Trademark Date

July 14, 2022

Right

2021 (Gyo-Ke) 10109

Case

Court

Intellectual Property High
Court, First Division

number- A case in which a trademark consisting of the characters "ザリッチチロリアン" ingothic font written horizontally was determined to be similar to a cited trademark
consisting of the characters "チロリアン" in a brush style font written horizontallyand fall under Article 4, paragraph (1), item (xi) of the Trademark Act.
Case type: Rescission of Trial Decision to Maintain
Result: Granted
Reference: Article 4, paragraph (1), item (xi) of the Trademark Act
Related rights, etc.: Trademark Registration No. 6199438
Decision of the JPO: Rescission Trial No. 2020-890065
Summary of the Judgment
1. The Defendant is the holder of the trademark right concerning a trademark
designating Class 30, "confectioneries," as its designated goods, for which the appeal
decision to grant registration was rendered on October 1, 2019 (a trademark co nsistingof the characters " ザ リ ッ チ チ ロ リ ア ン " in standard characters; hereinafter the"Trademark").
The Plaintiff filed a request for trial for an invalidation of trademark registration
based on such grounds as that the Trademark is similar to Cited Trademark 1 (atrademark consisting of the characters " チロリアン " in a brush style font writtenhorizontally) and falls under Article 4, paragraph (1), item (xi) of the Trademark Act.
The Japan Patent Office (JPO) rendered a decision to dismiss the request for trial (th e"JPO Decision").
The Plaintiff instituted a lawsuit to seek the rescission of the JPO Decision.
2. In the judgment, the court ruled as follows and rescinded the JPO Decision as it
contained an error in finding that the Trademark did not fall under Article 4, paragraph(1), item (xi) of the Trademark Act.
(1) Where a trademark consists of a combination of multiple components, suchcomposite trademark is distinguished from others' trademarks based on an observationof its components as a whole. Therefore, it is generally not permitted to extract only
part of the components of the trademark and compare that component with anotherperson's trademark to determine the similarity between these trademarks. However, intrade practice, when a trademark is not found to be combined inseparably to the extentithat it may be unnatural in the course of trade to observe the components separately,such trademark is not necessarily pronounced or recognized by the entirety of allcomponents but may sometimes be pronounced or recognized based only on a part ofcomponents. In light of this fact, it is reasonable to understand that extracting only a
primary part of the components of the trademark and comparing that component withanother person's trademark to determine the similarity between these trademarks ispermissible, in such case as where a certain part of the components of the trademark is
found to give a strong, dominant impression to traders and consumers as an identifierof the source of goods or services, where no pronunciation or concept that would serve
as a source identifier would be generated from other components of the trademark, or
where a certain part of the components of the trademark is found to give a considerablystrong impression to traders and consumers such that the component is capable ofindependently functioning as an identifier of the source of goods or services.
(2) The Trademark, consisting of the characters "ザリッチチロリアン" in standard
characters, is a composite trademark consisting of the character parts "ザ", "リッチ"and the character part "チロリアン". The characters that constitute the Trademark arerepresented as one word with the same font and size and even character spacing, andthe pronunciation "za ricchi chirorian" is generated according to the consis tingcharacters.
Next, it can be found that the character part " ザ " is the Japanese katakana
representation of an English article "the," the character part " リ ッ チ " is a word
denoting "affluent" and "richness or good flavor of food or dish", and the charact er part
" チ ロ リ ア ン " is generally perceived as a word denoting "Tyrolean people, ortraditional ethnic outfits worn by people living in the Tyrolean mountain area stretchingfrom the western areas of Austria to the northeastern areas of Italy" or "Tyrol distric t,
Tyrolean". In light of the concepts and pronunciation associated with these characterparts, the characters constituting the Trademark, even considering that they are
represented as one word with the same font and size and even character spacing, are notconsidered to be inseparably combined to the extent that it is unnatural in trade practices
to make the separate observation of each of the character parts "ザ", "リッチ" and thecharacter part "チロリアン".
In addition, considering that the mark "Tirolian" was widely recognized as
representing a brand for the specific confectionery (the confectionery "Tirolian")among confectionery traders and consumers in areas in Kyushu centered in Fukuoka
and had also gained a considerable degree of recognition nationwide a t the time when
the appeal decision to register the Trademark was granted, the Trademark, when usediifor its designated goods "confectioneries," the character part "チロリアン" among its
components would attract attention of traders and consumers as representing a certain
confectionery brand and give a considerably strong impression to them.
Accordingly, as the character part "チロリアン" among the components of theTrademark is found to be capable of independently functioning as a source identifier,the court finds it permissible to extract this character part from the Trademark as its
primary part and compare it with Cited Trademark 1 to determine the similarity between
these trademarks.
(3) Comparing the character part "チロリアン" (in standard characters) that is theprimary part of the Trademark with Cited Trademark 1, they are common in appearance
as they both contain the characters "チロリアン" although in different fonts, and are
identical in terms of their pronunciation and concept as they both generate thepronunciation "chirorian" and the concept of "チロリアン" representing a brand nameof the specific confectionery or the concept of "Tyrolean people," "Tyrol district," etc.
As a consequence, the court concludes that when using the Trademark and Cited
Trademark 1 for "confectioneries" that are included in the designated goods of theTrademark, there is a likelihood of confusion as to the source of products and therefore
that these trademarks are similar to each other as a whole.
(4) As mentioned above, the Trademark is similar to Cited Trademark 1, and thedesignated goods of the Trademark, "confectioneries," are identical to the designatedgoods "confectioneries" of Cited Trademark 1. Therefore, the court concludes that theTrademark falls under Article 4, paragraph (1), item (xi) of the Trademark Act.

