1

System Reforms in the Industrial Property Field(Trademark System Reforms)

Amid progress in reforms of industrial property systems, Strategic Program for the Creation, Protection
and Exploitation of Intellectual Property has recommended that concrete measures will be considered to develop
an environment for providing products and services of greater value, along with consideration of a desirable
trademark protection system, and a conclusion will be drawn by FY 2005.
Recently, there have also been active movements regarding trademark systems on a global level, such as
movements regarding the European Community Trade Mark system. Now is the time for us to review theJapanese trademark system while taking into account the possibility of drastic system reforms.
This report presents and studies major problems for reviewing the Japanese trademark system.
More specifically, this report addresses the potential problems facing Japan when introducing theexamination system, which has been adopted in European trademark systems, where examination of earlier
registered trademarks is conducted upon the filing of an opposition (opposition examination system). The
handling of the concepts of “similarity” and “likelihood of confusion” in Japan, Europe, and the United States,
and a desirable way of assessing such concepts in Japan are also addressed.

Ⅰ Introduction
1

Background Factors for the Review ofIndustrial Property Systems

In order to ensure that Japan will maintain its
industrial competitiveness and secure its position asa major economic power surviving the global
competition, we should create abundant intellectual
property, and protect and exploit it properly.
As recommended in the Intellectual Property
Policy Outline formulated by the government,
reforms of industrial property systems are being
desired with the aim of establishing Japan as “anation built on intellectual property,” and specificmeasures are being implemented to this end,
including the enactment of the Basic Law onIntellectual Property.
2

Progress in the Review of the Trademark
System

As for the trademark system, the Intellectual
Property Policy Outline stated as follows: “The GOJ
will consider specific measures to develop an
environment for providing products and services ofgreater value by using attractive brand names, alongwith consideration of a desirable trademark
protection system, and a conclusion will be drawn
by FY 2005.”

The Institute of Intellectual Property has also
conducted research studies on trademark systems
in recent years. Based on the results of thesestudies so far, this report, for the purpose ofdesigning an appropriate trademark system andfinding solutions to the problems in the existing
trademark system, presents the results of further
research study on system reforms at home andabroad.

Ⅱ Present Situation and Problemsof Trademark Systems
1

Present Situation
Trademark System

of

the

Japanese

The existing Japanese trademark system,
established in 1959, has gone through several
reforms to date. However, as more than forty years
have passed since its establishment, it has been
pointed out that a review of the overall frameworkof the system is necessary.
2 Trademark Systems in Europe(*1)(1) European Community
The European Community (EC) adopted the“First Council Directive 89/104/EEC of 21
December 1988 to Approximate the Laws of theMember States Relating to Trade Marks”(hereinafter referred to as the “First Council(*1) In describing foreign trademark systems in the Japanese version of this report, much reference was owed to AIPPI JAPAN,
Gaikoku kogyoshoyuken horeishu (Collected foreign intellectual property laws), (AIPPI JAPAN, 2001 Supplement, 2004),
in addition to literature mentioned in footnotes. As for the Regulations on the Community Trade Marks, reference wasmade to Yukisato Iida, Oshukyodotai shoho seido shinko (New study on the Community trademark system), (Japan
Institute of Invention and Innovation, 1997).

