[Article / Trademarks] Similarity of composite marks containing place names for the service “providing food and drink” (中村祥二, Patent, March 2024)
Updated: 2 hours ago
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Categories: Trademarks
Topics: Similarity of trademarks / Distinctiveness
Published on this website: 2026-09-29
[Article / Trademarks] Similarity of composite marks containing place names for the service “providing food and drink” (中村祥二, Patent, March 2024)
1. The issue
For composite marks combining a place name and a shop name, the issue in JPO registrability examination is which of two approaches to take.
Some decisions extract a portion, excluding the weakly distinctive place name and comparing only the remaining characters with other marks; others compare the mark as a whole. This appears inconsistent.
2. Essential factors separating the outcomes
Factor 1: Is the place-name portion recognized only as a specific location?
• “Nihonbashi,” “Roppongi” and “Kyoto”: Recognized almost exclusively as specific place names → likely to be disregarded as place names.
• “Ginza”: There are “Ginza” and “Ginza streets” throughout Japan → not necessarily a specific place name → less likely to be disregarded.
Factor 2: Are the characters other than the place name widely used as restaurant names?
• “Kani Fuku” and “Fukuchian”: Few restaurants share the name → strong distinctiveness → can be extracted for comparison.
• “Sakura,” “Daruma,” “Taishoken” and “Fukuyoshi”: Many restaurants share the name → weak distinctiveness → difficult to extract alone as the essential part.
3. Circumstances specific to food services
There are extremely many independently operated businesses with one to a few outlets, as well as chains.
Consequently, coincidental, simultaneous adoption of the same shop name is much more likely than in other fields.
Particular words such as “Sakura,” “Daruma” and “Taishoken” are often widely used nationwide as restaurant names.
Originally posted on LinkedIn: https://www.linkedin.com/feed/update/urn:li:activity:7510494759241773056/
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