iii

Judgment rendered on July 14, 2022
2021 (Gyo-Ke) 10109, Case of seeking rescission of the JPO decision
Date of conclusion of oral argument: April 14, 2022
Judgment
Plaintiff: Kabushiki Kaisha Chidori Manju Sohonpo

Defendant: Kabushiki Kaisha Chidoriya Soke

Main text
1. The decision made by the Japan Patent Office (JPO) on July 27, 2021, for the caseof Invalidation Trial No. 2020-890065 shall be rescinded.
2. The Defendant shall bear the court costs.
Facts and reasonsNo. 1 Plaintiff's claim
Same as paragraph 1 of the main text.
No. 2 Outline of the case
1. Developments in procedures at the JPO(1) The Defendant is the holder of the trademark right for Registered Trademark No.
6199438 shown below (hereinafter referred to as the "Trademark") (Exhibits Ko 1 -1
and 2).
Trademark: ザリッチチロリアン (in standard characters)
Date of application: November 21, 2017
Date of appeal decision of registration: October 1, 2019
Date of registration of establishment of trademark right: November 22, 2019
Designated goods: Class 30: "confectioneries, bread, sandwiches, Chinese-style
steamed buns, hamburgers, pizzas, hot dog sandwiches, meat pies"(2) On September 15, 2020, the Plaintiff filed a request for a trial for invalidation of theregistration of the Trademark.
The JPO conducted the trial proceedings in response to this request as the case ofInvalidation Trial No. 2020-890065, and made a decision on July 27, 2021, to the effectthat the trademark registration shall be maintained (hereinafter referred to as the "JPO
Decision"). The certified copy of the JPO Decision was served upon the Plaintiff on
August 5, 2021.
1

(3) On September 2, 2021, the Plaintiff instituted this lawsuit to seek rescission of the
JPO Decision.
2. Summary of the reasons for the JPO Decision(1) The summary of reasons for the JPO Decision is as stated in the attached copy of awritten decision. The JPO Decision held, in summary, that the Trademark was not to beinvalidated under Article 46, paragraph (1) of the Trademark Act, as it does not fallunder any of Article 4, paragraph (1), item (vii), (xi), (xv) or (xix) of the same Act andtherefore its registration was not considered to have been granted in violation of any ofthese provisions.
(2) The reasons for the JPO Decision holding that the Trademark did not fall under
Article 4, paragraph (1), item (xi) of the Trademark Act can be summarized as follows:
A. The Trademark consists of the characters, "ザリッチチロリアン". On the other
hand, a trademark specified in 1. of the Attachment (hereinafter referred to as "Cited
Trademark 1") and a trademark specified in 5. of the Attachment (hereinafter referred
to as "Cited Trademark 5") consist of the characters "チロリアン" respectively; atrademark specified in 2. of the Attachment (hereinafter referred to as "Cited Trademark2") consists of the alphabetical characters "TIRO" and "LIAN" in a designed font in
two lines; a trademark specified in 3. of the Attachment (hereinafter referred to as"Cited Trademark 3") consists of the alphabetical characters "Tirolian" in a designed
font written horizontally; and a trademark specified in 4. of the Attachment (hereinafterreferred to as "Cited Trademark 4") consists of the sound "chirorian." Thus, theTrademark and Cited Trademarks 1 to 5 can be distinguished by their characters andstyles, and there is no likelihood of confusion in the appearance.
Second, with respect to the pronunciation, the pronunciation "za ricchi chirorian"
generated by the Trademark and the pronunciation "chirorian" generated by Cited
Trademarks 1 to 5 are obviously different in syllables and number of sounds, so thesemarks are clearly distinguishable in pronunciation.
In addition, with respect to a concept associated with these marks, the Trademark
does not generate any specific concept; whereas Cited Trademarks 1 and 4 generate aconcept of "Tyrolean style or taste" and Cited Trademarks 2 and 3 generate no specificconcepts. Thus, there is no likelihood of any conceptual confusion between theTrademark and any of Cited Trademarks 1 to 5.
Accordingly, the Trademark and Cited Trademarks 1 to 5 are not likely to create any
conceptual confusion or are incomparable, and are clearly distinguishable by theirrespective appearance and pronunciation. Therefore, considering the totality of theimpression, memory, suggestions, etc. given to traders and consumers based on the2appearance, pronunciation and concept, these trademarks are reasonably considered to
be non-similar trademarks with no likelihood of confusion.
B. As discussed above, as the Trademark is not similar to any of Cited Trademarks 1 to
5, the Trademark does not fall under Article 4, paragraph 1, item (xi) of the Trademark
Act, although the designated goods of these trademarks are identical or similar.
(omitted)
No. 4 Judgment of this court
1. Facts found by the court(1) According to the evidence and the entire import of oral arguments, the following
facts can be found.
A. History of the sale of the confectionery "Tirolian" by the Plaintiff and the Defendant(A) Chidoriya is a long-established Japanese-style confectionery maker selling products
including "Chidori Manju (cakes with bean paste)" in areas such as Iizuka City,
Fukuoka Prefecture, since the beginning of the Showa Era. Its origin traces back to
Shogetsudo, a confectionery maker established by F in an area that is now a part ofSaga Prefecture.
Chidoriya expanded its business area to Fukuoka City in 1949. After the death of G,a business owner at that time, in 1954, his wife E succeeded to the business (hereinafterreferred to as "Chidoriya run by E"; Exhibits Ko 7 and 61 and Exhibit Otsu B3(including branch numbers, if any; the same applies hereinafter)).
G and E had their first son, A (born in November 1936), their second son, B (bornin July 1938), their third son, C (born in June 1942), and their fifth son, D (born in
November 1946).
(B) Chidoriya run by E started selling a confectionery "Tirolian" (a roll cookie stuffedwith cream, named "Tirolian") in 1962. Soon after launch, this confectionery "Tirolian"achieved popularity among customers and became a signature product of Chidoriya run
by E in addition to Chidori Manju.
Then, Chidoriya run by E increased its stores and distributors centered in Fukuoka
Prefecture, and came to have more than 100 stores (including commissioned sales
outlets) in 1979 (Exhibits Ko 7 and 61, and Exhibits Otsu B5, 6, 9 and 12).
(C) In 1964, A started his own business independent from E and opened a sole
proprietorship confectionery maker named Tokyo Chidoriya in Tokyo. After starting the
production and sale of the confectionery "Tirolian," Tokyo Chidoriya developed its
stores and distributors channel in Kanto area.
3

