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

What should you do if you discover products being sold with logos or names strikingly similar to your own company’s products? Furthermore, when developing a new product, how should you proceed if you 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 personalityistics:

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. It is thanks to these rights that consumers can 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 Patent Office. If you wish to assert trademark rights overseas, it is necessary to register the trademark in the country where you are claiming infringement. Unregistered trademarks do not receive legal protection, making trademark registration essential 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 Iceberg Mark Case (Supreme Court, Showa 39 (1964) No. 110, February 27, Showa 43 (1968), Volume 22, Issue 2, Page 399).

The following principles have been established for determining the similarity of trademarks:

The judgment 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, we will explain the specific factors involved in this assessment.

Fundamental Factors for 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 the situation where the visual form of a trademark is similar, meaning it is visually confusing. The similarity or dissimilarity in appearance is generally judged based on the overall shape of the trademark.

However, there are times when the judgment of similarity in appearance is made by extracting the essential parts that constitute the important essence of the trademark’s shape.

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 Trademark Pronunciation

Similarity in trademark pronunciation refers to the confusion that may arise from the auditory perception of the personalitys, figures, or symbols that constitute a trademark. The similarity in pronunciation is judged based on the overall reading of the trademark’s composition, although sometimes the judgment is based on the pronunciation of a significant part of the trademark.

Often, word trademarks are judged to have similar pronunciation, but there are also cases where figure trademarks are considered similar based on the pronunciation of the figure.

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

Conceptual Similarity Under Japanese Trademark Law

Conceptual similarity refers to the confusion that may arise from the meaning or content conveyed by the personalitys, figures, or symbols that make up a trademark. As a general rule, trademarks are considered conceptually similar if they convey identical meanings or content.

The key point here is the extent to which the meanings or images evoked by the trademarks are shared. For instance, even if expressed in different languages, terms like “blue sky” and “ブルースカイ” (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, meaning the purchasers of goods or users of services, and whether they perceive things as “similar.” In addition to the three elements mentioned above, the following factors must be considered.

Category of Goods or Services

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

The Reality of Transactions

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

Examination Standards of the Japan Patent Office

Under Japanese trademark law, specifically Article 4, Paragraph 1, Item 11, the Japan Patent Office has established 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 it is determined based on the actual circumstances of trade 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, Paragraph 1, Item 10 of the Trademark Law.

“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 there is a conceptual connection.”

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

Reference: Japan Patent Office “Trademark Examination Standards”

Case Examples Where Trademark Similarity Was Recognized in Japan

So far, we have explained the elements used to determine similarity. But when is similarity actually recognized? Here, we will introduce several Japanese court cases where trademark similarity was acknowledged.

Case 1: A Case Where Product Names Were Deemed Similar

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

The Intellectual Property High Court determined that there was a high likelihood of consumers confusing the pronunciation and meaning of the trademarks at the time of purchase. Specifically, both “Koushu” and “Kouju” are pronounced “kouju,” and both evoke the concept of “health” and “longevity,” leading to the recognition of similarity in both pronunciation and concept.

Case 2: A Case Where Brand Names Were Considered Similar

In the “Laurel” case (Tokyo High Court, September 4, 1974 (Showa 49) decision, Showa 48 (Gyo-Ke) No. 51), the issue was whether the plaintiff’s trademark “Laurel” and the defendant’s “Lorrel” would cause confusion among consumers. In this case, the similarity in concept 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 recognizing the similarity of the trademarks.

Case 3: A Case Where the Shapes of Product Logos Were Found to Be Similar

In the “SurLuster Car Wax Shape” case (Tokyo High Court decision, March 7, 2000 (Heisei 12), Heisei 10 (Gyo-Ke) No. 210), the issue 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 similar. In this case, the visual selection of the product by consumers was a crucial factor in the decision.

The court noted that the appearance of the trademarks was very similar, and the visual elements had a significant impact on consumer choice, leading to a high likelihood of confusion regarding the source of the goods. Therefore, the similarity in appearance was recognized.

Case 4: A Case Where a Reversal of Characters Was Still Deemed Conceptually Similar

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

The court acknowledged that while the appearance of the personality strings differed, both trademarks evoked products related to “fugu” (pufferfish), sharing a common concept. Additionally, the pronunciation of both was very similar, leading to the recognition of similarity in both concept and pronunciation.

Examples of When Trademarks Are Deemed Similar Under Japanese Law

Up to this point, we have introduced the criteria and elements for determining trademark similarity based on Japanese legal precedents. Next, we will present specific cases where trademarks are likely to be judged as similar.

In the Case of Abbreviations

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

Differences 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 are often acknowledged in such cases.

Differences 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 distinctiveness (personalityistic), that part may be ignored when judging similarity. The presence or absence of distinctiveness is determined in relation to the goods or services (designated goods or services) with which the trademark is used. Therefore, in the examples above, “legal article” or “A” lacks distinctiveness, so the comparison effectively 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 perception and the legal judgment 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 arise or there are legal concerns regarding a trademark, companies are required to take the following swift actions:

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.

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 actual trade practices of the product and the impression it leaves on consumers. It is crucial for companies to consider court precedents and the standards set by the Japanese Patent Office, and 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 a 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 advisable 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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