trademark Act applied. The trademark, which consists of the standard characters “日本食育防災士” (literally, “Japan Food Education Disaster Prevention Specialist”), does not fall under Article 4, Paragraph 1, Item 11 or 10 of the Trademark Act because the trademark is not similar to the cited trademark which consists of the characters “防災士” (literally “Disaster Prevention Specialist”) or to the trademarks indicating the Plaintiff’s service essentially identical thereto. However, the trademark falls under Article 4, Paragraph 1, Item 15 of the same Act because there is a likelihood of confusion with the Plaintiff’s service.
Intellectual Property High Court Decision of April 24, 2025 (Case No. 10095 [Gyo-ke] 2024 ˗ Presiding Judge Shimizu)
Summary of the Judgment
1. Concerning applicability of Article 4, Paragraph 1, Item 11 of the Trademark Act
(ⅰ) Criteria for determining the admissibility of separate observation of composite trademarks
A composite trademark consisting of multiple constituent elements is designed to be distinguished from another person’s trademark by the entirety of its constituent elements. Therefore, as a general rule, it is not permissible to extract only a part of the constituent elements and determine the similarity between trademarks by comparing only that element with another person’s trademark.
Where the constituent parts of a trademark are not so inseparably combined as to make it commercially unnatural to observe them separately ˗ for example, where a part of the constituent elements of a trademark is recognized as giving a strong and predominant impression to traders or consumers of the designated goods or services as an indication of source, or where it is found that no pronunciation or concept as an indication of source arises from the other parts ˗ then it should be said that it is permissible to extract a part of the constituent elements of the trademark and determine the similarity of trademarks by comparing only that part with another person’s trademark.
(ⅱ) Concerning the admissibility of separate observation of the trademark at issue
Although the term “防災士” (literally “Disaster Prevention Specialist”) was widely known among those interested in disaster prevention or in qualifications relating to disaster prevention, it was not so well-known as to be listed in general Japanese language dictionaries or terminology dictionaries.
On the other hand, the trademark at issue consists of the standard characters “日本食育防災士” (Japan Food Education Disaster Prevention Specialist) arranged in a single line, and is not structured in such a way that only the portion “防災士” (Disaster Prevention Specialist) independently attracts the attention of viewers. Moreover, the characters “食育” (food education) contained in the trademark at issue have their own distinctive meaning, namely “education relating to food, such as ingredients, eating habits, and nutrition,” separate from “防災” (disaster prevention) and based on the evidence, the combination of “食育” (food education) and “防災” (disaster prevention) cannot be recognized as a commonplace combination. Therefore, “食育防災士” (literally “Food Education Disaster Prevention Specialist”) should be regarded as a newly coined term having its own distinctive function of identification.
Thus, it cannot be said that no pronunciation or concept as an indication of source arises at all from the parts other than “防災士” (Disaster Prevention Specialist) of the trademark at issue, or from the combination thereof. Furthermore, taking into account the degree of well-known fame of the aforementioned term “防災士” (Disaster Prevention Specialist), it is not appropriate to separately observe the “防災士” (Disaster Prevention Specialist) portion of the trademark at issue, and the trademark at issue should be regarded as a single, unified trademark.
(ⅲ) Comparison between the trademark at issue and the cited trademark
The trademark at issue and the cited trademark differ in appearance, phonetic pronunciation, and concept. It can be said that the two share commonality in the visual element “防災士” (Disaster Prevention Specialist) of their appearance, the phonetic element “bousai-shi” of the characters, and elements of their conceptual aspects. However, the characters in common comprise only three characters, and considering that the trademark at issue should be regarded as a single, unified trademark, the difference is substantial and distinguishing between them is easy. There is also no sufficient evidence to recognize that a misunderstanding or confusion as to the source has arisen due to “日本食育防災士” (Japan Food Education Disaster Prevention Specialist) being mistaken for “防災士” (Disaster Prevention Specialist). Considering overall the impression, memory, association, etc. given by the trademark at issue and the cited trademark, and the similarity between the trademark at issue and the cited trademark as a whole, the trademark itself cannot be said to be a “trademark similar thereto” as provided in Article 4, paragraph 1, Item 11 of the Trademark Act.
2. Concerning applicability of Article 4, Paragraph 1, Item 10 of the Trademark Act
The trademark used in the citation consists of the characters “防災士” (Disaster Prevention Specialist) and should be considered substantially identical to the cited trademark. Therefore, for the same reasons as stated in 1 above, the trademark at issue cannot be said to be a “trademark similar thereto” as provided in Article 4, Paragraph 1, Item 10 of the Trademark Act.