In 1973, C opened a sole proprietorship confectionery maker Chidoriya in
Amagasaki City, Hyogo Prefecture, where he started the production and sale of theconfectionery "Tirolian" and developed the stores and distributors channel in Kansaiarea. On November 11, 1986, C incorporated the Defendant (the trade name at the timeof incorporation was Kabushiki Kaisha Chidoriya, which was changed to Kabushiki
Kaisha Chidoriya Soke on January 15, 2008; Exhibits Otsu B1-12 and 13) and took theoffice of representative director. The production and sale of the confectionery "Tirolian"
were also started at stores operated by the Defendant under the name "Chidoriya" (C'ssole proprietorship "Chidoriya" and stores operated by the Defendant using the name
"Chidoriya" may be hereinafter collectively referred to as "Osaka Chidoriya" in somecases).
In this way, lines of "Chidoriya" products, including the confectionery "Tirolian,"came to be also sold at Tokyo Chidoriya and Osaka Chidoriya, in addition to Chidoriya
run by E centered in Fukuoka Prefecture (Exhibits Ko 61, 63 and 92, and Exhibits Otsu
B4, 8 to 11, 18, 50 and 51).
(D) The production function of Chidoriya run by E was transferred to Kabushiki Kaisha
Tirolian incorporated on August 5, 1986 (Exhibits Otsu B1-1 and 2), and the sales
function was transferred to Chidoriya Hanbai Kabushiki Kaisha incorporated on March
16, 1995 (hereinafter referred to as "Chidoriya Hanbai"; Exhibits Otsu B1-3 and 4),
respectively.
By 1997, the production and sale of the confectionery "Tirolian" were undertaken
by both Kabushiki Kaisha Tirolian and Chidoriya Hanbai (Exhibits Otsu B13, 23 and29).
E died on December 1, 1995, during the period when the above events took place .
(E) After the death of E, there arose a variety of disputes concerning the business of"Chidoriya" among A, B, C and D (Exhibit Otsu B21).
For example, A, B and D started to dispute the business ownership of Kabushiki
Kaisha Tirolian in 1996. The Plaintiff and Chidoriya Hanbai entered into a dispute afterB incorporated the Plaintiff (Exhibits Otsu B1-7 and 26) in Fukuoka City on August 1,
1997 (Exhibits Otsu B22, 24, 25, 27 and 29).
On May 26, 2006, D incorporated Kabushiki Kaisha Chidoriya Honke (hereinafterreferred to as "Chidoriya Honke"; Exhibit Otsu B1-5) in Iizuka City, Fukuoka
Prefecture, which later started the production and sale of the confectionery "Tirolian"in Fukuoka Prefecture.
(F) On September 1, 2010, A incorporated Chidoriya Sohonke Kabushiki Kaisha inTokyo (Exhibit Otsu B1-9) that assumed his sole proprietorship business of Tokyo
4