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Directive”) and the Council Regulation (EC)
No.40/94 of 20 December 1993 on the Community
Trade Mark (hereinafter referred to as the“CTMR”). Having prepared for the establishment of
the Office for Harmonization in the Internal Market(hereinafter referred to as the “OHIM”), the receipt
of applications for Community trademarks started in
April 1996.
The Community trademark system adopts theprinciple of registration, the principle of substantive
examination, the pre-grant opposition system, andthe examination system in which the examination as
to relative grounds for refusal is conducted upon thefiling of an opposition.
(2) Germany
The German Trademark Act was revised in
1994 for the implementation of the First Council
Directive. The German trademark system adopts
the principle of registration, the principle ofsubstantive examination, the post-grant opposition
system, and the examination system in which theexamination as to relative grounds for refusal isconducted upon the filing of an opposition.
(3) United Kingdom
In the United Kingdom, the existing Trade
Marks Act was also enacted and enforced in 1994 forthe implementation of the First Council Directive.
The U.K. trademark system adopts the principle ofregistration,
theprincipleofsubstantive
examination, and the pre-grant opposition system.
(4) United States
In the United States, there are federal
trademark rights and state trademark rights.
Federal trademarks are registered under the
Trademark Act of 1946 (hereinafter referred to as
the “Lanham Act”), which adopts the first-to-use
system, the principle of substantive examination,and the pre-grant opposition system. Meanwhile,each state also has its own state law that provides
for the registration of trademarks used in the state.
In some states where trademarks are not protectedunder state laws, common law protection isavailable. This report focuses on federal trademarks,
and therefore, the U.S. trademark system refers to
the federal trademark system and the U.S.
trademark law refers to the Lanham Act.

Ⅲ Relative Grounds for Refusal ofRegistration of Trademark
1

Purpose of the Survey

Under the Japanese Trademark Law,registration of a trademark shall be refused in cases[1] where the trademark is identical or similar toanother person’s registered trademark for which a
trademark application was filed earlier, and goods orservices that are designated for the trademark are

identical or similar to those designated for theearlier registered trademark (Article 4(1)(x) and(xi)), and [2] where the trademark is likely to cause
confusion as to goods or services that are related toanother person’s business (Article 4(1)(xv)).
In the examination process, the similarity oftrademarks shall be assessed by taking into accountactual circumstances of trading of the goods orservices concerned. However, it is often difficult totake the specific situation of trading into account if
the trademark to be examined has yet to be put into
use by the time of examination, therefore,
registration of a trademark seems to be refused inmost cases where the trademark is likely to cause
general confusion as to the source of goods orservices.
In most European countries, relative grounds
for refusal are handled differently from the mannerin which they are handled in Japan, and in thisrespect,
weshouldexamineinstitutionalframeworks in Europe and the United States.
This section presents how relative grounds forrefusal are handled in Europe and the United Statesand discusses problems that might possibly beraised if European systems are introduced in Japan.
2“Relative Grounds for Refusal” and theJapanese Trademark System

Under the Community trademark system andother European trademark systems, grounds forrefusal are divided into “absolute grounds forrefusal” and “relative grounds for refusal”. The
examination as to relative grounds for refusal shallbe conducted upon the filing of an opposition(hereinafter referred to as the “opposition
examination system”).
Comparing European systems with theJapanese system, largely, reasons for refusal for
public interests and reasons for refusal for privateinterests in Japan correspond to absolute grounds
for refusal and relative grounds for refusal in Europe
respectively.
3

Handling of Relative Grounds for Refusal
under the Japanese Trademark Law

The Japanese Trademark Law provides that theexaminer shall make a decision that a trademark
application is to be refused where it falls under anyof the paragraphs of Section 15. The matters set
forth in the paragraphs of Section 15 are examinedby the examiner ex officio in order to determine
whether or not to register the trademark.
4

Handling of Relative Grounds for Refusal
under the European Trademark Law(1) European Community● 3 ●IIP Bulletin 2004

