Trademark Date
Right
Case number

March 9, 2023
2022 (Gyo-Ke) 10122

CourtIntellectual Property
High Court, Second
Division- A case in which the court rescinded the JPO's decision of dismissal of a case of
appeal against an examiner's decision of refusal by holding that the Applied
Trademark, "朔北カレー", is not similar to the Cited Trademark, "サクホク".
Case type: Rescission of Appeal Decision of Refusal
Result: Granted
References: Article 4, paragraph (1), item (xi) of the Trademark Act
Related rights, etc.: Trademark Application No. 2020-20177
Decision of JPO: Appeal against an Examiner's Decision No. 2021-16353
Summary of the Judgment
The present case is a suit against the JPO's decision of dismissal of a case of
appeal against an examiner's decision which refused the application for registration of
the trademark, "朔北カレー" (Applied Trademark).

The point of issue is whether or

not the Applied Trademark falls under Article 4, paragraph (1), item (xi) of theTrademark Act.

In the JPO's decision, the court of prior instance held that " 朔北" isunderstood to be a kind of coined word that does not evoke any specific meaning, andthat, when the part, "朔北 ", is extracted from the mark, " 朔北 カレー ", as animportant part and compared with the Cited Trademark, "サクホク", the two have thesame sound although they are different in appearance, and neither generates any
specific concept.

As such, the court of prior instance acknowledged that the two

trademarks are similar, and that the Applied Trademark falls under Article 4,paragraph (1), item (xi) of the Trademark Act.
In the judgment of the present case, the present court held that in Japan, the word,"朔北", is understood to be a term which basically means "the direction of north" or"northern land", and the court stated as follows: [1] The Applied Trademark is acombined trademark consisting of "朔北" and "カレー", and while the part, "カレー",
does not generate the sound or concept as an indicator of source, the part, "朔北", ismerely understood by consumers and business customers to be a term that represents"the direction of north" or "northern land" instead of a term that represents a specificland.

As such, it should be possible to generate a sound or concept as an indicator ofsource for the designated goods (cooked curry, etc. contained in a vacuum-sealed
pouch in Class 29).

Meanwhile, there are no actual transactions in which consumers

and business customers are using the mark, "朔北カレー", as an indication that
constitutes a single meaning as a whole.

Accordingly, it cannot be acknowledgedithat the Applied Trademark consists of constituent parts which are combined in a waythat is inseparable and that suggests that it would be unnatural in a business
transaction to observe each constituent part separately.

As such, it should bepermissible to extract only the "朔北" part for comparison with another person's
trademark to determine the similarity of the trademarks; and [2] When the mark, "朔北", is compared with the Cited Trademark, "サクホク", the two marks have the same
sound but are clearly different in appearance and concept.

Meanwhile, there are no

actual transactions in which consumers and business customers can recall the Cited
Trademark, "サクホク", or the right holder of the Cited Trademark by looking at themark, " 朔 北 ".

In addition, it cannot be acknowledged that, concerning thedesignated goods for the Applied Trademark and Cited Trademark, there arecircumstances in which consumers or business customers determine the source of thegoods by identifying the goods based mainly on the sound of goods, and it cannot be
said that the distinctiveness of the sound surpasses the distinctiveness of theappearance and concept, so that when the Applied Trademark and Cited Trademark
are used on the same or similar goods, there is no risk of causing any
misunderstanding or confusion as to the source of the goods.

Accordingly, the court

determined that the Applied Trademark does not fall under Article 4, paragraph (1),item (xi) of the Trademark Act, and rescinded the JPO's decision.

ii

Judgment delivered on March 9, 2023
2022 (Gyo-Ke) 10122

Case of seeking rescission of JPO decision

Date of conclusion of oral argument: February 9, 2023
Judgment
Plaintiff: Hokuto Co., Ltd.
Defendant: Commissioner of JPO
Main Text
1.

The judgment rendered by the JPO for Appeal against Examiner's Decision No.

2021-16353 on October 21, 2022 shall be rescinded.
2.

The court costs shall be borne by Defendant.
Facts and Reasons

No. 1

Claim
The same as the main text of this judgment.

