Evaluation criteria for similarity of trademarks in Japan Vol.4 | What is the case where “appearance” can be regarded as more important than “pronunciation”?



Kuma
Today, you will talk about a concrete example for the case where “appearance” can be regarded as more important than “pronunciation”, right?
Fumi
Yes.

If you forgot what we have been talking about until this post, I recommend you to go back to the below-indicated previous posts to remember our discussions.

Evaluation criteria for similarity of trademarks in Japan Vol.3 | Actual state of transactions of goods/services

2017.08.12

Evaluation criteria for similarity of trademarks in Japan Vol.2 | Criteria presented by "Hyozan Jirushi Case" (Judgement by Supreme Court in Japan on 27 February in 1968)

2017.08.09

Evaluation criteria for similarity of trademarks in Japan Vol.1 | Pronunciation is important

2017.08.06
Kuma
Don’t worry. I remember that.

Anyway, do you have any concrete examples to show me?

Fumi
Yes.

But, it is better that you think about what the case where “appearance” can be more important than “pronunciation” is by yourself.

That’s because today’s topic is not about what has a “correct” answer.

What do you think?

Kuma
I see.

I should think about an actual state of transaction where “appearance” of trademarks can be more important that can apply to “general” goods/services for which trademarks to be compared are used.

Fumi
Right!
Kuma
Umm…It’s difficult.
Fumi
For example, in what case can you say that consumers do not buy goods/services relying on only the pronunciation of trademarks used for them?

In other words, in what case can you say that consumers always buy goods/services after seeing the goods/services themselves, the photos thereof or the like?

Kuma
How about the goods “clothings”?

Consumers would like to buy this kind of goods after seeing the product itself, I guess.

That’s because the product’s design, size, materials and so on are very important for consumers to decide to buy it.

Then, it could be said that consumers always see the “appearance” of the trademarks attached to the clothing products, couldn’t it?

Fumi
Great. I agree to that.

Nowadays, such kind of the products is sometimes sold through the Internet or mail‐order catalogues.

But, consumers usually see the appearance of trademarks shown in websites or catalogues even in this case.

So, I think that your idea is reasonable.

Kuma
Good.

Then, can we always regard “appearance” as more important than “pronunciation” in clothing products cases?

Fumi
I can’t say that.

But, there are acctually the cases where “appearance” of trademarks was regarded as more important to determine similarity of trademarks to be used for clothing products.

Similarity of trademarks should finally be determined by considering each similarity of “appearance”, “pronunciation” and “meaning” thereof and actual states of transactions for the goods/services for which the trademarks used “as a whole”.

Accordingly, we need to consider case by case whether the trademarks to be compared should be regarded as similar to each other, including which element of the trademarks should be regarded as more important, “appearance”, “pronunciation” and “meaning”.

Kuma
I got it.
Fumi
Today’s topic is not about what can be generalized.

However, I’m pleased if our discussions could be helpful to you.







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