Since its establishment, the CTMR
hasadopted the opposition examination system as torelative grounds for refusal, and requires searches of
earlier trademarks. The Regulation provides that, as
relative grounds for refusal, the trademark for whicha trademark application is filed shall not beregistered (a) if it is identical with an earlier
trademark and the goods or services for which
registration is applied for are identical with thegoods or services for which the earlier trademark is
protected, or (b) if, because of its identity with orsimilarity to an earlier trademark and the identity orsimilarity of the goods or services covered by thetrademarks, there exists a likelihood of confusion on
the part of the public in the territory in which theearlier trademark is protected or the likelihood ofconfusion includes the likelihood of association withthe earlier trademark. Ex officio examination shallbe conducted as to absolute grounds for refusal but
shall not be conducted as to relative grounds forrefusal.
Currently, the OHIM and Member States shall
operate searches of earlier Community trademarks
and national trademarks. This search system will berevised, and a search of national trademarks will be
operated at the request of the applicant.
Prior to the grant of a trademark right, any
persons who satisfy the prescribed requirements
may file an opposition based on relative grounds forrefusal whereas the applicant may, in the opposition
procedures, challenge the argument that the earlier
trademark has been put to use in good faith. The
examination of the opposition shall only be
supported by the facts, evidence, and arguments
offered by the parties concerned. After the
trademark is registered, an application for adeclaration of invalidity of the registration may also
be made based on absolute or relative grounds forinvalidity.
(2) Germany
The opposition examination system is also
adopted in Germany. A system for notifying theowner of an earlier trademark right of the existenceof a later trademark application was adopted in 1894,
but it did not function due to chaos in the post-war
period. In 1949, the German Trademark Act adopted
a system for conducting the examination as toabsolute grounds for refusal while allowing
oppositions to be filed based on earlier trademark
rights, and the post-grant opposition system wasintroduced upon legal revision in 1994.
Ex officio examination shall only be conducted
as to absolute grounds for refusal, and a trademark
shall be registered without going through theexamination as to relative grounds for refusal. The
German system differs from the Community systembecause the former includes well-known
trademarks that satisfy the prescribed requirementsin the scope of ex officio examination. Opposition