No. 2

Outline of the case
The present case is a case seeking rescission of a JPO decision which dismisseda request for appeal against the examiner's decision of refusal of an application for
trademark registration, and the point of dispute is whether or not the trademark
pertaining to Plaintiff's application for registration falls under Article 4, paragraph (1),item (xi) of the Trademark Act.
1. The Trademark
Plaintiff is the applicant of the following trademark (hereinafter referred to as"Applied Trademark") (Exhibit Ko 1; Exhibit Otsu 1).
(1)

Structure of the trademark(2)

Date of application: February 26, 2020

(3)

Classification of goods and services, and designated goods: Class

29
Cooked curry, etc. contained in a vacuum-sealed pouch; Curry mixes; Instant or precooked curry; Processed meat products made with curry; Processed seafood made1with curry; Processed vegetables and fruits made with curry; Side-dish made offermented soybean (Name-mono), made with curry
2. Outline of procedures at JPO
On February 26, 2020, Plaintiff filed an application for registration of the
Applied Trademark, and received a notice of the decision of refusal on September 1,
2021.
On November 30 of the same year, Plaintiff filed an appeal against examiner's
decision of refusal for the above decision of refusal (hereinafter refe rred to as"Appeal").

The JPO examined the request as Appeal against Examiner's Decision

No. 2021-16353, and on October 21, 2022, rendered the decision to the effect that"the request for Appeal cannot be established" (hereinafter referred to as "Decision "),and a copy of the Decision was delivered to Plaintiff on November 2 of the same year.
3. The gist of the reasons for Decision(1)

Applied Trademark

The Applied Trademark consists of the characters, "朔北カレー (Sakuhoku
Kare)", written horizontally, with the goods listed above in 1 (3) as designated goods
upon filing the application for registration.
(2)

Cited Trademark

In the decision of refusal made in the first instance, it was determined that the
Applied Trademark falls under Article 4, paragraph (1), item (xi) of the Trademark
Act.

The Trademark Registration No. 5787174 (hereinafter referred to as "Cited

Trademark"), which was quoted in the reasons for rejection of the Application,
consists of the characters, "サクホク (saku-hoku)", written in standard characters,
and the application for registration was filed on April 23, 2015 with the designatedgoods of "Milk products; Processed meat products; Processed seafood products;
Processed vegetables and fruits; Fried tofu pieces (Abura-age); Freeze-dried tofu
pieces (Kori-dofu); Jelly made from devils' tongue root (Konnyaku); Soya milk; Tofu;
Fermented soybeans [Natto]; Processed eggs; Curry stew, stew and soup mixes;
Cooked curry stew, stew, miso soup, soup, and beans contained in vacuum-sealed
pouches" in Class 29 and the goods in Class 30 which are as indicated in the registerof trademarks.

The Cited Trademark was granted registration on August 21 of thesame year, and remains in full force and effect.
(3)

Applicability of Article 4, paragraph (1), item (xi) of theTrademark Act
A. In the structure of the Applied Trademark, the characters, "朔北", constitutea word having meanings such as the following: "North, Northern" (Kojien Seventh2

Edition; Iwanami Shoten, Publishers).
is familiar with the word.

However, it is difficult to say that the public

Rather, the word is recognized as a kind of coined wordthat does not immediately evoke any specific meaning.

In addition, the characters, "カレー", constitute a word (the aforementioned book) having meanings such as "adish made with curry powder".
It can be said that the characters, "朔北", which are recognized as a kind ofcoined word that does not evoke any specific meaning, are more distinctive than thecharacters, "カレー", in relation to the designated goods of the Application, and thus
give a strong and dominant impression to business customers and consumers.

In thatcase, in the structure of the Applied Trademark, it cannot be acknowledged that thecharacter part of "朔北" and the character part of "カレー" are combined in a waythat is inseparable and that suggests that it would be unnatural in a business
transaction to observe each component part separately.

As such, it should be said

that it is also permissible to extract only the "朔北" part from the Applied Trademark
for comparison with another person's trademark (Cited Trademark) to determine thesimilarity per se of the trademarks.
Accordingly, in addition to the sound of "saku-hoku-curry" which is generated
correspondingly to the component characters of the entire Applied Trademark, thesound of "saku-hoku" is generated correspondingly to the character part of "朔北",which is the important part of the Applied Trademark (hereinafter sometimes referred
to as "Important Part of Application").

As such, the Applied Trademark does not

generate any specific concept.
B. The Cited Trademark consists of the characters, "サクホク", written instandard characters, and said characters are not listed in a dictionary or the like, sothat it is recognized as a kind of coined word that does not evoke any specificmeaning.
Accordingly, the Cited Trademark generates the sound of "saku-hoku"
correspondingly to the component characters, and does not generate any specificconcept.
C. When the Important Part of Application and the Cited Trademark arecompared, there is difference in appearance with regard to the type and number of thecomponent characters.

