1. Regarding criteria for determining whether it is permitted to separate elements of a composite trademark and observe its essential part
With regard to a composite trademark which is a trademark comprising a combination of two or more elements, it is permissible to make a judgment on the similarity of the composite trademark by extracting one of these elements to be compared with another party’s trademark, for example, if a part of the elements of the trademark is acknowledged to give a strong and dominant impression to traders and consumers as a source-identifying indicator of goods or services, or if other parts cannot be acknowledged to generate any pronunciation or concept as a source-identifying indicator, and thus if it cannot be acknowledged that the elements are combined in an inseparable manner so much so that it seems unnatural in transactions to observe such elements separately (Supreme Court Decision rendered on December 5, 1963, by the First Petty Bench [Case No. 1962 (O) 953], Supreme Court Decision rendered on September 10, 1993, by the Second Petty Bench [Case No. 1991 (Gyo-tsu) 103], Supreme Court decision rendered on September 8, 2008, by the Second Petty Bench [Case No. 2007 (Gyo-hi) 223]).
2. Regarding whether it is permitted to separate elements of the Trademark and observe its essential part
The Trademark can be considered as a composite trademark composed of the parts of “HIRUDO” and “MILD”. The “HIRUDO” part is not a word existing in dictionaries etc. and understood as a kind of a coined word, and the Japanese word “ヒルド” corresponding thereto has not been used for a long period of time for names of medicines other than the plaintiff’s product and is not a common medicine name. Therefore, it can be said that the “HIRUDO” part gives a strong impression to traders and consumers as a source-identifying indicator of goods. On the other hand, with regard to the “MILD” part, it can be said that the distinguishing function thereof is very weak in relation to the designated goods, that is, pharmaceutical preparations, and it cannot be said that the “MILD” part generates a pronunciation or concept as a source-identifying indicator. Therefore, it is permissible to make a judgment on the similarity of the Trademark by extracting the “HIRUDO” part to be compared with the Cited Trademark.
3. The similarity between the Trademark and the Cited Trademark
In light of the fact that the plaintiff’s products bearing the Cited Trademark “Hirudoid” have been sold for over 60 years and have a large amount of sales, it is reasonable to acknowledge that, at the time of filing an application for registration and the date of decision of the Trademark, the Japanese word “ヒルド” and its corresponding alphabetical word “HIRUDO” were recognized as the words for “ヒルドイド” and “HIRUDOID”, and the alphabetical word “Hirudo” corresponding to the Japanese word “ヒルド” was recognized as the word for “Hirudoid” among consumers and traders. Therefore, it can be said that both “HIRUDO” and the Cited Trademark are associated with “ヒルドイド[Hirudoid], which is heparinoid-containing moisturizer”, and they are considered to have commonality in concept.
To summarize the above, the designated goods of the Trademark are identical with those of the Cited Trademark, and the Trademark and the Cited Trademark have partial commonality in appearance, concept, and pronunciation. Accordingly, if the Trademark and the Cited Trademark are used in connection with the same or similar product, such use is likely to cause confusion among consumers and traders as to the origin of the product. Therefore, it is reasonable to acknowledge that the Trademark and the Cited Trademark are similar to each other.
1. Regarding criteria for determining whether it is permitted to separate elements of a composite trademark and observe its essential part, in the TSUTSUMI-NO-OHINAKKOYA Case (Supreme Court Decision of September 8, 2008, rendered by the Second Petty Bench; Saibanshu-Minji No. 228, p. 561), the Supreme Court held to the effect that “it is not acceptable to make a judgment on the similarity of a composite trademark composed of two or more elements by extracting one of these elements to be compared with another party’s trademark, except for the case where the said element is found to give a strong and dominant impression to traders and consumers as a source-identifying indicator of goods or services, or the case where the remaining elements are not found to generate a pronunciation or concept as a source-identifying indicator”, and applicable scope thereof became an issue. In some subsequent lower court cases (IP High Court Decision of September 12, 2019, Case No. 2019 [Gyo-ke] 10020; SIGNATURE Case, etc.), the court found, citing Supreme Court Decision of December 5, 1963, rendered by the First Petty Bench (Minshu Vol. 17, No. 12, p.1621 [LYRATAKARAZUKA Case]), to the effect that it is permitted to separate elements of a composite trademark and observe its essential part “if it is not acknowledged that the elements are combined in an inseparable manner, so much so that it seems unnatural in transactions to observe such elements separately”.
Regarding the summary of Judgment 1, the Court positioned the above-mentioned criteria indicated in the TSUTSUMI-NO-OHINAKKOYA Case (Supreme Court Decision of September 8, 2008, rendered by the Second Petty Bench) as an example of the above-mentioned criteria indicated in the LYRATAKARAZUKA Case (Supreme Court Decision of December 5, 1963, rendered by the First Petty Bench).
2. Regarding the summary of Judgment 2, the Court applied each of the criteria for determining whether it is permitted to separate elements of a composite trademark and observe its essential part referred to in the summary of Judgment 1, especially the criteria indicated in the TSUTSUMI-NO-OHINAKKOYA Case (Supreme Court Decision of September 8, 2008, rendered by the Second Petty Bench) to this case, and affirmed the separate and essential part observation of the Trademark. In this regard, there is a decision rendered by the same court on the same date (IP High Court Decision of September 21, 2021, Case No. 2021 [Gyo-ke] 10028) in which the court considered the trademark “ヒルドマイルド” consisting of common characters as a composite trademark composed of the parts of “ヒルド” and “マイルド”, and found, as with the summary of Judgment 2, that it is permissible to make a judgment on the similarity of the trademark “ヒルドマイルド” by separating and extracting the “ヒルド” part to be compared with the Cited Trademark “ヒルドイド”. In contrast, there are decisions recently rendered by a different division of the same court on the same type of cases (IP High Court Decision of August 19, 2021, Case No. 2021 [Gyo-ke] 10030, and IP High Court Decision of August 19, Case No. 2021 [Gyo-ke] 10031), in which the court found, unlike the summary of Judgment 2, that it is not appropriate to observe the trademarks “ヒルドソフト” and “HIRUDOSOFT” respectively consisting of common characters by separating the parts thereof, namely “ヒルド” and “HIRUDO”, and “ソフト” and “SOFT”.
It is considered that this difference has occurred depending mainly on whether or not the “state of transactions” which may be taken into account when determining the similarity of trademarks (Supreme Court Decision of February 27, 1968, rendered by the Third Petty Bench [the HYOZAN-JIRUSHI Case]) are understood to be limited to the general state of transactions of the designate goods or services of trademarks, and not to include the state of transactions concerning the specific goods or services (meaning, in this case, the plaintiff’s products sold under their specific brand names).
3. Regarding the summary of Judgment 3, the Court found that the Trademark and the Cited Trademark are similar to each other on the grounds that, according to consumers’ recognition, both the “HIRUDO” part which was extracted from and observed as an essential part of the Trademark and the Cited Trademark “Hirudoid” are associated with “ヒルドイド[Hirudoid], which is heparinoid-containing moisturizer”.
【Keywords】A method for determining similarity of trademarks, observations as a whole, a composite trademarks, separate observation, essential part observation, “Hirudoid”, “ヒルドイド”, “Hirudo”, “ヒルド”, “HIRUDOMILD”, “ヒルドマイルド”. “HIRUDOSOFT”, “ヒルドソフト”
※ The contents of this article are intended to convey general information only and not to provide any legal advice.
Kei IIDA (Writer)
Attorney at Law & Patent Attorney (Daini Tokyo Bar Association)
Contact information for inquiries: k_iida@nakapat.gr.jp