Date of
Judgment:
September 22, 1992
Issuing
Authority:
Supreme Court
Level of
the Issuing Authority: Final Instance
Type of
Procedure: Judicial(Civin( �b>
Subject
Matter:
Trademarks
Main
text of the judgment (decision):
1. The judgment in prior instance
shall be reversed.
2. The present case shall be remanded to the Tokyo High
Court.
Reasons:
Regarding the reasons for the final
appeal according to Appellant's attorneys, ●●●● and
●●●●.
1. The fact situation having been
confirmed in the court of prior instance is as follows.
(1) Appellant has the trademark right
of Registration No. 1856899 (hereinafter referred to as "Trademark
Right", and the registered trademark as "Trademark"), for which
an application for trademark registration was filed on December 8, 1983, and
registration was established on April 23, 1986, with the designated goods of
"Soaps and detergents; Dentifrices; Cosmetics and toiletries; Perfume and
flavor materials" in Class 4. The Trademark consists of the kanji
characters, "大森林", written
horizontally in block style.
(2) Appellee, who engages in the
business of manufacture and sale of cosmetics and toiletries, sells hair growth
tonic and shampoo for scalp care (hereinafter referred to as "Appellee's
Products") by affixing thereto the marks, which are indicated in List of
Marks attached to the judgment in the first instance (hereinafter referred to
as "Appellee's Mark"), and also uses Appellee's Mark for
advertisement. Appellee's Mark consists of the kanji characters, "木林森", written vertically or horizontally in semi-cursive style.
Under the above fact situation, the
court of prior instance found and determined that Appellee's Mark is not
similar to Trademark in any of appearance, pronunciation, and concept, even
when these factors are considered comprehensively. As such, the court of prior
instance dismissed the appeal made by Appellant against the judgment in the
first instance, which dismissed the principal action made by Appellant seeking
an injunction of the manufacture and sale of Appellee's Products and the like
on the premise that Appellee's Mark is similar to Trademark.
2. However, the above judgment of the
court of prior instance cannot be approved, for the following reasons.
(1) The similarity between trademarks
should be judged holistically by comprehensively taking into consideration
factors such as the impression, memory, and association which are given to
traders from the appearance, concept, and pronunciation and the like of the
trademarks when they are used on identical or similar goods, and furthermore,
as long as it is possible to clarify the actual circumstances in which goods
are traded, the determination should be made based on the specific circumstances
of trading (refer to Supreme Court Judgment 1964 (Gyo-Tsu) 110; the judgment
rendered on February 27, 1968 by Third Petty Bench; Minshu Vol. 22, No. 2, page
399), and sometimes the trademarks, which are not similar in regards to the
individual factors of appearance, concept, and pronunciation under close
observation, may actually be similar depending on the specific circumstances of
trading. Accordingly, attention should be paid to the fact that the
applicability of similarity, when considered comprehensively in terms of
appearance, concept, and pronunciation, is subject to change depending on the
specific circumstances of trading.
(2) When the above is considered for
the present case, Trademark and Appellee's Mark are identical in two of the
characters used; namely, "森" and " 林". Considering that the characters, "大" and "木", which are not
identical, can be confusingly similar depending on how the characters are
written, and that Appellee's Mark is a coined word that has no meaning, and
that , given the characters constituting the trademarks, the two trademarks
both evoke a tree that is suggestive of producing the effect of hair growth, it
is clear that the two trademarks are, upon holistic observation for comparison,
confusingly related in terms of appearance and concept at least, so that,
depending on the circumstances in which the goods are traded, the likelihood of
customers mistaking one for the other cannot be denied, and resultingly, it
must be said that there is room for acknowledging that the two trademarks are
similar.
(3) Upon explaining as to whether or
not there is similarity in terms of concept, the court of prior instance stated
that the customers of products such as hair growth tonic for scalp care affixed
with Trademark and Appellee's Mark are men who strongly desire hair growth, and
made the presumption that such consumers are deeply interested in the marks
with which such goods are affixed and pay close attention upon product
selection. However, it is clear from the empirical rule that it cannot be
concluded that all customers are necessarily as described above. In addition,
since Appellant makes the assertion that non-exclusive rights are granted for
Trademark Right and that holders of non-exclusive rights affix Trademark to
hair growth tonic for scalp care and sell the goods through affiliated
companies, the circumstances in which goods are traded and which may possibly
come out of this asserted fact must be taken into account upon determining the
similarity between Trademark and Appellee's Mark. Accordingly, it must be said
that the presumed fact alone, which was made by the court of prior instance as
described above, is not sufficient to constitute grounds for determining that
the two trademarks are not similar. The court of prior instance merely
concluded, in addition to the above, that it cannot be acknowledged that the
two trademarks are similar in concept even when consideration is given to the
circumstances of trading, as can be conceived from the designated goods for
which Trademark is used, as well as the circumstances of trading that is
currently conducted for Appellee's Products by using Appellee's Mark. As such,
the court of prior instance found and determined the issue of whether or not
Trademark and Appellee's Mark are similar without making specific findings
about circumstances of trading such as whether Appellee's Products are sold via
door-to-door sales or via over-the-counter sales, and in the case of the
latter, how the goods are exhibited. Accordingly, it must be said that the
judgment in prior instance has illegality of application of incorrect
interpretation of law, or inadequacy of reason, which would clearly have
influence on the judgment.
3. Therefore, the gist of the argument
which makes the above point is reasonable, reversal of the judgment in prior
instance cannot be avoided, the present case shall be remanded to the court of
prior instance for further examination, and the judgment of this court is
rendered unanimously by all judges, as per the main text, by application of
Articles 407, paragraph (1) of the Code of Civil Procedure.
(This translation is
provisional and subject to revision.)