On November 11, 2024, the Japan IP High Court overturned the JPO decision that found “Medical Apparatus and Instrument” in Class 10 dissimilar to “Rental of Medical Apparatus and Instrument” in Class 44.
[Court case no. Reiwa6(Gyo-ke)10028]
Disputes
G-Wave Co., Ltd. has obtained trademark registration for word mark “AWG治療” (it means AWG treatment) over “medical apparatus and instrument” in Class 10 since Jan 17, 2020 (TM Reg no. 6217436).
Subsequently, a third party filed a trademark application for the same mark in connection with “rental of medical apparatus and instrument” and other services of Class 44 on October 21, 2019.
According to the Trademark Examination Guidelines for Similar Goods and Services, the similar group code of “medical apparatus and instrument” is 10D01. In the meantime, “rental of medical apparatus and instrument” has 42X09.
Under the JPO practice, it has been considered that the goods or services which have the same similar group codes are presumed to be similar to each other in principle even in different classes. In other words, as long as the code is different, the goods and services are presumed to be dissimilar even if they belong to the same class.
Based on the established practice, the JPO granted registration of the junior mark (TM Reg no. 6320554) on November 25, 2020, without questioning a conflict with the earlier mark.
On June 30, 2023, G-Wave CO., Ltd. filed a partial invalidation action against the junior mark with the JPO due to similarity between “rental of medical apparatus and instrument” of Class 44 and “medical apparatus and instrument” of Class 10 in contravention of Article 4(1)(xi) of the Japan Trademark Law.
JPO decision
On February 8, 2024, not surprisingly, the JPO Invalidation Board decided to dismiss the entire allegations by stating that the business entities involved in manufacturing and selling of the goods and those providing the service are fundamentally different. Moreover, the intended use and purpose, the place where the goods are sold is not the same as the place where the service is provided. Therefore, even if they may coincide in some of consumers, taking into account the general and constant practice in the course of trade, the Board has reason to believe that the goods and services in question are dissimilar [Invalidation case no. 2023-890053].
G-Wave Co., Ltd. filed an appeal with the IP High Court on March 19, 2024, seeking invalidation of the junior mark in connection with “rental of medical apparatus and instrument” in Class 44.
IP High Court ruling
In determining the similarity of goods and services, the court considered factors such as related business entities, purpose, distribution channel, and consumers.
- Relatedness of business entities
- The judges paid great attention to the fact that 68.8% of the companies that are members of the Japan Medical Industry Association (JMIA) and are licensed to manufacture, sell or rent medical equipment have both licenses. This means that about two-thirds of the companies that manufacture or sell medical equipment can engage in the rental business as well.
- Purpose
- The rental of medical equipment aims to provide the goods for medical purposes. If so, the purpose of the service will be common to the use of medical equipment.
- Distribution channel
- The sale and rental of medical equipment both take place at the company’s place of business or on its internet website. Therefore, it is reasonable to assume that the distribution channel of the goods and services in question is in many cases the same.
- Consumers
- Respective consumers are substantially overlapping since both include medical institutions and general consumers.
In light of the foregoing, the court found that relevant traders and consumers are likely to confuse a source of the service “rental of medical equipment” using the mark “AWG治療” with the goods “medical equipment” bearing the same mark. Accordingly, the JPO errored in evaluating similarity between “medical apparatus and instrument” in Class 10 and “rental of medical apparatus and instrument” in Class 44, and decided to cancel the decision.
Masaki MIKAMI, Attorney at IP LAW – Founder of MARKS IP LAW FIRM