How Far is Trademark Similarity Permissible? Explaining the Criteria for Similarity and Cases of Trademark Infringement

What should one do if they discover products being sold with logos or names strikingly similar to their own company’s products? Furthermore, when developing a new product, how should one proceed if they encounter a competitor’s product with a similar name? These issues extend beyond mere corporate competition and may constitute significant legal problems as ‘trademark infringement’ under Japanese law.

In this article, we will explain the concept of ‘similarity,’ which is crucial not only at the time of trademark registration but also when exercising trademark rights, using case law and specific examples to illustrate our points.

What Is a Trademark Right?

A trademark right is the legal protection granted for an “identifier” that distinguishes goods or services from those of other businesses. This identifier can include letters, designs, symbols, colors, sounds, and even three-dimensional shapes. By holding a trademark right, you have the legal power to prevent others from using the same or similar trademarks without authorization.

Trademark rights have the following features:

Exclusive Rights

The holder of a trademark right has the exclusive right to use the registered trademark. At the same time, they also have the right to exclude others from using it without permission, preventing competitors from causing market confusion by using a similar trademark.

Protection of Brand Value

Trademarks symbolize the brand image of a company or product. Holding a trademark right reduces the risk of the brand value being compromised by imitation or unauthorized use.

For example, when a famous brand’s logo or mark is protected as a trademark, consumers can more easily distinguish between genuine and counterfeit products.

The Significance of Trademark Rights

Trademark rights not only protect the interests of a company but also provide consumers with the information they need to make informed purchasing decisions. These rights enable consumers to confidently assess the quality and origin of a product by its trademark.

Furthermore, trademark rights can be obtained not only domestically but also internationally, protecting business expansion in the global market. In recent years, cross-border trademark infringement has become a concern, and proper protection of trademark rights is increasingly demanded.

Trademark rights are established only through registration with the Japan Patent Office. If one wishes to assert trademark rights overseas, it is necessary to register the trademark in the country where one claims infringement. Unregistered trademarks do not receive legal protection, necessitating trademark registration for companies with a brand strategy.

Related article: What Are Intellectual Property Infringement Risks and Their Countermeasures?

What Constitutes Similarity in Trademarks?

The issue of trademark similarity concerns whether trademarks are “similar” to each other.

One landmark case in which the Supreme Court of Japan provided a judgment on trademark similarity is the Hyozan-jirushi Case (Supreme Court, Showa 39 (1964) No. 110, February 27, Showa 43 (1968), Volume 22, Issue 2, Page 399).

The case established the following in regards to the determination of the similarity of trademarks:

“The assessment of trademark similarity should be based on an overall consideration of the impression, memory, and association that the trademark conveys to traders through its appearance, concept, and pronunciation, and it is appropriate to make such a judgment based on the actual conditions of the transactions of the goods in question.”

In other words, the similarity of trademarks should not be evaluated based on isolated elements but should be comprehensively assessed considering the specific trading environment and the perspective of consumers.

Next, this article will explain the specific factors involved in this assessment.

Factors in Assessing Trademark Similarity Under Japanese Law

The determination of trademark similarity in Japan is based on whether “the trademark in question is likely to cause confusion or misidentification regarding the source of goods or services.” In making this assessment, the following three elements are key:

Similarity in Appearance

Similarity in appearance refers to situations where the exterior design or appearance of a trademark is similar, meaning it is visually alike. This is generally judged based on the overall shape of the trademark.

However, there are times when this judgment is made by extracting the essential parts of the trademark.

Most trademarks judged to be similar in appearance are composed of figurative elements, but occasionally, even word trademarks can be considered visually similar.

Specifically, the comparison involves how much the trademarks look alike, including the design of logos, the shape of personalitys, and the combination of colors.

Similarity in Pronunciation

Similarity in trademark pronunciation refers to the similarity of auditory perception of figures, signs or symbols that constitute a trademark. This is judged based on the pronounciation of the trademark’s overall composition, although occasionally the judgment is based on the pronunciation of a specific part of the trademark.

Word trademarks are typically judged based on pronunciation, but there are also cases where figure trademarks are considered similar based on their pronunciations.

When a trademark is pronounced, the key point is how much the sounds resemble each other.