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may be filed within three months of publication of
the registration of the trademark, and earlier
trademarks based on which opposition is filed must
be in use.
Where a registered trademark has not been put
to use, the registration may be cancelled uponrequest to the Patent Office or the court on the
grounds of revocation. The registration of a
trademark may be cancelled on the grounds ofnullity upon request where the trademark has beenregistered despite the existence of absolute grounds
for refusal. The registration of a trademark may also
be cancelled ex officio where the registeredtrademark is contrary to public policy. The
registration of a trademark may also be cancelledupon request to the court on the grounds of
revocation due to relative grounds for refusal.
(3) United Kingdom
The U.K. Trade Mark Act is distinctive among
European trademark systems as it includes relative
grounds for refusal in the scope of ex officio
examination. The Act provides for absolute grounds
for refusal of registration, specially protected
emblems, and relative grounds for refusal ofregistration. Ex officio examination, including asearch of earlier trademarks, shall be conducted.
Applications
thatsatisfy
theprescribed
requirements shall be published, and notice of
opposition to the registration may be given within
three months of publication. Before registration,observations may also be made to the registrar as towhether the trademark should be registered. Any
person may give such notice of opposition or makesuch observations. A trademark shall be registered
if no notice of opposition is given within theprescribed period.
Registration of a trademark shall not be
prevented where the proprietor of the earlier
trademark or other earlier right consents to theregistration (“consent system”). The application forregistration of a trademark shall not be refused
where the trademark for which the application is
filed has been honestly and concurrently used(honest concurrent use).
Any person may make an application, either tothe registrar or the court, for revocation of theregistration of a trademark where the trademark has
not been put to use, and for a declaration ofinvalidity of the registration of a trademark where
there are absolute or relative grounds for invalidity.
Discussion was held as to the desirable form of
the examination system in response to a call forchange in the current system, in which ex officio
examination is conducted as to relative grounds forrefusal. As a result of this discussion, the current
examination system will not be changed for the time
being, but there seems to be a strong possibility that
it will be changed in the future.
(4) United States● 4 ●Under the Lanham Act, ex officio examination
shall be conducted as to trademarks that havealready been registered, and an application forregistration of a trademark shall be refused if the
trademark has resemblance to such earlier
registered trademarks to the extent that thetrademark is likely to cause confusion or mistake.
The consent system is also available but a
trademark shall not be registered if it is likely tocause confusion or mistake. Registration shall be
published where the examination has revealed thatthe applicant has a legitimate right to obtain theregistration of the trademark. Any person who
believes that he would be damaged by theregistration of a trademark may file an opposition
within thirty days after publication of theregistration. Though the Lanham Act does notclearly provide for grounds for filing an opposition,
the United States Patent and Trademark Office(hereinafter referred to as the “USPTO”) and courts
construe that an opposition may be filed on the
ground that the trademark falls under any of thereasons for refusal of registration prescribed in
Section 2. Unless opposition to registration is
accepted, the trademark shall be registered.
Any person who believes that he is damaged by
the registration of a trademark may file a petition tocancel the registration within five years from thedate of the registration.
In any legal proceedings, the parties may apply
equitable principles such as nonfeasance, estoppel,
and acquiescence, and dispute over the validity of
the right.
5 Conclusion(1) Problems
tobeconsideredfor
introducing the examination system inwhich the examination as to relative
grounds for refusal is conducted upon
the filing of an opposition(i) Reduction in time for examination and increasein the efficiency of examination
It is desired in Japan that the time for
examination of applications for trademark
registration be further reduced. The introduction of
the opposition examination system is expected toreduce examination workload, but it would also
result in the increased number of oppositions to
trademark registration. We should consider how to
reduce examination workload from an overall
perspective.
(ii) Concern over the increase in the number ofoppositions to trademark registration
If the opposition examination system is
introduced, a trademark will be registered without
being examined as to the relationship with earlier
trademarks, which raises concern over the increasein the number of oppositions to trademark
registration. Under the Community trademark
system, oppositions are frequently filed but most ofthem are settled before the Office makes final
decisions. In light of this, we should also consider
the introduction of the opposition examination
system while not only paying attention to the rate of
oppositions but also taking a comprehensive
perspective.
(iii) Assessment of the likelihood of confusion while
taking actual circumstances into accountUnder the opposition examination system, theexamination will be conducted upon the filing of an
opposition to trademark registration or the demandof a trial for invalidation of a trademark registration,and the specific situation, including the use of the
trademark, is expected to be taken into account as
appropriate to the examination. If the examination
as to relative grounds for refusal is conducted in amore proper manner, persons who intend to use
trademarks will have more freedom to choose
trademarks that they use.
(iv) Stability of rights concerning trademarks
If the examination as to relative grounds forrefusal is conducted upon the filing of an opposition
to a trademark registration, the stability of rights
concerning the trademark will be threatened. In thisrespect, the following problems can be pointed out.
[1] Possibility of revocation of the registration
Due to the opposition to the trademark
registration, the trademark right might be deemed
never to have existed, which would threaten thestability of the right. The possibility of such
retrospective extinguishment of right also currently
exists in the case of a trial for invalidation ofregistration. We should consider the impact of thepossible increase in the number of trademark rights
to be revoked due to oppositions.
[2] Exercise of the trademark right
In the case where the owner of a trademark
right exercises his right, if the other party isallowed to make a counterclaim based on relative
grounds for invalidity of the trademark registration,
the dispute would be prolonged.
[3] “Sense of security” when using the trademark
Under the existing system, the person who has
obtained a trademark registration may feel secure
when using his own trademark. However, thesituation in Europe where the OHIM does notundertake searches on individual request(*2) seems
to be undesirable.
(v) Increase in the burden of monitoring later
trademarks and filing
oppositions
toregistration
The owner of a trademark right or the applicant
for trademark registration will have to monitor any
trademark application, which will be filed by another(*2) COM (2002) 754 final．

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person, after the filing date of his trademark
application, in relation to a trademark that is
identical or similar to his trademark while
designating goods or services identical or similar to
those designated for his trademark, and will have to
file an opposition to registration of such later
trademark, if necessary.
(2) Relationship with the consent system
There is a strong call for the introduction of theconsent system in which the registration of a later
trademark is allowed with the consent of the ownerof the earlier registered trademark, even if the later
trademark is identical or similar to the earlier
trademark and used for goods or services that are
identical or similar to those designated for theearlier trademark. If the examination as to relative
grounds for refusal is conducted upon the filing of an
opposition, such an examination system may bringabout the same effect as if the consent system wereintroduced. Therefore, when introducing theconsent system, we should consider the relationshipbetween the consent system and the opposition
examination system.
(3) Other problems to be considered
If the opposition examination system were to
be introduced, there would be many options to bechosen as to the details of the system. Therefore, in
addition to the problems mentioned above, weshould consider other problems such as how tohandle the opposition system, to what extent theexaminer should be allowed to examine theopposition ex officio, and security measures against
confusion.

