Trademark in the Application
Cited Trademark１ Cited Trademark２
1. Concerning the “actual circumstances of transaction” when interpreting Article 4, Paragraph 1, Items 11 and 15 of the Trademark Act
(1) Concerning the “actual circumstances of transaction” when interpreting Article 4, Paragraph 1, Item 11 of the Trademark Act
The similarity of trademarks should be determined by whether or not there is a likelihood of confusion as to the origin of the goods or services when both trademarks are used for the same or similar goods or services. For that matter, the impression, memory, associations, etc. that the trademark used gives the traders by its appearance, concept, phonetic perspective, etc. should be considered as a whole. Moreover, as long as the actual circumstances of transaction pertaining to such goods or services can be determined, it should be appropriate to form a judgment based on the actual circumstances of transactions. (Supreme Court Decision of February 27, 1968)
(2) Concerning the “actual circumstances of transaction” when interpreting Article 4, Paragraph 1, Item 15 of the Trademark Act
Whether or not a trademark is likely to cause confusion as referred to in Article 4, Paragraph 1, item 15 of the Trademark Act should be determined comprehensively in light of factors such as the degree of similarity between the trademark and another person’s indication, the degree of well-known fame and originality of the other person’s indication, and the degree of association between the designated goods or services of the trademark and the goods or services pertaining to the other person’s business, as well as the commonality in terms of traders and consumers of goods or services and other circumstances of transaction. Furthermore, such determination should be made on the basis of the level of care that traders and consumers of the designated goods or services of the trademark normally have (Supreme Court Decision of July 11, 2000).
(3) Concerning the “actual circumstances of transaction” pertaining to the corrected goods for the applied trademark
The name of Suzuki Motor Corporation’s (hereinafter, “Suzuki”) off-road vehicles “Jimny (ジムニー)” (hereinafter, “Jimny” and “Jimny Trademark”) has been widely known among automobile users of various ages in Japan as a name indicating the off-road vehicle manufactured and sold by Suzuki from before the filing date of the trademark in the application to the present.
On the other hand, a unique market for Jimny customization has been established, and information magazines corresponding to the designated goods of the trademark in the application, which are in Class 16 and are “information magazines concerning parts and accessories used for modifying off-road vehicles” (hereinafter, “corrected goods”) have existed for quite some time. All of these magazines are published by third parties that have no direct relationship with Suzuki or other car manufacturers or their affiliated dealers, etc. Among these, the magazine “Jimny Fan” (hereinafter referred to as “the magazine in question”), which is published by the Plaintiff, has particularly strong sales.
On the other hand, Suzuki, while fully aware that the Plaintiff has been publishing the magazine in question for more than ten years, has never issued to the Plaintiff any warnings or complaints that the Plaintiff was using the Jimny Trademark without permission or that the Plaintiff’s trademark could possibly be confused with the Jimny Trademark. On the contrary, Suzuki has supported publication of the magazine in question by paying the Plaintiff advertising fees to publish advertisements for the Jimny in the magazine in question and by purchasing copies of the magazine in question.
2. Concerning the applicability of Article 4, Paragraph 1, Item 11 of the Trademark Act
(1) Concerning criteria for determining whether it is permitted to separate and observe main elements of a composite trademark
When a constituent part of a trademark is acknowledged as giving a strong and dominant impression to traders and consumers as a source-identifying indicator of goods or services, extracting that constituent part and comparing it with another party’s trademark may be appropriate for determining the similarity of the trademarks (Supreme Court Decision of September 10, 1993; Supreme Court Decision of September 8, 2008).
(2) Concerning whether it is permitted to separate and observe main elements of the trademark in the application
The issue in this case is what kind of recognition traders and consumers will have of the trademark as a source-identifying mark when it is used for the corrected goods in the application.
From this point of view, at first, as an objective fact there is no evidence that automobile manufacturers, including Suzuki, publish “information magazines on parts and accessories for modifying off-road vehicles” either directly or through affiliated dealers. In addition, it appears that automobile manufacturers, including Suzuki, avoid becoming directly involved in the aforementioned Jimny customization market, etc., even though they may provide indirect support for the activities of third parties. Under these circumstances, it is difficult to imagine that the traders and consumers who come into contact with the corrected goods using the trademark in this application would recognize that the issuing body is (or could be) an automobile manufacturer, including Suzuki or one of its affiliated dealers.
Furthermore, it is not difficult to imagine that the elements “Jimny” and “ジムニー” of the trademark in this application would give a strong and dominant impression that the Jimny is the base vehicle for the modifications if traders and consumers of the corrected goods, who are likely to be interested in modifying off-road vehicles, came into contact with the trademark in this application (in fact, it is clear that this is the intention of the magazine in question). This is a different issue from the “source-identifying mark”, and it is not the basis for extracting the “Jimny” and “ジムニー” elements as essential parts of the composite trademark.
