The IP High Court ruled a trademark “TOMATO SYSTEM” is deemed similar to “TOMATO” in connection with the service of computer programming

On March 23, 2017, in a lawsuit disputing registrability of an applied word mark “TOMATO SYSTEM” in standard character designating goods of electronic machines, apparatus and parts thereof (Class 9), and services of computer software design, computer programing, or maintenance of computer software; technological advice relating to computers, automobiles and industrial machines; testing or research on machines, apparatus and instruments; providing computer programs on data networks (Class 42), the IP High Court upheld the original refusal decision rendered by the JPO Appeal Board and dismissed the lawsuit filed by applicant, Ishiguro Medical System Co., Ltd. [Case No. Heisei 28 (Gyo-Ke) 10208].



JPO decision

Initially, JPO examiner rejected to register the applied mark “TOMATO SYSTEM” due to conflict with senior registration no. 4394923 for word mark “TOMATO” in standard character designating services of technological advice relating to computers; computer software design in Class 42 (Citation 1) and no. 5238348 for “tomato” with a device mark designating retail/wholesale services for electrical machinery and apparatus in Class 35 (Citation 2). Applicant sought to file an appeal against the rejection by arguing dissimilarity of both marks, however, the Appeal Board decided to refuse the applied mark on the basis of Article 4 (1) (xi) of the Trademark Law in a decision dated July 28, 2016 [Appeal Case No. 2016-2278].

In the decision, the Board concluded “TOMATO”, an English term meaning red edible fruit, does not imply any descriptive meaning in association with the designated goods and services. In the meantime, a term “SYSTEM” easily reminds consumers of meanings to suggest organized, purposeful structure that consists of interrelated and interdependent elements when used on machines, apparatus and computer software. Unless we find conceptual connection between two terms, it is allowed to segregate the applied mark into each element in the assessment of mark comparison. If so, relevant consumers at an ordinary care are likely to consider the term “TOMATO” as a predominant portion of the applied mark. Based on the foregoing, the Board judged the applied mark is deemed similar to Citation 1 and 2.

IP High Court 

In the lawsuit, plaintiff claimed the Board decision was defectively inappropriate since it is not allowed to segregate each term composing the applied mark in light of tight combination of both terms and ambiguous meaning of the term “SYSTEM” in relating to designated goods and services.

The Court upheld the Board decision by declaring “SYSTEM” is less distinctive in connection with goods or services relating to information processing. Therefore, it is permissible to segregate the applied mark into each element and to judge similarity of mark based on a predominant element of the mark in dispute.

MASAKI MIKAMI, Attorney at IP Law – Founder of MARKS IP LAW FIRM



“ROYAL PRESTIGE NEO” is decided similar to “ROYAL PRESTIGE” (JPO Appeal No. 2015-5083)

The Appeal Board of the JPO decided a word mark “POYAL PRESTIGE NEO” covering the goods of “Schoolchildren’s backpacks” in class 18 is confusingly similar to senior registrations for mark consisting of, or containing the term “ROYAL PRESTIGE” in the same class.


JPO examiner refused to register an applied mark “ROYAL PRESTIGE NEO” by citing senior registrations for the mark “ROYAL PRESTIGE”.


Applicant filed an appeal against examiner’s decision and argued that

“In evaluating similarity of mark, the term “PRESTIGE NEO”, having a meaning of “new fame”, in configuration of the applied mark should be considered predominant since the word “ROYAL” is used to suggest quality with the highest grade in the Schoolchildren’s backpacks industry.”


However, the Board rejected such arguments on the grounds that:

“in consideration of configuration and meaning of respective word constituting the applied mark, “ROYAL PRESTIGE” is easily recognized as an implication of “fame of king. Meanwhile, it is difficult to consider that “NEO” (new) at the end modifies “ROYAL” and “PRESTIGE” immediately, and thus three words are hardly recognized as an implication of ” new king’s(fame)” and “new fame (king’s)”

“NEO (new) is a word which generally indicates the quality of goods, and it is assumed that “NEO” does not have the function for distinguishing relevant products from others, namely a weak term as source indicator. In the industry for dealing with Schoolchildren’s backpacks, bags, and the like, the word “NEO” coming after product name or series trade name is commonly used to indicate a goods is different from traditional ones or the latest product. As a consequence, where the applied mark is used on the designated goods, traders and consumers at the sight of applied mark are likely to perceive the portion of “ROYAL PRESTIGE” having a meaning of “fame of king” as a source indicator, and remaining term of “NEO” as a mere indication of quality of the goods in dispute. Even though a term “ROYAL” is occasionally used to suggest quality of goods, it is not applicable to the subject case by taking into consideration of a whole configuration of the applied mark.”

 Applicant counterargued by referring to coexisting registrations in order to bolster and demonstrate dissimilarity of mark admitted by JPO previously notwithstanding a mere difference of term “NEO”.

 The Board dismissed the allegation on following grounds as well.

“similarity of mark should be specifically and individually determined by considering configuration and aspect of respective mark, actual state of transaction of goods, and by comparing both marks in dispute at a time of decision or appeal decision. It is not mandatory to be bound by precedent decisions or coexisting registrations in the past”


The JPO Appeal Board ruled that

a senior trademark registration for the mark “ANNIVERSARY” in standard character designating jewelry in class 14 is unlikely to cause confusion with a junior mark “ANNIVERSARY DIAMOND” written in plain letters other than a letter “O” which was replaced with a diamond-ring device (see below), even if the mark is used on diamond rings in class 14[Fufuku2015-19812].


The Appeal Board cancelled a refusal decision rendered by the JPO examiner on the grounds that:
(1) From appearance and pronunciation, the “ANNIVERSARY DIAMOND” logo can be perceived as one mark in its entirety. Besides, both terms of “ANNIVERSARY” and “DIAMOND” are quite familiar with relevant public in Japan and thus concept of “ANNIVERSARY DIAMOND” can be easily conceived from the combination.
(2) Due to the configuration, it must be appropriate to consider that the logo just gives rise to its pronunciation and meaning as a whole.
(3) Therefore, the refusal decision based on the assumption that the term of “ANNIVERSARY” plays a dominant role in the logo made a factual mistake and should be cancelled consequently.

Seemingly, above conclusion is not coincident with the Trademark Examination Guidelines (TEG) criteria as below.

Chapter III, Part 10 of TEG provides that:
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.

In this respect, as long as the junior mark designates diamond rings in class 14 and the device depicted on the term “DIAMOND” further impresses the concept of diamond rings in mind of consumers, the portion of “DIAMOND” should be considered descriptive. Otherwise, any combined mark composed of registered mark and a generic term pertinent to the designated goods is deemed dissimilar to the registered mark.

I suppose the Board just aimed to declare narrower scope of right where trademark consists of a dictionary word commonly used to the public.

How to decide similarity of composite marks

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.





(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