8 “Actual State of Transactions” that are Taken into
Consideration in Litigation Annulling of JPO Trial Decision on
Trademark 
A judgment of trademark similarity or dissimilarity is made in a general and comprehensive manner bytaking “actual state of transactions” and other factors into consideration in addition to the conventional threefactors, i.e., appearance, pronunciation, and concept of the trademark.
In some cases, however, a JPO trial decision was revoked by a court due to a discrepancy in the result ofproceedings between a JPO trial and a court trial (a lawsuit to seek revocation of a JPO trial decision). Suchdiscrepancy is attributable to the differences in the way “actual state of transactions” are taken into
consideration. Consequently, demandants of a trial are concerned that the predictability of a JPO trial decision
has decreased.
Against this background, we conducted research on the following four points: (1) the current way of taking“actual state of transactions” into consideration in the process of making a JPO trial decision or a court
judgment (research on JPO trial decisions and court judgments), (2) the way of taking “actual state oftransactions” into consideration in the course of proceedings and the future approach, etc. (domestic interview
survey on experts), (3) the way of taking various factors into consideration, such as the manners of transactions,traders, and consumers (interview survey on industry groups), and (4) the way in which overseas IP offices orcourts take “actual state of transactions” and other factors into consideration (overseas survey). The results ofthis research are examined from the following three perspectives: (1) the actual state of transactions that are
currently taken into consideration in the process of making JPO trial decisions and court judgments, (2) the
difference between industries in terms of the manners of transactions, etc. and (3) the future approach to “actual
state of transactions” that should be taken into consideration in the process of assessing trademark similarity or
dissimilarity, etc.

I

Introduction: Background andPurpose of This Study

The Trademark Act has a provision
specifying that no person may register a
trademark identical or similar to another person’s
registered trademark claimed in a priorapplication. Since the revision of the Trademark
Examination Guidelines in 2007, in a case that is
subject to this provision, if the applicant submits
explanatory or evidential materials about the“actual state of transactions” of the holder of thecited registered trademark, the JPO has been
permitted to take those materials into
consideration as a part of the data the JPO uses todetermine “actual state of transactions.” Since
the revision, it has been considered to bereasonable for a court to take actual state oftransactions into consideration when making a
judgment on the similarity between designatedgoods or designated services, the similarity
between trademarks, the level of consumer
recognition, etc.
However, in order to examine “actual state oftransactions,” comprehensive consideration ofvarious factors would be necessary such as the“actual state of transactions” adopted for each of
the designated goods or services (e.g., locationsof sale, the manner of sale, traders, andconsumers), the composition of the trademark,and the level of consumer recognition. In somecases, it is extremely difficult for JPO examiners
to obtain information on these factors on theirown authority.
After the JPO makes a trial decision on a
trademark, if a lawsuit is filed in order to seek
revocation of the trial decision, the trial decision
could be revoked by the court in some cases dueto the difference between the JPO and the courtin the way of taking “actual state of transactions”
into consideration. This has made it more difficult
for a demandant of a JPO trial to predict a trial
decision.
The purpose of this research study is to
examine and analyze the JPO trial decision andcourt judgment related to a lawsuit to seek
revocation of a JPO trial decision on a trademark
in which “actual state of transactions” were taken(*) This is an English translation of the summary of the FY2011 JPO-commissioned research study report on the issues
related to the industrial property rights system.
●

IIP Bulletin 2012Vol.21

1 ●into consideration and to find patterns regarding
what actual state of transactions were taken into
consideration for each type of designated goods orservices in light of the relevant provisions. The
findings will be used to prepare basic data forestablishment of judgment criteria that may be
used when “actual state of transactions” aredetermined in the course of trademark
examination or trademark proceedings.