Similarity in Concept

Similarity in concept refers to the similarity of the meaning or content conveyed by the figures, signs or symbols that make up a trademark. As a general rule, trademarks are considered conceptually similar if they convey identical meanings.

The key point here is the extent to which the meanings or images associated by the trademarks are shared. For instance, even if expressed in different languages, “青い空 (Translation: blue sky)” and ”blue sky” can be considered conceptually similar because they represent the same concept.

Related article: Key Points of the Trademark and Design Law Amendments Enforced in April of Reiwa 6 (2024): Essential Changes You Need to Know

Key Points in Determining Similarity

The assessment of similarity is based on the perspective of the demand side, that is, the purchasers of goods or users of services, and whether they perceive things as “similar.” In addition to the three aforementioned factors, the following factors must be considered.

Category of Good or Service

If the good or service where the trademark is used are identical or similar, the likelihood of recognizing similarity increases. For example, if similar trademarks are used under the same food category, there is a higher chance of consumer confusion, which often leads to the recognition of infringement.

Context of Transaction

The context in which the trademark is used and the actual transactions are taken into account in assessing similarity. The stringency of the assessment criteria may vary depending on the form of the transaction, such as whether consumers pay particular attention to product names or brand names when making a purchase decision.

Assessment Standards of the Japan Patent Office

Under Article 4(1)(xi) of the Japanese Trademark Act, the Japan Patent Office establishes the following criteria for assessing the similarity of trademark rights:

• A trademark may be deemed similar if it resembles another in appearance, pronunciation, or concept.
• However, if any of these three elements are significantly different, or if the actual circumstances of trade suggest that there is no likelihood of confusion, the trademarks may be considered dissimilar.

Furthermore, the Japan Patent Office also considers the similarity to unregistered trademarks based on Article 4(1)(x) of the Trademark Act.

“If a trademark is similar to an unregistered trademark that is widely recognized among consumers, it may be deemed similar even if the appearance or pronunciation differs, provided that there is a conceptual connection.”

In practice, trademarks are often judged to be similar if their pronunciations are alike, but if there are significant differences in appearance or concept, they may be considered dissimilar.

Reference: Japan Patent Office “Trademark Examination Standards”

Case Law Where Trademark Similarity Was Recognized

So far, this article has explained the elements used to determine similarity. But in what kind of situation is similarity actually recognized? Here, we will introduce several Japanese case law where trademark similarity was recognized.

Case 1: Similarity of Product Names

In the Kouju Drink case (Intellectual Property High Court, April 14, 2009 (Heisei 21), Heisei 20 (Gyo-Ke) No. 10150), the issue at stake related to whether the plaintiff’s trademark “Kouju Drink (皇寿)” and the defendant’s trademark “Kouju (黄寿)” were similar in pronunciation or concept. Although the two trademarks used different kanji characters, their pronunciations were extremely similar, and both were sold as health drinks.

The Court determined that there was a strong likelihood of consumers confusing the pronunciation and meaning of the trademarks at the time of purchase. Specifically, both “皇寿” and “黄寿” are pronounced “kouju,” and both are associated with the concept of health and longevity, leading to the recognition of similarity in relation to both pronunciation and concept.

Case 2: Similarity of Brand Names

In the Laurel case (Tokyo High Court, September 4, 1974 (Showa 49) decision, Showa 48 (Gyo-Ke) No. 51), the issue at stake was whether the plaintiff’s trademark “Laurel” and the defendant’s “Lorrel” would cause confusion among consumers. In this case, their conceptual similarity was particularly contested.

The Tokyo High Court pointed out that both “Laurel” and “Lorrel” evoke the image of a laurel tree. Additionally, it was determined that there was similarity in appearance and pronunciation, ultimately leading to the similarity of the trademarks.

Case 3: Similarity of Shapes in Product Logos

In the SurLuster Car Wax Shape case (Tokyo High Court decision, March 7, 2000 (Heisei 12), Heisei 10 (Gyo-Ke) No. 210), the issue at concern was whether the shape trademark used on the packaging of the plaintiff’s car wax product and a visually similar trademark used by the defendant were deemed similar. In this case, the visual selection of the product by the consumers was a crucial consideration in the decision.