3. Concerning applicability of Article 4, paragraph 1, Item 15 of the Trademark Act.
(ⅰ) Criteria for determining the admissibility of separate observation of composite trademarks
Article 4, Paragraph 1, Item 15 of the Trademark Act is intended to prevent free-riding on and dilution of well-known indications, and to protect the function of trademarks to distinguish the source of goods or services, thereby maintaining the business reputation of trademark users and the interests of consumers.
The phrase “a trademark that is likely to cause confusion in connection with the goods or services pertaining to a business of another person” as used in said item should be construed to include not only trademarks which are likely to be misunderstood as goods or services pertaining to another person when used for the designated goods or services, but also trademarks which are likely to be misunderstood as goods or services pertaining to a business operator who has a close business relationship with said other person or belongs to a group conducting commercialization business under the same indication (likelihood of confusion in a broad sense).
Furthermore, whether there is a “likelihood of confusion” under the said item should be determined comprehensively, based on the degree of similarity between the trademark and another party’s indication, the degree to which the other party’s indication is well-known, famous or original, the degree of relatedness in terms of nature, use, or purpose between the designated goods of the trademark and the goods related to the other party’s business, the extent of overlap or identity between the traders and consumers of the respective goods, and other actual conditions of trade, all assessed by the standard of the care ordinarily exercised by traders and consumers of the designated goods of the trademark.
(ⅱ) Whether there is a “likelihood of confusion” with respect to the trademark at issue.
The trademark at issue, “日本食育防災士” (Japan Food Education Disaster Prevention Specialist), is not entirely unrelated to the used trademark “防災士” (Disaster Prevention Specialist) from the perspective of relevant consumers, and may give rise to an association that the former is a qualification having some kind of connection to the latter. Furthermore, it is recognized that the used trademarks at issue are well-known among those included within the relevant consumers of the designated services of the trademark at issue who are interested in disaster prevention or qualifications relating to disaster prevention. Although the degree of originality of the used trademarks at issue cannot be said to be high, the degree of relatedness in terms of nature, use, or purpose between the designated services of the trademark at issue and the services pertaining to the Plaintiff’s business must be regarded as high. Since both the relevant consumers of the designated services of the trademark at issue and the consumers of the Plaintiff’s business associated with the used trademarks at issue include persons who are interested in disaster prevention or qualifications relating to disaster prevention, the commonality of consumers is recognized. In general, there are actual trade circumstances indicating a recognition that, regardless of the words prefixed to it, the name “防災士” (Disaster Prevention Specialist) is likely to give rise to the misunderstanding that it is related to the “防災士” (Disaster Prevention Specialist) certified by the Plaintiff.
Taking all of the above circumstances into consideration, even on the basis of the degree of care ordinarily exercised by the relevant consumers, when the trademark at issue is used for the designated services, it can be said that there is a likelihood of confusion (in a broad sense of confusion) that the services are a qualification relating to disaster prevention that has some connection with the Plaintiff’s “防災士” (Disaster Prevention Specialist), and that the services pertain to the business operated or managed by the Plaintiff or related organization approved by the Plaintiff.
Comments
1. Concerning Summary 1 of the judgment
Among the criteria for determining the similarity of trademarks provided in Article 4, Paragraph 1, Item 11 of the Trademark Act, the Supreme Court (First Petty Bench) Judgment of December 5, 1963 (“リラ宝塚 (LYRATAKARAZUKA)” case) specifically rendered the following decision regarding the criteria for the permissibility of separately examining or focusing on the essential part of a composite trademark:
“ [I]n actual transactions where simplicity and promptness are valued, with regard to a trademark which cannot be acknowledged as having each of the constituent parts joined together in such a way as to suggest that it would be unnatural in transactions to observe the constituent parts separately from one another, it is not always the case that a pronunciation or concept is produced from the name of the entirety of the constituent parts, and it is often the case that a pronunciation or concept is produced from only part of the trademark, in an abbreviated manner, and as a result, two or more pronunciations or concepts are produced from a single trademark …” (The underlined portions are the author’s notes. The same applies hereinafter.)
The Supreme Court (Second Petty Bench) judgment of September 8, 2008 (Case No. 2007 (Gyo-hi) 223 (“つつみのおひなっこや (Tsutsumi no Ohinakko-ya)” case)), while citing the Supreme Court (First Petty Bench) judgment in the “LYRATAKARAZUKA” case and the Supreme Court (Second Petty Bench) judgment of September 10, 1993 (“SEIKO EYE” case), held as follows.