Chidoriya and started the production and sale of the confectionery "Tirolian."
From around 2012, due to the deterioration of its business performance, Chidoriya
Sohonke Kabushiki Kaisha entrusted the Plaintiff to make the confectionery "Tirolian"
for Tokyo Chidoriya, and the Plaintiff started the production based on this entrustment.
Meanwhile, A obtained registration for Cited Trademarks 1 to 3 as specified in the
Attachment. With respect to Cited Trademarks 1 to 3, the transfer of trademark rightsfrom A to his grandchild, H, and from H to the Plaintiff, was registered on April 19,
2010 and March 17, 2014 (dates of acceptance of application for registration),
respectively (Exhibits Ko 62-1 to 3).
B. Sales turnover of the confectionery "Tirolian"(A) The Plaintiff sells the confectionery "Tirolian" at its own branch stores centered in
Fukuoka Prefecture. Additionally, in 2015 and 2016, the Plaintiff also sold theconfectionary "Tirolian" to its resellers in Aomori, Iwate, Miyagi, Gunma, Saitama,
Chiba, Tokyo, Kanagawa, Niigata, Toyama, Nagano, Gifu, Shizuoka, Aichi, Kyoto,
Osaka, Hyogo, Tottori, Okayama, Hiroshima, Yamaguchi, Ehime, Fukuoka, Saga,
Nagasaki, Kumamoto, Oita, Miyazaki, Kagoshima and Okinawa Prefectures and theseresellers also sold the confectionery "Tirolian" to their customers (Exhibits Ko 42, 76
and 77).
After recording the sales exceeding 1.2 billion yen in fiscal 1997, the Plaintiff
maintained annual sales exceeding 2 billion yen until fiscal 2009, and from 1.7 billion
to 1.9 billion yen between fiscal 2010 and 2017 (Exhibit Ko 54).
(B) Tokyo Chidoriya's sales turnover exceeded 0.6 billion yen in fiscal 1977, and thenincreased to over one billion yen in fiscal 1988 and reached 2.9 billion yen in fiscal
1997 (Exhibit Otsu C14).
Meanwhile, Osaka Chidoriya's sales turnover exceeded ●● yen in fiscal 1983,
and continued to increase after it hit ●●● yen in fiscal 1991, recording ●●●yen in fiscal 1999, maintaining ●●● yen or more each fiscal year until fiscal 2005.
The Defendant's annual sales exceeded ●●● yen in fiscal 2009, and maintainedroughly over ●●● yen from fiscal 2010 (Exhibits Otsu C9 and 13).
C. Advertisements of the confectionery "Tirolian"(A) a. In 2007, the Plaintiff produced and ran TV commercials of the confectionery"Tirolian" (Exhibits Ko 17, 46 and 48). The Plaintiff's commercials included a version
consisting of the characters "チロリアン" in designed bold face written horizontallyon the screen, and also a version featuring the sound of a woman's voice consisting ofverbal elements of the word "chirorian."
From November 2012 to January 2013, the Plaintiff also ran radio commercials of5the confectionery "Tirolian" through CROSS FM (a radio station based in Fukuoka
Prefecture) and Kyushu Asahi Broadcasting (a radio station that covers the northern
Kyushu area centered in Fukuoka Prefecture and also other prefectures including
Yamaguchi and Ehime) (Exhibits Ko 18, 50 and 51).
The Plaintiff's advertisement of the confectionery "Tirolian" was posted on Sankei
Shimbun dated December 15, 18, 19, 22 and 25 of 2015 (Exhibits Ko 10 to 14). The
advertisement featured the characters " チロ リアン " in designed bold face writtenhorizontally.
b. The Plaintiff's advertisement expenses exceeded 140 million yen in fiscal 1997,
decreased to about 60 million yen in fiscal 2002 but turned to increase again to reachabout 100 million yen in fiscal 2005. After fiscal 2008, the advertisement expenses
turned to decrease, down to about 20 million yen in fiscal 2009, but then increased
again to exceed 40 million yen in fiscal 2011 and continued to exceed about 50 million
yen after fiscal 2014 (Exhibit Ko 54).
(B) a. A pamphlet published by Kabushiki Kaisha Tirolian and Chidoriya Hanbai inaround 1998 contained the confectionery "Tirolian" (Exhibit Otsu B58-1).