The court noted that the appearance of the trademarks were similar and the visual elements had a significant impact on consumer choice, leading to a high possibilty of confusion about the origin of the goods, hence recognizing similarity in appearance.

Case 4: Case Where the Reversal of Characters still constituted Conceptual Similarity

In the Fugu no ko case (June 12, 1986, Patent Office decision cancellation lawsuit, Showa 60 (Gyo-Ke) No. 7), the issue at stake was whether the trademarks “Fugu no Ko” and “Ko Fugu” were similar in concept and pronunciation. This case focused on the recognition of the products as regional specialties and the association of the trademarks.

The court acknowledged that, while the appearance differed, both trademarks were associated with “fugu” (pufferfish) products, sharing a common concept. Additionally, the pronunciation of both were similar, leading to the recognition of similarity in both concept and pronunciation.

Examples Of Possible Trademark Similarity

Next, we will present specific cases where trademarks are likely to be judged as similar.

Abbreviations

• Example: Between “モノリス” and “Mリス”.
• Judgment: Due to the similarity in pronunciation and concept, there is a high possibility that conceptual similarity will be recognized.

Difference Between Katakana and Alphabet

• Example: If the trademark “モノリス” was registered in Katakana, and the other party used “Monolith”.
• Judgment: Pronunciation and conceptual similarities would be acknowledged in such cases.

Difference Between Text and Logo

• Example: If the trademark “モノリス” was registered in text, and the other party used a logo with the design of “モノリス”.
• Judgment: There is a possibility that visual similarity will be established.

When Only One Character Is Different

• Example: If “モノリス” was registered as a trademark, and the other party used “ホノリス” or “モノリズ”.
• Judgment: Even if the pronunciation is not exactly the same, if there is only a one-sound difference, especially if it’s a sound that can easily be overlooked, such as at the end of the word or within a longer pronunciation, there is a possibility that it will be considered similar in pronunciation.

When Meaningless Words Are Included

• Example: If “モノリス” was registered as a trademark, and the other party used “モノリスA” or “モノリス legal article”.
• Judgment: Even if the overall trademark is different, if the “different part” lacks distinctive characteristics, that part may be ignored when judging similarity. The presence of distinctiveness is determined in relation to the goods or services (designated goods or services) with which the trademark is used. Therefore, in this case, “legal article” or “A” lacks distinctiveness, so the comparison in practice becomes between “モノリス” and “モノリス”, and similarity is likely to be recognized.

While the above are just examples, the general public perception and actual legal judgments of trademark similarity differ. Therefore, assuming that “this much difference would not constitute similarity” could lead to inadvertent trademark infringement, so caution is necessary.

Related article: Learn About the Criteria and Penalties for Trademark Infringement Through Examples (Imprisonment & Fines)

Measures Companies Should Take to Avoid Disputes

When suspicions of trademark infringement or legal concerns on trademarks arise, companies are advised to take the following actions swiftly:

1. Consultation with experts: Seek advice from attorneys knowledgeable in intellectual property.
2. Evidence collection: Document the actual use of the trademark suspected of infringement.
3. Early registration and monitoring: Aim for early detection of issues by registering trademarks early and continuously monitoring the market.

Furthermore, when there is a suspected similarity with a competitor’s trademark, it is also crucial to initiate negotiations early to avoid the prolongation of litigation procedures.

Conclusion: Consult an Attorney for Trademark Infringement Issues

The criteria for determining trademark similarity are primarily based on three elements: appearance, pronunciation, and concept, which depend on the circumstances of the trade and the impression it leaves on consumers. It is crucial for companies to consider past court rulings and the standards set by the Japanese Patent Office to take appropriate measures. Please use this article as a reference to consider trademark registration and strategies to mitigate the risk of trademark infringement.

While trademark rights can be a powerful asset for a company, infringement can pose significant risk. If there is a possibility that your company has infringed upon a trademark or that another company has infringed upon yours, it is strongly advised to consult with an experienced attorney as soon as possible.

Guidance on Measures by Our Firm

Monolith Law Office is a law firm with high expertise in both IT, particularly the internet, and legal matters. In recent years, intellectual property rights such as design rights and trademarks have been garnering attention. Our firm provides solutions related to intellectual property rights. Please refer to the article below for more details.

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