Ⅳ Trademark Search Enterprises
If the examination as to relative grounds forrefusal is conducted upon the filing of an opposition,
the owner of the earlier registered trademark will
have to monitor later registered trademarks or file
oppositions to later registrations. From thisperspective, the survey was conducted targeting
enterprises that are engaged in trademark
monitoring services.
The trademark search enterprises stated thatthey were able to provide services for operating
searchers on national or foreign trademarks,
monitoring trademarks, and operating searches onsimilar company names and domain names, but thecontents of their services are diversified. It is also
not easy to compare their service fees because they
offer discounts depending on the contents ofsearchers requested.

Ⅴ Concepts of Identity, Similarity,and Likelihood of Confusion
1

Purpose of the Survey
Under the Japanese trademark system, theconcepts of identity, similarity, and likelihood ofconfusion between trademarks or goods/services
are important factors when considering whether togrant a trademark registration and how to define thescope of the effect of a trademark right. It is pointed
out, however, that the results of the assessment ofthese concepts regarding individual trademarks
often differ depending on the circumstances such as
the increase in the recognition of the trademark.
This survey focuses on how the concepts ofidentity, similarity, and likelihood of confusion areassessed in Japan, Europe, and the United States.
2

Assessment of the Concepts under theJapanese Trademark Law(1) Provisions on identity, similarity, andlikelihood of confusion
An application for registration of a trademark
shall be refused where the trademark is identical orsimilar to another person’s well-known trademark
or another person’s registered trademark for whicha trademark application was filed earlier, and goods
or services that are designated for the trademark
are identical or similar to those designated for theearlier registered trademark. This operation isintended to prevent confusion as to the source ofgoods or services(*3). Section 4(1)(xv) also provides
for the likelihood of confusion.
(2) Academic views on identity, similarity,and likelihood of confusion
According to one of the academic views on therelationship between the provision of Section
4(1)(xi) and the likelihood of confusion as to thesource of goods or services(*4), there is no option,
when examining an application for trademark
registration, but to assume that the trademark
mentioned in the application will be used. It is also
necessary to take into account what the earlier
registered trademark, which has been put to use, iscalled or recognized in the commercial world. The
likelihood of confusion with the earlier registeredtrademark should not be assessed only by general,
abstract, or conventional criteria.
Another academic view(*5) insists on trying tofind a positive significance in the provision ofSection 4(1)(xi), stating: “this provision is intended
to deny registration of a trademark that is similar to
the registered trademark to the extent that goods orservices designated for the trademark are similar to(*3) Japan Patent Office, ed. Kogyoshoyukenho chikujokaisetsu (Clause-by-clause explanation of industrial property laws),(16th ed. )p1063 (Japan Institute of Invention and Innovation, 2001),(*4) Makoto Amino, Shohyo (Trademark), (6th ed. )p362, 374 (Yuhikaku, 2002),(*5) Yoshiyuki Tamura, Shohyoho gaisetsu (Overview of the Trademark Law), (2nd ed. ) p56, 60, 114, 117 (Kobundo, 2000),

