chapter  4
12 Pages

Similarity in appearance, concept or pronunciation alone does not automatically lead to similarity of marks in Japan

WithChristopher Heath

The similarity in appearance, the similarity in concept and the similarity in pronunciation of a trademark are merely standards for presuming confusion as to the place of origin of a product bearing such a trademark. In Japan, the Patent Office in checking trademark applications for prior marks tends to reject an application if it is identical or similar to a prior mark that has been registered for identical or similar goods. The Japanese Patent Office refused the application for similarity with the earlier registered mark, which has no meaning in the Japanese language. The earlier mark was registered for fibreglass. The plaintiff appealed against the refusal and prevailed before the Tokyo High Court. The Japanese Patent Office appealed to the Supreme Court, which was unanimously rejected. The first is the imperfect transliteration of foreign words into Japanese katakana script.