judgedate
June 27, 1961
caseid1958 (O) 1104
casename
A case of seeking rescission of the JPO decisioncasetitle
Judgment regarding the determination on similarity of so-called designated goods
according to Article 2, paragraph (1), item (ix) of the former Trademark Act (Act No.
99 of 1921)
summary_judge
1.

In the case where identical or similar trademarks are used for different goods,
even if the goods per se have no risk of being misleading or causing confusion witheach other in transactions, if there is a risk of such goods being misleading or
causing confusion as to having been manufactured or sold by the same business
operator, it is reasonable to interpret that the goods fall under similar goods as
stipulated in Article 2, paragraph (1), item (ix) of the former Trademark Act (ActNo. 99 of 1921).

2.

Even in the case where an application for a trademark is filed as an associatedtrademark of an original registered trademark, in order to be granted registration for
the associated trademark, the trademark must not be similar to another person'sregistered trademark.

court secondTokyo High Court, Judgment of October 7, 1958
references
Article 1 of the former Trademark Act (Act No. 99 of 1921), Article 2, paragraph (1),item (ix) of the former Trademark Act (Act No. 99 of 1921), Article 3 of the former
Trademark Act (Act No. 99 of 1921)i

Main text
The judgment of prior instance shall be reversed.
Appellee's claim shall be dismissed.
Appellee shall bear the court costs for the respective instances.
Reasons
Regarding Reasons 1 through 3 for the final appeal according to the attorneys
representing Appellant, namely; ●●●●, one by the name of ●●●●, and ●●●●.
It is reasonable to interpret that the similarity of trademarks should be determinedby whether or not it can be acknowledged that, when a trademark is used for certain
goods, there is a risk of being misleading or causing confusion as to the source of thegoods.

Next, the similarity of designated goods should not be determined based onwhether or not there is a risk of the goods per se being misleading or causing
confusion in transactions, as per the ruling by the court of prior instance.

Instead, inthe case where identical or similar trademarks are used for different goods, if, due tocircumstances such as those different goods usually being manufactured or sold by thesame business operator, it can be acknowledged that those different goods are related
in such a way as to pose a risk of misleading others into believing that the goods
pertain to the manufacture or sale by the same business operator, it is reasonable tointerpret that, in regards to these trademarks, the goods fall under similar goods as
stipulated in Article 2, item (ix) of the Trademark Act (Act No. 99 of 1921) even if
the goods per se have no risk of being misleading or causing confusion with eachother.

In the present case, the part, "正宗", from among the trademark of "橘正宗",

is interpreted as being a customarily used mark that represents seishu [refined sake],whereas the part, "焼酎" [which means "shochu", or distilled spirit], from among thetrademark of "橘焼酎", is a common noun, so that the two trademarks share the same
principal part.

In addition, according to the facts having been confirmed in the priorinstance, oftentimes a sake-manufacturing business operator acquires licenses toproduce both seishu and shochu, so that in the case where there is currently a business
operator producing shochu by using the trademark of "橘焼酎", if there is also abusiness operator producing seishu by using the trademark of "橘正宗", it is clear thatthese products have a risk of misleading the general public into believing that bothproducts came from the same business operator who produces liquor by using thetrademarks containing the mark of "橘", and this determination is not affected bywhether or not the trademark of "橘焼酎" is famous.

Accordingly, it should beacknowledged that the trademark of "橘焼酎" and the trademark of "橘正宗" are1

similar trademarks, and furthermore, it should also be acknowledged that thedesignated goods of the two trademarks are similar goods.
Next, even if an application for the applied trademark ("橘正宗") was filed as anassociated trademark of the original registered trademark (Registration No. 89094, "花橘正宗"), if the applied trademark is similar to a third party's registered trademark("橘焼酎") which was registered after the registration of the original registeredtrademark and which is not similar to the original registered trademark, it isreasonable to interpret that the registration of the applied trademark should be refusedpursuant to Article 2 of the Trademark Act.

On that note, given that it cannot beacknowledged that Appellant's registered trademark, "花橘正宗", is similar to thetrademark of "橘焼酎", and furthermore, that the trademark of "橘正宗" is similar tothe trademark of "橘焼酎" as described above, it must be said that Appellant's refusalof the application for registration of the trademark of "橘正宗" is reasonable.

In thatcase, the gist of the argument made in this regard is reasonable, and thus the judgmentof prior instance must be reversed.

Next, according to the fact situation having been

confirmed in the prior instance, the judgment rendered by the court of prior instancehas no illegality, and the claim by Appellee seeking rescission of the judgment should
be dismissed as being unreasonable.
Therefore, the judgment of this court is rendered unanimously by all judges, as per
the main text, by application of Articles 408, 96, and 89 of the Code of Civil
Procedure.
Supreme Court, Third Petty Bench
Presiding judge:

SHIMA Tamotsu

Judge:KAWAMURA Matasuke

Judge:TARUMI Katsumi

Judge:

TAKAHASHI Kiyoshi

Judge:ISHISAKA Shuichi

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