＜The Subject Trademark＞
＜The Cited Trademark＞
January 19, 2023
Intellectual Property High Court Decision of October 6, 2021 (Case No. 2021 [Gyo-ke] 10036―Presiding Judge Tamotsu SHOUJI)
◆Main text of the case
1．Regarding the criteria of Article 4, para.1, item 11 of the Trademark Act
The similarity of trademarks should be determined based on “likelihood of confusion” as to the source of the goods or services when the trademark is used for the same or similar goods or services. The impressions, memories, associations, etc. arising from the compared marks from visual, conceptual or phonetic perspectives should be comprehensively considered.
In addition, even if the compared trademarks are similar in any one of visual, conceptual or phonetic perspectives, they should not be considered similar as long as they are significantly different in the other two perspectives or they are unlikely to cause confusion as to the source of the goods or services due to the actual circumstances of the transaction.
2．Regarding whether or not the trademark in question corresponds to Article 4, para.1, item 11 of the Trademark Act
The subject trademark is a combination of “SWEETS in Katakana” and “PARTY in Katakana” written in two columns, and the cited trademark is a combination of “SWEET PARTY in Katakana” and “SWEET PARTY” written in two columns, which are clearly different from the visual perspective. In addition, given that “sweets” and “sweet” are conceived of as different words and are actually used distinctively, the subject trademark is clearly distinguishable from the Katakana part “SWEET PARTY in Katakana” of the cited trademark from the visual perspective.
According to a Japanese dictionary, the word “sweets” means “sweet things, cake, confectionery, etc.”, and the word “sweet” means “(1) to be sweet, sweet-tasting (2) to be mellifluous, or pleasant”. Therefore, these words are generally recognized as different words, and both words are actually used differently based on search results on the Internet. There are also examples where the word “sweet” is used in the confectionery industry to mean “mellifluous, lovely, and pleasant” in addition to ” sweet-tasting”. Thus, from the subject trademark, the conception of a party where sweets (sweet things, cakes, confections, etc.) are served and eaten will arise, while from the cited trademark, the conception of a “sweet, pleasant, lovely, and fun party” will arise.
The subject trademark and the cited trademark are similar in terms of pronunciation. However, the degree of similarity should not be high, taking into consideration that the end of the word is pronounced relatively weakly and can be heard distinctively, and that “sweets” and “sweet” can be distinguished as different words by recognizing the difference in the conception expressed by each word.
(4) Judgment of similarity
As described above, although the subject trademark and the cited trademark are similar in terms of pronunciation, the degree of similarity is not high. When the impressions, memories, associations, etc. arising from the compared marks from visual, conceptual or phonetic perspectives are comprehensively considered, there is no likelihood of confusion as to the source of the goods when the marks are used on identical or similar goods.
１．Regarding the summary of the Judgment 1, based on the Supreme Court decision of February 27, 1968 [Hyozanjirushi case], which requires the confusion on source of goods and services to be the standard for judging whether the compared trademarks are similar or dissimilar, it was judged that the appearance, concept, pronunciation, etc. of the trademark should be considered comprehensively based on the actual circumstances of transactions pertaining to the goods or services. Particularly, the court judged that compared trademarks should not be considered similar to each other in a case where there is no likelihood of confusion as to the source of the goods or services taking into account that the marks are similar in any one of visual, conceptual or phonetic perspectives but significantly different in two other perspectives.
２．Regarding the summary of the Judgment 2, since the subject trademark and the cited trademark are clearly distinguishable in terms of appearance, and there is a clear difference in conception, the court judged that the degree of similarity of these trademarks is not high and concluded that when the appearance, conception, and pronunciation of the trademarks are considered comprehensively, and there is no likelihood of confusion as to the origin of the goods.
【Keywords】Article 4(1)(xi) of the Trademark Act，similarity of marks，Sweets Party, Sweet Party, SWEET PARTY
※The contents of this article are intended to convey general information only and not to provide any legal advice.
Megumi SHINOMORI (Writer)
Patent Attorney（Japan Patent Attorneys Association）
Kei IIDA (Supervisor)
Attorney at Law & Patent Attorney (Daini Tokyo Bar Association)
Contact information for inquiries: k_iida☆nakapat.gr.jp （☆を＠に読み換えてください。）