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those designated for the registered trademark, withthe aim of defining the minimum scope oftrademarks that are similar to the registeredtrademark and therefore should not be registeredconcurrently; desirably, the scope of suchtrademarks to be excluded from registration should
be narrowed where the registered trademark has
not been put to use whereas the scope should bebroadened where the registered trademark is put touse and becomes well known.” This view also
argues that the likelihood of confusion as prescribedin Section 4(1)(xv) includes the likelihood in the
broad sense, and another person’s indication must
be beyond the level of being “well known among
consumers” as prescribed in Section 4(1)(x).
(3) Assessment of the similarity andlikelihood of confusion(i) Assessment of the similarity of trademarks andgoods/services
There is a little need to distinguish “identity”
and “similarity” when comparing trademarks andgoods/services, and the Patent Office and courts
consider “identity” and “similarity” collectively.
Therefore, the discussion here only addresses“similarity.”(ii) Similarity of trademarks
In the judgment of the Hyouzan case(*6), theSupreme Court pointed out: “The similarity oftrademarks should be assessed by considering
whether misunderstanding or confusion would becaused as to the source of goods if both trademarks
in comparison are used for the same or similar
goods, and in this case, such assessment should bemade based on the specific situation of trading of thegoods, while comprehensively and totallyconsidering what impression, memory, or
association would be given to consumers by theappearance, concept, and appellation of eachtrademark when it is used in respect of such goods,
and grasping the actual circumstances of suchtrading as clearly as possible.”With consideration to the actual circumstancesof trading, the Supreme Court judgment in the
Shinga case(*7) accepted the determination by the
court of the second instance that assessed thesimilarity of trademarks in light of specificcircumstances of trading. In this judgment, theSupreme Court pointed out that the appellations of
the two trademarks concerned might not be very
similar to one another in an abstract comparison,but stated, “in light of specific circumstances of

trading, Shinga and Shinka may be confused witheach other, and therefore the court of the second
instance judged the appellations of these
trademarks to be similar to each other.”(iii) Similarity of goods/services
In the Tachibanamasamune case(*8), theSupreme Court held that the similarity of goods
would be acknowledged “where the same or similar
trademarks are used for the goods and therefore thegoods are likely to be falsely recognized as being
produced or sold by the same person.”(iv) Assessment of the likelihood of confusion
The Supreme Court judgment in the L’Air Du
Temps case(*9) pointed out that the likelihood ofconfusion as prescribed in Section 4(1)(xv) included
the likelihood that the use of the trademark for its
designated goods would bring about a false
recognition that the goods were related to thebusiness of a person that had a close business
relationship with another person (as its subsidiaryor affiliated company) or belonged to anotherperson’s business group under the same indication(likelihood of confusion in the broad sense).
(v) Assessment of the similarity and likelihood ofconfusion in the examination
It is pointed out that, due to the difficulty intaking into account the actual circumstances of
trading, applications for trademark registration areoften examined by considering whether the
trademark is “likely to cause general or abstract
confusion” with other trademarks.
3

Assessment of the Concepts under theEuropean Trademark Laws
(1) European Community(i) Impact of the assessment of the concepts under
the Community trademark system to member
statesIn construing the provisions of the CTMR,
member states seem to follow the construction
under the First Council Directive.
(ii) Provisions of the European Community
Under the CTMR, the trademark shall not beregistered if, because of its identity with, orsimilarity to, the earlier trademark and the identity
or similarity of the goods or services covered by thetrademarks, there exists a likelihood of confusion on
the part of the public. This provision applies to the“likelihood of confusion” because of the similarity oftrademarks, which is different from thecorresponding provision under the Japanese(*6) 1964(Gyo-Tsu)No. 110, Judgment of the Second Petty Bench of the Supreme Court of February 27, 1968, Minshu Vol. 22,
No. 2, at 399(*7) 1958(O)No. 766, Judgment of the Third Petty Bench of the Supreme Court of October 4, 1960, Minshu Vol. 14, No. 12, at
2408(*8) 1958(O)No. 1104, Judgment of the Third Petty Bench of the Supreme Court of June 27, 1961, Minshu Vol. 15, No. 6, at
1730(*9) 1998(Gyo-Hi)No. 85, Judgment of the Third Petty Bench of the Supreme Court of July 11 2000, Minshu Vol. 54, No. 6, at
184

