【Trademark Act★】A case in which the Court affirmed the Japan Patent Office’s decision which dismissed a request for an invalidation trial filed by the plaintiff against the defendant’s registered trademark which consists of the letters “BULLPULU TAPIOCA” and figures, and whose designated goods are “dairy products containing tapioca” etc. in Class 29 (the “Defendant’s Registered Trademark”), finding that the Defendant’s Registered Trademark is not similar to the plaintiff’s registered trademark which consists of the letters “STARBUCKS COFFEE” and figures, and whose designated goods are “coffee beverage” etc. in Class 30 (the “Plaintiff’s Registered Trademark”); and therefore, the Defendant’s Registered Trademark does not fall under Article 4, Paragraph 1, Item 11 of the Trademark Act, and further, the Defendant’s Registered Trademark is not likely to cause confusion in connection with the goods or services pertaining to the plaintiff’s business; and therefore, the Defendant’s Registered Trademark does not fall under Article 4, Paragraph 1, Item 15 of the Trademark Act.

The Intellectual Property High Court Decision of September 16, 2020 (Case No. 2019 [Gyo-ke] 10170―Presiding Judge OTAKA)

◆Main text of the case

【Summary of the Judgment】

1. Regarding whether the Defendant’s Registered Trademark falls under Article 4, Paragraph 1, Item 11 of the Trademark Act

 
It is recognized that, at the end of March 2011, the Cited Trademark specified below was well known among consumers as that indicating goods or service in connection with the plaintiff’s business, and the circular ring parts in elements of the Cited Trademark as a whole gave a strong impression to consumers. However, it cannot be acknowledged, from the foregoing fact, and an online survey result which indicated that a high ratio of people who saw the subject mark specified below recalled the plaintiff, that two green-colored circular rings in elements of the Cited Trademark, and letters and figures displayed in white and arranged on the inner side green-colored thick circular ring (the “arrangement of green-colored circular rings”), were well known among consumers as that indicating goods or services in connection with the plaintiff’s business at the time of filing an application for registration of, and the decision to register, the Trademark in question.

 



 

【Cited Trademark: Cited from Exhibit 2 attached to Written Judgment】

 



【Subject Mark: Cited from Exhibit 3 attached to Written Judgment】

 
With respect to the Trademark in question specified below and the Cited Trademark, it is acceptable to make a judgment on the similarity of trademarks themselves by extracting and comparing their respective elements, that is, the letter parts “BULLPULU” and “STARBUCKS” as essential parts, and these letter parts differ in every respect―appearance, sound, and concept. Accordingly, even if the Trademark in question and the Cited Trademark are used for the designated goods or services of the Trademark in question, it is impossible to consider that the Trademark in question and the Cited Trademark are likely to cause confusion and misunderstanding about the source of the goods or services; therefore, it cannot be acknowledged that the Trademark in question and the Cited Trademark are similar in their entireties.

 



【Trademark in question: Cited from Exhibit 1 attached to Written Judgment】

 

2. Regarding whether or not the Trademark in question falls under Article 4, Paragraph 1, Item 15 of the Trademark Act

 
(i) It cannot be acknowledged that the arrangement of green-colored circular rings of the Cited Trademark was widely known among consumers as that indicating goods or services in connection with the plaintiff’s business at the time of filing the application for registration of, and the decision to register, the Trademark in question, and (ii) the letter parts “BULLPULU” and “STARBUCKS” in the respective elements of the Trademark in question and the Cited Trademark differ in every respect―appearance, sound, and concept; therefore, it cannot be considered that the Trademark in question and the Cited Trademark are likely to cause confusion and misunderstanding about the source of the goods or services when they are used for the designated goods or services of the Trademark in question, and it cannot be acknowledged that the Trademark in question and the Cited Trademark are similar in their entireties. In light of the foregoing, when the Trademark in question is used for its designated goods or services, it cannot be acknowledged that consumers would focus on the arrangement of green-colored circular rings and associate the same with the Cited Trademark and would be likely to mistake said goods or services as those pertaining to the business of the plaintiff or any entity that has a relationship, financial or organizational, to the plaintiff.

【Comments】

1. Regarding the summary of Judgment 1, the Court denied well-knownness and fame of the green-colored circular rings arrangement of the Cited Trademark, while rejecting the result of the online survey conducted and presented by the plaintiff on the grounds that the survey method was not appropriate, and denied the similarity between the Trademark in question and the Cited Trademark by extracting and comparing the letter parts “BULLPULU” and “STARBUCKS” as their respective essential parts based on judicial precedents regarding the determination of similarity of composite trademarks (the Supreme Court Decision of September 10, 1993, Minshu Vol. 47, No. 7, p. 5009 [SEIKO EYE case], the Supreme Court Decision of September 8, 2008, Saibanshu-Min No. 228, p. 561 [Tsutsumi-no-ohinakko case], etc.), and found that the Trademark in question does not fall under Article 4, Paragraph 1, Item 11 of the Trademark Act.

 

2. Regarding the summary of Judgment 2, the Court acknowledged and determined that the Trademark in question is not likely to cause confusion in the broad sense as well as confusion in the narrow sense because the well-knownness and fame of the arrangement of green-colored circular rings of the Cited Trademark are denied, and the similarity between the Trademark in question and the Cited Trademark is denied, based on judicial precedents which ruled that the meaning of the likelihood of confusion includes not only confusion in the narrow sense but also confusion in the broad sense (the Supreme Court Decision of July 11, 2000, Minshu Vol. 54, No. 6, p. 1848 [L’AIR DUTEMPS case] etc.), and found that the Trademark in question does not fall under Article 4, Paragraph 1, Item 15 of the Trademark Act.

【Keywords】Article 4, Paragraph 1, Item 11 of the Trademark Act, the similarity of composite trademarks, questionnaire survey, well-knownness and fame of elements of a composite trademark, separate observation of a composite trademark, essential part observation of a composite mark, extraction of an essential part of a composite trademark, Article 4, Paragraph 1, Item 15 of the Trademark Act, likelihood of confusion, confusion in the narrow sense, confusion in the broad sense, BULLPULU, STARBUCKS

※ 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