Supreme Court Decision on February 27, 1968
(1) Similarity of trademarks should be determined on the basis whether the trademarks to be compared are liable to cause misleading or confusion as to the origin of the goods, when those trademarks are used on the same or similar goods. For this purpose, one should totally consider impressions, memories, associations and the like given to dealers and consumers by the trademarks used on the goods through the appearance, meaning and sound of the trademarks, and should further consider the actual trading circumstances of the goods as much as they can be cleared up.
(2) With respect to the similarity in one of appearance, meaning, and sound between the trademarks to be compared, this is no more than the prima facie criteria to determine that the trademarks cause confusion as to the origin of the goods on which the trademarks are used. Rather, even if the trademarks are similar in one of the three aspects, the trademarks should not be regarded as similar marks if the trademarks are hardly found liable to cause misleading or confusion as to the origin of the goods on the basis of the fact that the trademarks remarkably differ in other two aspects, other actual trading circumstances of the goods, or the like..
(1) The Japan Patent Office, especially the Examination Division therein, used to determine that trademarks to be compared are similar to each other if they are similar in one of the three aspects, i.e., appearance, meaning, and sound thereof. Even before the Supreme Court decision, there appeared some decisions made by considering the actual trading circumstances in the Trial Division. In recent years, even the Examination Division has come to consider the actual trading circumstances compared to before.
The court decision is the first-ever Supreme Court one that held that the similarity in trademarks should be determined taking account of the actual trading circumstances.
We would like to advise you the following in accordance with Japanese Trademark Practice: if you, an applicant, needs to obtain Trademark Rights on your valuable trademarks in Japan, you should argue that the trademarks are not similar to other’s, showing the actual trading circumstances as much as possible.
(2) In recent years, more cases before the Trial in JPO and the High Court, have seemed found than ever before, where such arguments are accepted, in spite of the similarity in the sound, that both the appearance and meaning are significantly different between the relevant trademarks, and that the goods are not traded only via the sound of the trademark. Therefore, in such a case, it would be advantageous for you to appeal to the Trial or further to the High Court, even after your trademark application would be rejected by the Examiner.
(by H. Kakigi on June 7, 2007)