Date of
Judgment: September 8, 2008
Issuing
Authority:
Supreme Court
Level of
the Issuing Authority: Final Instance
Type of
Procedure: Judicial（Administrative）
Subject
Matter: Trademarks
Main
text of the judgment (decision):
1.
The judgment in prior instance shall be
reversed.
2.
The present case shall be remanded to the
Intellectual Property High Court.
Reasons:
Reasons
for petition for acceptance of final appeal by SUDA Atsushi, attorney for the
appeal
1. In the present action, the
appellee demanded rescission of the JPO's trial decision rejecting the
appellee's demand for trial for invalidation of the appellant's trademark,
which is described later.
2. The outline of the findings
of the court of prior instance is as follows.
(1) The appellant is the
trademark holder of Trademark Registration No. 4798358 (application date:
February 18, 2004; registration of the trademark right established on August 27
of the same year; hereinafter, this trademark is referred to as
"Trademark," and the trademark registration is referred to as
"Trademark Registration") which consists of the standard characters,
"つつみのおひなっこや
(Tsu-tsu-mi-no-o-hi-na-kko-ya)", written horizontally, designating
"clay dolls and pottery dolls" in Class 28 of Appendix 1 of the Order
for Enforcement of the Trademark Act (prior to revision by Cabinet Order No.
398 of 2003) as designated goods (hereinafter referred to as "Designated
Goods").
(2) Clay dolls that are
manufactured in Tsutsumi-cho, Sendai-shi (now Tsutsumi-cho, Aoba-ku,
Sendai-shi) started as Tsutsumi pottery during the Edo period, and also came to
be called by the names of "おひなっこ
(Ohinakko)" (hina dolls) and "つつみのおひなっこ (Tsutsumi-no-ohinakko)" (hina dolls of Tsutsumi).
Then, from the early years of the Showa period, they began to be called
"Tsutsumi-ningyo" (Tsutsumi dolls). At their peak, as many as 13 doll
shops manufactured these clay dolls (Tsutsumi pottery dolls that are
manufactured in Tsutsumi-cho, Sendai-shi are hereinafter referred to as
"Tsutsumi Dolls") until the Meiji period. Gradually, more and more of
these shops were shut down, and by the Taisho period, only two shops, namely
Shop A and Shop B, remained. By the time the Showa period began, it was only
Mr. C, the appellee's father, who manufactured Tsutsumi Dolls, and the appellee
succeeded these skills.
Mr. D, the appellant's
grandfather, began manufacturing Tsutsumi Dolls by 1981, if not earlier, and
the appellant succeeded these skills by way of his father, Mr. E.
(3) The appellee is the trademark
holder of the trademark (Trademark Registration No. 2354191; hereinafter
referred to as "Cited Trademark 1"), which consists of the
characters, "つゝみ
(Tsu-tsu-mi)", written horizontally in bold, and the trademark (Trademark
Registration No. 2365147; hereinafter referred to as "Cited Trademark
2", which consists of the one character, "堤 (Tsutsumi)", written in bold; Cited
Trademark 1 and Cited Trademark 2 are hereinafter collectively referred to as
"Cited Trademarks"), by respectively designating "clay
dolls" in Class 28 of the aforementioned appendix as designated goods.
Initially, applications for trademark registration of the Cited Trademarks were
refused for reasons such as that a trademark consisting of the characters,
"堤
(Tsutsumi)", which is a common last name, or the characters, "つゝみ (Tsu-tsu-mi)", which are reminiscent of
the last name, being shown in a common manner, falls under Article 3, paragraph
(1), item (iv) of the Trademark Act (hereinafter referred to as
"Act"). However, on April 4, 1991, in an appeal filed against the
examiner's decision of refusal, a trial decision was rendered to the effect
that, as a result of the trademarks having been continuously used for "clay
doll" products since the Meiji period, consumers have come to recognize
the trademarks as related to goods pertaining to the appellee's business, so
that the trademarks fall under Article 3, paragraph (2) of the Act and that the
Cited Trademarks shall respectively be granted trademark registration. Under
these circumstances, the Cited Trademarks were granted trademark registration
by December of the same year.