Ⅱ Literature SearchThecurrent
TrademarkExamination
Guidelines specifies that a judgment of trademark
similarity or dissimilarity shall be made upon
comprehensive consideration of such factors as
appearance,
pronunciation,
andconcept.
Furthermore, these Guidelines require a
judgment to be made in consideration of theactual state of transactions adopted for the goods
or services for which the trademark is used
including the major characteristics of consumers(e.g., experts, seniors, children, or women) andalso in consideration of the level of attention thatthose consumers usually pay.
However, in order to examine “actual state oftransactions,” comprehensive consideration ofvarious factors would be necessary such as themanners of transactions of each type ofdesignated goods or designated services, thetypes of traders and consumers and other factors,
the composition of the trademark, and the level ofconsumer recognition. Therefore, it is difficult for
JPO examiners to obtain information on all ofthese factors on their own authority.
Based on the Supreme Court judgment for
the Hyozan Jirushi Case, the Guidelines specify
that a judgment of trademark similarity or
dissimilarity shall be made under Article 4,paragraph (1), item (xi) of the Trademark Act
upon comprehensive consideration of theappearance, concept, and pronunciation of the
trademark. The Guidelines also specify that aneffort shall be made to gather as muchinformation as possible about the actual state oftransactions adopted for the goods or services forwhich the trademark is used so that such a
judgment may be made in consideration of
specific actual state of transactions. Furthermore,
the Guidelines emphasize the importance ofmaking a judgment based on a comprehensive
evaluation of these factors in light of the level ofattention that is usually paid by the traders andconsumers of the goods or services.
In the judgment for the “Case on the logo of●

Hodogaya Chemical Co., Ltd,” the Supreme Court
held that the term “actual state of transactions”
refers to general and consistent actual state oftransactions adopted for the designated goods orservices as a whole and not to special or
temporary ones.
In short, in the judgment for the “Hyozan
Jirushi Case,” the Supreme Court held that a
judgment of trademark similarity or dissimilarity
shall be made based on specific actual state oftransactions. In other words, the Supreme Court
presented its interpretation that it important totake into consideration individual and specificactual state of transactions. Subsequently, theSupreme Court held, in its judgment for the caseon the logo of Hodogaya Chemical Co., Ltd., that
“actual state of transactions” refers to generaland consistent actual state of transactions,demonstrating its interpretation that “actual stateof transactions” shall be taken into consideration
only if they are general and consistent. Due tosuch shift in interpretation, “actual state oftransactions” have substantially lost specificity.
In some infringement lawsuits (the Dai
Shinrin case, Supreme Court Judgment (Third
Petty
Bench),
September
22,
1992,
hanta[HANREI TIMES] no.800, p.169) where thesimilarity of trademarks was disputed, theSupreme Court cited the Supreme Court
judgment handed down for the Hyozan Jirushi
Case in 1968 and reversed the judgment of priorinstance that determined trademark similarity or
dissimilarity without examining specific actual
state of transactions, by holding that, even if
trademarks are not similar to each other on theirown in terms of appearance, concept, andpronunciation, those trademarks may be found tobe similar if specific actual state of transactions
are taken into consideration.

Ⅲ Domestic Interview Survey
1

Interview with experts

Manysurveyrespondents
presented
comments on the Supreme Court judgment
handed down in 1974 for the case concerning thelogo of Hodogaya Chemical Co., Ltd. (Supreme
Court Judgment (First Petty Bench), April 25,
1974, Collection of judgments for lawsuits to seek
revocation of trial decisions, 1974, p. 443) as wellas comments on the Hyozan Jirushi case handed
down in 1968 (Supreme Court Judgment (Third
Petty Bench), February 27, 1968, minshu(Collection of Court Decisions of Civil Actions),
2 ●IIP Bulletin 2012Vol.21

