In the previous post, we talked about the basics of determining similarity of trademarks in Japan.
It is determined by taking each similarity of appearance, pronunciation and meaning of trademarks into account.
And, similarity of “pronunciation” is very important in principle.
And, similarity of “pronunciation” is very important in principle.
Right.
But, I think that there are some cases where “appearance” should be more important than “pronunciation”.
Important criteria presented by the supreme court in Japan
Definitely there are.
Before discussing what they are, I would like to share with you very important criteria shown in the supreme court case in Japan called “Hyozan Jirushi Case”.
In this case, the court presented the criteria to determine similarity of trademarks that is still a standard even now.
That is:
- Similarity of trademarks to be compared should be determined by whether there is a likelihood of confusion as to origin of goods if the trademarks are used for identical/similar goods.
- To determine whether there is the likelihood, the followings should be taken into account as a whole:
- Impressions, memories, associations and the like arising to consumers by appearance, meaning, pronunciation and the like of the trademarks
- Actual state of transactions of the goods for which the trademarks are used
- Each similarity of apprearance, meaning and pronunciation of trademarks is just one of the elements to presume a likelihood of confusion as to origin of the goods. Therefore, the trademarks should be interpreted as dissimilar to each other in case that there is no likelihood of confusion because of the followings:
- Fact that only one of the three elements is similar but the others are remarkably different
- Actual state of transactions of the goods for which the trademarks are used
Trademarks are not always interpreted as similar even if the pronunciations thereof are similar
Then, we could regard “appearance” as more important than “pronunciation” in some cases.
I’m sure that trademarks are not always interpreted as similar even if the pronunciations thereof are similar.
However, similarity of pronunciation is enough to presume a likelihood of confusion in most cases.
So, to regard “appearance” as more important than “pronunciation”, any reasonable grounds to allow us to do so are needed.
Reasonable grounds…it’s likely to be difficult to find that.
What is a concrete example for that?
OK.
Let’s talk about that in the next!
Let’s talk about that in the next!
