September 11, 2025

Trademark News

Tokyo District Court determined that a trademark consisting of the characters “パクとモグ” (PAKU AND MOGU) and a trademark composed of the characters “パクモグ” (PAKU MOGU) are similar.

The Plaintiff, holder of a trademark registration consisting of the characters “パクとモグ” (Katakana characters of “PAKU AND MOGU”), filed a lawsuit seeking an injunction and damages against the Defendant for using marks composed of characters such as “PAKUMOGU” and “パクモグ” (“PAKU MOGU” in Katakana characters). The Tokyo District Court affirmed the similarity of the marks between“パクとモグ” and “パクモグ,” and designated services, granting the injunction and damages (Tokyo District Court Judgment, January 24, 2025 (Case No. 2022 (Wa) 11316)).

Background
The Plaintiff is a corporation engaged in the manufacture and sale of confectionery products. The Defendant is a corporation engaged in domestic and international food service and home meal delivery businesses.
The Plaintiff's Registered Trademarks and the Defendant's Marks in use are as follows.

The designated services for the Plaintiff's Registered Trademarks are “the provision of benefits to customers in the retail or wholesale business of confectionery and bread, except for the provision of benefits to customers in the retail or wholesale business of bread.”
Regarding “the provision of benefits to customers in the retail or wholesale business of bread”, the Defendant requested a trial for non-use cancellation on December 2, 2022. As the plaintiff did not file any response in that case, the exception was added to the designated services.

The Defendant sold meal kits under the name “PAKU MOGU” (a set containing pre-cut and pre-prepared ingredients, seasonings, recipes, etc.), and the Defendant's Marks were used on the packaging, website, and YouTube channel in relation to the meal kits.
The Plaintiff sought an injunction against each of the aforementioned acts of use, the disposal of the packaging, and payment of damages totaling 64,562,313 JPY.

Judgment
(1) Judgment Criteria and Essential Part of the Defendant’s Marks
This judgment first ruled as follows regarding the method for determining the similarity of trademarks.
“The similarity of trademarks should be determined based on whether there is a likelihood of confusion as to the source of the goods or services when the two trademarks in question are used on identical or similar goods or services. This requires a comprehensive examination of the impressions, memories, and associations that the trademarks, when used on such goods or services, create among traders and consumers through their appearance, sound, concept, etc. Furthermore, to the extent that the actual circumstances of trade in those goods or services can be ascertained, the determination should be based on the specific context of that trade."
“Furthermore, with respect to combined trademarks composed of multiple elements, if any part of the trademark is recognized as having a strongly dominant impression on traders and consumers as an identifier of the source of the goods or services, or if no sound or concept as an identifier of the source arises from the remaining parts, or when the constituent parts of the trademark are not deemed to be so inseparably combined that observing them separately would be considered unnatural in trade, it should be permissible to extract a portion of the constituent parts and compare only that portion with another's trademark to determine the similarity of the trademarks."

Based on the above, the court found that the Defendant’s Mark 6 (pakumogu-mealkit.jp) and Defendant’s Mark 7 (PAKUMOGU with meal kit for kids in English) both extract the “PAKUMOGU” portion as the essential element. The court held that the similarity between this essential part and each of the Plaintiff’s Registered Trademarks can be determined through comparison.

(2) Similarity between Plaintiff’s Registered Trademark 1 and Defendant’s Mark 1
Regarding appearance, the Plaintiff’s Registered Trademark 1 and the Defendant's Mark 1 are different in terms of the type and composition of their characters, their colors, and whether they are illustrated. Therefore, it cannot be said that their appearances are similar.

Regarding sound, the Plaintiff’s Registered Trademark 1 produces the sound “PA-KU-TO-MO-GU,” whereas the Defendant's Mark 1 produces the sound “PA-KU-MO-GU.” The sound differs only in the middle sound “TO,” which is typically perceived relatively weakly. Given that the majority of the sound, "PA-KU" and “MO-GU,” are identical, and considering that the overall sound cannot be said to be long, they should be deemed similar.

Regarding the concepts, both “パクとモグ” (Katakana characters of “PAKU AND MOGU”) and “PAKUMOGU” are coined terms, and neither is commonly used.
However, according to dictionaries, the word “Baku Baku” means “the act of eating voraciously,” and the word “Mogu Mogu” means “the act of chewing with the mouth closed. Furthermore, in the names or descriptions of food education, food products, or restaurants, the words “Paku Paku” and “Mogu Mogu” are used to evoke the act of eating. It is acknowledged that the word “Paku Paku” can be abbreviated to “PAKU,” and the word “Mogu Mogu” can be abbreviated to “MOGU.”
Considering the designated services of the Plaintiff’s Registered Trademark 1 and the use of Defendant’s Mark 1 in relation to the provision of Defendant’s meal kits, it can be said that both evoke the same concept.
Regarding the actual circumstances of trade, it is acknowledged that Defendant’s meal kits are ordered through Defendant's webpage or call center, and that Defendant's webpage and other materials contain references signifying Defendant's name, such as “Watami,” even though these are not prominently displayed. Therefore, consumers could recognize that the Defendant's meal kits are provided by the Defendant based on such indications. Consequently, even if there are similarities in the sound or concept between the Plaintiff’s Registered Trademark 1 and the Defendant's Mark 1, it cannot be concluded that this alone causes a likelihood of confusion regarding the source of the goods.

