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January 4, 2024

Trademark News

The IP High Court found that the trademark “Julius Tart” is not similar to a prior mark “TART”.

The plaintiff filed an invalidation trial against a trademark registration of “Julius Tart” (standard characters) (Reg. No. 5918891) on the ground that it is similar to a prior mark “TART” (standard characters) (Reg. No.5427549). As the Japan Patent Office (“JPO”) rendered a trial decision that the trademark should not be invalidated, the plaintiff filed a lawsuit with the Intellectual Property High Court (“IP High Court”) to appeal and cancel the trial decision. The IP High Court found that “Julius Tart” is not similar to “TART” and rejected the plaintiff’s claim(IP High Court Judgement, April, 25, 2023 (Case number: 2022(Gyo-Ke)10121)).

Summary of the case
The defendant is the owner of the trademark registration (Reg. No. 5918891) ("Trademark") shown below.

Trademark

　　　　　Mark; Julius Tart (standard characters)
　　　Filing date; July 6, 2016
Date of decision of registration: January 5, 2017
Registration date; February 3, 2017
Designated goods and designated services;
Class 9; Eyeglass temples; eyeglass lenses; parts and accessories for spectacles; sunglasses; eyeglasses.

Cited Trademark

　　　　　Mark; TART (standard characters)
　　　Filing date; January 18, 2011
Registration date; July 22, 2011
Designated goods and designated services;
Class 9; Eyeglasses; parts and accessories for spectacles.

On November 4, 2021, the plaintiff filed an invalidation trial against the Cited Trademark (Invalidation trial case No. 2021-890058) on the grounds that the Trademark falls under Article 4(1)(xi), etc. of the Trademark Act.

On July 21, 2022, the JPO issued a trial decision (“Trial Decision") that the plaintiff’s request for the invalidation trial should not be allowed.

The summary of the reasons why the JPO determined that the Trademark does not fall under Article 4(1)(xi) of the Trademark Act are as follows.

  • The Trademark consists of "Julius Tart" expressed in standard characters, and these characters as a whole are not words found in dictionaries, nor are they recognized as having a specific meaning. So, the Trademark is recognized as a kind of coined word. Therefore, the Trademark is pronounced as “Zyu-ri-a-s-ta-a-to” and has no specific concept.
  • The Cited Trademark consists of "TART" in standard characters, and it is pronounced as “Ta-a-to” and do not have specific concept because the word is not familiar in Japan even though it is English word meaning "sour, tart (a round pie filled with fruit, jam, or other sweet items)".
  • The Trademark and the Cited trademark are not likely to be confused in terms of appearance and sound, and are not comparable in terms of conception. Therefore, considering the impression, memory, suggestion, etc. given to traders and consumers by the appearance, sound, concept, etc. of the two trademarks, they should be judged to be distinguishable and dissimilar.

Judgement
The Intellectual Property High Court held that similarity of composite trademarks must be judged as follows.

In regards to a composite trademark which is considered a combination of different constituent parts, extracting a part of constituent parts of a trademark and using only such extracted part for comparison with another person's trademark in order to determine the similarity of trademarks themselves should not be permitted in principle.
However, in actual transactions, when a trademark is separable, a part of the trademark may generate sound or concept.
Therefore, if the parts of the constituent parts of a trademark are 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 sound or concept as a source-identifying indicator, it is permitted to extract the part of constituent parts of a trademark as the main portion and compare such portion with another person’s trademark in order to determine the similarity of trademarks themselves.

The IP High Court then held that the Trademark was an inseparable trademark by pointing out the following, and concluded that the Trademark and the Cited Trademark were dissimilar because there was no risk of confusion in terms of appearance or sound and they were not comparable in terms of conception, since both of them did not have specific concepts.

  • Although there is a blank space between the words "Julius" and "Tart" in the composition of the Trademark, the letters have the same font and the same size and the word "Tart" is not emphasized. At the time of filing the application of the Trademark and at the time of the decision of registration, "TART" (the Cited trademark) was not a well-known trademark in relation to the designated goods of the Trademark, such as "eyeglass frames". Therefore, "Tart" in the composition of the Trademark in question does not give a strong and dominant impression to traders and consumers as a source-identifying indicator of the goods, etc.
  • The Trademark consists of "Julius Tart" (standard characters) in the same font and size in a coherent and unified manner, and can be pronounced as “Zyu-ri-a-s-ta-a-to” smoothly.

Comments
The method of determining the similarity of combined trademarks held by the IP High Court in this case is in line with the established Supreme Court decision (Supreme Court Judgement, September 8, 2008(Case No. Heisei 19 (Gyo-Hi) 223, etc.)).
If the "Tart" part of "Julius Tart" was displayed in a different font from "Julis" and stood out, or if "TART" (the cited trademark) was successfully established as well-known in Japan, it might be possible that "Julius Tart" and "TART" would be found to be similar, unlike this decision.
This decision serves as a reference for judging the similarity of combined trademarks in Japan.

Written by: Mr. Kazunari Horiuchi (Attorney at Law, Patent Attorney)