However, both are written using common fonts.

Next, in terms of sound, both generate the sound of "saku-hoku", so that they
have the same sound.
As for the concept, neither generates any specific concept, so that they cannot
be compared in terms of concept.
3Given the above, the Important Part of Application and the Cited Trademark
are compared as follows.

In terms of appearance, they have the difference of theformer using kanji characters and the latter using katakana characters, and they arealso different in the number of letters used, but they are both written using common
fonts.

In terms of sound, they share the sound of "saku-hoku" which is generated

from the Important Part of Application and the Cited Trademark.

In terms ofconcept, neither of them generates any specific concept, so that they cannot becompared in terms of concept.
Furthermore, in regard to the use of a trademark, the actual transactions which
are commonly conducted in Japan are such that component characters of a trademark
are written interchangeably in different character types such as kanji, katakana, andRoman letters within the extent of generating the same sound.

In addition, in regard

to a word trademark which does not have any specific concept, it is reasonable to saythat there are many instances in which a person, unable to memorize a trademark fromits concept, memorizes it from the sound it generates, and relies on the sound whenengaging in a transaction.
Based on the above, the Important Part of Application and the Cited Trademark
are such that even if the two differ in appearance and cannot be compared in concept,
it cannot be acknowledged, when the actual transactions as described above areconsidered, that the difference is so noticeable as to surpass the commonality in soundwhich plays a necessary role in a transaction.

As such, when the impression,

memory, association, etc. which the Applied Trademark and the Cited Trademark giveto business customers and consumers by their appearance and concept are taken
together, and are considered on the whole in light of the circumstances of transactions,
it is reasonable to determine that the two are similar trademarks having a risk of
causing misunderstanding or creating confusion as to the source of goods.
Accordingly, it is reasonable to determine that the Applied Trademark and theCited Trademark are similar trademarks having a risk of being confused with one
another.
D. The goods of "Cooked curry contained in a vacuum-sealed pouch; Currymixes; Instant or pre-cooked curry" in the designated goods of the Application, andthe goods of "Curry stew, stew and soup mixes; Cooked curry stew, stew, miso soup,
and soup contained in vacuum-sealed pouches" in the designated goods of the Cited
Trademark have the same consumers, raw materials, usage, place of sale, distribution
channel, etc., so that the goods of the Application and the Cited Trademark are
identical or similar.

In regard to the "Processed meat products made with curry;4

Processed seafood made with curry; Processed vegetables and fruits made with curry"in the designated goods of the Application, they are included in the "Processed meatproducts; Processed seafood; Processed vegetables and fruits" of the designated goodsof the Cited Trademark, so that the goods of both sides are identical or similar.
E. The Applied Trademark and the Cited Trademark are similar trademarks
having a risk of being confused with one another, and the designated goods of the
Application and the designated goods of the Cited Trademark are identical or similar.
Accordingly, the Applied Trademark falls under Article 4, paragraph (1), item(xi) of the Trademark Act.
(omitted)
No. 4

Judgement of this court
1. Similarity of trademarks(1)

The similarity of trademarks should be determined by whether or

not the two trademarks to be compared have a risk of causing misunderstanding or
creating confusion as to the source of goods when those trademarks are used for thesame or similar goods.

However, the decision-making requires the overall

consideration of the impression, memory, association, etc. given on the whole by thetrademarks, which are used for such goods, to business customers and consumers by
their appearance, concept, and sound, etc.

Furthermore, so long as the circumstancesof transactions involving such goods can be made clear, it is reasonable to determine
the matter based on the specific conditions of transaction.