vol. 22, no. 2, p. 399).
In the judgment for the Hyozan Jirushi case,the Supreme Court held that “an effort must be
made to gather as much information as possible
about the actual state of transactions adopted forthe goods or services so that a judgment may bemade in consideration of specific actual state oftransactions.” There are two interpretations for“actual state of transactions.” The first one is thatthe term “actual state of transactions” refers toindividual and specific actual state of transactions.
The second one is that “actual state oftransactions” refers to general and consistentactual state of transactions. This interpretation
was presented in the judgment for the caseconcerning the logo of Hodogaya Chemical Co.,
Ltd. Many experts presented the interpretation
that, chronologically speaking, since the Supreme
Court handed down the judgment for the caseconcerning the logo of Hodogaya Chemical Co.,
Ltd., after giving the judgment for the Hyozan
Jirushi case, “actual state of transactions” should
be interpreted as referring to general andconsistent actual state of transactions in principle,
while individual and specific actual state oftransactions may be taken into consideration
depending on the situation of the case inquestion.
Many survey respondents commented that,while the Supreme Court judgment for the caseconcerning the logo of Hodogaya Chemical Co.,
Ltd., is not included in minshu, if “actual state oftransactions” adopted for designated goods, etc.,
need to be taken into consideration in the courseof trademark examination or trial at the JPO, it
should be interpreted to mean, as stated in said
Supreme Court judgment, that general orconsistent actual state of transactions adopted forthe designated goods should be taken into
consideration.
Other
comments
fromthesurveyrespondents include “While the Supreme Court
judgment for the Hyozan Jirushi case stated that
individual and specific actual state of transactions
shall be taken into consideration when making a
judgment of trademark similarity or dissimilarity,
the Supreme Court judgment for the caseconcerning the logo of Hodogaya Chemical Co.,
Ltd., caused “actual state of transactions” tosubstantially lose specificity and presented theinterpretation that “actual state of transactions”
should be taken into consideration only if they are
general and consistent.” and “the Supreme Court
judgment for the Hyozan Jirushi case stated that a
judgment of trademark similarity or dissimilarity●

IIP Bulletin 2012Vol.21shall be made based on whether there is alikelihood of confusion about the source of thegoods. If this holding is literally interpreted,trademarks may be found similar as long as there
is a likelihood of confusion or misunderstanding
about the source of the goods, even if those
trademarks are neither identical nor similar toeach other. Such a case should be settled under
Article 4, paragraph (1), item (xv). Meanwhile,
there is still a theoretical issue as to whether it ispossible to make a judgment of trademark
dissimilarity under Article 4, paragraph (1), item(xi) on the grounds that there is no likelihood ofconfusion about the source of the goods inconsideration of actual state of transactions, eventhough the trademarks in question are identical orsimilar to each other. Unlike item (xv) that refers
to the likelihood of confusion, item (xi) specifies
that a judgment of trademark similarity or
dissimilarity shall be made based on whether the
trademarks in question are identical or similar toeach other. Therefore, it should be interpreted
that any trademark that is judged to be identicalor similar to another trademark upon
comprehensive consideration of the trademarks
from the perspective of appearance, concept, andpronunciation of the trademarks shall be rejectedon the grounds that those trademarks are
identical or similar to each other.”Another survey respondent commented that
“In the case where “actual state of transactions”
are not examined at the stage of the JPO trial,
while it is still controversial whether it should bepermitted to examine such actual state oftransactions in the phase of a lawsuit to seek
revocation of the JPO’s decision (please refer tothe Supreme Court judgment for the “knitting
machine case”), I consider that it should bepermitted.”
In consideration of these opinions, the JPO is
expected to make a comprehensive judgment ofsimilarity and dissimilarity at the stage of
examination and trial, placing greater emphasison the appearance and concept of the trademark
in question.
In many cases, the court takes “actual stateof transactions” into consideration in addition to
three factors, i.e., appearance, pronunciation andconcept, when making a judgment, especially ajudgment of trademark similarity or dissimilarity.
It is a commonly believed that, in principle, theterm “actual state of transactions” means generaland consistent actual state of transactions in theindustry to which the designated goods, etc.,
belong and that individual and specific “actual
3 ●state of transactions” may be taken into
consideration depending on the circumstances of
the case in question.
However, there is still controversy as to thescope of individual and specific “actual state oftransactions.” For example, it remains unclear
whether it is permissible to take into
consideration temporary actual state oftransactions such as how the trademark inquestion is used or whether the goods carrying
the trademark in question are actually traded. We
need to wait for future court decisions.
Opinions are divided over to what extent“actual state of transactions” should be taken into
consideration and whether it is permissible totake them into consideration at all at the stage of
examination and trial at the JPO. In view of thefacts that the difference between the number ofcases handled by the JPO(the number ofapplications, the number of requests for JPO
trials) and the number of cases handled by the
court, the burdens (in terms of time, money andlabor) that the JPO has to shoulder to examine“actual state of transactions,” and the likelihoodthat the trademark in question is not in use yet atthe stage of examination or trial at the JPO (notransactions have been conducted yet), many
survey respondents commented that it would be
more realistic to conduct oral hearings andopinion exchange sessions with the court in orderto maintain the current examination and trial
practices at the JPO and seek quality
improvement.
2Interview with industry groups

