I want to apply for a trademark that is partially identical to someone else’s! Will it be registered?

I want to apply for a trademark that is partly the same.

I’m thinking of applying for the trademark “Amazing apple”. But I heard that there is a registered trademark “Amazing”.
If I apply for “Amazing apple”, will it be registered in Japan?

The question is whether “Amazing apple” and the prior trademark “Amazing” are similar. “Amazing apple” is a combination of two words “Amazing” and “apple” and is called a combination trademark.
According to Japan Patent Office’s practice, there are a great many factors that must be considered in order to determine whether a combined trademark is similar.

I’m stumped as to whether it is easy to find a similarity or not. Actually, the designated goods of the prior trademark “Amazing” is a bag, and I’m already selling bags on the Internet under the name of a store called “Amazing apple”.

If that is the case, we also have to consider whether the trademark “Amazing apple” infringes on the trademark “Amazing” of others.

If you want to apply for a trademark that is partially identical to another person’s trademark, does that other person’s trademark prevent me from registering my own trademark?
Or, if you find someone else’s trademark that is partially identical to your trademark, can you claim infringement against that someone else’s trademark?
The key is whether your trademark is similar to a partially identical trademark of another.

Here we will present the information you need to determine whether your trademark is similar to another’s trademark that is partially identical.
In addition, we will explain the method of judgment in such cases with specific examples.

Determining whether trademarks are similar or dissimilar

To begin with, how is it determined whether trademarks are similar or dissimilar to each other?
The method of determining similarity or dissimilarity is not described in the text of the Japanese Trademark Law. It is based on a number of precedents, which are reflected in the examination process.

The following is a brief explanation.

Please refer to the detailed article about similarity here.

Trademark Similarity

Whether or not a trademark is similar to another trademark is determined by whether or not confusion of origin arises when the two trademarks are used for the same or similar goods or services.
In making this determination, the three aspects of appearance, pronunciation, and concept of the trademark are taken into consideration in addition to the actual circumstances of the transaction.

Appearance, pronunciation, and conception are, in other words, look, reading, and meaning.
In Japan, pronunciation (reading) tends to be given the most weight.

Similarity of goods and services

Similarity of goods and services is judged based on whether or not confusion of origin arises when the goods and services is used in connection with the same or similar trademarks.
Basically, it is possible to determine whether the goods or services are similar by checking the similarity group code.

If the similarity group codes are the same, the goods or services are in principle considered similar.

For more information on similarity group codes, please refer to these articles.

Judging the similarity of combined trademarks

A trademark that combines multiple component parts such as letters, words, figures, and symbols is called a combined trademark.
There are various precedents regarding the similarity of combined trademarks, which have been discussed by many scholars and practitioners over the years in Japan.

Therefore, please be advised that it is not a simple matter.

Trademark Examination Criteria

Trademark examiners determine whether a combined trademark is similar or different based on the following criteria.

JPO Trademark Examination Guidelines Revised 15th Edition

Regarding the identification of the sound and concept of composite trademarks as well as the judgment of the similarity thereof
(1) Regarding the identification of the sound and concept of composite trademarks
(a) With respect to a composite trademark, when each constituent part cannot be found to have been combined strongly enough to consider that it is unnatural to observe them separately by taking into consideration the strength of the combination of each constituent part, only part of the composite trademark gives rise to the sound and concept.
(b) Regarding the factors taken into consideration with respect to the strength of the combination
With respect to trademarks composed solely of characters, judgment is made by taking into consideration the constitutional difference of the trademark such as the difference in the size, color, font, and type of characters (Hiragana or Katakana) as well as other factors such that the trademark is written in an extremely separated manner, the trademark has a long sound or the trademark has no conceptual relationship.

Case Law

There are a number of well-known court cases on combined trademarks, but we will briefly introduce two of the most influential precedents.

1. the Rira Takarazuka case judgment (Supreme Court, 1962 (O) No. 953)
   Since a trademark is designed to distinguish itself from other people’s trademarks by the entirety of its constituent parts, it is precisely as stated above that it is not permissible to indiscriminately extract a part of the constituent parts of a trademark and compare this part alone with other people’s trademarks to determine whether the trademark itself is similar or dissimilar. However, in the practice of simple and speedy transactions, a trademark whose constituent parts are not so inseparably connected that it is unnatural to observe them separately in transactions is not always called or conceived by the name of the entire constituent part, but is often called or conceived simply by a part of it. Experience has shown that more than one name and concept may arise from a single trademark. In such cases, even if one of the appellations and conceptions is not identical or similar to the appellations and conceptions of another’s trademark, if the other appellations and conceptions are similar to those of the other’s trademark, it is reasonable to conclude that the two trademarks are still similar.

The Rira Takarazuka case affected the current system of trademark examination standards.
However, judgments on individual cases may be made as in the Tsutsumi no Ohinakkoya case below.

2. Tsutsumi no Ohinakkoya case judgment (Supreme Court, 2007 (Gyohi) No. 223)
   In the case of a combined trademark, it is not appropriate to extract a part of the constituent parts of the trademark and judge whether the trademark itself is similar or dissimilar by comparing only this part with the trademarks of others, if the part is deemed to give a strong and dominant impression as a sign identifying the source of the goods or services to the traders and consumers, or if the other parts of the trademark are deemed to give a strong and dominant impression as a sign identifying the source of the goods or services to the traders and consumers. The trademark itself should not be considered similar or dissimilar to other trademarks, except in cases where the trademark itself is considered to give a strong dominant impression as a source-distinguishing mark for goods or services to traders and consumers, or where no pronunciation or concept is considered to arise from other parts.