Even if the two

trademarks are identical or similar in terms of any one of the appearance, concept, orsound, if the trademarks have no risk of causing misunderstanding or creating
confusion for source of goods because the trademarks are significantly different in
two other respects, or because of other circumstances of transaction, the trademarks
shall not be interpreted as being similar (refer to Supreme Court Judgment 1964 (Gyo Tsu) No. 110 rendered by Third Petty Bench on February 27, 1968 / Minshu Vol. 2 2,
No. 2, page 399).
In addition, in regard to a trademark which is interpreted as a composite
trademark consisting of combination of multiple component parts, if it isacknowledged that any part of the component parts of such trademark gives a strong
and dominant impression to business customers and consumers as an indicator ofsource of goods or service, or if it is acknowledged that no sound or concept as anindicator of source is generated from other parts, or if, for other reasons, it cannot be5acknowledged that the component parts of the trademark are combined in a way thatis inseparable and that suggests that it would be unnatural in a business transaction toobserve each component part separately, it should be permissible to extract only said
part of the component parts for comparison with another person's trademark to
determine the similarity per se of the trademarks (Supreme Court Judgment 1962 (O)No. 953 rendered on December 5, 1963 / Minshu Vol. 17, No. 12, page 1621;
Supreme Court Judgment 1991 (Gyo-Tsu) No. 103 rendered by Second Petty Benchon September 10, 1991 / Minshu Vol. 47, No. 7, page 5009; Supreme Court Judgment
2007 (Gyo-Hi) No. 223 rendered by Second Petty Bench on September 8, 2008 /Saibanshu (Minji) No. 228, page 561).
(2)

When the above is considered for the present case, the Applied

Trademark consists of the five characters "朔北カレー" written horizontally in thesame font, with the "朔北" part being written in kanji and the "カレー" part being
written in katakana characters.
A. Concerning the "朔北" part(A)

Kojien Seventh Edition (Exhibit Ko 6; Exhibit Otsu 2) indicatesthe following on the word, "朔北": "(The character, "朔", means the direction ofnorth) [1] North, Northern; [2] Northern land, in particular, a far-off place off to thenorth of China".

The description also indicates "朔風 (Sakufu)" (meaning "northwind") as an idiom which uses "朔" to refer to the "direction of north", and "朔方(Sakuho)" (meaning "north", "northern", and "朔北").

A similar explanation about "朔北" is also indicated in the Second Edition of Shincho Gendai Kokugo Jiten(Exhibit Ko 7), the Fourth Edition of Gendai Kokugo Reikai Jiten (Shogakukan;
Exhibit Ko 27), the Tenth Edition / Wide Version of Shinsen Kokugo Jiten(Shogakukan; Exhibit Ko 28), the Eleventh Edition of Obunsha Kokugo Jiten (Exhibit
Ko 29), the Second Edition of Jitsuyo Kokugo Jiten (Seibido Shuppan; Exhibit Ko 30),
the Revised Sixth Edition of Gakken Gendai Shinkokugo Jiten (Exhibit Ko 31), theEighth Edition / Blue Version of Shinmeikai Kokugo Jiten (Sanseido; Exhibit Ko 32),
and the Eighth Edition of Iwanami Kokugo Jiten (Exhibit Ko 33).
(B)

In regard to "朔北", there are usage examples such as "朔北の爪牙" [Sakuhoku no soga], which is the name of an event quest for FF11, in a famousgame series called "Final Fantasy" series (Exhibits Ko 12 and 13), and "ヌルハチ朔北の将星" [Nuruhachi Sakuhoku no shosei] (Exhibit Ko 14), which is the title of anovel.
(C)

While "朔" is not listed in the national list of kanji characters incommon use, this character is used for the name of a famous person named "萩原朔太
6

郎 (HAGIWARA Sakutaro)" and for the name of a fruit called "八朔 (Hassaku)",among others (Exhibits Ko 24 to 26).

The character, "北", represents a direction(Exhibit Ko 6).
(D)

When the above is taken together, it is reasonable to acknowledge

that in Japan, "朔北" is a word which generally represents the "direction of north" or"northern land".
B. Concerning the "カレー" partIn terms of the relationship with the designated goods of the Applied
Trademark, it is acknowledged that consumers and business customers are of theunderstanding that the word represents a quality of goods or some raw material usedin goods.

As such, it cannot be said that the part generates a sound or concept as anindicator of source.
C. Whether or not the trademark can be separated for observation
The Applied Trademark is a composite trademark consisting of "朔北" and "カレ ー".

As described above, no sound or concept as an indicator of source isgenerated from the "カレー" part, whereas the "朔北" part is merely understood byconsumers and business customers as a word that represents the "direction of north"
or "northern land", and not as a word that represents a specific area.

As such, interms of the relationship with designated goods, it can be said that the Applied
Trademark can generate the sound or concept as an indicator of source.