Each industry has its own unique “actual
state of transactions.” For example, in the case of
the food industry, products, even if they are
categorized into the same product category, aresubject to different “actual state of transactions.”
Therefore, it is necessary to take into
consideration the “actual state of transactions” ofa particular product. In the case of the textile
industry, it is common to see the trademarks
indicating the names of materials of thread, cloth,etc., mixed up with the trademarks indicating thenames of products. In the case of thepharmaceutical industry, prescribed drugs aremarketed thorough wholesalers, whereas generalpharmaceutical products are sold throughretailers.
In some cases, the types of traders andconsumers of goods differ depending on the
distribution route of the goods. In the case of●cosmetic products, there are roughly four
patterns in terms of sales methods anddistribution routes. In the case of pharmaceuticalproducts, medical pharmaceutical products andgeneral pharmaceutical products are distributed
to different types of traders and consumers. For
instance, the traders of medical pharmaceuticalproducts include doctors, whereas the traders ofgeneral pharmaceutical products do not. The
consumers of the medical pharmaceuticalproducts are patients, whereas the consumers ofgeneral pharmaceutical products are general
consumers.
As to how “actual state of transactions”
should be taken into consideration in future
proceedings, many of the industry groups thatparticipated in this survey responded that thecurrent method of proceedings has no particular
problems. Some of them commented that, at thatstage of JPO trial, examination of general “actual
state of transactions” would suffice and any party
who hopes for more thorough examination of
specific “actual state of transactions” should
obtain a court judgment by filing a lawsuit to seek
revocation of a JPO trial decision.

Ⅳ Overseas Questionnaire Survey
The U.S. and Europe (OHIM) have adopted asystem that does not permit registration of a
trademark identical or similar to another person’s
registered trademark claimed in a priorapplication if such registration is likely to cause
confusion among the public. A decision of
acceptance or rejection of an application is madenot from the perspective of trademark similarity
but from the perspective of the possibility ofconfusion.
Both the USPTO and the OHIM areconsidered to take actual state of transactions
into consideration when assessing the degree ofsimilarity between marks in order to find out
whether the marks are likely to cause“confusion.”
According to the U.S. guidelines (TMEP§
1207.01(b)), a judgment of trademark similarity ismade by assessing whether the trademarks inquestion are similar to such an extent that they
will cause confusion about the source of the goods
or services for which the trademarks are used.
In the case of the OHIM, Part II, Chapter 2“Likelihood of Confusion” of the manual
concerning oppositions specifies the criteria for
trademark similarity judgment.
In the U.S., as far as ex parte cases are
4 ●IIP Bulletin 2012Vol.21

concerned, an examiner determines thelikelihood of confusion between two trademarks
without taking into consideration the evidence
concerning the actual use, transaction route, andconsumers.
Meanwhile, the OHIM considers that a
judgment of similarity or dissimilarity between
marks shall be made in an objective manner andshall be made based on a registered prior mark.
In the U.S., as far as lawsuits are concerned,
the evidence of actual use is taken into
consideration in inter partes proceedings, but notin ex parte cases. However, a court may find it
unreasonable to take the evidence of actual use
into consideration. In Europe, according to theestablished precedents, a judgment of thelikelihoodof confusion ismade upon
comprehensive consideration of all of the relevant
factors. Particularly important factors to take into
consideration, among other factors, are thedegree of similarity between the trademarks or
the designated goods or services, the level ofattention paid by consumers, etc. (the likelihoodof confusion caused by the marks among
consumers, etc.), and the level of consumer
recognition of a prior trademark. In thisconnection, the Court of Justice of the European
Communities handed down a judgment for the
Quantiéme/QUANTUM case (C-171/06 P),
holding that the specific actual state oftransactions for sale of goods may not be taken
into consideration as relevant factors.