Further, an advertisement of the confectionery "Tirolian" of "Chidoriya" sold byChidoriya Hanbai also appeared in the magazine "Fujin Gaho" published from April to
September 1996 (Exhibits Otsu B56 and 67).
The pamphlet and advertisement mentioned above contained the characters "チロリアン" in designed bold face written horizontally.
On or around 1997, Chidoriya Hanbai produced and ran a television commercial of
the confectionery "Tirolian" (Exhibit Otsu B52 and 56).
b. In a flyer published by Chidoriya Honke from around 2011 to 2015, the characters "チロリアン" in designed bold face written horizontally were indicated. In addition, acatalogue published by Chidoriya Honke in or around 2016 featured the confectionery"Tirolian," with the characters " チ ロ リ ア ン " in mincho font written horizontally(Exhibits Otsu B58-3 to 7).
c. The aggregate annual advertisement expenses of Kabushiki Kaisha Tirolian andChidoriya Hanbai for fiscal years from 1995 to 1997 were between 300 million yen and
450 million yen (Exhibits Ko C5 and 6).
(C) A flyer published by Tokyo Chidoriya from around 1964 to 1998 featured theconfectionery "Tirolian" (Exhibit Otsu B80).
Many of the flyers mentioned above contained the characters " チロリアン" indesigned bold face written horizontally.
A pamphlet published by Tokyo Chidoriya from around 1969 to 2005 featured the6confectionery "Tirolian" (Exhibit Otsu B81).
Many of the pamphlets mentioned above contained the characters "チロリアン" indesigned bold face written horizontally.
(D) After fiscal 2009, the Defendant's annual advertisement expenses exceeded about●● yen (Exhibit Otsu C13).
E. Articles in books, magazines and websites(A) A book published in January 1990, "Fukuoka Miyagehin Gaido, Fukuoka Meibutsu(Guidebook on Fukuoka souvenirs)," contains an article that refers to Chidori Manju,
describing: "This is one of Chidoriya's signature confectioneries, alongside Tyrol
Kogen Meika Tirolian" (Exhibit Otsu B17).
(B) A television program broadcasted by TV Asahi in January 2007, "Wide! Scramble,"
introduced the Plaintiff and B, as well as the confectionery "Tirolian" as the Plaintiff's
signature product (Exhibits Ko 23 and 58).
(C) In a television program broadcasted by Fukuoka Broadcasting System in September
2009, "Night Shuffle," the Plaintiff and the confectionery "Tirolian" as its signature
product were introduced (Exhibits Ko 24 and 56).
In addition, the Plaintiff and the confectionery "Tirolian" as its signature productwere featured in a television program broadcasted by Fukuoka Broadcasting System in
November 2009, "Mentai Wide" (Exhibits Ko 25 and 57).
(E) A magazine "Gekkan Hakata (Hakata Monthly)" published in December 2015
mentions: "'Chidori Manju Sohonpo has another signature product. This month, we willcontinue the interview with the company President, Mr. I, to ask him how that famous
confectionery 'Tirolian' was born. Everyone might be reminded of this confectionery by
a commercial with a melody 'Tirolian'" (Exhibit Ko 20).
(D) In September 2017, on a website, "My Navi News," the article titled "The secret of
famous commercials of 'Tirolian,' Fukuoka's famous confectionery" was posted. The
article says: "If you ask people from Fukuoka about commercials they recall, some ofthem will answer by singing the sound logo 'Tirolian.' An adorable package, delicious
baked confectionery, and stylish commercials perfectly matching the product image
attracted children of that time" (Exhibit Ko 55-3).
(F) A book published in February 2018, "Shin Madaaru. Daihyakka Okashihen (Newencyclopedia of long-sellers: Confectionery)," also features an article titled "1962,
Tirolian, Chidori Manju Sohonpo," describing the confectionery as follows: "It is oneof the most popular confectioneries in Fukuoka. When the author was a child, thanks toa television commercial featuring the melody 'Tirolian' in a clear and resounding boy
soprano voice, it gained recognition as a major confectionery also in Tokyo to a level7

