Trademark Date
Right
Case number

November 30, 2023
2023 (Gyo-Ke)10063

CourtIntellectual Property
High Court, Fourth
Division- A case in which the Court determined that the Applied Trademark, which consists of
the letters "VENTURE" written in standard characters, is not similar to the Cited
Trademark, which is a composite trademark that has a structure consisting of theChinese character "遊" written in a large size in a calligraphy-like style and placed on
the upper center, and the alphabetic letters "VENTURE" written in Gothic script andplaced at the bottom, and the Court held that it cannot be said that the Applied
Trademark falls under Article 4, paragraph (1), item (xi) of the Trademark Act.
Case type: Granted
Result: Appeal granted
References: Article 4, paragraph (1), item (xi) of the Trademark Act
Related rights, etc.: Trademark Application No. 2020-128329; Appeal against
Examiner's Decision No. 2022-8509
Summary of the Judgment
1 The Plaintiff filed an application for registration for the Applied Trademark,which consists of the letters "VENTURE" written in standard characters, bydesignating "Clothing" in Class 25 among other goods, and received a decision ofrefusal.

As such, the Plaintiff requested for an appeal against the examiner's

decision of refusal.
The JPO rendered a decision that dismissed the request for an appeal by holdingthat the Applied Trademark is similar to the registered trademark indicated below(Cited Trademark), for which an application for trademark registration was filed
earlier than the application date of the present application, and that the "Clothing;
Liveries; Pants and trousers; Hats; Rash guards" in Class 25 from among thedesignated goods of the Applied Trademark are the same as, or similar to the"Clothing" in Class 25 of the designated goods of the Cited Trademark, and thus the
Applied Trademark falls under Article 4, paragraph(1), item(xi) of the Trademark Act
and cannot be registered.
[Cited Trademark]i

2 In the judgment of the present case, the Court held that the Applied Trademark
does not fall under Article 4, paragraph (1), item (xi) of the Trademark Act bydetermining as follows, and reversed the above decision.
(1) Similarity of a trademark, in relation to Article 4, paragraph (1), item (xi) of theTrademark Act, should be determined holistically by giving consideration to theoverall impression, recollection, association, etc. given to traders and consumers by
the appearance, concept, appellation, etc. of the trademark that is used for the same orsimilar goods or services, in light of the actual circumstances of transaction pertaining
to the goods or services, and in the case of what is understood to be a compos ite
trademark that is a combination of multiple constituent parts, it must be said that it is
not permissible to extract a part of the constituent parts of the trademark forcomparison of such part alone with another person's trademark to determine thesimilarity of the trademarks themselves unless [i] it is acknowledged that such partgives a strong and dominant impression to traders and consumers as an indicator ofsource for goods or services, or [ii] it is acknowledged that other parts do not generate
any appellation or concept as an indicator of source, or [iii] it is believed, given theappearance, etc. of the trademark, that the structure of the trademark as a whole isweak in cohesiveness, so that when traders and consumers take in the trademark byseparating it and recognizing a part thereof as an abbreviation or the like, it resultswith such constituent part independently performing the function as an indicator ofsource.

In the case illustrated above in [iii], this does not mean that all of theconstituent parts having been separated naturally constitute important parts(constituent parts with respect to which it is permissible to separate or extract thesame to determine similarity).
(2) The Cited Trademark is a composite trademark having a structure in which the
Chinese character "遊" written in a large size in a calligraphy-like style is placed on
the upper center, and the alphabetic letters "VENTURE" written in Gothic script areplaced at the bottom.
ii

The character "遊" has a size that is approximately five times that of each of theletters making up "VENTURE", both in length and width, and has an area that is
approximately 25 times larger.

When the character "遊" is compared with the areaof the entire letter part constituting the letters "VENTURE", the former isapproximately 3.5 times the latter, so that the character part " 遊 " shows anoverwhelming presence in terms of size compared to the letter part "VENTURE".
The font design of the character "遊" is in a calligraphy style, written in powerful
Gothic script, and along with the meaning of the word, the font design gives a lively
impression and a sense of interest to onlookers, whereas the part "VENTURE" does
not show any feature other than being in Gothic script and having thickish letters
being slightly inclined to the right.
The character part "遊" is placed on the upper center and inevitably makes anappeal that it constitutes the central part of the entire structure of the trademark.

On

the other hand, the letter part of "VENTURE" has an appearance that gives animpression of a pedestal that supports "遊" at the bottom.
(3) Upon comparison with the constituent parts of the Cited Trademark, andcomprehensively considering the circumstances such as the overwhelming presence ofthe character part "遊", as derived from the difference in size of characters, and thedifference in appeal derived from the difference in script, and the subordinatesuperior relationship naturally derived from how the entire structure is placed, and it
being impossible to find any basis on which to understand that the Cited Trademark is
a trademark consisting of a series of united letters in terms of appellation and concept,
the traders and consumers coming in contact with the Cited Trademark may
understand that the Cited Trademark consists of the character part "遊" and the letter
part "VENTURE" separately, and may recognize the character part "遊", which exerts
a strong presence and appeal as a central constituent element, as an abbreviation or
the like, and thus may understand the character part "遊" as an independent indicatorof source.

On the other hand, the letter part "VENTURE" clearly has a weak

presence in the structure of the entire trademark, and it cannot help but give theimpression that it is a subordinate constituent part, so that it is unlikely, based oncommon sense, that traders and consumers would focus on this part and recognize it
as an abbreviation, etc. of the Cited Trademark, so that the Court cannot find that thispart is the important part of the Cited Trademark.
The Defendant argues that the letters "VENTURE" are written in a size that is big
enough for consumers and traders to recognize them, and that the size of the letters
cannot make the letter part "VENTURE" an unimportant part.
iii

If what is at issue

only concerns the relative size of characters/letters, the above argument made by the
Defendant can be affirmed, but the size difference between the character part "遊" andthe letter part "VENTURE" in the present case is on a level different from the relative
size differences, and furthermore, upon also giving consideration to factors such as
the difference in appeal derived from the difference in script, and the subordinate superior relationship derived from the placement of component parts, it cannot be said
that the Defendant's argument is appropriate for the present case.
(4) On the premise of the above findings and determinations, the similarity between
the Applied Trademark and the Cited Trademark is determined below.

Uponconsidering the matter on the premise of observation of each trademark in its entirety,thedifferenceinappearance,appellation,

andconcept

becomes

greatercorrespondingly to the difference in terms of the presence or lack of the character "遊" of the Cited Trademark, so that the Court cannot affirm similarity.

Next, if thecharacter part "遊" is observed separately from the letter part "VENTURE", and thensimilarity is determined by considering the part "遊" as the important part, it isneedless to say that the Court cannot acknowledge similarity with the Applied
Trademark.

iv

Judgment rendered on November 30, 2023
2023 (Gyo-Ke) 10063 Case of seeking rescission of JPO decision
Date of conclusion of oral argument: October 3, 2023
Judgment
Plaintiff:

Kabushiki Kaisha KGIDefendant:Commissioner of JPO

Main text
1.

The decision rendered by the JPO on April 28, 2023 for the Case of Appeal

against Examiner's Decision No. 2022-8509 shall be rescinded.
2.

Court costs shall be borne by the Defendant.
Facts and reasonsNo. 1 Claims
The same gist as the main text.
No. 2 Background1.

History of the procedures, etc. at JPO (Matters over which the parties are not in

dispute)(1)

On October 16, 2020, the Plaintiff filed an application for registration for the

trademark consisting of the letters "VENTURE" written in standard letters(hereinafter referred to as "Applied Trademark"), by designating "Clothing" in Class
25 among other goods (the designated goods after amendment by the written
amendment dated October 11, 2021 are as indicated in Attachment 1) (Trademark
Application No. 2020-128329).
(2)

The Plaintiff received a decision of rejection dated March 7, 2022, and on June

3 of the same year, filed an appeal against the examiner's decision of refusal.
The JPO examined the above appeal as the Case of Appeal against Examiner's
Decision No. 2022-8509, and on April 28, 2023, rendered a decision to the effect that"the request for appeal of the present case has no grounds" (JPO Decision), and a
copy of the JPO Decision was delivered to the Plaintiff on May 23 of the same year.
１(3)On June 19, 2023, the Plaintiff filed the lawsuit of the present case seeking

rescission of the JPO Decision.
2.

Summary of the reasons for the JPO Decision(1)

The gist of the reasons for the JPO Decision is that the Applied Trademark issimilar to the registered trademark of Attachment 2 (hereinafter referred to as "Cited
Trademark"), for which an application for trademark registration was filed earlier than
the application date of the present application, and that the "Clothing; Liveries; Pantsand trousers; Hats; Rash guards" in Class 25 from among the designated goods of the
Applied Trademark are the same as, or similar to the "Clothing" in Class 25 of thedesignated goods of the Cited Trademark, and thus the Applied Trademark falls under
Article 4, paragraph (1), item (xi) of the Trademark Act and cannot be registered.
(2)

Details of the JPO Decision pertaining to the similarity between the Applied

Trademark and the Cited Trademark are summarized below.
A.

The Applied Trademark generates the appellation of "ven-ture" and the conceptof "adventure".
B.

It is difficult to find any connection between the meanings of the letter part " 遊" and the letter part "VENTURE" in the Cited Trademark, and the letter size, letter
type, and the letter font are different, and there is no special reason for which theseletter parts are otherwise recognized as always inseparable, so that each letter part isable to perform the function as an indicator of distinction between one's goods andothers' goods.
In the case of the Cited Trademark, it is permissible to separate and extract theletter part of "VENTURE" from among the composition, and to consider it as theimportant part of the trademark for comparison with the trademarks of other persons
to determine the similarity of the trademarks themselves.
C.

The Applied Trademark and the Cited Trademark, when the overall

appearances are considered, have the difference of the letter part of "遊".

However,

if comparison is made with regard to the letter part of "VENTURE", which is theimportant part in the Applied Trademark and the Cited Trademark, the two trademarks
give the impression that they are similar in appearance.

Furthermore, the two

trademarks share the same appellation of "ven-ture" and the concept of "adventure".
In that case, the Applied Trademark and the Cited Trademark, when therespective important parts are compared, give the impression that they are similar inappearance.

They also have the same appellation and concept, so that when theimpression, memory, and recollection, etc. which business partners and consumers
receive from the appearance, appellation, and concept of these trademarks when they２are comprehensively taken into consideration, it should be said that the two
trademarks are similar marks having a risk of causing confusion with each other.
3.

Cause for rescission
Error in the determination of applicability to Article 4, paragraph (1), item (xi)of the Trademark Act(omitted)
No. 4 Judgment of this court
1.

Cause for rescission (Error in the determination of applicability to Article 4,paragraph (1), item (xi) of the Trademark Act)
(1)

Similarity of a trademark, in relation to Article 4, paragraph (1), item (xi) of

the Trademark Act, should be determined holistically by giving consideration to theoverall impression, recollection, association, etc. given to traders and consumers by
the appearance, concept, appellation, etc. of the trademark that is used for the same orsimilar goods or services, in light of the actual circumstances of transaction pertaining
to the goods or services.

In the case of what is understood to be a composite

trademark that is a combination of multiple constituent parts, it must be said that it is
not permissible to extract a part of the constituent parts of the trademark forcomparison of such part alone with another person's trademark to determine thesimilarity of the trademarks themselves unless [i] it is acknowledged that such partgives a strong and dominant impression to traders and consumers as an indicator ofsource for goods or services, or [ii] it is acknowledged that other parts do not generate
any appellation or concept as an indicator of source, or [iii] it is believed, given theappearance, etc. of the trademark, that the structure of the trademark as a whole isweak in cohesiveness, so that when traders and consumers regard a trademark byseparating it and comprehending a part thereof to be an abbreviation or the like, it
results with such constituent part independently performing the function as anindicator of source.

It should be noted that, in the case illustrated above in [iii], thisdoes not mean that all of the constituent parts having been separated naturally
constitute important parts (constituent parts with respect to which it is permissible toseparate or extract the same to determine similarity).
(2)

The Applied Trademark
The Applied Trademark consists of the letters "VENTURE" written in standard

letters, and is no other than the indication, in capital letters, of the word "venture",
which means "adventure" in English, and the word, pronounced as "ven -ture", is also
３

found in a Japanese-language dictionary (Exhibit Otsu 4).
In that case, the Applied Trademark generates the appellation of "ven-ture" andthe concept of "adventure".
(3)

Cited Trademark

A.

The Cited Trademark is a composite trademark having a structure in which the

Chinese letter "遊", written in a large size in a calligraphy-like style, is placed in theupper center, and the alphabetic letters "VENTURE", written in Gothic script, areplaced at the bottom.
(A)

When focusing on the appearance, which is then observed in detail, the letter "遊" in the upper center has a size that is approximately five times that of each of theletters making up "VENTURE", both in length and width.
approximately 25 times greater.

In area, the size is

When the letter "遊" is compared with the area ofthe entire letter part constituting "VENTURE" (seven alphabets), the former isapproximately 3.5 times greater than the latter, so that the letter part "遊" shows anoverwhelming presence relative to the letter part "VENTURE".
The font design of the letter "遊" is written in a powerful, semi-cursive stylewith a touch of calligraphy, and along with the meaning of the word, the font design
gives a lively impression and a sense of interest to onlookers, whereas the part
"VENTURE" does not show any feature other than being in Gothic script and having
thickish letters that are slightly inclined to the right.
The letter part "遊" is placed in the upper center and inevitably makes anappeal that it constitutes the central part of the entire structure of the trademark.

On

the other hand, the letter part of "VENTURE" has an appearance that gives theimpression of a pedestal which supports "遊" at the bottom.
(B)

Next, when focusing on and considering the appellation and concept, fromamong the composition of the Cited Trademark, the letter part of "VENTURE"
generates the appellation of "VENTURE" and the concept of "adventure" as describedin (2).

The letter part of "遊" generates the appellation of "yu" or "aso" (as in"asobi" and "asobu"), so that the concept of "walking around for fun (asobu)" or the
like is generated (Exhibit Otsu 5).
Accordingly, when the above factors are observed on the whole, it can be said
that the appellation of "yu-ven-ture" or "aso-ven-ture" is tentatively generated.
However, such appellation is not always primal, so that it cannot be denied that thetrademark gives the impression that the reading, as an integrated letter trademark, isuncertain (unknown) to consumers and business partners.
In addition, it is difficult to find a single concept that combines the concept,
４which generates from the "遊" part, of "walking around for fun", and the concept,
which generates from the "VENTURE" part, of "adventure".

It also cannot be

acknowledged that a specific concept is generated from the coined word of "yu venture" or "aso-venture".
Regarding this point, the Plaintiff asserts that the parts described above lead tothe understanding, in terms of concept, of "venturing out at will", but such connection
is weak and is little more than association, and it is unreasonable to look for grounds
for the assertion that the trademark has the function of an indicator of source.
B.

In light of the above findings, by referring to what is illustrated above in (1)[iii], whether or not it is possible to separately observe the Cited Trademark, andacknowledgement of the important part shall be considered.
The Cited Trademark is a composite mark consisting of the letter part "遊" andthe letter part "VENTURE", and in principle, the trademark should be observed in its
entirety as described above.

Meanwhile, upon comparison of the constituent parts

described above, in addition to the overwhelming presence of the letter part "遊", asderived from the difference in size of letters, it can be pointed out that there arefactors such as the difference in appeal derived from the difference in script, and thesubordinate-superior relationship naturally derived from how the entire structure isplaced, and upon comprehensively considering the circumstances such as it being
impossible to find any grounds based on which to understand that the Cited
Trademark is a trademark consisting of unified letters in terms of appellation andconcept, the traders and consumers coming in contact with the Cited Trademark may
regard the letter part "遊" and the letter part "VENTURE" separately and comprehend
the trademark as such, and may recognize the letter part "遊", which exerts a strong
presence and appeal as a central constituent element, as an abbreviation or the like,and thus may understand the letter part "遊" as an independent indicator of source.
On the other hand, the letter part "VENTURE" clearly has a weak presence inthe structure of the entire trademark, and it cannot help but give the impression that it
is a subordinate constituent part, so that it is unlikely, based on common sense, that
traders and consumers would focus on this part and recognize it as an abbreviation,etc. of the Cited Trademark.

As such, it should be said that the Court cannot findthis part to be the important part of the Cited Trademark.
Regarding the JPO Decision, the Court agrees that the determination that it ispossible to separately observe the letter part of " 遊 " and the letter part of"VENTURE"

isreasonable,butcannot

agree

with

the

acknowledging the letter part "VENTURE" as the important part.
５

determination

of

C.

The Defendant argues that although the letter part of "遊" is written in a

relatively large size, the letters "VENTURE" are also written in a size which is large
enough to be recognized by consumers and business partners, so that the size of theletters cannot determine that the letter part of "VENTURE" is not the important part.
Indeed, if what is at issue only concerns the relative sizes of letters, the Court canaffirm the above argument made by the Defendant, but the size difference between theletter part "遊" and the letter part "VENTURE" in the present case is of a scaledifferent from the relative size difference, and furthermore, upon also giving
consideration to factors such as the difference in appeal derived from the difference inscript, and the subordinate-superior relationship derived from the placement ofcomponent parts, it cannot be said that the Defendant's argument is appropriate for thepresent case.
To note, the issue of whether or not the letters "VENTURE" generally
constitute the function as an indicator of source in relation to the designated goods(Clothing) of the Cited Trademark is not relevant to the aforementioned determination.
(4)

Similarity between the Applied Trademark and the Cited Trademark
On the premise of the above findings and determinations, the similarity

between the Applied Trademark and the Cited Trademark is determined below.
Upon considering the matter on the premise of observation of the trademarks in their
entirety, the difference in appearance, appellation, or concept becomes greater
correspondingly to the difference in terms of the presence or lack of the letter "遊" ofthe Cited Trademark, so that the Court cannot affirm similarity.
Next, in the Applied Trademark, if the letter part "遊" is observed separatelyfrom the letter part "VENTURE", and then similarity is determined by considering thepart "遊" as the important part, it is needless to say that the Court cannot acknowledge
similarity with the Applied Trademark.
As such, the Applied Trademark does not fall under Article 4, paragraph (1),item (xi) of the Trademark Act.
2.

Conclusion
Based on the above, there is error in the JPO Decision which held that the

Applied Trademark falls under Article 4, paragraph (1), item (xi) of the Trademark
Act, so that the Plaintiff's claims have grounds.

Accordingly, the Court rescinds the

JPO Decision and renders a judgment as per the main text.
Intellectual Property High Court, Fourth Division

６

Presiding Judge: MIYASAKA Masatoshi
Judge: MOTOYOSHI Hiroyuki
Judge: IWAI Naoyuki

７Attachment 1
Class 9: Ear plugs for swimmers; Ear plugs for divers; Life-saving apparatus
and equipment; Life jackets; Apparatus and instruments for underwater swimming;
Eyewear; Sunglasses; Divers' masks; Swimming goggles; Protective helmets for
sports; Sports whistles; Air tanks; Snorkels; Regulators; Wet suits for divers
Class 18: Metal fittings for bags; Metal frames for coin purses; Horseshoes;
Boxes of leather; Clothing for pets; Bags; Waterproof bags; Pouches; Vanity cases;
Umbrellas; Sticks; Walking sticks; Metal fittings for walking sticks; Walking stickhandlesClass 25: Clothing; Liveries; Trousers and pants; Garters; Stocking supporters;
Suspenders; Waistbands; Belts for clothing; Headgear for wear; Masquerade
costumes; Sports shoes and footwear; Boots for sports; Boots for surfing; Sports
clothing; Wetsuits for aquatic sports; Rash guards
Class 28: Sports equipment; Gloves for sports; Surfboards; Wakeboards;
Boards for wakeboarding; Boards for boardsailing; Webbed gloves for swimming;
Fishing tackles

８

Attachment 2
Trademark Registration No. 6434159
Application date: July 31, 2020
Registration date: August 26, 2021
Designated goods: Class 25 "Clothing"Composition of the registered trademark

９