Ⅴ Research on JPO Trial Decisions
and Court Judgments
Recent court cases (the Intellectual Property
High Court and the Supreme Court) involving theissue of “actual state of transactions” shows thatgeneral and consistent “actual state oftransactions” were often taken into consideration,
while individual and specific actual state oftransactions were taken into consideration in asignificant number of court cases.
An examination of whether the actual stateof transactions taken into consideration weregeneral/consistent or individual/specific hasrevealed that no particular tendency may be foundfor any industry or any category of goods orservices. However, this examination has shownthat individual and specific actual state oftransactions tend to be taken into consideration if
the case is about some industry or some categoryof goods or services where the source-identifying
function of a trademark is affected by the●

IIP Bulletin 2012Vol.21

beneficiaries’ directly formed impressions or the
beneficiaries’ level of attention.
An examination of the way in which “actual
state of transactions” are taken into considerationin the aforementioned court cases shows that, if
trademarks are considered to be dissimilar fromthe three perspectives, i.e., pronunciation,
appearance, and concept, “actual state oftransactions” tend to be used as an additional
factor that supports the judgment of dissimilarity.
In the case of trademarks for which a
judgment of similarity or dissimilarity cannot bemade from the aforementioned three perspectives,“actual state of transactions” are taken into
consideration to make a judgment of similarity or
dissimilarity. In the cases where a judgment ofsimilarity is made from the aforementioned threeperspectives, “actual state of transactions” areused as an additional factor to support the
judgment of similarity, or are, in some cases,
taken into consideration to make a judgment ofdissimilarity. In either case, the disputed
trademark and the cited trademark are firstexamined from the aforementioned threeperspectives and then examined in considerationof other factors in order to make a final judgment
as to the possibility of misunderstanding or
confusion about the source. In short, actual stateof transactions are taken into consideration inorder to modify a judgment made from theaforementioned
threeperspectives.
Such
modification of a judgment is rarely made in cases
where the trademarks in question are founddissimilar from the three perspectives.
In some other cases, “actual state oftransactions” are taken into consideration inorder to show that there if no possibility of actual
use and to deny the likelihood of misunderstandingor confusion.
A study on the typical patterns of 300 major
JPO trial decisions and court judgments that took
“actual state of transactions” into considerationshows that “actual state of transactions” weretaken into consideration in most cases in theprocess of making a judgment of trademark
similarity or dissimilarity. On the other hand, inabout one third of the cases, when “actual state oftransactions” were taken into consideration,
special attention was paid to the following factors:
relatedness of goods ((b) similarity between
goods), the dominance of any component part of a
trademark ((c) composite trademark), and thelikelihood of confusion from the perspective ofrelatedness, etc., in terms of goods or usage ((d)
likelihood of confusion).
5 ●Examination of the cases that are
categorized into the aforementioned patterns (b)to (d) shows no noticeable trend unique to aparticular industry or to a particular class ofgoods or services. However, detailed study has
revealed the following tendencies: (b) when ajudgment of similarity between goods is made, inlight of the fact that the scope of trademark
protection covers similar goods as well, “actual
state of transactions” tend to be taken into
consideration in cases involving goods or services
that could be used for many purposes and could
be sold through various channels, (c) as far ascomposite trademarks are concerned, “actual
state of transactions” are rarely taken into
consideration, while they may be taken into
consideration only if any of the component partsof the trademark is distinctive or dominating, and(d) the likelihood of confusion is a factor to take
into consideration in order to make necessary
modifications, from the viewpoint of traders andconsumers, to the degree of similarity in terms ofpronunciation, appearance, and concept. Actual
state of transactions tend to be taken into
consideration particularly in cases involving awell-known trademark or a famous trademark.
While no particular industries are known forhaving an especially large number of suchtrademarks, the standard for the level ofconsumer recognition is presumed to be the levelof attention commonly paid by traders andconsumers.