Conclusion

• Basically, when the constituent parts of a combined trademark are not indivisibly combined, the extraction of a part of the combined trademark is permitted.
• When the constituent parts of the combined mark are indivisibly connected, separation or extraction of a part of the trademark is still permitted.
  (i) where the part is deemed to give a strong and dominant impression as a mark designating the origin of the goods or services to the trader or consumer; or (ii) when it is recognized that neither the pronunciation nor the concept as a source distinguishing mark arises from other portions of the mark.

Cases

If a trademark “Amazing apple” is applied for when there is a prior trademark “Amazing”, will “Amazing apple” be registered?
The basic factors to be considered and how they apply to the application are as follows.

Basic Factors to be considered

0. Whether the similarity group codes of the goods and services are identical
   Even if the trademarks are similar to each other, if the goods and services are not similar to the prior trademark, they are not similar.
1. Appearance
   　Does the trademark as a whole have the appearance of being one and the same?
2. Pronunciation
   　Can the marks be read as a series without any confusion?
3. Concept
   　Does the trademark as a whole have a unified meaning?
4. When considering 1 to 3, is the trademark indivisibly connected?
5. If it is indivisibly connected, is part of it still separable? (from the viewpoint of distinctiveness)
   Whether the part is recognized as giving a strong and dominant impression as a sign to distinguish the origin of the goods or services to the trader or consumer, or
   If the other part is found not to create a pronunciaion or concept as a source-distinguishing mark, the part is separated.

The important point here is whether there is a difference in the distinguishing power of each part of the trademark in relation to the designated goods and designated services.
Distinctive power is the power of a trademark to be recognized as the goods or services pertaining to a person’s business when the person sees or hears the trademark.
For example, if you apply for the trademark “Otemoto” designating the product “chopsticks”, Japanese people will not notice that “Otemoto” is someone’s trademark because “Otemoto” is commonly used to mean “chopsticks”. In this case, the trademark “Otemoto” is considered to have no distinguishing power.
On the other hand, the trademark “Otemoto” designating the product “chemical products” is considered to have distinguishing power.

Fitting the case

0. Whether the similarity group codes of the goods and services are identical
   Here, the prior trademark “Amazing” designates a bag (similar group code 21C01).
   Key case, commuter pass holder, banknote clip, and retail and wholesale services related to bags are also similar group code 21C01.
   Since the trademark “Amazing apple” is used for online sales of bags (retail services related to bags), it is considered to be similar to the prior trademark “Amazing” in terms of goods and services since the similarity group codes are the same.
1. Appearance
   There is a space between “Amazing” and “apple”.
2. Pronunciation
   “Amazing Apple” has 10 sounds in Japanese. It may seem a little long, but it can be uttered all at once.
3. Consept
   It is associated with the concept of “a magnificent apple,” or something to that extent.
   “Amazing” is an adjective, modifying the “apple” behind it, and the overall meaning is coherent in terms of consept.
4. When considering 1 through 4, are they inseparably combined?
   Judging from the overall appearance, pronunciation and conception, it can be said that there is a sense of unity.
5. If they are indivisibly combined, are some parts of them still separated?
   In relation to bag-related retail services, it seems unlikely that “Amazing” and “apple” are commonly used.
   Therefore, it is considered that there is no conspicuous differences in the distinctiveness of “Amazing” and “apple”.

In other words, it is unlikely that “Amazing” or “apple” will give a strong and dominant impression as a sign identifying the source of bag-related retail services.
It is also unlikely that “apple” does not create a pronunciation or concept as a source distinguishing mark.

If there is a difference in distinctiveness, the judgment will be tilted in the direction that “Amazing” and “apple” are recognized separately.

From the above, there is a high possibility that the trademark “Amazing apple” and the prior trademark “Amazing” will be judged to be dissimilar, but it should be noted that depending on the examiner in charge, a notice of reasons for refusal may be issued at least once.
After that, a trial may be conducted, which may result in registration.

If “Amazing apple” is a trademark related to personal computers, the judgment may change in some way because it is in a field where there is a well-known Apple trademark.
Also, if the trademark is used for the product “apple,” if the “apple” in “Amazing apple” is written in a thin and inconspicuous manner, or if it is combined with a graphic, the decision will depend on the circumstances of each case.
Thus, determining the registrability of a combined trademark can be very difficult.

I see. I guess it would be better to consult an expert to determine the similarity of the combined trademark.

Yes, basically, amateur judgment is dangerous when it comes to combined trademarks.
It is safer to ask a patent attorney specializing in trademarks to investigate the possibility of registering a combined trademark and whether a combined trademark already in use infringes on the registered trademarks of others. They are also experts in this area.

So judging the similarity of combined trademarks is a skill that takes years to acquire. I guess it’s impossible to make a decision with overnight knowledge – on the contrary, it’s refreshing to see.

We’d love to hear from you!

In Amazing DX, if a trademark that is partially the same has been applied for, that trademark may appear in the search results when you perform a “Trademark Search”.
This is because the AI and our trademark attorneys have made a judgment that the trademarks that may be similar will be listed in the results column.

If you have any questions about a trademark that you are unable to determine after using the trademark search, we would be happy to consult with you.

If you have a trademark that you are not sure about, please contact us and we will be happy to assist you in making the right decision.
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