(4) On March 8, 2006, the
appellee demanded a trial for invalidation of the Trademark Registration pursuant
to Article 46, paragraph (1) of the Act by claiming that the Trademark
Registration is in violation of the provisions of Article 4, paragraph (1),
items (viii), (x), (xi), (xv), (xvi), (xix), and Article 8 of the Act.
On October 31 of the
same year, as a result of the JPO examining the above demand for trial as the
Invalidation Trial No. 2006-89030, a trial decision was rendered to the effect
of rejecting the demand for trial because the Trademark is not similar to
either of the Cited Trademarks and thus does not fall under Article 4,
paragraph (1), item (xi) of the Act, and because other claims made by the
appellee as reasons for invalidation are groundless (this trial decision is
hereinafter referred to as "Trial Decision").
3. The court of prior instance
determined as follows, that the part of the Trial Decision which denied that
the Trademark falls under Article 4, paragraph (1), item (xi) of the Act is
erroneous, and accepted the appellee's demand for rescission of the Trial
Decision.
At the time of the
Trial Decision, Tsutsumi Dolls were well known among distributors and other
traders of "clay dolls and pottery dolls," which are Designated
Goods, as Tsutsumi pottery dolls that are manufactured in Tsutsumi-cho,
Sendai-shi. Furthermore, it is acknowledged that the character part, "おひなっこや (o-hi-na-kko-ya)", constituting
the Trademark is recognized by those who come into contact with the same as a
term consisting of "ohina," which means "hina dolls," and
"ko," which is a suffix found in dialects such as that of the Tohoku
region, and "ya," which is a word representing a certain occupation
or a person engaging in such occupation. In that case, it is acknowledged that
the character part, "つつみ
(Tsu-tsu-mi)", constituting the Trademark, generates the concept of "堤 (Tsutsumi)" as a geographical name or a
person's name, or the concept of "堤
(Tsutsumi)" as a Tsutsumi Doll, and the character part, "おひなっこや (o-hi-na-kko-ya)", generates the
concept of "hina doll shop"; thus it is acknowledged that the
Trademark in its entirety generates the concept of "hina doll shop"
of a place or person called "Tsutsumi," or the concept of "hina
doll shop" of Tsutsumi Dolls. Accordingly, while the Trademark is
recognized as a composite trademark in which "つつみ (Tsu-tsu-mi)" and "おひなっこや (o-hi-na-kko-ya)" are combined, it
cannot be acknowledged that the configuration is so unified that the character
part, "つつみ
(Tsu-tsu-mi)", is inseparable from the entirety of the Trademark. As such,
it is acknowledged that only the character part, "つつみ (Tsu-tsu-mi)", placed at the
beginning, is recognizable apart from the rest, generating the concept of
"Tsutsumi" as a geographical name or a person's name, or the concept
of "Tsutsumi" as a Tsutsumi Doll, as well as the sound of
"tsutsumi" only.
On the other hand,
Cited Trademarks respectively generate the concept of "堤 Tsutsumi" as a geographical name or a
person's name, or the concept of "堤
(Tsutsumi)" as a Tsutsumi doll, as well as the sound of
"tsutsumi."
In that case, even when
taking into account that the Trademark and Cited Trademark 1 are only partially
similar in appearance, and that the Trademark and Cited Trademark 2 cannot be
called similar in appearance, it is acknowledged that the Trademark and Cited
Trademarks are, in their respective entireties, similar, and thus it should be
said that the Trademark falls under Article 4, paragraph (1), item (xi) of the
Act in terms of its relationship to Cited Trademarks.
4. However, the above decision
by the court of prior instance cannot be approved, for the following reasons.
(1) Similarity of trademarks
pertaining to Article 4, paragraph (1), item (xi) of the Act should be
discussed on the whole by generalizing the impression, memory, suggestion, etc.
given to traders and consumers by the appearance, concept, sound, etc. of a
trademark which is used for the same or similar goods or services, in light of
the conditions of the transactions for said goods or services (Reference:
Supreme Court Case 1964 (Gyo-Tsu) 110, judgment rendered on February 27, 1968 by
the Third Petty Bench, Minshu vol. 22, no. 2, page 399). As such, it should be
said that in regards to a composite trademark which is considered a combination
of different constituent parts, extracting a part of constituent parts of a
trademark and using only such extracted part for comparison with another
person's trademark in order to determine the similarity of trademarks
themselves should not be permitted unless said part is acknowledged to give a
strong and dominant impression to traders and consumers as a source-identifying
indicator of goods or services, or unless other parts cannot be acknowledged to
generate any sound or concept as a source-identifying indicator (Reference:
Supreme Court Case 1962 (O) 953, judgment rendered on December 5, 1963 by the
First Petty Bench, Minshu vol. 17, no. 12, page 1621; Supreme Court Case 1991
(Gyo-Tsu) 103, judgment rendered on September 10, 1993 by the Second Petty
Bench, Minshu vol. 47, no. 7, page 5009).
