Trademark Similarity Analysis: "I-TEC"
Case Number: H23 Gyo-ke 10004, Date of Judgment: June 28, 2011, Court: Intellectual Property High Court, Second Division
The Applicant, i-TEC Hankyu Hanshin Co., Ltd., filed trademark application no. 2008-46209 “aitekku hankyu hanshin kabushiki kaisha” (アイテック阪急阪神株式会社i-TEC) in class42 with the Japan Patent Office (JPO). “Aitekku” is the Japanese pronunciation and Kana spelling of i-TEC. “Kabushiki kaisha” is a type of Japanese corporation. The JPO rejected the application, on the grounds that it was similar to two other class 42 marks that had been registered prior to the Applicant’s application:no. 3253573 “aitekku kabushiki kaisha” and no. 3253574“ITEC”. The Applicant appealed the decision.
The relevant provision from Japan’s Trademark Act states that no trademark will be registered if the trademark “is identical with, or similar to, another person’s registered trademark which has been filed prior to the filing date of an application for registration of the said trademark, if such a trademark is used in connection with the designated goods or designated services relating to the said registered trademark” (Article 4(1)(xi)).
The court reversed the JPO’s decision. The court stated that the letters for “aitekku hankyu hanshin” in the center portion of the plaintiff’s mark are the same size and appear to be a unified whole, rather than two separate parts. The court held that the center portion must be viewed as a whole for the analysis of similarity, and that it is inappropriate to judge similarity based on the term “i-TEC” (or “aitekku”) only. As a result, the court found that the Applicant’s mark is not similar to the preceding marks.
Comment: This decision confirms the tendency of the JPO and the courts to consider trademarks composed of several elements to be read as one, as long as there is no apparent reason for considering them to be divisible. Such reasons include more than a half space between the words, special formatting, etc. Obviously, the argument that components such as "kabushiki kaisha", "hankyu" or "hanshin" are clearly understood by the consumer have no influence on the divisibility.
Click here to view images of the marks.
Are you interested in registering a trademark in Japan? Click here to learn about nipponCompass’s trademark services.
page 1/3
|
|
Contact
Information
|