that everyone knew it. It is produced by Chidori Manju Sohonpo, a long-establishedwestern confectionery maker." "Although it is a local specialty of Fukuoka, it has also
been well-recognized and popular in Tokyo since a long time ago thanks to televisioncommercials." "Most people of my generation who hear the word 'Tirolian' would be
reminded of these television commercials. Commercials had many versions, butbasically featured children wearing ethnic outfits, dancing and playing, and eating'Tirolian' on green grass surrounded by the Tyrolean mountains. The commercials
always end with the melody 'Tirolian' sung in soprano voice, echoing on the Alpsmountains" (Exhibit Ko 55-1).
(G) An article published on "FOOD PORT" website, titled "Fukuoka's standard,
Chidoriya's 'Tirolian': 'Japanese wrapping papers' by Tsutsumi Nobuko, paper
collector," which was updated in October 2018, says: "Hakata kids' favorite treat,'Tirolian' produced by 'Chidoriya,' a long-established confectioner in my hometown
Fukuoka," … "It is not too much to say that 'Hakata kids grow by Tirolian' 'Tirolian' is
one of the most famous long-selling confectioneries representing Fukuoka. ... In Showa
40's when I was in elementary school, Tirolian was very popular as a pretty, classy treat"(Exhibit Ko 55-2).
(H) An article on a website, "Entertainers' recommended local specialties that you canorder from home," mentions that the Plaintiff's confectionery "Tirolian" was introduced
in a television program "Waratte Iitomo" in December 2006 as a very famous
confectionery in Fukuoka (Exhibit Ko 55-4).
(2) Based on the findings in (1) above, the following facts are found: [i] The
confectionery "Tirolian" launched by Chidoriya run by E in 1962 grew to become
Chidoriya's signature product. Chidoriya run by E increased the number of its retail
outlets centered in Fukuoka Prefecture. Tokyo Chidoriya established by A in 1964
expanded its store and reseller channels in Kanto area, and Osaka Chidoriya establishedby C in 1973 and Osaka Chidoriya opened by the Defendant that was incorporated in1986 expanded its store and reseller channels in Kansai area. Both of these "Chidoriya"
sold the confectionery "Tirolian." [ii] After the death of E in 1995, there arose a variety
of disputes concerning the business of "Chidoriya" among her sons, A, B, C and D. [iii]
The Plaintiff is a company incorporated in Fukuoka City by B in 1997 and sells theconfectionery "Tirolian" through its branches in areas centered in Fukuoka Prefecture
and resellers in all areas in Japan, with annual sales turnover exceeding one billion yen.
[iv] The Plaintiff advertised the confectionery "Tirolian" by way of producing andrunning television and radio commercials and posting advertisements in newspapers,
using the characters " チ ロ リ ア ン ". The Plaintiff recorded annual advertisement
8expenses exceeding 100 million yen several times. [v] The confectionery "Tirolian" wassold by Kabushiki Kaisha Tirolian and Chidoriya Hanbai that assumed the business of
Chidoriya run by E, as well as by Chidoriya Honke, a company established by D in
Iizuka City, Fukuoka Prefecture, in 2006, using the characters " チ ロ リ ア ン " foradvertisement. [vi] The Defendant, which was also a seller of the confectionery"Tirolian," had continued to record annual sales turnover exceeding ●●● yen since
fiscal 2009. [vii] Since 1990, the confectionery "Tirolian" has been mentioned in
television programs, magazines, books and websites as the "popular confectionery
everyone knows."
Based on the total evaluation of the abovementioned facts, it is found that the mark" チ ロ リ ア ン " was widely recognized as representing a brand for the specificconfectionery (the confectionery "Tirolian") among confectionery traders andconsumers in areas in Kyushu centered in Fukuoka Prefecture, and had also gained aconsiderable degree of recognition nationwide, at the time when the appeal decision toregister the Trademark was granted (October 1, 2019).
2. Ground for Rescission 1 (error in the determination on whether the Trademark falls
under Article 4, paragraph (1), item (xi) of the Trademark Act)
(1) Method for making a judgment concerning similarity
Where a trademark consists of a combination of multiple components, suchcomposite trademark is distinguished from others' trademarks based o n an observationof its components as a whole. Therefore, it is generally not permitted to extract only
part of the components of the trademark and compare that component with anotherperson's trademark to determine the similarity between these trademarks. However, intrade practice, when a trademark is not found to be combined inseparably to the extent
that it may be unnatural in the course of trade to observe the components separately,such trademark is not necessarily pronounced or recognized by the entirety of allcomponents but may sometimes be pronounced or recognized based only on a part ofcomponents. In light of this fact, it is reasonable to understand that extracting only a
primary part of the components of the trademark and comparing that component withanother person's trademark to determine the similarity between these trademarks ispermissible, in such case as where a certain part of the components of the trademark is
found to give a strong, dominant impression to traders and consumers as an id entifierof the source of goods or services, where no pronunciation or concept that would serve
as a source identifier would be generated from other components of the trademark , orwhere a certain part of the components of the trademark is found to give a considerablystrong impression to traders and consumers such that the component is capable of9independently functioning as an identifier of the source of goods or services.
On the basis of the abovementioned findings, the court decides whether the
Trademark falls under a trademark similar to Cited Trademark 1 (Article 4, paragraph(1), item (xi) of the Trademark Act) as follows:(2) Issue of whether extracting only the primary part of the Trademark is permissible
A. The Trademark, consisting of the standard characters "ザリッチチロリアン", is acomposite trademark consisting of the set of character parts "ザ", "リッチ" and thecharacter part " チ ロ リ ア ン ". The characters that constitute the Trademark arerepresented as one word with the same font and size and even character spacing, andthe pronunciation "za ricchi chirorian" is generated according to the consisting
characters.
Next, it can be found that the character part " ザ " is the Japanese katakana
representation of an English article "the," and the character part "リッチ" is a word
denoting "affluent" and "rich flavor or aroma of food or dish" (Exhibit Ko 73), and thecharacter part "チ ロ リ ア ン " is generally perceived as a word denoting "Tyrolean
people, or traditional ethnic outfits worn by people living in the Tyrolean mountain area
stretching from the western areas of Austria to the northeastern areas of Italy"(Buritanika Kokusai Dai Hyakka Jiten (Britannica International Encyclopaedia)) or"Tyrol district, Tyrolean" (Kojien 7th Edition). In light of the concepts andpronunciation associated with these character parts, the characters constituting theTrademark, even considering that they are represented as one word with the same fontand size and even character spacing, are not considered to be inseparably combined tothe extent that it is unnatural in trade practices to make the separate observation of eachof the set of character parts "ザ", "リッチ" and the character part "チロリアン".
In addition, considering that, as determined in 1.(2) above, the mark "Tirolian" waswidely recognized as representing a brand for the specific confectionery (theconfectionery "Tirolian") among confectionery traders and consumers in areas in
Kyushu centered in Fukuoka and had also gained a considerable degree of recognition
nationwide at the time when the appeal decision to register the Trademark was granted(October 1, 2019),