“it should be said that in regards to a composite trademark which is considered a combination of different constituent parts, extracting a part of constituent parts of a trademark and using only such extracted part for comparison with another person’s trademark in order to determine the similarity of trademarks themselves should not be permitted unless said part is acknowledged to give a strong and dominant impression to traders and consumers as a source-identifying indicator of goods or services, or unless other parts cannot be acknowledged to generate any sound or concept as a source-identifying indicator.”
As a result, the relationship and scope of application of the holdings underlined in the Supreme Court judgments in the リラ宝塚 (LYRATAKARAZUKA) case and つつみのおひなっこや (Tsutsumi no Ohinakko-ya) case have become issues, and currently, various lower court precedents and academic theories coexist. For details on this situation, see, for example, Ryutaro Nakagawa, “What Should Be Considered for Trademark Registration—Basics and Application of Separate Observation of Composite Trademarks,” (in Japanese) Jurist No. 1589, p. 88, etc.
In Summary 1 (1) of the judgment in this case, the court positioned the above-mentioned criteria for judgment in the Supreme Court decision of the Tsutsumi no Ohinakko-ya case as examples of the criteria for judgement in the above-mentioned Supreme Court Case of the LYRATAKARAZUKA case.
Furthermore, in Summary 1 (2) and (3) of the judgment, by applying the criteria for judgment in Summary 1 (1) of the judgment to the present case, the court denied extracting and separately observing the “防災士” (Disaster Prevention Specialist) portion from the trademark at issue and by observing the trademark at issue as a whole, denied its similarity to the cited trademark.
This judgment is a practical reference in the following respects: that the “防災士” (Disaster Prevention Specialist) portion corresponded to the examples in the first half of the criteria in the Supreme Court judgment in the Tsutsumi no Ohinakkyo-ya case was denied by the court, on the ground that the “防災士” (Disaster Prevention Specialist) portion was not highly well-known; and on the ground that the “食育” (food education) portion corresponded to the examples in the latter half of the criteria in the same judgment on the ground that “食育” (food education) had its own distinctive meaning. Furthermore, the court denied that the “食育” (food education) portion and the “防災士” (Disaster Prevention Specialist) portion, as a connected whole, corresponded to the comprehensive criteria in the Supreme Court judgment in the LYRATAKARAZUKA case.
2. Concerning Summary 3 of the judgment
In Summary 3 (1) of the judgment in this case, the criteria for determining the likelihood of confusion as provided in Article 4, paragraph 1, item 15 of the Trademark Act follow the precedent (Supreme Court (Third Petty Bench) Judgment of July 11, 2000, “L’AIR DU TEMPS” case).
In Summary 3 (2) of the judgment, the court, based on the finding of dissimilarity between the trademark at issue and the cited trademark under Summary 1 (3), applied the criteria described in Summary 3 (1) above to the present case. Namely, the court, while finding that the distinctiveness of the trademark in actual use is not high, recognized the likelihood of confusion in a broad sense by taking into account such factors as the relationship and potential for association between the registration trademark and the trademark in actual use, the certain degree of well-known fame of the trademark in actual use, the high degree of relevance between the designated services of the registration trademark and the services related to the plaintiff’s business, and the commonality of their consumers.
The existence and degree of well-known fame of a cited trademark and the breadth of its scope of similarity as well as the likelihood of confusion are, in principle, positively correlated (Kei Iida, “Strong Marks and Weak Marks,” (in Japanese) in Shouen Ono et al. (eds.), Legal Consultation on Trademarks I (Seirin Shoin, 2017), p. 225, etc.). On the other hand, even in cases such as the present one, where the cited trademark is not necessarily highly well-known or distinctive, the likelihood of confusion in a broad sense can still be found if there are such factors as the relationship and potential for association between the two trademarks or the high degree of relevance between the respective goods or services. This judgment is informative for practice in the above respects.
【Keywords】overall observation; composite trademark; separate observation; observation of elements; likelihood of confusion; actual circumstances of transactions; well-known fame or fame of a trademark; distinctiveness of a trademark; 防災士 (Disaster Prevention Specialist); 日本防災士機構 (Japan Disaster Prevention Specialist Organization); 日本食育防災士 (Japan Food Education Disaster Prevention Specialist); 日本食育HEDカレッジ (Japan Food Education HED College)
※ The contents of this article are intended to convey general information only and not to provide any legal advice.