Ⅵ Analysis of the Research Findings
and Conclusion
1

Actual state of transactions that are
currently taken into consideration in theprocess of making JPO trial decisions
and court judgments

The Supreme Court judgment handed down
for the Hyozan Jirushi Case in 1968 has been
cited in many court judgments and JPO trial
decisions because it set a precedent where thecourt presented the criteria for judging trademark
similarity or dissimilarity. While said Supreme
Court judgment introduced the notion of “actual
state of transactions,” the Supreme Court did notclarify whether all of the individual and specificactual state of transactions should be taken into
consideration in order to judge the likelihood ofconfusion or only certain types of actual state oftransactions, i.e., abstract or formal actual state oftransactions, should be taken into consideration●in order to judge the likelihood of confusion. A
study of relevant literature shows that noconsensus has been built on this issue and that
this issue remains controversial.
In the judgment for the “Hyozan Jirushi
Case,” the Supreme Court presented theinterpretation that “an effort shall be made togather as much information as possible about theactual state of transactions so that a judgment
may be made in consideration of specific actual
state of transactions.” Subsequently, the Supreme
Court held, in its judgment for the “Caseconcerning the logo of Hodogaya Chemical Co.,
Ltd.,” that “actual state of transactions may betaken into consideration only if they are generalor consistent actual state of transactions adopted
by the designated goods as a whole. They should
not be taken into consideration if they are(omitted) special or temporary.” This judgment
clearly demonstrated the Supreme Court’sinterpretation that actual state of transactions
may be taken into consideration only if they are
general or consistent. Since then, it has beeninterpreted that “actual state of transactions”
means general or consistent actual state oftransactions in principle and that individual or
specific “actual state of transactions” may betaken into consideration only if the case inquestion necessitates it.
A study of JPO trial decisions and court
judgments shows that “actual state oftransactions” that were taken into considerationin ex parte court cases were general or consistentactual state of transactions in some cases, while
they are individual or specific actual state oftransactions in other cases.
On the other hand, in the case of court cases(Intellectual Property High Court) including interpartes court cases, “actual state of transactions”
tend to be general or consistent in recent court
cases, while individual or specific “actual state oftransactions” were taken into consideration in aconsiderable number of court cases as well.
In the meantime, when examining a
trademark that is identical or similar to anotherparty’s registered trademark claimed in a priorapplication, the U.S., and Europe (OHIM) assessthe degree of similarity between the marks fromthe perspective of whether there is a “likelihoodof confusion.” The actual use of trademarks andother factors are not taken into consideration insome cases. For example, when the USPTO
handles an ex parte case, an examiner assesses
the likelihood of confusion in consideration of theevidence of the regular transaction routes and
6 ●IIP Bulletin 2012Vol.21

typical customers but not in consideration of theevidence of the actual use, actual transaction
routes, and actual consumers. Similarly, when the
OHIM assesses similarity or dissimilarity
between the mark in question and the registeredprior mark, the actual use does not affect theassessment of similarity or dissimilarity.
On the other hand, as far as court cases areconcerned, the USPTO takes into consideration
the evidence of actual use, when handling an interpartes case. Meanwhile, the OHIM takes into
consideration all of the relevant factors in acomprehensive manner, when assessing the
likelihood of confusion.
When handling an ex parte case, both the
U.S., and Europe take actual state of transactions
and other factors into consideration in order tofind out whether the trademarks in question arelikely to cause “confusion.” In this case, “actual
state of transactions” means general orconsistent actual state of transactions in principle,
while other factors of the trademarks including
the actual use, actual transaction routes, andactual consumers are not taken into consideration.
2

Difference between industries in termsof the manners of transactions, etc.

Each industry has its own unique “actual
state of transactions.” For example, in the case of
the food industry, due to a diversity in foodproducts, the products that are categorized into
the same product category are often subject todifferent “actual state of transactions.” Therefore,
it is necessary to take into consideration the“actual state of transactions” of a particular
product. In the case of the textile industry, it iscommon to see the trademarks indicating thenames of materials of thread, cloth, etc.,
intermingled with the trademarks indicating thenames of products.
Traders and consumers of goods differ
depending on the distribution route. For example,
pharmaceutical products are roughly divided into
two categories, i.e., prescribed drugs (medical
pharmaceutical products) and OTC drugs (generalpharmaceuticalproducts,
self-medication
products). Medical pharmaceutical products andgeneral pharmaceutical products are distributed
to different types of traders and consumers. For
instance, the traders of medical pharmaceuticalproducts include doctors, whereas the traders ofgeneral pharmaceutical products do not. The
consumers of the medical pharmaceuticalproducts are patients, whereas the consumers of●

