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Court Case Review (Trademark):“Meiji case” (2014)

Authors AOSHIMA, Emi (Ms.)    
Practice Areas Trademarks
Date of publication April 15th, 2015
Publication carrying this article Patent News No. 13942
Publisher Research Institute of Economy, Trade and Industry

Summary

The plaintiff, K.K. Meiji (their English name is “Meiji Co., Ltd.”) filed with the Japan Patent Office (hereinafter, “JPO”) an invalidation trial against a registered mark (hereinafter, “Defendant’s Mark”) owned by an individual, the defendant, on the ground, inter alia, that the Defendant’s Mark is confusingly similar to the Plaintiff’s Marks registered prior to the Defendant’s Mark.
プレゼンテーション1
The Appeal Board of the JPO dismissed the demand for the invalidation trial. The plaintiff filed an appeal with the IP High Court to reverse the JPO decision.

In the appeal lawsuit, whether the Subject Design of the Defendant’s Mark is regarded as the alphabet letter “M” came into question.

The trade documents showing that the defendant is a representative of Meiji Pan K.K. (“Pan” means “bread” in Japan) and that the Defendant’s Mark is used in connection with the business of Meiji Pan K.K. were submitted by the Plaintiff as evidence. However, the court held that since the Subject Design is not considered as the alphabet letter “M”, only the pronunciation of “eiji” arises from the Defendant’s Mark and no specific meaning arises from it, while the pronunciation of “meiji” and the idea of “a name of a Japanese era (the reign of the Emperor Meiji is known as the “meiji era”)” arise from the Plaintiff’s Marks. Based on the finding, the court held that the Defendant’s Mark is not confusingly similar to any of the Plaintiff’s Marks in appearance, idea and pronunciation.

I agree with the conclusion of dissimilarity of the marks.

However, the designated goods of the Defendant’s Marks are special goods and their consumers and traders are limited only to people related to the school business, and from the nature of this business, they would know that a company with whom they trade with is Meiji Pan K.K. when they purchase the goods. In view that the Defendant’s Mark is used by Meiji Pan K.K. under the circumstances, I believe that it is natural to judge that consumers and traders would regard the Subject Design as containing the alphabet letter “M” and pronounce the Defendant’s Mark as “meiji”.

I believe that the court should have judged that in accordance with the above trade circumstances, the Subject Design should be regarded as the alphabet letter “M” and the pronunciation of “meiji” and the idea of “the name of the era”, namely the same pronunciation and idea as the Plaintiff’s Mark arise, but taking into consideration the following points a) through d) in totality, the Defendant’s Mark is not confusingly similar to the Plaintiff’s Marks:

a) Differences between both marks in appearance
b) “MEIJI” is used as a name for many companies which were founded in the Meiji Era and is a common company name.
c) Meiji Pan K.K. has conducted their business with the name for a long time.
d) The designated goods of the Defendant’s Mark, namely “confectionery and bread for school lunches” have been traded continuously, and therefore consumers and traders know the manufacturers of the goods very well.

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