اليابان

Date of Judgment: March 11, 1997

Issuing Authority: Supreme Court

Level of the Issuing Authority: Final Instance

Type of Procedure: Judicial(Civin( �b>

Subject Matter: Trademarks

Summary of the judgment (decision):

1. The name of an organized business group united as a whole by franchise agreements (franchise chain) can be regarded as "one's name" referred to in Article 26, paragraph (1), item (i) of the Trademark Act.

2. Where the term "小僧寿し" (Kozozushi) is widely recognized among general consumers as an abbreviation of the name of a famous franchise chain, each of the marks consisting of characters used by the franchise chain, such as "小僧寿し" and "KOZO ZUSHI," produces a pronunciation or gives rise to a concept only in its entirety, and the part of "小僧" or "KOZO in these marks does not produce any pronunciation or give rise to any concept that may serve as an identifier of the source of goods, and therefore these marks are not similar to a registered trademark "小僧."

3. Where marks consisting of figures (not attached hereto) have been continuously used by a famous franchise chain together with the chain's name or abbreviation, "小僧寿しチェーン" (Kozosushi Chain) or "小僧寿し" (Kozozushi), although there is the possibility that these marks may produce a pronunciation "ko-zo-u-zu-shi" or "ko-zo-u-su-shi," they are not likely to cause confusion with a registered trademark "小僧" as to the source of goods, and therefore these marks are not similar to the registered trademark.

4. Against a claim for damages made by the trademark right holder under Article 38, paragraph (2) of the Trademark Act, the alleged infringer is allowed to avoid liability for damages by alleging as a defense: and proving, the impossibility of the occurrence of damage on the part of the trademark right holder.