(2) When the above is reviewed in
connection with the present case, while the Trademark contains the character
part, "つつみ
(Tsu-tsu-mi)", which sounds the same as the Cited Trademarks, the
Trademark consists of the standard characters, "つつみのおひなっこや (Tsu-tsu-mi-no-o-hi-na-kko-ya)",
written horizontally using the same character size and font, and the entire
Trademark is neatly shown in a single line with equal spaces between the
characters. As such, it cannot be said that the Trademark is configured in a
way so that the character part, "つつみ
(Tsu-tsu-mi)", independently attracts the attention of observers.
According to the above findings, Cited Trademarks were granted trademark
registration in 1991, but since the appellant's grandfather is said to have
begun manufacturing Tsutsumi Dolls by 1981, if not earlier, Tsutsumi Dolls were
well known among distributors and other traders of the Designated Goods, at the
time of the Trial Decision, as Tsutsumi pottery dolls that are manufactured in
Tsutsumi-cho, Sendai-shi, and even if the character part, "つつみ (Tsu-tsu-mi)", of the Trademark generates
the concept of "Tsutsumi" as a geographical name or a person's name,
or the concept of "Tsutsumi" as a Tsutsumi Doll, it cannot be said,
beyond what is described above, that the above character part, "つつみ (Tsu-tsu-mi)", gives a strong and
dominant impression as an identification indicator showing to traders and
customers of Designated Goods that the appellee, who is the trademark holder of
Cited Trademarks, is the source of the Designated Goods, and there is no other
finding in the court of prior instance which can support such claim.
Furthermore, as for the character part, "おひなっこや
(o-hi-na-kko-ya)", constituting the Trademark, traders and consumers of
Designated Goods who are all over Japan and who come into contact with the same
would accept the term as referring to a person engaged in the manufacture and
sale, etc. of hina dolls or other related goods, but since the term is not
normally used to refer to a "hina doll shop," it is considered
ordinary to interpret the term as a newly coined word. In that case, it cannot
be said that the above part concerns ordinary and universal characters that
closely pertain to clay dolls, etc., and thus it cannot be said that the above
part does not have the function of distinguishing its products from other
products.
In addition to the
above, there are no circumstances to justify the act of extracting the
character part, "つつみ
(Tsu-tsu-mi)", from the configuration of the Trademark for observation,
and thus it is reasonable to compare the Trademark and Cited Trademarks in
terms of the respective, entire configurations in order to determine similarity
between these trademarks, and it should be said that extraction of only the
character part, "つつみ
(Tsu-tsu-mi)", constituting the Trademark, for comparison with Cited
Trademarks in order to determine similarity between the Trademark and Cited
Trademarks cannot be allowed.
(3) Next, according to the above
findings, the Trademark and Cited Trademarks can only be found to have
similarity in three of the ten characters constituting the Trademark, and since
it is evident that the Trademark and Cited Trademarks are different in
appearance and sound, it cannot be said that the Trademark and Cited Trademarks
are, in their entireties, similar even if any of the trademarks can generate
the concept of pertaining to a Tsutsumi Doll.
5. From what is described above,
the decision by the court of prior instance to the effect that the Trademark
and Cited Trademarks are similar is unlawful due to an erroneous interpretation
of laws and regulations concerning similarity of trademarks, and it is evident
that this violation affects the conclusion of the decision of the judgment in
prior instance. The theory is reasonable, and thus there is no choice but to
reverse the decision of the judgment in prior instance. Accordingly, in order
to further the examination concerning the reasons for invalidation of the Trademark
as claimed by the appellee, the present case shall be remanded to the
Intellectual Property High Court.
Therefore, the court
unanimously renders the judgment as per the main text.
(This translation is
provisional and subject to revision.)