Date of
Judgment: June 27,1961
Issuing
Authority: Supreme
Court
Level of
the Issuing Authority: Final Instance
Type of
Procedure: Judicial
(Civil)
Subject
Matter: Trademarks
Main
text of the judgment (decision):
1. The judgment of prior
instance shall be reversed.
2. Appellee's claim shall be
dismissed.
3. Appellee shall bear the
court costs for the respective instances.
Reasons:
Regarding
Reasons 1 through 3 for the final appeal according to the attorneys
representing
Appellant, namely; ●●●●, one by the name of ●●●●, and ●●●●.
It is reasonable to interpret that the
similarity of trademarks should be determined by whether or not it can be
acknowledged that, when a trademark is used for certain goods, there is a risk
of being misleading or causing confusion as to the source of the goods. Next,
the similarity of designated goods should not be determined based on whether or
not there is a risk of the goods per se being misleading or causing confusion
in transactions, as per the ruling by the court of prior instance. Instead, in
the case where identical or similar trademarks are used for different goods,
if, due to circumstances such as those different goods usually being
manufactured or sold by the same business operator, it can be acknowledged that
those different goods are related in such a way as to pose a risk of misleading
others into believing that the goods pertain to the manufacture or sale by the
same business operator, it is reasonable to interpret that, in regards to these
trademarks, the goods fall under similar goods as stipulated in Article 2, item
(ix) of the Trademark Act (Act No. 99 of 1921) even if the goods per se have no
risk of being misleading or causing confusion with each other. In the present
case, the part, "正宗", from among the
trademark of "橘正宗", is interpreted as
being a customarily used mark that represents seishu [refined sake], whereas
the part, "焼酎" [which means
"shochu", or distilled spirit], from among the trademark of "橘焼酎",
is a common noun, so that the two trademarks share the same principal part. In
addition, according to the facts having been confirmed in the prior instance,
oftentimes a sake-manufacturing business operator acquires licenses to produce
both seishu and shochu, so that in the case where there is currently a business
operator producing shochu by using the trademark of "橘焼酎",
if there is also a business operator producing seishu by using the trademark of
"橘正宗", it is clear that
these products have a risk of misleading the general public into believing that
both products came from the same business operator who produces liquor by using
the trademarks containing the mark of "橘", and this
determination is not affected by whether or not the trademark of "橘焼酎"
is famous. Accordingly, it should be acknowledged that the trademark of "橘焼酎"
and the trademark of "橘正宗" are similar
trademarks, and furthermore, it should also be acknowledged that the designated
goods of the two trademarks are similar goods.
Next, even if an application for the
applied trademark ("橘正宗") was filed as an
associated trademark of the original registered trademark (Registration No.
89094, "花橘正宗"), if the applied
trademark is similar to a third party's registered trademark ("橘焼酎")
which was registered after the registration of the original registered
trademark and which is not similar to the original registered trademark, it is
reasonable to interpret that the registration of the applied trademark should
be refused pursuant to Article 2 of the Trademark Act. On that note, given that
it cannot be acknowledged that Appellant's registered trademark, "花橘正宗",
is similar to the trademark of "橘焼酎", and furthermore,
that the trademark of "橘正宗" is similar to the
trademark of "橘焼酎" as described
above, it must be said that Appellant's refusal of the application for
registration of the trademark of "橘正宗" is reasonable. In
that case, the gist of the argument made in this regard is reasonable, and thus
the judgment of prior instance must be reversed. Next, according to the fact
situation having been confirmed in the prior instance, the judgment rendered by
the court of prior instance has no illegality, and the claim by Appellee
seeking rescission of the judgment should be dismissed as being unreasonable.
Therefore, the judgment of this court is
rendered unanimously by all judges, as per the main text, by application of
Articles 408, 96, and 89 of the Code of Civil Procedure.
(This translation is
provisional and subject to revision.)