There is no

actual transaction in which " 朔 北 カ レ ー " is used by consumers and businesscustomers in an integral and unified manner only.
In that case, since it cannot be acknowledged that the Applied Trademark is
combined in a way that is inseparable and that suggests that it would be unnatural in abusiness transaction to observe each component part separately, it should be said that
it is also permissible to extract only the "朔北" part for comparison with anotherperson's trademark to determine the similarity itself of the trademarks.
(3)

Similarity between the Applied Trademark and the Cited

TrademarkIn light of the above, the "朔北" part of the Applied Trademark (Important Partof Application) and the Cited Trademark shall be compared to consider theirsimilarity.
A. Appearance
The Important Part of Application consists of the two kanji characters, " 朔北",
whereas the Cited Trademark consists of the four katakana characters, "サクホク",
and the Important Part of Application and the Cited Trademark are clearly different in7

appearance.
B. SoundThe sound of the Important Part of Application is "saku-hoku", and the soundof the Cited Trademark is also "saku-hoku", so that the Important Part of Applicationand the Cited Trademark have the same sound.
C. Concept
While the Important Part of Application generates the concept of the "directionof north" and "northern land", "サクホク" is a coined word that is not listed in adictionary or the like and does not generate any specific concept, so that the Important
Part of Application and the Cited Trademark are clearly different in concept.
D. As described above, the Important Part of Application and the Cited
Trademark share the same sound, but the appearance and concept are clearly different.
There is no actual transaction in which "朔北" evokes the Cited Trademark, "サクホク", or the right holder of the Cited Trademark to consumers or business customers,
and it cannot be acknowledged that, in regard to the designated goods of the Applied
Trademark and the Cited Trademark, there are actual transactions in which consumers
or business customers identify goods based only on the sound of goods and determine
the source of the goods thereby.

As such, it cannot be said that the distinctiveness ofsound outweighs the distinctiveness of appearance and concept, and it cannot be said
that when the Applied Trademark and the Cited Trademark are used on the same orsimilar goods, there is a risk of causing misunderstanding or creating confusion as tothe source of goods.
In that case, it cannot be said that the Applied Trademark is similar to the Cited
Trademark.
2. Claims made by the parties(1)

Claim by Plaintiff

A. Plaintiff argues that the Cited Trademark generates the concept and image ofbeing warm and having a flaky texture, or "saku-saku" in Japanese, as well as a soft
texture, for which the Japanese onomatopoeic word of "saku-saku" is used, whereas
usage examples like "saku-saku and hoku-hoku texture" and "saku-hoku texture"indicated by Plaintiff all pertain to processed potato snacks which are products ofCalbee, Inc. (Exhibits Ko 16 to 21).

Since it cannot be acknowledged that "saku -hoku" is commonly used by the public to represent texture in the food field, which
includes the designated goods of the Applied Trademark, as a word which represents
texture, the above claim by Plaintiff cannot be accepted.
B. Plaintiff argues, among other things, that the manner of use of the Applied
8

Trademark (Exhibit Ko 5) generates concepts such as "curry which is favored by the
Self-Defense Forces stationed in the JGSDF Camp Nayoro, located in a ‘northern land’of Nayoro-shi, Hokkaido".

However, the word, "朔北", does not immediately evoke

Nayoro-shi, Hokkaido, and there is not sufficient evidence to acknowledge that there
are actual transactions in which the Applied Trademark evokes Plaintiff's goods toconsumers and business customers.

As such, the above claim by Plaintiff cannot be

accepted.
(2)

Claim by Defendant

Defendant argues that it is difficult to say that the characters, "朔北", in the
structure of the Applied Trademark is a word with which people in Japan are familiar,
and the word is recognized as a kind of coined word that does not immediately evoke
any specific meaning.

As described above in 1 (2), the characters, "朔北", constitutea word which is listed in a number of dictionaries, etc., and which is sometimes usedin event quests in games and for titles, etc. of novels, and that the character of "朔",which is part of such use, is well-known because of its usage in people's names andnames of fruits as well, and that "朔北" is a word made of commonly known
characters, so that it cannot be said that consumers and business customers would
understand "朔北" to be a coined word that does not evoke any specific meaning, sothat the above claim by Defendant cannot be accepted.
3. As described above, it cannot be said that the Applied Trademark and theCited Trademark are similar, so that the Applied Trademark does not fall under
Article 4, paragraph (1), item (xi) of the Trademark Act.

In that case, the Decision iserroneous in its determination about the applicability according to the same item.
No. 5

Conclusion
Based on the above, the grounds for rescission as claimed by Plaintiff arereasonable, so that the Decision should be rescinded.

Accordingly, the court renders

a judgment as per the main text.
Intellectual Property High Court, Second Division
Presiding Judge:

HONDA Tomonari

Judge:

ASAI Ken

Judge:KATSUMATA Kumiko9