IIP Bulletin 2012Vol.21

general pharmaceutical products are general
consumers.
Regarding the way “actual state oftransactions” should be taken into considerationin future proceedings, many of the industry
groups that participated in this interview survey
commented that they did not find any particular
problems with the conventional method ofproceedings. Some of the industry groups pointed
out that general “actual state of transactions”
would suffice at the stage of JPO trial and that any
party that hopes for careful consideration of
specific “actual state of transactions” should file alawsuit to seek revocation of a JPO trial decisionand obtain a court judgment.
3

Future approach to “actual state oftransactions” that should be taken into
consideration in the process ofassessing trademark similarity or
dissimilarity, etc.

Regarding the issue of what actual state oftransactions should be taken into consideration in
the process of making a judgment of trademark
similarity or dissimilarity, there is a precedent
where the court held that actual state oftransactions shall be taken into consideration only
if they are general or consistent in the businessfield of the designated goods, etc. Since then,courts have adopted this approach, when taking
actual state of transactions into consideration.
Since the scope of actual state oftransactions is very wide, it would be impossible
for the JPO to take into consideration all of theactual state of transactions on its own authority.
Under the current system, if the evidence ofspecific actual state of transactions is submitted
to an ex parte JPO trial, those “actual state oftransactions” would be taken into consideration.
Therefore, it would be reasonable to have theparties concerned submit the evidence of any
actual state of transactions that should be taken
into consideration. It would be possible toencourage the parties to submit more evidence of“actual state of transactions” at that the stage of
JPO trial through active use of such systems as“oral hearing” or “questioning” in the course ofproceedings.
There is a view that, if a court has revoked a
JPO trial decision based on certain judgment
criteria that are different from those based on
which the JPO trial decision was made, the JPO
should appeal to the Supreme Court and seekcorrection of the “discrepancy” that the JPO
7 ●found in the judgment of the lower court. If there
is a wide discrepancy between a JPO trial decision
and a court judgment, it might be reasonable for
the JPO and the court to make efforts to deepen
mutual understanding through opinion exchange
sessions and study meetings.
Furthermore, it might be reasonable to makeuse of the knowledge of a third party bycontacting a person knowledgeable about theindustry in question and ask for advice
concerning what “actual state of transactions”
should be taken into consideration.
It should be noted that the evidence
submitted by a party concerned at the stage of
JPO examination and trial is not necessarily
identical with the evidence submitted at the stageof a lawsuit. Furthermore, under the Japanesetrademark system, which has adopted theprinciple of first-to-register, the trademark inquestion has not been in use yet, in other words,
the actual use of the trademark cannot be taken
into consideration at the time of the grant of theexaminer’s
decision.
Therefore,
when
determining, from the perspective of efficiency,
how many resources should be spent to examine
actual state of transactions and how much effort
should be made to collect the evidence ofindividual actual state of transactions and to takethem into consideration, the JPO should take aflexible approach suitable for the characteristics
of goods or services on a case-by-case basis.
4

the way proceedings are carried out and toenhance the predictability of the result ofproceedings.
(Senior Researcher: ONG Poh Chuan)

Conclusion

As described above, further efforts need tobe made to enhance the method in which actual
state of transactions are taken into considerationand to allow the parties concerned, including thedemandant of a JPO trial, to benefit fromhigh-quality proceedings and predictable JPO trial
decisions.
A judgment of trademark similarity or
dissimilarity should be made based not on formal,
uniform, inflexible judgment criteria, but on
general, comprehensive criteria in considerationof “actual state of transactions.” Otherwise, itwould be impossible to establish and maintain astable and high-quality system of proceedings.
In view of the current method in which“actual state of transactions” are taken into
consideration in the phase of JPO examinationand trial, it seems impossible to completely
resolve the discrepancy between the JPO and acourt in terms of the result of proceedings. A
further study needs to be conducted to improve●

8 ●IIP Bulletin 2012Vol.21