Date of
Judgment: December 5, 1963
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 final appeal of the
present case shall be dismissed.
2. Appellant shall bear the
cost of the final appeal.
Reasons:
Regarding
Reason 1 for the final appeal according to Appellant's attorney, ●●●●.
The gist of Appellant's argument is that
the judgment in prior instance, which held that Trademark is similar to Cited
Trademark in pronunciation and concept by extracting only the character part,
"宝塚" [read as "takarazuka" in Japanese], from the constituent parts
of Trademark for comparison with Cited Trademark, "宝塚",
is against the principle and the experimental rule for determining similarity
between trademarks.
Since a trademark is created so as to be
identifiable from another person's trademark based on the entirety of the
constituent parts, it is not permissible, without due cause, to extract part of
the constituent parts of a trademark to compare only such part with another
person's trademark to determine the similarity between trademarks per se, as
per the asserted opinion. However, in actual transactions where simplicity and
promptness are valued, with regard to a trademark which cannot be acknowledged
as having each of the constituent parts joined together in such a way as to
suggest that it would be unnatural in transactions to observe the constituent
parts separately from one another, it is not always the case that a
pronunciation or concept is produced from the name of the entirety of the
constituent parts, and it is often the case that a pronunciation or concept is
produced from only part of the trademark, in an abbreviated manner, and as a
result, two or more pronunciations or concepts are produced from a single
trademark, as we already know from the empirical rule (refer to the judgment
rendered on June 23, 1961 by the Second Petty Bench, Minshu
Vol. 15, No. 6, p. 1689). Having said that, even if it cannot be said that a
pronunciation or concept is identical or similar to the pronunciation or
concept of another person's trademark, if another pronunciation or concept is
similar to that of another person's trademark, it is reasonable to interpret
that the two trademarks are still similar.
The above is considered in light of the
present case as follows. The Trademark has the designated goods of
"Soap" in Class 4, and consists of the combination of a figure of a
lyre, which is said to have been used in ancient Greece, and the characters,
" 宝 塚 ", and furthermore,
the characters, " リ ラ タ カ ラ ズ カ
" and "LYRATAKARAZUKA", are attached thereto. As such, it is
clear that the pronunciation and concept of a "lyre/lyra takarazuka" mark is produced from this trademark, and
it is sufficient to presume that this is also where the intention of Appellant
Company in creating Trademark lay. However, according to the facts having been
confirmed in the judgment in prior instance, the fact that the above figure is
that of a "lyre" which was used in ancient Greece is not widely known
among ordinary people who are involved in transactions of "Soap",
which is the designated goods for Trademark, whereas "宝塚"
has a clear meaning in itself and is something with which ordinary people are
familiar, and furthermore, the above characters, "宝塚",
are shown almost at the center of Trademark and written in an ordinary print in
a manner that is very easy to read, and is independent, and has a constitution
that attracts the attention of those who see the trademark. Accordingly, the
judgment in prior instance, which was rendered under such fact situation to the
effect that since the above figure of a lyre and the characters, "宝塚",
are not joined together in such a way as to suggest that it would be unnatural
in transactions to observe the constituent parts separately from one another,
it is acknowledged that Trademark often produces the pronunciation or concept
of simply a "takarazuka" mark in addition
to the pronunciation or concept of a "lyre/lyra takarazuka"
mark, and that Trademark is therefore similar in pronunciation and concept to
Cited Trademark, "宝塚", which equally has
the designated goods of "Soap" in Class 4, is reasonable, and there
is no illegality with the asserted opinion. The legal precedents having been
cited in the asserted opinion are not appropriate for the present case, which
concerns a different issue.
Accordingly, the gist of Appellant's
argument is groundless and cannot be accepted.
Regarding
Reason 2 for the final appeal.
In sum, the gist of Appellant's argument
is that the aforementioned findings in the judgment in prior instance ignored
the judicial admissions and carried out fact finding which is contrary to the
judicial admissions, thereby violating the empirical rule and legal precedents,
and thus being illegal based on incorrect interpretation of Article 2,
paragraph (1), item (ix) of the former Trademark Act (Act No. 99 of 1921).
However, as records show, Appellee
clearly denies that it was known to the public that the figure of a lyre in
Trademark has been used over many years as an emblem of Takarazuka
Revue Company and that Takarazuka Revue Company has
been involved in the management of Appellant's company. As such, although the
parties are not in dispute over the fact that the figure of a lyre is well
known to the public as a symbol of music and that it is something with which
people are familiar, it cannot be said that the finding in the judgment in
prior instance to the effect that "it cannot be acknowledged that the
figure of a lyre and "宝塚" inevitably came to
be joined together as a concept", as per the asserted opinion, is a result
of having ignored judicial admissions. Also, given that the documentary
evidence that supports the asserted opinion constitutes certified copies of the
trial decisions and judgments which were made with respect to the applications
for registration of trademarks other than Trademark, the fact that the content
of the documentary evidence was not used as materials for determining on the
similarity between Trademark and the aforementioned Cited Trademark in the
judgment in prior instance cannot be considered as contravening the legal
precedents cited in the asserted opinion. As for other points in the gist of
Appellant's argument, they merely refer to the illegality of the asserted
opinion by building on a unique perspective that is different from the judgment
in prior instance.
Accordingly, the judgment in prior
instance has no illegality in regards to the asserted opinion, and the gist of
Appellant's argument is entirely groundless, so that the reversal of the
judgment in prior instance is unavoidable.
Therefore, the judgment of this court is
rendered unanimously by all judges, as per the main text, by application of
Articles 401, 95, and 89 of the Code of Civil Procedure.
(This translation is
provisional and subject to revision.)