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Trademark Law. In the European Community, it isalso considered difficult to assess the identity andsimilarity of trademarks and of goods/services
objectively.
(iii) First Council Directive
The three leading cases judged by theEuropean Court of justice were related toapplications for trademark registration filed under
the First Council Directive. This directive provides
for grounds for refusal due to the identity, similarity,and likelihood of confusion in Article 4(1), and rights
conferred by a trademark in Article 5(1). The
European Court of justice stated in its judgmentthat these provisions contemplate the same
criterion for assessing “identity” of two
trademarks(*10).
(iv) Important judicial precedents
This section presents leading cases judged by
the European Court of justice. In the SABEL
case(*11), the Court denied the application of theprovision of Article 4(1) of the First Council
Directive when there existed no such likelihood ofconfusion on the part of the public, holding that thelikelihood of confusion must be appreciated globally,taking into account all factors relevant to thecircumstances of the case.
In the Canon case(*12), the Court stated that the
global assessment as to the likelihood of confusion
included some independence between the relevant
factors, and in assessing the similarity ofgoods/services concerned, all relevant factors
should be taken into account, such as their nature,
their end users and their method of use andwhether they were in competition with each otheror were complementary.
In the Lloyd Schuhfabrik Meyer case(*13), theCourt pointed out that the global appreciation of thelikelihood of confusion must, as regards the visual
similarity of the marks in question, be based on theoverall impression created by them, bearing in mind,
in particular, their distinctive and dominantcomponents. The Court also stated that, in order toassess whether the trademark was highly
distinctive, it was necessary to make a global

assessment of the capacity of the mark to
distinguish the goods or services for which it had
been registered from those of other undertakings.
(v) Other precedents
The Court also stated that the existence of the“likelihood of confusion” should not be presumed by
the national court but it should be supported by the
positive proof from the finding by the national
court.”(*14)(2) Germany
In the Attaché/Tisserand case(*15), the German
court also judged that “the overall impression of the
trademark, which was the basis for considering the
likelihood of association, must be assessed
according to the notion of consumers who haveaverage knowledge, average carefulness, andaverage wisdom in the category of the goods orservices concerned.”(3) United Kingdom
There was a case concerning interference thatwas judged before the SABEL case(*16).
(4) United States
Section 2(d) of the Lanham Act provides for the“likelihood of confusion.” This issue is assessed byapplying the criterion presented in the Du Pont
case.(*17)(*18)
The criteria for assessment as to Section 2(d)applied by the USPTO in the examination process
and in the opposition procedures are the same asthat applied by federal courts in infringementcases(*19). In assessing the likelihood of confusion in
the opposition procedures, whether the applicant
actually uses the mark mentioned in his application
is not taken into account; the USPTO only assesses
whether the mark mentioned in the application is
likely to cause confusion if it is used in respect of
the goods designated in the application.
4

Conclusion

In Europe and the United States, the likelihoodof specific confusion seems to be assessed by taking
specific likelihood into account.
The provisions of Section 4(1)(x) and (xi) of the(*10) Case C-291/00 LTJ Diffusion SA vs. Sadas Verbaudet SA (2003)(*11) Case C-251/95 SABEL vs. PUMA (1997) ECR I-6191(*12) Case C-39/97 Canon vs. MGM (1998) ECR I-5507(*13) Case C-342/97 Lloyd Schuhfabrik Meyer & Co. GmbH vs. Kleijsen Handel BV (1999) ECR I-3819(*14) Case C-425/98 Marca Mode CV vs. Adidas AG, Adidas Benelux BV(*15) Attaché/Tisserand GRUR 2000, 506 et seq.
(*16) Origins Natural Resources Inc. vs. Origin Clothing Limited, 17 November 1994, (1995) FSR 280; British Sugar plc. vs.
James Robertson & Sons, 7 February 1996, (1996) RPC 281; Wagamama Ltd. vs. City Center Restaurants, City Center
Restaurants (UK) Ltd., 20, 21, 24-26 July 1995 (1995) FSR 713(*17) In re E.I.Du Pont de Nemours & Co., 177 U.S.P.Q. 563 (C.C.P.A. 1973)(*18) In the ordinary examination, the likelihood of confusion seems to be assessed as to (1) the similarity of the marks in their
entireties as to appearance, sound, connotation and commercial impression and (2) the similarity of the goods or services
as described in an application or registration, and other matters are not taken into account unless relevant evidence isincluded in the records.
(*19) Midland Cooperatives, Inc. v. Midland Int’l Corp., 164 U.S.P.Q. 579 (C.C.P.A. 1970)