the Trademark, when used

for itsdesignatedgoods"confectioneries," the character part "チロリアン" among its components would attract
attention of traders and consumers as representing a certain confectionery brand andgive a considerably strong impression to them.
Accordingly, as the character part "チロリアン" among the components of theTrademark is found to be capable of independently functioning as a source identifier,the court finds it permissible to extract this character part from the Trademark as its
10primary part and compare it with Cited Trademark 1 to determine the similarity between
these trademarks.
B. On the other hand, the Defendant alleged that it is not appropriate to extract thecharacter part "チロリアン" from the Trademark as its primary part while raising thefollowing grounds. [i] Considering that the Trademark consists of the standard
characters "ザリッチチロリアン" in one line and in a coordinated way with the same
size and font and even character spacing, such as to form an integrated and unified
sequence of characters, the set of character parts "ザ", "リッチ" and the character part
"チロリアン" are inseparably combined to the extent that it is unnatural in the courseof trade to observe them separately. [ii] The marks "チロリアン" and "TIROLIAN" arenot considered to have been widely recognized among traders and consumers as
trademarks that identify products pertaining to the Plaintiff's business at the time of thefiling of the application and the granting of the appeal decision for registration of theTrademark. Accordingly, the character part "チロリアン" among the components of
the Trademark is not considered to give a strong, dominant impression to traders andconsumers of the designated goods of the Trademark as an identifier of source of thePlaintiff's product. [iii] For the confectionery "Tirolian," immediately after the launchof the product, several business entities started using the mark "チロリアン " andselling the confectionery separately, and after 1996, many disputes arose among thebusiness entities that use the mark "チロリアン", and the mark "チロリアン" had notbeen managed integrally. Considering these situations, it would be difficult for tradersand consumers to recognize the business entity to which the character part " チロリア
ン" of the Trademark is attributed, and therefore the character part "チロリアン" does
not fall under a part giving a strong and dominant impression as an identifier of sourceof the Plaintiff's products. [iv] Up until now, no economic or organizational group of
manufacturers and distributors of the confectionery "Tirolian" has been formed.
Therefore, there is no room to evaluate that the character part "チロリアン" gives astrong, dominant impression as an identifier of such group. [v] It is socially
unacceptable to make a component-by-component observation of a composite
trademark based on the wrongful evaluation that the character part "チロリアン" canfunction as a source identifier although in fact it does not, and to attribute the registeredtrademarks "チロリアン" including Cited Trademarks 1 to 3 exclusively to the Plaintiff,with less track record of using the mark "チロリアン" compared to other business
entities.
However, as explained in (1) above, for a trademark that is not found to be combined
inseparably to the extent that it may be unnatural in the course of trade to observe the11components separately, it is reasonably understood that extracting only a certain part ofthe components of the trademark as its primary part and comparing that component withanother person's trademark to determine the similarity between these trademarks ispermissible, in such case as where a certain part of the components of the trademark is
found to give a strong, dominant impression to traders and consumers as an identifierof the source of goods or services, and also where a certain part of the components ofthe trademark is found to give a considerably strong impression to traders andconsumers such that it can independently function asa source identifier.

