JUrISdIctIOn repOrt: JApAn
crIterIA reGArdInG
SImILArItY OF trAdemArKS
ryo maruyama
Kyosei International Patent Office
Three factors determine whether trademarks are identical or similar:
“tO determIne WHetHer trAdemArKS
(1) appearance—how a trademark is ‘seen’; (2) pronunciation—how a
trademark is ‘read’ or ‘enunciated’; and (3) concept—what ‘meaning’ is
Are SImILAr, tHe ImpreSSIOnS, memOrIeS,
derived from seeing the trademark. These basic criteria were confirmed in And ASSOcIAtIOnS tHAt tHe AppeArAnce,
Japan by a Supreme Court decision on February 24, 1951. The court stated:
cOncept, prOnUncIAtIOn, And tHe LIKe
“In order to judge whether trademarks are identical or similar, the OF tHe cOmpAred trAdemArKS preSent…
trademarks should be compared in terms of three factors: ‘appearance’;
SHOULd be cOnSIdered tOGetHer.”
‘pronunciation’; and ‘concept.’ If the compared trademarks are identical
or similar in terms of any of these aspects, the compared trademarks are
deemed to be identical or similar.”
However, the criteria regarding similarity have changed as time has
passed. Recently, many applied-for trademarks that are similar in
pronunciation to one or more registered trademarks have been registered
based on the actual transactions involving the goods or services bearing
the applied-for trademark(s). A decision of the Third Petty Bench of the
Japanese Supreme Court on February 27, 1968, on which the current
to compare them in terms of concept, and they differ greatly in terms of
criteria are based, stated:
appearance due to the difference in the elements they consist of and…in
the impressions and memories that they provide if…considered in terms
“To determine whether trademarks are similar, the impressions, memories,
of appearance, pronunciation, and concept as a whole. Therefore, if the…
and associations that the appearance, concept, pronunciation, and the
trademarks are used on similar or identical goods but in different places of
like of the compared trademarks present…should be considered together,
dealings or at different times, there is little possibility of people being misled
and as long as the actual transactions involving goods/services on which
or confused regarding the source of goods. Accordingly, the applied-for
the trademarks are used are clear, the similarity of trademarks should be
trademark is not too similar to the cited trademark.”
judged based on such actual state of transactions…Also,…appearance,
pronunciation, and concept are just prima facie criteria as to whether a
As a result, the trademark Johan was registered.
person might be misled or confused regarding the source of goods on
which a trademark is used; therefore, if an applied-for trademark is similar
Readers may have received search reports from Japan saying that a
to a registered trademark in terms of any of the above criteria, but differs
trademark likely would not be registered because its pronunciation is
significantly in regard to the other two criteria and is regarded as not
identical or similar to a registered trademark, even though the trademarks
causing people to be misled or confused regarding the source of the goods,
are completely different in appearance. However, to deny registration on
the applied-for trademark should not be judged as identical or similar to
the ground that pronunciation is identical or similar is based on the old
the registered trademark.”
criteria in the Supreme Court’s 1951 decision, which is no longer followed.
Below is a summary of a decision by an Appeal Board on January 30, 2009,
If you clearly describe the actual transactions involving the goods or
regarding an appeal to reverse a decision by the Japan Patent Office rejecting
services on which the trademarks are used, and how your trademark and
a trademark application. The two trademarks in question—the trademark
a registered trademark differ in concept and appearance, your trademark
‘Johan’ and cited trademark no. 1098452—are pronounced the same, as
might be registrable even if its pronunciation is identical or similar to that
‘Jo-An’. However, their concepts differ greatly: the applied-for trademark is
of a registered trademark. Don’t abandon hope even if the pronunciation of
famous as the name of a bakery; the cited trademark is famous as the name
your trademark is identical to a registered trademark.
of a teahouse. The court said:
“The applied-for trademark and the cited trademark, which in common are
pronounced ‘JO-AN’ are similar in terms of pronunciation, but because… Ryo Maruyama is a patent attorney and vice president of Kyosei International
[they] are not associated with the same specific concepts, there is no way Patent Office. He can be contacted at: kyosei@tkc.att.ne.jp
64 World Intellectual property review September/October 2009 www.worldipreview.com
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