1. Regarding criteria for determining whether a “trademark is likely to mislead as to the quality of the goods or services” as provided for in Article 4, Paragraph 1, Item 16 of the Trademark Act
In order for a trademark to be considered to correspond to a “trademark which is likely to mislead as to the quality of the goods or services” provided for in Article 4, Paragraph 1, Item 16 of the Trademark Act, it is required that, at the time of the examiner’s decision of trademark registration, specific goods having the quality directly represented by the composition of the trademark are related to the designated goods, and the quality of the specific goods represented by the composition of the trademark differs from the quality of the designated goods, and thus the trademark is likely to mislead traders or consumers of the designated goods as to the quality of the goods or services when the trademark is used for the designated goods.
2. Regarding whether or not the trademark in question corresponds to a “trademark which is likely to mislead as to the quality of the goods or services” provided for in Article 4, Paragraph 1, Item 16 of the Trademark Act
The trademark in question is a composite mark consisting of “パール” in Katakana characters which means “pearl” in English, and “アパタイト” in Katakana characters which cannot be said to provide a specific implication. Since no specific implication can be recognized from its entire composition, the trademark in question is not considered to directly represent the quality of the specific goods, and it cannot be said that the trademark in question makes traders or consumers who see it recognize the quality of the specific goods. Accordingly, it is not considered that the trademark in question is likely to mislead as to the quality of the goods when the trademark in question is used for any of the designated goods; therefore, the trademark in question does not fall under Article 4, Paragraph 1, Item 16 of the Trademark Act.
1. Regarding the summary of the Judgment 1, with respect to criteria for determining whether a trademark corresponds to a “trademark which is likely to mislead as to the quality of the goods or services” provided for in Article 4, Paragraph 1, Item 16 of the Trademark Act, the Court found, as with previous court cases (Nagano District Court Decision of June 26, 1989, Mutaishu, Vol.18, No.2, p.239 [Mizore-Amanatto Case] etc.), that whether the trademark falls under Article 4, paragraph 1, Item 16 of the Trademark Act should be determined based on the composition itself such as external appearance, pronunciation, and concept of the trademark, and that it is not sufficient for the trademark to imply the quality of goods, but it is required for the trademark to give rise to a certain concrete concept.
2. Regarding the summary of the Judgment 2, the Court applied the summary of the Judgment 1 to the trademark in question, and then found that the trademark in question does not fall under Article 4, Paragraph 1, item 16 of the Trademark Act because the quality of the specific goods is not directly represented by its composition.
【Keywords】Article 4, Paragraph 1, item 1 of the Trademark Act, a trademark which is likely to mislead as to the quality of goods, パールアパタイト (pearl apatite), 炭プラスラボ (Sumi-plus labo.), 御木本製薬 (Mikimoto Pharmaceutical)
※ 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