(3) Concerning whether the trademark in this application is similar to the cited trademark
When comparing the cited trademarks with the overall appearance of the trademark in this application, it is clear that the appearance of the trademark in this application and cited trademarks 1 and 2 are different and, as shown in the table below, the pronunciation and concept are also different, so it is not possible to affirm similarity between the two.
|
|
Pronunciation | Concept |
| The trademark in this application | “Jimny Fan” | Suzuki’s Jimny off-road vehicle enthusiasts |
| Cited trademark 1 | “Jimny” | Name of Suzuki’s off-road vehicles |
| Cited trademark 2 | “Jimny” | Name of Suzuki’s off-road vehicles |
3. Concerning the applicability of Article 4, Paragraph 1, Item 15 of the Trademark Act
“Jimny (ジムニー)” is recognized as a coined word that does not originate from a common name. The Jimny Trademark is widely known among automobile users of all ages in Japan as a name indicating the off-road vehicle manufactured and sold by Suzuki. Therefore, the degree of both well-known fame and originality of the Jimny Trademark is high. Next, the business that Suzuki develops under the Jimny Trademark could include related goods and accompanying services that go beyond the off-road vehicle (the Jimny) itself. However, the fact is that the business related to “information magazines on parts and accessories used for modifying off-road vehicles” is provided by third parties that have no direct relationship with Suzuki or its affiliated dealers, etc., and it is recognized that a “segregated role” which does not conflict with Suzuki has been established. Therefore, even if the traders and consumers of the goods (off-road vehicles) sold under the Jimny Trademark and those of the corrected goods sold under the trademark in the application are to a considerable extent a similar group, there is no risk of confusion with the goods and services covered by the Jimny Trademark of Suzuki when the trademark in this application is used for the corrected goods.
1. Concerning Summary 1 of the judgment
In Summary 1 of the judgment, the court held that, in particular, the “actual circumstances of transaction” should be taken into consideration concerning the criteria for determining whether or not trademarks are similar, as stipulated in Article 4, Paragraph 1, Item 11 of the Trademark Act in accordance with precedent (Supreme Court Decision of February 27, 1968 [氷山印 (“Hiyouzan-jirushi”) case]).
In addition, in Summary 2 (2), the court held that “actual circumstances of transaction” should be considered in particular when determining whether there is a “risk of confusion”, as provided in Item 15 of the same Paragraph in accordance with precedent (Supreme Court Decision of July 11, 2000, [L’ AIR DU TEMPS case]).
In light of the above, in Summary 1 (3), the court recognized and ruled on the “actual circumstances of transaction” of the corrected goods in the application that should be taken into account when making judgments on whether the trademarks in this case are similar, as provided in Item 11 of the same Paragraph, and on whether there is a “risk of confusion”, as provided in Item 15 of the same paragraph, particularly through questioning the Plaintiff’s representative.
The designated goods of the application were amended from Class 16 “printed matter” to the corrected goods in question during the application process, following a notice of reasons for refusal stating that the mark fell under Item 11 or 15 of the same paragraph. Although the amendment did not have any effect in the decision of refusal and the trial decision of refusal, as stated in the Summary 2 and 3 of the judgment, the amendment together with the questioning of the Plaintiff’s representative on the “actual circumstances of transaction” of the corrected goods in question had an effect in this court judgment. In this respect, this court case will be useful in practice.