Further, the evaluation of whether a certain part of the components of a trademark
is found to give a considerably strong impression to traders and consumers and therefore
can independently function as a source identifier should be made from the standpointof which component of the trademark comes to the attention of traders and consumers
who observe the trademark and their impression of the component. Considering this, it
is reasonable to understand that, as long as a component is such that it enables tradersand consumers to perceive it as an identifier of some specific source, it does not needto enable them to exactly understand the specific source from which the productoriginates (for example, a name of specific business entity, a form of business orwhether the product originates from one or more sources).
With respect to [i] of the Defendant's allegation, as mentioned in A. above, in lightof the concepts and pronunciation of the set of character parts "ザ", "リッチ" and thecharacter part " チ ロ リ ア ン " respectively, even considering that the charactersconstituting the Trademark are represented as one word with the same font and size andeven character spacing, the set of character parts "ザ", "リッチ" and the character part
"チロリアン" of the Trademark are not considered to be combined inseparably to theextent that it may be unnatural in the course of trade to observe them separately.
The Defendant's allegations [ii] through [iv] are based on the premise that thecharacter part "チロリアン" of the Trademark needs to be such as to enable traders andconsumers to exactly recognize the specific entity from which the product originates(for example, the name of a specific business entity) and require that the character part
must be recognized as an identifier of the source of the Plaintiff's product. These
allegations are unacceptable in terms of the premise they are based on.
In addition, with respect to [v] of the Defendant's allegation, as mentioned above,the determination of whether a certain part of the components of a composite trademark
may be extracted as its primary part is an issue that relates to the recognition andimpression of traders and consumers who observe the composite trademark. So, in
relation to the Trademark, this determination is not affected by the level of the Plaintiff's
12track records of using the mark " チ ロ リ ア ン " and therefore this allegation is
unacceptable in terms of its premise.
In conclusion, the abovementioned allegations of the Defendant are found to be
groundless.
(3) Similarity between the Trademark and Cited Trademark 1
A. As specified in 1. of the Attachment, Cited Trademark 1 consists of the characters "チロリアン" in a brush style font written horizontally, and generates the pronunciation"chirorian," according to the consisting characters.
As mentioned in 1.(2) above, it is found that the mark "チロリアン" was widely
recognized among confectionery traders and consumers as a brand name referring to
the specific confectionery (the confectionary "Tirolian") in areas in Kyushu centered in
Fukuoka Prefecture and had also gained a considerable degree of recognition
nationwide, at the time when the appeal decision to register the Trademark was granted(October 1, 2019).
Then, it is reasonably understood that Cited Trademark 1, consisting of thecharacters "チロリアン" written horizontally, also generates the concept of "チロリアン" as a brand name of the specific confectionery.
B. Comparing the character part "チロリアン" (in standard characters) that is theprimary part of the Trademark with Cited Trademark 1 specified in 1. of the Attachment ,they are common in appearance as they both contain the characters "チロリアン"
although in different fonts, and are identical in terms of their pronunciation and concept
as they both generate the pronunciation "chirorian" and the concept of "チロリアン"
representing a brand name of the specific confectionery or the concept of "Tyrolean
people, or traditional ethnic outfits worn by people living in the Tyrolean mountain area
stretching from the western areas of Austria to the northeastern areas of Italy" or "Tyrol
district, Tyrolean."
As a consequence, the court concludes that when using the Trademark and Cited
Trademark 1 for "confectioneries" that are included in the designated goods of theTrademark, there is a likelihood of confusion as to the source of products and therefore
that these trademarks are similar to each other as a whole.
Accordingly, the Trademark is determined to be similar to Cited Trademark 1.
The Defendant's allegations contrary to the above are groundless.
(4) Summary
As mentioned above, the Trademark is similar to Cited Trademark 1, and thedesignated goods of the Trademark, "confectioneries," are identical to the designatedgoods "confectioneries" of Cited Trademark 1. Therefore, the court concludes that the13

Trademark falls under Article 4, paragraph (1), item (xi) of the Trademark Act.
As the JPO decision denying this is erroneous, the court finds Ground for Rescission
1 alleged by the Plaintiff to be well-grounded, without the need to make determinations
concerning the remaining points.
No. 5 Conclusion
Based on the foregoing findings, as Ground for Rescission 1 alleged by the Plaintiff
is well-grounded, the JPO decision should be rescinded, without the need to makedeterminations concerning the other grounds for rescission.
Intellectual Property High Court, First Division
Presiding judge: OTAKA Ichiro
Judge: OGAWA Takatoshi
Judge: TOYAMA Atsushi

14

(Attachment) Cited Trademarks
1.

Registration No. 614146
Composition of trademark:
Date of application: April 17, 1962
Date of registration of establishment of trademark right: May 23, 1963
Designated goods: Class 30: "confectioneries and bread" (registration of change
effected on September 24, 2003)
Trademark holder: Kabushiki Kaisha Chidori Manju Sohonpo

2.

Registration No. 768600
Composition of trademark:
Date of application: April 30, 1966
Date of registration of establishment of trademark right: January 26, 1968
Designated goods: Class 30: "confectioneries and bread" (registration of change
effected on July 23, 2008)
Trademark holder: Kabushiki Kaisha Chidori Manju Sohonpo

3.

Registration No. 4358641
Composition of trademark:
Date of application: June 22, 1998
Date of registration of establishment of trademark right: February 4, 2000
Designated goods: Class 30: "confectioneries and bread"
Trademark holder: Kabushiki Kaisha Chidori Manju Sohonpo

4Registration No. 5969132
Composition of trademark:(Sound trademark)
Date of application: December 26, 201615

Date of registration of establishment of trademark right: August 4, 2017
Designated goods: Class 30: "confectioneries and bread"
Trademark holder: Kabushiki Kaisha Chidori Manju Sohonpo
5.

Registration No. 5998540
Composition of trademark: チロリアン (standard characters)
Date of application: April 24, 2017
Date of registration of establishment of trademark right: November 24, 2017
Designated goods: Class 35: "retail or wholesale services relating toconfectionery and bakery products"; Class 43: "Services for providing food anddrink"
Trademark holder: Kabushiki Kaisha Chidori Manju Sohonpo

16