Judgement about the case whose issues contain the recognition of the concept of the Japanese word listed in the Japanese Dictionary was presented

―Judgement of the IP High Court, March 9,2023, Case 2022（Gyo-ke）10122―

1 Background

This is a lawsuit for the revocation of a decision (appeal 2021-16353) about an appeal against a decision to refuse an application for trademark registration with regard to a trademark (Trademark Application 2020-20177). The trademark is composed of the word “ 朔北カレー”. “朔北カレー” is pronounced “Sakuhoku Kare”.

In this case, there was a cited trademark (Trademark Application No. 2015-39856) .　It is composed of the word “サクホク”. “サクホク” is pronounced “Sakuhoku”. This means that “朔北” and ”サクホク” have the same sound “Sakuhoku”.

Therefore, the existence of a concept or the content of a concept that “朔北” recalls to the demanders, the propriety of observing the trademark(“朔北カレー”) separately (comparing“朔北”(from “朔北カレー”) with “サクホク”), and the judgment on the basis of such points became the issues. Especially, with regard to the recognition of a concept of “朔北”, different conclusions have been reached in the judgment by  the IP High Court and the decision by Japanese Patent Office.

2 Outline of the decision

According to the decision made by Japanese Patent Office in the present case, it is true that the word “朔北” is listed in the Japanese Dictionary, but it is not commonly said to be a familiar word among the demanders. This led to its conclusion that the demanders recognize “朔北” as “a kind of coined word” which the demanders are not made think of any concepts.

In addition, the term “朔北” was determined to be extractable as a gist of the word“朔北カレー” because the term “朔北” had a dominant impression over the term “カレー（curry）” which is a common name or raw material in relation to designated goods of the trademark, and it was determined to compare the term “朔北” separately observed as a gist of the trademark “朔北カレー” applied for in the application with the term “サクホク” in the cited trademark.

Finally, Japanese Patent Office concluded that those trademarks are similar comparing “朔北” and ”サクホク”.

3 Issues

From the above-mentioned background, the question of whether or not the word “朔北” can be recognized as giving rise to the concept became a point of contention as well as whether or not to observe trademarks separately (a comparison between “朔北”(from “朔北カレー”) and “サクホク”).

4 Outline of the judgement

(1) Recognition of the concept

On the contrary, the IP High Court recognized that the word “朔北” makes the users recall a concept of “north（北）”.

The reasoning of the IP　High Court focused not only  on dictionaries, but also an usage in the game, the novel, and so on as follows;

―The 7th edition of Koujien (Kou 6, Otsu 2) states that “朔北（Sakuhoku）”（“朔（Saku）” means the north direction） means (i) northern area……

―There are several examples of use of the “朔北” , including the event quest for the Final Fantasy Series FF11 (Final Fantasy XI), which is a well-known game series, such as the “朔北の爪牙” (Sakuhoku-no-Soga) (Kou 12 and 13) and the novel title “ヌルハチ　朔北の将星” (Nuruhachi Sakuhoku no Shousei)

―Although it is not a regular kanji, it is a kanji used in the names of celebrities such as 萩原朔太郎（Hagiwara Sakutaro） and fruits such as 八朔（Hassaku）

―”North” is a kanji representing the direction

(2) Separate observations

However, the IP High court also observe separately the trademark(“朔北”from “朔北カレー” was compared with　“サクホク”). This conclusion seems to be made based on the conventional judgement of Japanese courts.　The reasoning of the IP High Court is as follows;

―”Curry”…… in relation to the designated goods of the trademark applied for, demanders and traders are considered to represent the nature of the goods or the raw materials, and no sound or concept as the source identification may arise from such parts.

(3) Judgment of similar or not

Finally the IP High court denied the similarity of “朔北” and “サクホク”.　To some extent, the difference of conclusions about the concept of the trademark may have affected this results.

5 Comments

In Japan, there have been cases, which are related to words of foreign languages  listed in dictionaries, where the recognition of concepts have been an point  of issues and courts have regarded them as a kind of coined words (Objection 2009-900071 ,Intellectual Property High Court Dec. 23, 2020 (Gyo-Ke) No. 10086 and so on).

In this judgment, one of the main particularities of the present case is that the  same problem arised even from the trademark applied for consisted of the Japanese　word(not so familiar to the users), especially in Japanese dictionaries.　In cases such as the present case, it is important for the assertion and the proof to show the grounds of how the words are used in the goods and media and why the words used in the goods and media give rise to a certain concept to users.

On the other hand, it should be noted that “北” is a kanji that represents the simple meaning, “north direction”. In this judgment, as shown above, it is mentioned that the term “朔北” in the present case included “北”.

From this fact, in the case of the words of foreign languages and Japanese words consisting only of intricate and unfamiliar Chinese characters, further measures to assert and prove are possibly necessary.