The Japanese Trademark Law sets forth:
– the use of a trademark similar to the registered trademark constitutes infringement of trademark right (Article 37(1)),
– trademark shall not be registered if the trademark is similar to another entity’s senior registered trademark (Article 4(1)(xi)).
It remains unclear from the articles how we can discriminate marks in dispute are similar or dissimilar.
Trademark examination guideline (TEG) plays a role to provide us with key factors in the assessment of similarity of marks.
[TEG Chapter 3, Part 10]
1.In judging the similarity of a trademark, decisive elements of the trademark, including its appearance, sound and concept need to be comprehensively taken into consideration.
2.A judgment on the similarity of a trademark needs to, with consideration given to a class of main users (for example, professionals, senior people, children, women, etc.) of goods or services on which the trademark is used, be made based on attentiveness usually possessed by the user, with consideration given to the state of transaction of the goods or the provision of the services.
The guidelines are set forth in conformity with precedent decisions of the Supreme Court.
In regard to composite marks, TEG enumerates seven cases and corresponding examples as follows.
6.Concerning the similarity of a composite trademark composed of two or more elements, a judgment needs to be made based on the following among other things, with consideration given to the strength of a combination between its elements. However, this does not apply where such a trademark is judged clearly to produce a remarkably different appearance, sound and concept.
(1) A composite trademark having characters representing an adjective (characters indicating the quality, raw materials, etc. of goods or characters indicating the quality of services, the location of its provision, quality, etc.) is judged as similar to a trademark without the adjective as a general rule.
“SUPER LION” v. “LION”,
“GINZA KOBAN” v. “KOBAN”,
“LADY GREEN” v. “LADY”
(2) A trademark composed of letters different in size is judged with respect to a group of letters identical in size as a general rule.
“富士白鳥” v. “富士” or “白鳥”
“サンムーン” v. “サン” or “ムーン”
(3) A trademark composed of letters conspicuously separate apart from each other is judged with respect to a group of letters separate from others as a general rule.
“鶴亀 万寿” v. “鶴亀” or “万寿”
(4) A trademark which, because of its long sound or its particularly conspicuous portion, may be simplified with a certain portion thereof is compared with other trademarks, in principle, with its portion picked up in its simplified form.
“cherryblossomboy” v. “cherryblossom”,
“chrysanthemumbluesky” v. “kurisanshimamu” or “blue-sky”
(5) A trademark combining letters customarily used for the designated goods or designated services with other letters is compared with other trademarks with the customarily-used letters removed.
“男山富士” v. “富士” for sake
“play guide shuttle” v. “shuttle” for arrangements for seats of entertainment facilities
(6) A trademark combining another person’s registered trademark that is widely recognized in respect of the designated goods or designated services with other letters or figures, including one whose appearance in totality is well formed or one having a connection in concept, is judged as similar to that another person’s trademark, in principle, excluding however cases where the part of another person’s trademark has become an established word.
“SONY” v. “SONYLINE” in respect of tape recorders
“L‘OREAL” v. “LOVE L‘OREAL” in respect of cosmetics
(7) A trademark composed of a trade name (including a trademark composed of an abbreviation of a trade name, as hereinafter applicable) having such characters as “Co.,” “K.K.” “Ltd.,” etc. customarily used as part of a trade name is judged with those characters removed as a general rule, irrespective of their position respective to the primary part of the trademark, either at its head or end.
In the meantime, the Supreme Court decision rendered in 2008 established general rule to grasp composite marks in its entirety in the assessment of similarity of mark.
“Where a mark in dispute is recognized as a composite mark consisting of two elements or more, it is not permissible to decide similarity of mark as a whole simply by picking out an element of the composite mark and then comparing such element with other mark, unless consumers or traders are likely to perceive the element as a dominant portion appealing its source of origin of goods/service, or remaining elements truly lack inherent ability to serve as a source indicator in view of sound and concept.”
Based on the above rule, composite mark “TSUTSUMINO-OHINAKKOYA” was deemed dissimilar to a word mark “TSUSTUMI” on the grounds that latter portion of “OHINAKKOYA” is admittedly distinctive.
Recent disputes arising from similarity of composite mark are entirely in conformity with the Supreme Court decision. Namely, a composite mark consisting of two or more distinctive elements will put you on the fast track to registration