February 1, 2017

Trademark News

IP High Court finds "i:na" and "e-na" dissimilar despite same pronunciation

On appeal from the Japan Patent Office (the "JPO") Trial Board's decision to refuse trademark registration, the Intellectual Property High Court (the "IP High Court") reversed the JPO Trial Board decision, holding that the Plaintiff Mark "ELLEAIR (in Katakana) / i:na / IINA (in Japanese)" is dissimilar to the Cited Mark "IINA (in Japanese) / e-na", despite the finding that "i:na" and "e-na" have the same pronunciation. (IP High Court Case No. 2015 (gyoke) 10171, judgment issued on January 28, 2016)

Plaintiff Mark


Defendant Mark
Background

The Plaintiff filed a trademark application for the mark "ELLEAIR (in Katakana) / i:na / IINA (in Japanese)" (shown above) (the "Plaintiff Mark") with the JPO. However, the JPO Examiner refused the application, citing a prior registration on "IINA (in Japanese) / e-na" (shown above) (the "Cited Mark"). The Plaintiff appealed the Examiner's decision to the JPO Trial Board, but the Board affirmed the refusal, holding that the Plaintiff Mark is similar to the Cited Mark. The Plaintiff further appealed the JPO Trial Board decision to the IP High Court.

Court Judgment

The IP High Court reversed the JPO Trial Board decision, holding that the Plaintiff Mark is similar to the Cited Mark.

In rejecting the Plaintiff's appeal, the JPO Trial Board held that the "i:na / IINA (in Japanese)" portion in the Plaintiff Mark would be considered as an independent distinctive feature, because the "ELLEAIR (in Katakana)" portion and the "i:na / IINA (in Japanese)" portion is shown in different sizes and typefaces, and also because they are located far away from each other. Further, the JPO Trial Board found that the "i:na / IINA (in Japanese)" portion in the Plaintiff Mark is confusingly similar to the Cited Mark "IINA in Japanese / e-na".

The IP High Court agreed with the JPO Trial Board that the "i:na / IINA (in Japanese)" portion in the Plaintiff Mark is an independent distinctive feature of the Plaintiff Mark, and thus should be compared with the Cited Mark. However, the IP High Court held that, although the term "IINA in Japanese" is a common element in Plaintiff Mark and Cited Mark and have the same pronunciation, these two marks are totally different in appearance and concept. Further, the Court found that in view of the trade practices in the relevant market (namely, the market of tissue papers and toilet papers), traders and consumers are likely to focus not only on pronunciations of the marks but also on appearances when distinguishing different brands. Based on these findings, the Could held that there would be no likelihood of confusion between the two marks.

Accordingly, the IP High Court held that the Plaintiff Mark is dissimilar to the Cited Mark as a whole, and reversed the JPO Trial Board decision.

Comment

This case is notable in a sense that the Court found two marks that have the same pronunciation as dissimilar from each other.

Under the JPO's trademark practice, if two marks have the same pronunciation from a Japanese consumers' viewpoint, the marks are generally considered similar to each other unless they are clearly conceptually distinguishable. In the current case, "i:na" and "e-na" had the same pronunciation, and both terms were coined terms and were not clearly conceptually distinguishable. Thus, under the JPO's practice, it is almost without dispute that these marks are similar to each other. Nevertheless, the Court found these marks dissimilar, putting more weight on the appearance and the trade practice in the relevant market.

It should be noted that the term ELLEAIR included in the Plaintiff Mark is well-known to Japanese consumers as a brand name of tissue papers and toilet papers. Although the IP High Court held that "i:na / IINA (in Japanese)" portion in the Plaintiff Mark is an independent distinctive feature, there is a possibility that the court's conclusion was affected by the fact that ELLEAIR is a well-known brand name.

Although this judgment is likely to be case-specific, it seems to represent a more flexible approach that the IP High Court adopts in trademark cases.

Written by: Ms. Chiaki KATO (Trademark Attorney)