As stated above, the court confirmed that the sound and concept of the trademarks are similar. However, considering that the appearance is dissimilar, the actual circumstances of trade, and the fact that “パクとモグ” is not necessarily written as “PAKUMOGU” in the alphabet, the court concluded that the trademarks are dissimilar.

Furthermore, the court determined that the Defendant’s Marks 2 to 4, 6, and 7 were dissimilar to Plaintiff’s Registered Trademark 1 for similar reasons.

However, the court found that the Defendant’s Mark 5 should be similar to Plaintiff’s Registered Trademark 1 for the following reasons.

Plaintiff’s Registered Trademark 1 consists of the characters “パクとモグ” written horizontally in Gothic-style Katakana and Hiragana, with all characters in black. The Defendant's Mark 5 consists of the characters “パクモグ” (PAKUMOGU) written horizontally in Gothic-style Katakana, with the characters primarily in black. Comparing their appearances, while they differ in whether the Hiragana character “と” is included between the Katakana characters ‘PAKU’ and “MOGU,” they are largely identical otherwise. Furthermore, considering that the “と” in Plaintiff’s Registered Trademark 1 is depicted slightly smaller than the other characters, the appearances of both marks should be deemed similar.
As stated above, the sound is similar and evokes the same concept. Therefore, even considering the aforementioned actual circumstance of trade, it is acknowledged that there is a risk of confusion regarding the source of the goods or services when the Plaintiff’s Registered Trademark 1 and the Defendant’s Mark 5 are used on identical or similar goods or services.
Therefore, it should be recognized that the Plaintiff’s Registered Trademark 1 and the Defendant’s Mark 5 are similar.

(3) Similarity between Plaintiff’s Registered Trademark 2 and Defendant’s marks
The court determined that Plaintiff’s Registered Trademark 2, being a stylized representation of the characters “PaQ to MoG,” differs in appearance from any of the Defendant’s Marks. Furthermore, considering that the terms “PaQ” and “MoG” are not commonly used, the court found that the second and eighth letters cannot be recognized as “a” or “G,” respectively. Consequently, the sound “PA-KU-TO-MO-GU” does not arise, and thus the concepts of “Paku Paku” or “Mogu Mogu” described above are not evoked. The court therefore confirmed that the marks are dissimilar.

Comments
The court determined that the Plaintiff’s Registered Trademark 1 (“パクとモグ”) and the Defendant's Mark 5 (“パクモグ”) are similar. However, it determined that all other Defendant's Marks are not similar to either Plaintiff’s Registered Trademark 1 or Trademark 2. In this regard, the determination that Plaintiff’s Registered Trademark 1 (“パクとモグ”) and the stylized “PAKUMOGU” in the Defendant's Marks 1, 2, and 7 are dissimilar, and that Plaintiff’s Registered Trademark 2 and all of the Defendant's Marks are dissimilar, seems appropriate when considering the degree of stylization.

On the other hand, even if the middle character “と” (“TO”, meaning “AND”) in the Plaintiff’s Registered Trademark 1 (“パクとモグ”), is less outstanding, it seems unlikely that the presence or absence of “TO” would have a negligible impact on the impression conveyed to consumers, particularly in a short, five-character trademark. Additionally, since “TO” means “AND,” it could reasonably be judged as non-similar because it gives the impression of being a combination of two original character names, and the concepts are not entirely identical.

Furthermore, the Defendant’s Mark 3 (“PAKU MOGU”) and Defendant’s Mark 4 (“PAKUMOGU”) are the English converted marks of the Defendant’s Mark 5 (“パクモグ”). In such cases, changing Katakana to alphabetical characters is a common modification, and it seems natural to consider that the impression given to consumers would not differ significantly. Particularly, the Defendant’s Mark 3 (“PAKU MOGU”) could be interpreted as having an omitted “AND” between “PAKU” and ‘MOGU’ due to the space between them. If the judgment were based on the premise that the Defendant’s Mark 5 (“パクモグ”) and Plaintiff’s Registered Trademark 1 (“パクとモグ”) are similar, this conclusion seems to be inconsistent.

This judgment is one example concerning the similarity between a trademark composed of “A and B” and one composed of “AB” that omits “and” from the structure. We introduced this case as it is thought to be a useful reference for future similarity determinations in practice.

Written by: Mr. Kota Yamada (Attorney at Law)