Trademark Similarity Analysis: "Universal"
Case Number: H23 Gyo-ke 10131, Date of Judgment: October 24, 2011, Court: Intellectual Property High Court, Third Division
The Applicant filed an application with the Japan Patent Office (JPO) to register the trademark ユニヴァーサル法律事務所(“univasaru houritsu jimusho”, which means “Universal Law Office” in English, application number 2008-47888), in class 45. The JPO trademark examiner rejected the application on the grounds that the mark is similar to mark no. 3122326, “Universal” (with device), which is registered in class 42, but covers similar goods. 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 Applicant’s mark is written in standard characters, with the same font size and same amount of spacing between characters, and no space between the katakana and kanji parts of the mark. This indicates that the mark should be read as one mark, rather than divisible into its components. The court also stated that because lawyers must use the words “houritsu jimusho” (“law office”) when naming their law office, it means that the Applicant is not using only the word “univasaru” (“universal”), but is using both “univasaru” and “houritsu jimusho” at the same time. As a result, the Applicant’s mark and the cited mark sound different.
The court also reasoned that the appearances of the two marks are different, and both marks have different meanings: the Applicant’s mark means a law office that is universal, whereas the cited mark means “universal” only.
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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