Trial and Appeal Practitioners Study Group Report 2024 — Theme 6 (Trademarks)
Updated: 3 days ago
Article information
Article type: Reports and activities
Category: Trademarks
Topics: Similarity of trademarks, Distinctiveness, Examination and appeal practice
First published on this site: 2026-10-11
Display/classification checked: 2026-10-11
Trial and Appeal Practitioners Study Group Report 2024 — Theme 6 (Trademarks)
[Similarity of composite marks]
<Marks formed by adding other characters, etc., to an already registered mark>
• Whether the registered-mark portion is an essential part is influenced by its recognition and actual trading conditions concerning meaning and usage. However, additions having no difference in the strength of distinctiveness are relatively uncommon; in practice, additions often indicate quality, etc., and therefore differ in distinctiveness.
• Of two components, the one having relatively stronger distinguishing function may be extracted as the essential part.
• For an applied-for mark “A+B,” even if added “B” is strongly distinctive, existing registered/cited mark “A” was itself registered because it is distinctive. In principle, both “B” and the portion “A” corresponding to the existing registered mark are separately extracted for comparison.
• If the applied-for mark is “A” and the cited mark is “A′+B,” the applicant for the cited mark considered the combination distinctive. In principle, it should not have the power to prevent registration of “A.”
• If the applied-for mark is “A+B” and the cited mark is “A′,” an element has been added to an existing mark, and there are many cases in which similarity should be favored.
• If both the registered mark and the added characters have weak distinctiveness, they may form a coined term with a different meaning. Traders and consumers may also perceive and remember the whole as inseparable. Unless the mark is well known or famous, the marks are not similar. (Tokyo High Court, Heisei 12 (Gyo-Ke) No. 301 — “Romantic Kita-kaido” held that a person selecting such a weak mark as its own trademark must tolerate the word being used in this manner as part of another person’s trademark.)
Original article (2025-07-29):
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2026-10-11: First published the LinkedIn original on this site and set the classification, article information, and consultation link.
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