When are 'similar' trademarks not similar after all?
On January 31, 2012, the IP High Court of Japan delivered a groundbreaking appellate decision concerning the registrability of a trademark in a lawsuit seeking to reverse a decision of an appeal trial board of the Japan Patent Office (JPO) rejecting a trademark application.
The appeal to the IP High Court against the JPO was conducted by our firm on behalf of a client, Shiraken Kamaboko Co Ltd.
Shiraken Kamaboko had filed with the JPO an application to register the mark ‘海葉’, which comprises two Chinese characters, designating kamaboko (boiled fish-paste). The JPO examiner decided to reject the trademark application on the grounds that the applied-for trademark is similar to the prior registered trademark ‘海陽’, which also comprises two Chinese characters, and the designated goods of the applied-for trademark are identical to those of the cited trademark.
We filed an appeal with the JPO trial board on behalf of the applicant to reverse the examiner’s rejection. However, the appeal trial board also rejected the application, on the ground that both trademarks are pronounced the same: ‘kai-yoh’.
Shiraken Kamaboko appealed to the IP High Court against the decision of the JPO appeal trial board, contending that ‘海葉’ and ‘海陽’ are not similar.
The JPO argued before the court that the marks are similar because they are pronounced the same, and that because neither ‘海葉’ nor ‘海陽’ is included in Japanese dictionaries, they do not generate different concepts.
However, the IP High Court accepted our argument on behalf of the appellant that the marks are different in that they present different concepts, because the two Chinese characters comprising each of the respective marks have different meanings due to the ideographic nature of Chinese characters; and that the differences in the appearance and concept between the two marks exceed the similarity in their pronunciation.
“THE COURT RULED THAT THE APPLIED-FOR TRADEMARK IS PRONOUNCED ONLY AS THE UNIFIED SOUND ‘TAN-TO-MAN-JUH’. IN THAT CASE, THEREFORE, THE IP HIGH COURT CONSIDERED THE DIFFERENCE IN PRONUNCIATION.”
The IP High Court had in the past ruled that the applied-for trademark ‘都饅頭’ as a whole and the already registered trademark ‘TANTO/タ ント’ are not similar, rejecting the JPO’s argument that the applied-for trademark and the prior registration have a similar pronunciation because of the shared sound ‘tan-to’.
The court ruled that the applied-for trademark is pronounced only as the unified sound ‘tan-to-man-juh’. In that case, therefore, the IP High Court considered the difference in pronunciation.
Moreover, the cases in which that court acknowledged differences in concepts between marks were cases where the trademarks were words included in Japanese dictionaries.
We believe that the court’s ruling in the Shiraken Kamaboko case will influence future decisions by JPO examiners, as well as by JPO appeal trial boards, regarding the similarity of two trademarks that are pronounced the same and are not words included in Japanese dictionaries.
This is particularly true where the differences in concept caused by the differences in the meanings of Chinese characters, combined with the differences in the appearance of the Chinese characters, outweigh the sameness of the pronunciation of the two trademarks.
Present application: 海葉 (standard characters)
Cited trademark:
