judgedate:February 27, 1968
caseid:1964 (Gyo-Tsu) 110
casename:
A case of seeking rescission of the JPO decision in an appeal against theexaminer's decision of refusal for a trademark application
casetitle:
Judgment regarding a case involving trademarks which are acknowledged to
be not similar although being relativel y similar in pronunciation
summary_judge:
In the case of a trademark having the designated goods of threads andyarns in general and having the pronunciation of "shi-yo-u-za-n", and a
trademark having the designated goods of glass fiber yarns only and having
the pronunciation of "hi-yo-u-za-n", if the two trademarks are significantl ydifferent in appeara nce and concept, and furthermore, if, in the actual
conditions of transaction of glass fiber yarns, it is rarel y the case that atrademark is identified onl y by the pronunciation and then the qualit y isrecognized by learning the source of the goods, it is reasonable toacknowledge that the two trademarks are not similar.
court second:Tokyo High Court, Judgment of September 29, 1964
references:
Article 2, paragraph (1), item (ix) of the former Trademark Act (Act No. 99of 1921)

iMain text
The final appeal shall be dismissed.
Appellant shall bear the cost of the final appeal.
Reasons
Regarding Reason 1 for the final appeal according to the attorneys representing
Appellant, namely; ●●●●, ●●●●, and ●●●●.
The similarity of trademarks should be determined based on whether or not there
is a risk that the two trademarks, which are being compared, would be misleading orwould cause confusion as to the source of the goods when they are used for identicalor similar goods.

In doing so, it is necessary to consider the entirety of eachtrademark which is used for such goods by comprehensively taking into consideration
factors such as the impression, memory, and association and the like given to tradersfrom the appearance, concept, and pronunciation and the like of the trademark.
Furthermore, as long as the actual conditions of transaction for those goods can beclarified, it is reasonable to make the determination based on the specific conditionsof transaction.
The Applied Trademark has the designated goods of glass fiber yarns only, and it
is clear, even from the constitution of the trademark, that the trademark will not be
used for goods other than glass fiber yarns.

As such, the judgment in prior instance,

which, upon determining the similarity of the trademarks, brought up the actual
conditions of transaction of glass fiber yarns and acknowledged that in suchtransaction, it is rarely the case for a person to identify a trademark by thepronunciation alone and then to recognize the quality by learning the source of thegoods, and which ruled that, in regards to the trademarks pertaining to suchdesignated goods, there is no risk of being misleading or causing confusion as to thesource of the goods even based on the relatively relaxed interpretation of thecomparison and consideration of the trademarks in terms of pronunciation, cannot be
considered to be unreasonable.

The gist of the argument is one which attacks thejudgment in prior instance regarding the above point by stating that the judgment inprior instance contains the error of applying the empirical rule, which is used forgeneral transactions involving trade names, to the determination on the similarity of1

trademarks.

However, the judgment in prior instance is not one which ignored thepoint that a trademark has the function of identifying the source of goods in atransaction involving glass fiber yarns, but is merely one which ruled that it isdifficult to apply the empirical rule, which is used for general transactions where thesimilarity of trademarks in pronunciation would cause confusion as to the source ofthe goods, in the same manner to a transaction involving glass fiber, and which ruledthat the pronunciation of a trademark cannot have the same level of significance as it
would have in a general transaction, when a trader identifies the source of the goods.
It must be said that the gist of the argument is not based on the correct interpretationof the judgment in prior instance.
In addition, the gist of the argument states that the ruling made by the court ofprior instance about the actual conditions of transaction of glass fiber yarns has nouniversality or fixedness to be able to be considered the empirical rule, and that itconcerns temporary and irregular conditions of transaction from the past which arebased on circumstances that are unique to the beginning of new product development.
However, as per the lawful finding in the judgment in prior instance based on theevidence listed and on the entire purport of the oral argument, the above conditions
are the conditions of transaction of glass fiber yarns as of the time of the application
for the Trademark and thereafter, and furthermore, there is also no sufficient evidence
to acknowledge that said conditions constitute a local and floating phenomenon as perthe asserted opinion.

It must be said that registration of the application for theTrademark cannot be denied on the basis of the asserted opinion.
The gist of the argument states that the judgment in prior instance is illegal in its
finding about the actual conditions of transaction for glass fiber yarns based onAppellee's assertions and evidence, which were withdrawn.

However, it cannot be

acknowledged, based on the detailed examination of the records of the present case,that such withdrawal occurred.
The gist of the argument cannot be accepted in any of the above.
Regarding Reason 2 and Reason 3 for the final appeal.
The similarity of trademarks in appearance, concept, or pronunciation is merely acriterion for making a presumption about the risk of the trademarks being misleadingor causing confusion as to the source of the goods for which the trademarks are used.
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As such, even in the case of trademarks which are similar in terms of one of the above
three factors, if they cannot be acknowledged as having a risk of being in any way
misleading or causing confusion as to the source of the goods, due to the trademarks
being significantly different in terms of other two factors, or due to other actual
conditions of transaction, such trademarks should not be interpreted as being similar.
When the above is considered in light of the present case, the applied trademark
includes a figure of an iceberg in addition to the characters, "硝子繊維", "氷山印",
and "日東紡績", whereas the cited registered trademark merely consists of only thecharacters, "しようざん", so that it is clear that the two trademarks are different inappearance, and undoubtedly, there is no room for the latter trademark to produce a
concept that is suggestive of an iceberg, and the dissimilarity in these respects is alsoa point which is not refuted by Appellant in the trial of the prior instance.

As such,it is acknowledged that the explanation given in the judgment in prior instance is thatwhile the pronunciations produced from the constitution of the above trademarks are"hi-yo-u-za-n-ji-ru-shi" or "hi-yo-u-za-n" in the former trademark, and "shi-yo-u-zan-ji-ru-shi" or "shi-yo-u-za-n" in the latter trademark, and even if the two trademarks
have relatively similar pronunciations, the difference in terms of appearance andconcept should be taken into consideration, and it should not be considered sufficient
to determine the similarity or dissimilarity in pronunciation by merely comparing thepronunciations extracted from the two trademarks.

Next, it can be understood that,

according to the interpretation of the judgment in prior instance, the trademarks are
not similar because, although they are similar in pronunciation, the difference inpronunciation is still easily recognizable, so that even if various circumstances aretaken into consideration, including the fact that there are some regions where thepronunciation of the characters, "hi" and "shi", tend to be not clearly distinguishable,in the actual conditions of transaction of glass fiber yarns where the conditions are
unique as described above, it is inconceivable that there is a risk that the twotrademarks, which are significantly different in appearance and concept, and which
can also be distinguished in pronunciation to the extent as described above, would bemistaken for one another and be misleading and cause confusion as to the source ofgoods.

As such, although the gist of the argument attacks the judgment in priorinstance by stating that the court ruled that the two trademarks are not similar inpronunciation, given the actual conditions of transaction of glass fiber yarns, it is notprecluded, as described above, that the comparison and consideration of thetrademarks in terms of pronunciation be interpreted in a relatively relaxed manner.
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Accordingly, the above ruling, which is acknowledged to have interpreted, from thisperspective, that the two trademarks are not similar based on the fact that the two
trademarks are different in pronunciation to the extent as described above, cannot be
considered to be completely unreasonable.
The gist of the argument is that, in the judgment in prior instance, the finding to
the effect that transactions of glass fiber yarns are hardly ever conducted based only
on the pronunciation of a trademark, and the ruling that it is not sufficient todetermine the similarity of Applied Trademark and the cited registered trademark bymerely extracting the pronunciations of characters from the two trademarks forcomparison do not constitute grounds in support of the determination that the twotrademarks are not similar in pronunciation per se, but instead, create conflict anddiscrepancy.

However, the purport expressed in the judgment in prior instanceconcerning the points made in the asserted opinion is entirely as described above, andit also cannot be acknowledged, naturally, that the judgment in prior instance has
illegality of inconsistency in reasons.
The gist of the argument is entirely groundless.
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 CivilProcedure.
Supreme Court, Third Petty Bench
Presiding judge:

YOKOTA Masatoshi

Judge:TANAKA Jiro

Judge:SHIMOMURA Kazuo

Judge:

MATSUMOTO Masao

Judge:

IIMURA Yoshimi

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