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Japanese Trademark Law do not indicate thelikelihood of confusion on the part of the public as aclear requirement, but the courts seem to regard
whether or not the likelihood of confusion exists as
to the source of goods/services as a criterion forassessment. However, it is not always possible, atthe time of assessment as prescribed, to take into
account the actual circumstances of trading, andtherefore, if there exists a likelihood of general
confusion as to the source of goods or services,
applications for trademark registration might berefused even if there exists no likelihood of specificconfusion as to the source.
In order to ensure that trademarks are capableof distinguishing one’s goods/services from those ofothers, it seems desirable to clearly provide that thesimilarity of trademarks shall be assessed on thebasis of the likelihood of confusion, and in thisrespect, a desirable way to assess the likelihood ofconfusion is to first examine the existence of thelikelihood of general confusion as to the sources ofgoods/services and then give consideration to
specific circumstances of trading.

3

Handling under the European Trademark
Laws

Under the CTMR and the German Trademark
Act, when an opposition is made based on theearlier registered trademark that has not been put
to use for a certain period of tine, the party against
which the opposition is made is allowed to argue thenon-use of the earlier registered trademark.
4

Conclusion

Whether it is appropriate in Japan to allow
registration of a trademark, which should normallybe revoked, to be revoked upon the filing of an
opposition to registration should be considered inlight of the purpose of the law, e.g. maintaining
commercial credit of the user of the registeredtrademark.

Ⅶ Other Matters Surveyed

Ⅵ Restriction on the Filing of
Opposition to Registration Basedon the Trademark Not in Use

Surveys were also conducted regarding othermatters to supplement the past discussions andreports, such as the examples of registered marks ofretailers and the collective trademark system in the
United States.

1

Ⅷ Final Conclusion

Purpose of the Survey

Under the Japanese trademark system, whenan opposition to a trademark registration is filed, theregistration shall be revoked if the trademark has
certain relevance with a registered trademark forwhich a trademark application was filed earlier, andin the opposition procedures, whether the earlier
registered trademark has not been put to use for acertain period is not examined.
In Europe, on the other hand, when an
opposition is made based on the earlier registeredtrademark that has not been put to use, the party
against which the opposition is made is allowed toargue the non-use of the earlier registeredtrademark.
We should consider introducing such system inJapan.
2

Handling under the Japanese Trademark
Law

The registration of a trademark may be
revoked even due to an opposition based on theearlier registered trademark that has not been put
to use for a certain period of time. Therefore, thelater applicant or the owner of the later registeredtrademark should demand a trial for revocation of
trademark registration on the ground of non-use,and have the earlier registered trademark revoked.

If the examination as to relative grounds forrefusal is conducted upon the filing of an opposition,
concern will be raised over the increase in thenumber of oppositions to trademark registration.
Furthermore, how to protect public interest from
confusion should be considered while taking into
account security measures such as requests forindications to prevent confusion and trials forrevocation.
In assessing identity, similarity, and likelihoodof confusion, emphasis should be placed on thelikelihood of specific confusion as to the source ofgoods/services in the examination while taking into
account the possible scope of trademarks that arelikely to cause confusion in the future.
With respect to the restriction on the filing ofan opposition based on the registration of a
trademark that has not been put to use for a certain
period of time, we should discuss whether it isappropriate to allow the party to which the
opposition is filed to argue the non-use of the earlier
registered trademark.
The problems discussed in this report areclosely related with one another, and therefore it isdesirable to consider them comprehensively when
designing the future form of the Japanese trademark
system.

● 9 ●(Researcher: Atsushi Mizuno)

IIP Bulletin 2004