Trademark Similarity Analysis: "TANTO"
Case Number: H23 Gyo-ke 10174, Date of Judgment: October 11, 2011, Court: Intellectual Property High Court, Second Division
The Applicant filed an application with the Japan Patent Office (JPO) to register the trademark 炭都饅頭(“tanto manjuu”, application number 2009-53927) in class 30. The JPO trademark examiner rejected the application, on the grounds that the mark is similar to mark no. 5149010 “TANTO \\ タント”, which is registered in class 30 and covers the same goods (manjuu). The applicant filed an appeal to the IP High Court.
The IP High Court reversed the JPO’s decision, finding that the marks are not similar. The court reasoned that the appearance of the two marks is very different: the Applicant’s mark is written in kanji, but the cited mark is written in the Latin alphabet and katakana, with a different font.
The court stated that the Applicant’s mark is written vertically in one line, with the same font and same spacing, which means that it can only be read as “tanto manjuu”. “Tanto” is not the main part of the Applicant’s mark and the mark cannot be read as merely “tanto”; as a result, the two marks sound different.
Finally, the court found that the two marks have different meanings, because the Applicant’s mark has the meaning of a manjuu that is made in a place where there is a mine, but the cited mark can have the meaning “many”.
Because the sounds, appearances, and meanings of the two marks are different, the court reversed the JPO’s decision, based on Article 4(1)(xi) of the Trademark Act. That provision 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)).
Click here to see images of the two marks.
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