2. Concerning Summary 2 of the judgment
Concerning the criteria for determining whether or not to separate a composite trademark and observe its main element among the criteria for determining whether or not trademarks are similar, as stipulated in Article 4, Paragraph 1, Item 11 of the Trademark Act, the Supreme Court Decision in the “リラ宝塚” (“LYRATAKURAZUKA”) case (Supreme Court Decision of December 5, 1963) held that “in the actual practice of transactions that value simplicity and speed, a trademark whose constituent parts are not recognized as being so inseparably combined that it would be unnatural in the course of trade to observe those constituent parts separately is not always necessarily perceived or visualized by all of its constituent parts, but is often perceived or visualized simply by a part of it, and two or more perceptions and visualizations may arise from a single trademark” (underlining by this author; the same applies below). On the other hand, the Supreme Court Decision in the “つつみのおひなっこや” (“Tsutsumi no Ohinakkoya”) case (Supreme Court Decision of September 8, 2008) cited the Supreme Court Decision in the “リラ宝塚” (“LYRATAKURAZUKA”) case and the Supreme Court Decision in the “SEIKO EYE” case (Supreme Court Decision of September 10, 1993), and held that “in the case of a composite trademark that is understood to be made up of multiple components, it is impermissible to compare only part of the trademark with another person’s trademark and judge the similarity or dissimilarity of the trademarks themselves, except in cases where that part is recognized as having a strong and dominant impression on traders and consumers as a source identifier for goods or services, or where it is recognized that no other constituent part is deemed to give a source-identifying impression in terms of pronunciation or concept”. As a result, the relationship and scope of the issues underlined above in the Supreme Court decisions in the “リラ宝塚” (“LYRATAKURAZUKA”) case and the “つつみのおひなっこや” (“Tsutsumi no Ohinakkoya”) case have been called into question. At present, there is a situation where various lower court precedents and academic theories coexist (for details of this situation, please refer to Ryutaro Nakagawa, “What Should Be Considered for Trademark Registration – The Basics and Applications of Separating Observations of Composite Trademarks”, Jurist No. 1589, p.88, etc.). In any case, the idea that to separate a composite trademark and observe its main element is permitted in the case of a composite trademark where “the constituent part is recognized as strongly giving a dominant impression to traders and consumers as a source-identifying mark of the goods or services”, as indicated by the Supreme Court Decision in the “つつみのおひなっこや” (“Tsutsumi no Ohinakkoya”) case, is not substantially disputed.
As a case that falls under the above conditions, the trial decision affirmed the similarity between the trademark in the application and cited trademarks 1 and 2 through separating and observing the constituent part “Jimny” of the trademark in this application.
In response to this, in Summary 2 (1), the court confirmed and ruled that, in general, separating a composite trademark and observing its main element is permitted in such cases. Based on the above, in Summary 2 (2) the court denied that separating a composite trademark and observing its main element, which is recognized and ruled in Summary 1 (3), is applicable in this “Jimny / ジムニー” case, after considering the “actual circumstances of transaction” of the corrected goods from the perspective of how business traders and consumers recognize the origin when using the composite trademark for the designated goods or services. In Summary 2 (3), the court denied the similarity between the trademark in the application and cited trademarks 1 and 2, based on the judgment criteria for similarity of trademarks prescribed in Article 1, Paragraph 1, Item 11 of the Trademark Act, in accordance with the overall observation as a result of recognition in Summary 2 (2).
This judgment is useful in practice, in that it emphasizes the following point, as judged in Summary 2 (2): Whether or not separating a composite trademark and observing its main element is permissible in a case in which “an element is recognized as giving a strong and dominant impression to traders and consumers as a source-identifying mark for goods or services” should be determined from the perspective of how traders and consumers perceive the source of the goods and services when a composite trademark (in this case, the trademark of this application) is used for the designated goods and services (in this case, the corrected goods of this application).
3. Concerning Summary 2 of the judgment
In Summary 3, the court judged as follows: Under the criteria for determining whether there is “likelihood of confusion”, as stipulated in Article 4, Paragraph, 1 Item 15 of the Trademark Act, and assuming dissimilarity between the trademark in the application and cited trademarks 1 and 2 in Summary 2 (3), the court judged there is no likelihood of confusion, considering the well-known fame of the Jimny Trademark and the “actual circumstances of transaction” pertaining to the corrected goods of the trademark in the application which are recognized and determined in Summary 1 (3), even when taking into account the relationship between the corrected goods of the trademark in this application and the goods pertaining to the Jimny Trademark (off-road vehicles) and the commonality of traders and consumers.
In this regard, there is a strong correlation between the well-known fame of a cited trademark, the breadth or narrowness of similarity, and the presence or absence of the likelihood of confusion (Kei Iida, “Strong Marks and Weak Marks,” in Masanobu Ono et al. (eds.), “Trademark Legal Consultation I” (Seirin Shoin, 2017), p. 225, etc.). On the other hand, the following point may be useful in practice: In cases for so-called “super-strong marks”, where the cited trademark has highly well-known fame and is highly distinctive, as in this case, there is a possibility that similarity and likelihood of confusion will be denied depending on the “actual circumstances of transaction” of the designated goods and services, as stated in Summary 3 (Izumi Hayashi, “Correlation between the Notability and Prominence of the Plaintiff and the Likelihood of Confusion,” Patent, Vol. 72, No. 4 (2022), p. 105, etc.).
【Keywords】criteria for determining similarity of trademarks, criteria for determining likelihood of confusion, actual circumstances of transaction, overall observation, separate observation, main element observation, well-known fame of trademark, originality of trademark, super-strong mark, “Jimny”, “ジムニー”, “Jimny Fan”, “ジムニーファン”
※ 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 @.)